Monsanto Co. v. Bowman
657 F.3d 1341
Fed. Cir.2011Background
- Monsanto patents '605 (chimeric CaMV-promoter genes) and '247E (EPSPS) cover Roundup Ready soybeans.
- Monsanto Technology Agreement restricts use, resale, saving seed, and breeding; second-generation sales barred for planting.
- Bowman purchased Roundup Ready seeds from Pioneer (first-generation) and planted them 1999–2007 without saving seed.
- Bowman also bought commodity (second-crop) seeds and saved them for replanting, using glyphosate on second-crop fields.
- Monsanto sued Bowman in 2007 for infringement; district court granted summary judgment of infringement in Monsanto's favor; this court reviews de novo for summary judgment and affirms.
- The central issues include patent exhaustion doctrine and notice under 35 U.S.C. § 287(a).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether patent exhaustion bars Bowman's second-generation plantings | Monsanto contends exhaustion does not extend to self-replicating seeds; second-generation plantings are new infringement. | Bowman argues exhaustion covers commodity seeds sold as unrestricted seed/commodity; seeds reproduce copied technology. | Exhaustion does not apply to Bowman's second-crop plantings. |
| Whether Bowman's notice under § 287(a) was effective | Monsanto argues Bowman had actual/constructive notice via letter and marking. | Bowman argues lack of notice and pro se status; notice defenses preserved on appeal. | Bowman had actual notice as of June 11, 1999; §287(a) damages allowed. |
| Whether marking or notice is required for §287(a) damages given second-generation seeds | Marks would provide constructive notice for all seeds; actual notice sufficed. | Even without marking, the 1999 letter satisfied notice. | Actual notice suffices; no need to determine constructive notice in this case. |
| Scope of damages post-exhaustion for commodity seeds | Infringement remains because each generation contains patented trait. | Exhaustion would preclude infringement claims for subsequent generations. | Damages valid; exhaustion does not bar infringement liability for subsequent generations. |
| Impact of technology agreement on second-generation seed sales | Agreement prohibits selling progeny for planting; no exhaustion to permit planting. | Sales to grain elevators as commodity are authorized channels. | Technology Agreement limits planting of second-generation seeds; no license to plant. |
Key Cases Cited
- McFarling v. Monsanto Co., 302 F.3d 1291 (Fed. Cir. 2002) (exhaustion not implicated by first sale; license terms valid)
- Scruggs v. Monsanto Co., 459 F.3d 1328 (Fed. Cir. 2006) (exhaustion not applicable where first sale conditioned on license)
- J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124 (U.S. 2001) (PVPA vs. utility patent differences; no seed saving exemptions for patents)
- Jazz Photo Corp. v. Intl. Trade Comm'n, 264 F.3d 1094 (Fed. Cir. 2001) (patentee's rights stay with the patent; cannot be used to justify unlimited use)
- Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (U.S. 2008) (substantial embodiment and exhaustion limits; self-replicating tech not unlimited)
- Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992) (validity of post-sale restrictions; impact on exhaustion)
- Scruggs (duplicate entry), 459 F.3d 1328 (Fed. Cir. 2006) (see above)
- Funai Electric Co. v. Daewoo Electronics Corp., 616 F.3d 1357 (Fed. Cir. 2010) (court addresses notice and exhaustion in related context)
- Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001) (affirmative communications of infringement sufficient for notice)