U.S. Supreme Court Seeks Input From Solicitor General In Monsanto Patent Exhaustion Case

On April 2, 2012, the U.S. Supreme Court invited the Solicitor General to file a brief expressing the government's views in a case involving patent exhaustion, Bowman v. Monsanto Co., No. 11-796 (April 2, 2012). The Supreme Court's decision on certiorari will come after hearing from the Solicitor General, but the invitation increases the chance that the Court will grant review. The case involves the use of soybean seeds including Monsanto's patented Roundup Ready" herbicide-resistance trait. Over the course of several growing seasons, Vernon Bowman, a farmer in Indiana, purchased soybean seeds from a local grain elevator. Monsanto Co. v. Bowman, 657 F.3d 1341, 1345-46 (2011). The seeds sold by grain elevators are harvested from local fields in previous seasons, and because Roundup Ready" soybeans are widely planted, a large number of the seeds Bowman purchased included the Monsanto's Roundup Ready" trait. Id. After purchasing the seeds each season, Bowman planted them, sprayed his fields with herbicide to ensure the surviving plants included the Roundup Ready" trait and saved some of the resulting seed for planting again. Id. Monsanto typically sells its seed under limited-use license agreements that restrict growers from replanting seeds produced from the purchased seed. During the appeal, Monsanto acknowledged, however, that its licensed growers were authorized to sell harvested seed to grain elevators (for use "as feed or otherwise as a commodity") and that those grain elevators were, in turn, authorized to sell the seed without a restriction on replanting. Id. at 1345. Monsanto prevailed on summary judgment of infringement at the district court. On appeal, Bowman argued that the authorized sale by the grain elevator triggered patent exhaustion and that subsequent generations of seed could also be used, because the purchased seed "substantially embodies" later generations. Id. at 1348. The Federal Circuit held that exhaustion was not available as a defense to infringement for at least some of Bowman's activities. Id. The Federal Circuit passed on the question of whether the grain elevator's sale triggered exhaustion for the seed purchased by Bowman and instead focused on the plants and seed Bowman grew from that purchased seed. The court held...