In a previous post, I wrote about Indiana farmer Vernon Bowman who purchased patented GMO soybean seeds from Monsanto for his “first growth” but used so-called “commodity seeds” purchased from local grain elevators for a second growth. Under his license, he couldn’t use regenerated seed for future use. But given the prevalence of the Monsanto seeds, Mr. Bowman knew the community seeds he purchased elsewhere were also likely Round-Up resistant.
For many pundits, this case involved the big question of whether self-replicating products such as soybeans were subject to the legal doctrine of patent exhaustion, which shields legitimate purchasers of patented products from infringement claims with regard to what they do with that product. But, of course, that doctrine does extend to copying the patented product. For self-replicating products, these principles are in considerable conflict. May the purchaser do what they want with the replications or are they infringing copies?
On Monday, a unanimous Supreme Court held that, in Mr. Bowman case, it was the latter. As Justice Kagan wrote:
Were the matter otherwise, Monsanto’s patent would provide scant benefit. After inventing the Roundup Ready trait, Monsanto would, to be sure, “receiv[e] [its] reward” for the first seeds it sells. …. But in short order, other seed companies could reproduce the product and market it to growers, thus depriving Monsanto of its monopoly. And farmers themselves need only buy the seed once, whether from Monsanto, a competitor, or (as here) a grain elevator. The grower could multiply his initial purchase, and then multiply that new creation, ad infinitum—each time profiting from the patented seed without compensating its inventor.
Just as as significantly, however, Justice Kagan underscored that the Court’s decision was a limited to the particular facts before it and should not be viewed as applying to all self-replicating products.
Our holding today is limited—addressing the situa- tion before us, rather than every one involving a self- replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose.