Bowman v. Monsanto Co.
133 S. Ct. 1761
| SCOTUS | 2013Background
- Monsanto developed Roundup Ready soybean seeds containing a glyphosate-tolerance trait and sells them under a license restricting planting to one season and prohibiting saving or sharing harvested seed for replanting.
- Bowman bought Roundup Ready seeds from a Monsanto affiliate for his first crop and followed the license terms, but for his late-season planting he used commodity soybeans bought from a grain elevator that likely contained the patented trait.
- By planting those commodity soybeans, applying glyphosate, and saving harvested seed for subsequent seasons, Bowman reproduced Monsanto’s patented invention across multiple generations.
- Monsanto sued Bowman for patent infringement, and Bowman asserted patent exhaustion as a defense, arguing the initial authorized sale exhausted Monsanto’s rights in the seeds.
- The district court and Federal Circuit rejected exhaustion, holding Bowman’s planting and saving of seeds produced new, infringing copies outside exhaustion’s scope.
- The Supreme Court affirmed, holding patent exhaustion does not permit making new copies of a patented seed through planting and harvesting without permission.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether patent exhaustion allows reproduction of patented seeds via planting and harvesting | Bowman: exhaustion covers use after sale, so replanting should be allowed | Monsanto: exhaustion does not permit making new copies of a patented seed | No; exhaustion does not permit making new seeds |
Key Cases Cited
- Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008) (initial authorized sale terminates patent rights in that item)
- United States v. Univis Lens Co., 316 U.S. 241 (1942) (sale exhausts rights as to the particular article)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (second creation of the patented item falls outside exhaustion)
- J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001) (seed patents and PVP have distinct protections; saving seed discussed)
- Cotton-Tie Co. v. Simmons, 106 U.S. 89 (1882) (exhaustion boundaries protect not making new articles)
- Mitchell v. Hawley, 16 Wall. 544 (1873) (purchaser cannot reconstruct or make a new patented article)
- Wilbur-Ellis Co. v. Kuther, 377 U.S. 422 (1964) (reconstruction of a patented machine implicates the right to exclude)