On Monday, May 13, 2013, the US Supreme Court issued its ruling in the Bowman v. Monsanto patent infringement case. Aside from Mr. Bowman, it seems likely that relatively few people with detailed knowledge of the specific case would be surprised that the court ruled that Bowman had infringed on Monsanto’s Roundup Ready soybean patent (http://www.supremecourt.gov/opinions/12pdf/11-796_c07d.pdf).
Vernon Hugh Bowman is a farmer in Indiana who raises soybeans and uses Monsanto’s Roundup Ready soybeans for this first soybean crop of the season and does not save the harvested seeds. He also makes a late-season planting. Given the greater risk of the second planting, he decided—during the period of time in question—to evade the price premium that Monsanto charged for its seed.
But the glyphosate resistance was important to Bowman, so he went to the local elevator and purchased some soybeans for use in his late-season plantings. Because most US farmers use Roundup Ready soybeans Bowman could anticipate that the bulk of the beans he purchased had this trait. And, he was correct. When he sprayed his fields with glyphosate to kill the weeds, most of the soybean plants survived. He then saved some of the seeds for planting in the following year. He occasionally purchased additional soybeans from the elevator in subsequent years, but never directly used soybeans from his first planting.
He did this for eight years and when Monsanto found out, they sued and won in District Court. The Federal Circuit Court affirmed the lower court ruling and Bowman appealed the case to the US Supreme Court.
Bowman made the argument of patent exhaustion. In the unanimous decision of the court, US Supreme Court Justice Elena Kagan writes, “under the doctrine of patent exhaustion, the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention” which is exactly what Bowman did.
Later in the decision Kagan noted, “the ‘right to use’ a patented article following an authorized sale, the [Federal Circuit] court explained, ‘does not include the right to construct an essentially new article on the template of the original, for the right to make the article remains with the patentee.’” In earlier cases the court has ruled that just because someone can purchase a product and reverse engineer it, they do not have the right to duplicate it and sell it. The “‘second creation’ of the patented item ‘call[s] the monopoly, conferred by the patent grant, into play for a second time.’”