Bowman v. Monsanto

Whether patents on seeds containing self-replicating technology are exhausted after an authorized sale.

Petitioner is a farmer who purchased Respondent’s patented herbicide-resistant soybeans from a licensed producer. When he purchased the seed, Petitioner signed an agreement to neither save seed for replanting nor conduct research on the crop. Petitioner grew two crops in a season—the second from non-Respondent seed purchased from a local grain elevator—and conducted experiments for herbicide resistance on the second crop.

The lower court concluded that Respondent’s patent rights in the seeds were not exhausted, because each generation of seeds constituted a new infringement on the patent. Were the first sale doctrine to apply to self-replicating technology, the rights of the patent holder would be eviscerated. Additionally, Respondent provided Petitioner actual notice of his infringement. The Court of Appeals for the Federal Circuit affirmed.

On appeal, Petitioner argues that the appellate court decision was inconsistent with the exhaustion doctrine, which he argues owes more to common law contract doctrine than patent law. He also argues that the Federal Circuit improperly expanded patent rights in Mallinckrodt v. Medipart, in which it decided that exhaustion applied only to unconditional sales. Respondent also challenges the appellate court's position that farmers "make" new infringing articles when the seeds they plant generate new seeds.