Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission. Such planting and harvesting of subsequent generations constitutes an impermissible “making” of the claimed invention. The Supreme Court emphasized, however, that this is narrow holding and does not consider the case where an article’s self-replication might occur outside of the purchaser’s control or might be a necessary but incidental step in using the item for another purpose (e.g., as may occur in some computer programs).
Background / Facts: Monsanto invented and patented “Roundup Ready” soybean seeds, which contain a genetic alteration that allows them to survive exposure to a certain herbicide. The seeds are sold subject to a licensing agreement that permits farmers to plant the purchased seed in one, and only one, growing season. Growers may consume or sell the resulting crops, but may not save any of the harvested soybeans for replanting. The accused infringer Bowman purchased Roundup Ready soybean seed for his first crop of each growing season from a company associated with Monsanto and followed the terms of the licensing agreement. But to reduce costs for his riskier late-season planting, Bowman harvested subsequent-generation Roundup Ready soybeans from his crops and replanted them. After discovering this practice, Monsanto sued Bowman for patent infringement, to which Bowman raised the defense of patent exhaustion, which gives the purchaser of a patented article, or any subsequent owner, the right to use or resell that article.
Issue(s): Whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission.
Holding(s): No. In a unanimous decision, the Supreme Court decided this issue under the principle “that the exhaustion doctrine does not extend to the right to ‘make’ a new product.” “[T]he exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied). And that is precisely what Bowman did [by replanting the harvested soybeans to create a new generation]. … Because Bowman thus reproduced Monsanto’s patented invention, the exhaustion doctrine does not protect him.” The court found Bowman’s principal argument that exhaustion should apply here because seeds are by their nature “meant to be planted” wholly unpersuasive. “Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article.” Patent exhaustion “provides no haven for that conduct” and “if simple copying were a protected use, a patent would plummet in value after the first sale of the first item containing the invention.” The court also quickly dismissed Bowman’s secondary argument that soybeans naturally “self-replicate or ‘sprout’ unless stored in a controlled manner,” and thus it was the planted soybean, not Bowman himself, he argued, that made replicas of Monsanto’s patented invention. “[W]e think that blame-the-bean defense tough to credit. … [I]t was Bowman, and not the bean, who controlled the reproduction (unto the eighth generation) of Monsanto’s patented invention.”