Argument recap: Justices wary of cutting patent rights to genetically modified seeds
on Feb 21, 2013 at 5:04 pm
Tuesday’s argument in Bowman v. Monsanto Co. presented one of the highest-stakes cases of the Term. The case directly considers how tightly Monsanto can control what users do with the Roundup-resistant (“Roundup Ready”) soybean seeds that Monsanto has patented, but is likely to have broad implications for most biotech products and possibly many software and information technology products as well.
The question before the Court is surprisingly simple: when a farmer buys a Roundup Ready soybean seed, is it free to do what it wishes with the seeds harvested from the Roundup Ready plantings? The farmer (Bowman) says yes – arguing that Monsanto’s rights in the seed and its progeny are “exhausted” by its sale of the first seed. Monsanto, by contrast, argues that because it never made or sold the harvested seeds, those seeds cannot be replanted without violating the patent.
It took less than a minute of the oral argument for it to become clear that Bowman’s position would face withering criticism. The Chief Justice quickly broke in to ask Mark Walters (arguing for Bowman): “Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?” When Walters suggested that Monsanto could protect itself adequately by contract, the Chief Justice commented, dismissively, that “the patent system is based, I think, on the recognition that contractual protection is inadequate to encourage invention.”
The basic problem is that none of the Justices expressed any sympathy for Walters’ position that “exhaustion” of Monsanto’s rights in the seed meant not only that the farmer could plant the seed, but that he also could use it to create and plant an indefinite number of new generations of seeds. Thus, the hardest thing about summarizing the argument is choosing which of the many “zingers” to quote and describe. In a typical argument, it would be unusual for as many as two or three of the Justices to ask questions as pointedly indicative of a position as the question with which the Chief Justice opened the argument. But in this case, the Justices seemed to vie to offer the most pointed explication of the error of Walters’ argument. To offer a single example that might suffice to illustrate the tone, Justice Breyer found the case emphatically simple: “You know, there are certain things that the law prohibits. What it prohibits here is making a copy of the patented invention. And that is what he did. . . . And that’s the end of it.” When Walters didn’t give in, he became even more insistent. He explained that when you buy seed:
[t]here are a lot of things you can do with it, all right. But I’ll give you two that you can’t do. You can’t pick up those seeds that you’ve just bought and throw them in a child’s face. You can’t do that because there’s a law that says you can’t do it. No, there’s another law that says you can’t make copies of a patented invention. And that law you have violated when you use [the seed] to make [another generation], just as you have violated the law against assault were you to use it to commit an assault.
When the unremitting assault on Walters finally came to an end, the argument took another unusual turn: The United States appeared as an amicus in support of Monsanto, but Seth Waxman had the Assistant to the Solicitor General (Melissa Arbus Sherry) speak before him, rather than after him (presumably so he could respond to anything she said about the enforceability of Monsanto’s license – a point on which the United States parts ways from Monsanto). Her argument was uncommonly smooth – in large part because the perspective she took was so much in tune with the Justices’ predisposition. The basic position she offered was that Monsanto’s patent rights are exhausted with respect to the seed it sells, but not with respect to other seeds that are later generated; that position resonated with all the Justices who spoke during Walters’ argument.
The only risky part of Sherry’s time came when Justice Kagan asked, as Sherry’s time expired, if the Court could simply avoid the licensing-related issues (on which the government disagrees with Monsanto). The Chief Justice allowed Sherry to answer the question after her red light came on, and she amiably suggested that the Court need not reach that more difficult question.
So by the time Seth Waxman rose to represent Monsanto it seemed clear that only some grievous error could bring the result into doubt. Far from grievous error, Waxman emphasized the biggest problem with his case: the concern that under his theory of the case large numbers of farmers would be liable for patent infringement without knowledge or intent. When Justice Kagan asked him about that problem, the Justices let him answer at great length, arguing that the inadvertent infringement would not concern Monsanto, and would doubtless never be discovered. He contended, with no notable opposition, that the only way anybody would know they had used Roundup Ready seed would be if they used Roundup and the seeds survived; that would only happen to farmers, like Bowman, who planted the seed intending to exploit its resistant capabilities.
I wrote in my argument preview that the biggest question about this case was the course of decision that the Justices would take. The argument strongly suggests it will be a simple one – most of the Justices apparently find it self-evident that the sale of a single patented object should not carry with it the right to create new copies of the patented object, and application of that rule would be enough to decide this case. On the broader question of how that rule might apply outside the biotech context (especially to software), the confidence of the Justices in that simple rule seems to presage an opinion that will not encourage lower courts to read the holding narrowly.