Monsanto sells Roundup Ready® soybean seeds that are resistant to the powerful herbicide glyphosate. Monsanto requires farmers who buy these seeds to sign a contract, called a Technology Agreement, which imposes certain restrictions on the way in which the seeds can be used. For example, while the agreement allows the first-generation seeds to be planted, the agreement prohibits farmers from saving progeny seeds for replanting. But farmers are allowed to sell the progeny seeds to, among other purchasers, grain elevators.
In this case, Frommer Lawrence & Haug client Vernon Hugh Bowman abided by the terms of the Technology Agreement, purchasing first-generation Roundup Ready® soybean seeds from a Monsanto-licensed seed company. He never saved and replanted the progeny from his first crop. Mr. Bowman also bought soybeans from a grain elevator, called “commodity grain,” to use for risky late-season plantings. He used the commodity grain for planting, and some of the grain contained the Roundup Ready® trait. He saved these seeds and used them for subsequent-generation late-season plantings. When Monsanto learned of Mr. Bowman’s activities, it sued him for patent infringement. According to Monsanto, the only way a farmer can lawfully plant seeds containing the Roundup Ready® trait is if they first obtain Monsanto’s permission to do so.
Mr. Bowman argued that the Supreme Court’s 150-year-old “patent exhaustion” doctrine allowed him to plant his purchased commodity grain without Monsanto’s express permission. Under the doctrine, the authorized sale of a patented product “exhausts” the patent rights covering the product, such that its purchaser is free to use it free from any infringement claims by the patentee. The United States District Court for the Southern District of Indiana, relying on Federal Circuit law, held that exhaustion did not apply to Mr. Bowman’s case. It therefore held that his use of the seeds from the grain elevator constituted patent infringement. Mr. Bowman, who was pro se before the district court, appealed to the United States Court of Appeals for the Federal Circuit. Frommer Lawrence & Haug represented Mr. Bowman in his appeal pro bono. In the end, however, the Federal Circuit affirmed the lower court’s decision that Mr. Bowman was liable for patent infringement.
Frommer Lawrence & Haug then filed a petition for a writ of certiorari on behalf of Mr. Bowman. The petition asked the Supreme Court to decide whether Monsanto’s patent rights to the seeds contained in the grain elevator were exhausted. The Supreme Court invited the Solicitor General to submit a brief to advise the Court whether it should take the case. The Solicitor General recommended that the Supreme Court decline to take the case, concluding that the court of appeals’ decision was correct. Over the objections of the Solicitor General, the Court decided to hear the case. After briefing by both sides and by the Solicitor General, the Supreme Court heard oral argument in the case on February 19, 2013.