Patent exhaustion

The United States Supreme Court has granted certiorari in Bowman v. Monsanto Co on the application of patent exhaustion to second generation self-replicating genetically modified seeds.

The appeal is from the US Court of Appeal for the Federal Circuit’s 2011 decision. Bowman was sued by Monsanto for infringing its patents on modified genes and molecules by planting and growing second generation seeds.

The CAFC concluded that:

Even if Monsanto’s patent rights in the commodity seeds are exhausted, such a conclusion would be of no consequence because once a grower, like Bow- man, plants the commodity seeds containing Monsanto’s Roundup Ready® technology and the next generation of seed develops, the grower has created a newly infringing article.

The question to be considered by the United States Supreme Court is:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

The United States Supreme Court previously considered the concept of patent exhaustion in its 2008 decision of Quanta Computer, Inc. v. LG Electronics, Inc.  The United States Supreme Court is hearing the case of Kirtsaeng v. John Wiley & Sons, Inc. later this month on the first sale doctrine in Copyright.