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Josh Long

Josh Long has been a journalist for the last 15 years and is a licensed Colorado attorney. Josh is Legal and Regulatory Editor with VIRGO's Health and Nutrition Network, which includes Food Product Design and Natural Products Insider. Ping him with story ideas at jlong@vpico.com.

Supremes KO Farmer in Monsanto Patent Fight

By Josh Long Comments
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WASHINGTON—Mark P. Walters only managed to eke out six sentences about the little-known doctrine of patent exhaustion and Monsanto Co's invention of a genetically-engineered soybean seed before Supreme Court Chief Justice John Roberts interrupted him.

"Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want"? the chief justice asked.

This inauspicious start to oral arguments for Indiana farmer Vernon Hugh Bowman reminded me of the once-indestructible Mike Tyson pummeling his opponents in a matter of seconds.

Monsanto, whose soybean seeds are planted throughout America, had already scored points before throwing its first jab.

The Supreme Court fight is over a farmer's right to purchase commodity seeds from a grain elevator that contained Monsanto's patented Roundup Ready technology and use the offspring for future plantings without compensating Monsanto.

Walters tried unsuccessfully to persuade nine of the most venerated judges in America that the patent exhaustion doctrine limits Monsanto's right to control Bowman's right to use seed because once the biotechnology giant sells its product the buyer can do anything he wants with it. A gaping hole in his argument is the seed is self-replicating — distinguishing it from a patented product such as a can of coke, which short of wizardry, cannot recreate itself.

There is no dispute Bowman could purchase the seeds from the grain elevator and plant them in his fields. Again, the question is whether he could use the offspring, which he did for years, exploiting a seed that is resistant to weed killers.

"Now, if you say that there is exhaustion in the seeds that Mr. Bowman purchased from the grain elevator but you say it's doesn't apply to the progeny, you are not allowing him to actually practice the invention to grow more seeds," Walters, a patent guru with the law firm Frommer Lawrence & Haug LLP, posited.

Justice Stephen Breyer, a Clinton appointee, immediately responded with a series of jabs.

"No, but you are allowing him to use those seeds for anything else he wants to do. It has nothing to do with those seeds … Here, he buys generation 2. Now, he can do what he wants with those seeds. But I'll tell you, there is a problem because the coming about of the third generation it itself the infringement. So the second generation seeds have nothing to do with it. If he went into a room and had a box that he bought from a lab and he put rocks in it and he said, hocus-pocus and lo and behold out came the third generation of seeds, he would have infringed Monsanto's patent with that third generation, would he not?"

"No," was Walters' response, but Breyer was by no means finished and made clear his feelings on the subject.

"You know, there are certain things that the law prohibits. What is prohibits here is making a copy of the patented invention. And that is what he [Bowman] did. So it's generation 3 that concerns us. And that's the end of it."

In a back-and-forth exchange with Breyer, Walters contended there is no exception to the doctrine of patent exhaustion. Under his interpretation of the law, an authorized purchaser of Monsanto's seeds can do whatever he wants with them including using the offspring without Monsanto's permission. [To further muddy the waters, Bowman didn't buy the seeds from Montano but obtained them from a grain elevator, so his status as an authorized purchaser is seriously in doubt].

Sonia Sotamayor, whose only been on the bench for 3 1/2 years, wasn't buying it. "I’m sorry. The Exhaustion Doctrine permits you to use the good that you buy. It never permits you to make another item from that item you bought. So that's what I think Justice Breyer is saying, which is you can use the seed, you can plant it, but what you can't do is use its progeny unless you are licensed to, because its progeny is a new item."

Associate Justice Ruth Bader Ginsburg appeared to agree with her colleague's interpretation.

By now, you don't need a JD from Harvard Law to see how this fight is bound to end: with Bowman stuck with a judgment that he infringed on Monsanto's patents.

But not before the Supremes continued hammering Walters with questions and skepticism.

Elena Kagan, an Obama appointee, rejected the lawyer's premise that Monsanto can adequately protect itself through contract law rather than relying on its patent rights. The justices were clearly concerned about protecting investments in intellectual property such as Monsanto's genetically-engineered seeds.

"Actually, it seems to me that that answer is purely insufficient in this kind of a case, because all that has to happen is that one seed escapes the web of these contracts, and that seed, because it can self-replicate in the way that it can, essentially makes all the contracts worthless," Kagan observed. "So again, we are back to the Chief Justice's problem, that Monsanto would have no incentive to create a product like this one."

Monsanto's lawyer, Sex Waxman of Wilmer Cutler Pickering Hale and Dorr LLP, stepped into the ring later on to present his case. By that time, he had little to fear because the judges had already KOed his opponent.

Josh Long is Legal and Regulatory Editor with VIRGO's Health & Nutrition Network. He can be reached at jlong@vpico.com.

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