More of a cautionary winter’s tale than a midsummer night’s dream, an Indiana farmer facing legal action from a certain biotech and chemical multinational behemoth recently reached the U.S. Supreme Court. The case is called Bowman v. Monsanto, and with all that hangs in the balance, a herbicide-resistant rose by any other name would, in fact, smell as sweet (to the victor).
By most if not all accounts of the well–covered February 19th hearing (transcript)(audio)(post-hearing counsel discussion), the Court showed little sympathy for Bowman’s position, appearing prepared to uphold lower courts’ decisions in favour of Monsanto and patent rights-holders. While one could not contradict the Court on applying current law, there seemed to be an unacknowledged tension running through the hearing, between applying the law as it is and questioning what it ought to be in the face of unprecedented situations in patent law and related intellectual property issues.
I. Prologue: “Two parties, unalike in privity…”
Enter the facts. Monsanto sells certain types of soybean (and other) seeds with a patented gene that makes them resistant to Roundup, a Monsanto herbicide. Farmers who buy seeds from Monsanto must sign a contract binding them to using the seeds only once; they cannot plant seeds descended from the bought seeds. However, Monsanto allows farmers to sell, under no special conditions, descendant seeds to grain elevator mixtures. Bowman bought and planted such a mixture and harvested seeds from the plants that survived Roundup spraying, which indicated they were resistant.
The central issue of the case is whether or not Bowman planting descendants of the original seeds he bought constitutes patent exhaustion. Does Monsanto’s patent reside only in the first generation of seeds sold to farmers, or does it reside in all seeds with the Roundup-resistant gene, including those grown into existence after sale?
II. Submission for Monsanto: “Justice! the law! my dockets, and my patents!”
Monsanto argues that if their patent withers with the first sale of seeds alone, then the patent would quickly cease to have effect as all buyers could easily grow their own seeds from saved ones every year, instead of having to buy more from Monsanto. This, Monsanto contends, would “devastate innovation in biotechnology”. According to Monsanto, patent exhaustion does not include a right for the buyer to make unlimited copies of the sold item. Intervenors such as the United States government added that patent exhaustion does not apply at all, as the new seeds are “new articles of manufacture”.
At the hearing, the justices raised challenges such as whether a Monsanto-favouring decision would have “the capacity to make infringers out of everybody”, due to the fact that Monsanto holds a near-total monopoly over soybean seeds, and due to events such as wind blowing patented seeds into the fields of other farmers. The latter issue is particularly pertinent for Canada in light of Monsanto Canada Inc. v. Schmeiser.
III. Submission for Bowman: “Fare you well; your suit is cold.”
According to Bowman, Monsanto’s first sale of the seeds exhausts the patent, and that’s all there is to it; the buyer may do anything they like with the item after that. In perhaps a patent version of the thin-skull rule (obvious foreseeability notwithstanding), Bowman’s argument implies that it’s simply unfortunate Monsanto’s patent happens to reside in something that is self-replicating and thus patent-undermining by nature; that is the liability one assumes with living organisms. Both Bowman and Monsanto claim that the other is asking the Court to carve out an exception in their favour.
Counsel for Bowman received a full-court press, with the justices actively putting him on the defensive regarding issues such as: the potential destruction of Monsanto’s and similar patents flowing from a decision for Bowman; the inadequacy of contracts to replace patent protection; farmers’ rights (or lack thereof) to exploit the self-replicating nature of seeds to go around Monsanto’s patent; how frequent a practice it is for farmers to use grain elevator seeds for crops (and thus how severely an adverse decision would impact them); and whether or not counsel was mischaracterizing Monsanto’s claim.
IV. Epilogue: “The course of true law never did run smooth.”
As mentioned, this case has the potential to set off trajectories in IP law far beyond what farmers may do with soybean seeds, and perhaps calls for more than straightforward application of existing law. First, the Business Software Association tellingly acted as intervenor for Monsanto, fearing a decision for Bowman could set a precedent applicable to software and copyright. Multiple parties strengthened this nexus by citing Microsoft Corp v. AT&T Corp (about making disk copies in a jurisdiction abroad), and some have extended this connection to include cell lines and DNA used in medical research, not to mention 3D printers.
Second, Monsanto argued that “size has never been thought to affect the contour of patent rights”. With anti-competition concerns such as patent pools and monopolies, however, the Court might consider whether size should, in fact, matter. Urgency arises in view of the fact that 93 percent of American-farmed soybeans (along with nearly 90 percent of both cotton and corn) were genetically engineered in 2010, according to a report by Center for Food Safety, intervenor for Bowman.
Third, the justices consistently challenged Bowman on the idea that biotechnology patents should be exhausted on first sale in the case of self-replicating technologies. Justice Ginsburg asked, “Where is that in the law?” The problem here is that with the biotechnology in question, self-replication is the biology, not the technology; Monsanto did not invent photosynthesis. Current patent law as the Court seems poised to interpret it, however, treats the seeds and buyers as if Monsanto did.
Justice Ginsburg is correct in that Bowman’s position is not in the law—and perhaps it should not be. We can only hope that after having touched on the various high stakes involved, the Court will hand down a decision that more fully speaks to the myriad implications of whether or not, and how, it ought to be.
Cynthia Khoo is a JD Candidate at the University of Victoria.