Bowman v. Monsanto Co.

The Patent Exhaustion Doctrine does not apply when the buyer reproduces the patented product. This includes "self-replicating products" where the item's intended use will create copies that have "non-replicating" uses.

Respondent modified the genetic traits of soybeans and sold them to farmers under a license agreement limiting the use to the growth and sale of a single generation of soybeans. Petitioner purchased second generation soybeans and replanted them surmising they would also be glyphosate-resistant. Petitioner eventually harvested eight successive generations of glyphosate-resistant soybeans until Respondent became aware of the infringement. The District Court found in favor of Respondent, and the Federal Circuit affirmed. The Federal Circuit decision noted that the Patent Exhaustion Doctrine did not apply because he was creating copies, which are “newly infringing article[s]” not protected by exhaustion. The Supreme Court granted certiorari, and unanimously affirmed the Federal Circuit decision.

The Court held that the Patent Exhaustion Doctrine terminates patent rights, permitting buyers the use or enjoyment of the product. Exhaustion only protects the use of the “particular product” purchased, but not copies of the patented product. Copies attack the patentee’s monopoly over creation of its product, and constitute infringement. The Court found that Petitioner infringed on Respondent’s patent when he created copies, even where the patent is on a “self-replicating product.”