Bowman v. Monsanto Co.

by jdbatson

Last week, the supreme court ruled that “a farmer who buys patented seeds may [not] reproduce them through planting and harvesting without the patent holder’s permission.”

Soybean plants making replica seed. (Photo courtesy

Soy plants with their beans/seeds (Photo courtesy

The patented seeds in question are Roundup Ready soybeans, a strain engineered by Monsanto to be resistant to a broad-spectrum herbicide called glyphosate, also developed by Monsanto. At first, I thought this was a case about genetically modified crops–patents, GM, corporate litigation, big agra, and rivers of herbicide go together, right? And the gene for glyphosate resistance had been inserted into soybeans by infecting them with a DNA-altering bacterium. I’ve been learning a bit about the science of genetic modification, which should probably be called technology given how ubiquitous it is (Harvard scientists make GM mice whose neurons fluoresce in a 20-color brainbow.) So I got all excited to talk about the history of genetically-modified plants, and the maybe-genius maybe-disastrous uses scientists, in universities and multinationals, have in the pipeline.

But this is really a case about patenting seeds, cells, and plants, which has been going on at least since the Plant Patent Act of 1930. That law does what it says (which is rare among laws, cf No Child Left Behind) and explicitly allows for the patenting of plant varieties. Clarified in 1954 to include seeds, mutants, and hybrids, the law has been used to patent more than 20,000 distinct species of plant. Most recently, plant patent #23,600 was awarded to a British woman named Brenda Bowyer for (conventionally) breeding a variety of helichrysum she christened “Ember Glow,” after the way its red bulbs orange with age. The delicious and now popular Honeycrisp apple was the result of three decades of iterated crossing by hand-pollination and careful selection at the University of Minnesota; the plant was patented in 1998, and for the next 20 years, the U of M charged $1.30 per seedling. In 2008, the US patent expired, and now anyone can sell the seedlings/branchings royalty free. Apple breeding is a pretty well-functioning part of the plant-patent world, and is responsible for the disturbing turnover of apple varieties since I was a kid (those Piñata apples have been showing up a lot lately–patented in 2000).

It turns out, though, that none of the famous GM crop patents, including the Monsanto patent on glyphosate-resistant soybeans, are actually plant patents. No, those are just ordinary (utility) patents which happen to be on plants. This subtlety, plant patent vs patent on plants, is pretty typical legalese, and as as all my lawyer and would-be lawyer friends well know (congrats on finishing xL), the whole case can ride on such distinctions. If Monsanto’s patent had been a plant patent, the farmer would have been a clear victor and the case would never have made it out of district court.

So who is the farmer here, what did he do, and why is it, in the unanimous opinion of our supreme court, obviously illegal?

Vernon Bowman. (Photo by Aaron P. Bernstein for The New York Times)

Vernon Bowman. (Photo by Aaron P. Bernstein for The New York Times)

Vernon Bowman is a grain farmer in Knox County, Indiana. Every news report leads with his age, which is a sympathy-garnering 75. He was an early adopter of Roundup Ready soy, which has become enormously popular since its commercial release in 1996. Every year since 1999, he would buy soybean seeds from a Monsanto distributor and plant them in close rows, closer than he could effectively weed by machine or hand. Whenever  grasses, vines, or flowers began to sprout in the heavily fertilized ground, he would spray the plants with herbicide–the soy would survive and the weeds die, quick and easy. After standard machine harvest, he would sell his his soybeans to a local grain elevator, Huey Soil Services. There it lost its identity as Bowman’s particular crop, mixed with that of his neighbors and became a certain volume of commodity #2 Yellow Soybeans. Those beans are (usually) destined for human or animal consumption, and it is illegal under federal and state law for a grain elevator to market their grain for use as agricultural seed.

Huey soil services grain elevator, in the third quadrant. Cemetery in upper first.

Huey soil services grain elevator, in the third quadrant. Cemetery in the upper first.

I’ll quote Justice Kagan on what he did next:

Bowman, however, devised a less orthodox approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed…He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology. When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way.

So clever! A miniature experiment in natural selection. By creating an adverse environment (spraying with herbicide), Bowman could select for the plants better suited to that environment (herbicide-resistant). This is the same trick you use to direct the evolution of any organism, and had he started with any soybean seed and repeated this enough times, with, say, ever-increasing doses of herbicide, he might well have bred a new strain of resistant plant.

But of course this was not a random collection of seeds–Roundup Ready soy got popular fast in Indiana. By 2000, 63% of soy grown in Indiana was herbicide-resistant, and in 2008 the percentage of GM soybeans peaked at 96%. I don’t know why adoption was so quick, though I would guess a combination of ease of use, mild boost in yield, and heavy marketing. The idea of buying new seed every year certainly wasn’t a shock; midwestern farmers had been doing so since the introduction of hybrid corn in the 1930s. (With hybrids, the second generation loses much of the mutt-like vigor of the first cross between purebreds. Planting your harvested kernels is no substitute for buying newly crossed seed.)

Bowman wasn’t just trying to save money. He was trying to make a point about the naturalness of the agricultural cycle of planting, harvesting, saving seed, and planting again.

[A]s long as agriculture has existed, farmers have assumed the universal right to save, replant, and exchange seed from their harvests…Monsanto seeks to abolish that “universal right” by expanding the patent monopoly, maintaining that [I] “made” the invention because growing soybean seeds “required substantial, and sustained, human effort,” including planting “in suitable soil, at the correct depth, and in the correct manner, at a time suitable for planting…” But these actions constitute the very uses intended by Monsanto’s patents to obtain the full benefit of the inventions, i.e., glyphosate resistance in the resulting plants and seeds.

Bowman claimed that he was merely using the seeds in the way that they were intended, by nature and by Monsanto, to be used. Similar to the fair use doctrine for copyrighted products, the doctrine of patent exhaustion “confers on the purchaser, or any subsequent owner, the right to use [or] sell the thing as he sees fit.”

Bowman did purchase the soybeans legally, from the grain elevator. While all seed purchases from Monsanto come along with a contract prohibiting the planting of a second crop from the first, he signed no such contract for these. (Compare to Sodastream‘s contracts forbidding you to refill your CO2 cannister by hand and requiring that you repurchase from them.) So, legal product, reasonable and natural use, what’s the problem?

The flip side of the owner’s right to use is the patent holder’s right to restrict reproduction. The whole point of a patent is to grant a (limited) monopoly on making. The core legal question is whether or not Bowman was making new seeds or using the old ones.

This is a hard question, since life begets life. Cultivated plants, after millenia of co-evolution with humans, don’t grow well by themselves; far removed from their wild ancestors, they require planting and tending to survive. But they do grow themselves, with light and soil and airborne carbon, and the potential for the growth of innumerable generations is contained in the seed of one. That’s how life works.

The patent office used to agree–by the early 1900s, there was a no-patents-on-living-things policy. After petitioning by plant breeders, especially Luther Burbank, who had created the Russet potato, white raspberries, and the pluot, congress passed the Plant Patent Act. It created a new kind of patent, the plant patent, which covered asexual reproduction, like growing fruit trees and flowers from clippings. As I learned from this great post on patent history, the plant patent gives its owner the “the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.” Sexual reproduction, growing from seed like Bowman did, was not covered. In the 70s, congress passed a separate bill, the Plant Variety Protection Act, allowing for certificates, weaker than patents, for sexually reproducing plants (seeds fertilized by pollen). Saving seed for personal use was explicitly still legal in all cases.

Until, in 1980, the supreme court heard Diamond v. Chakrabarty, covering an application to patent a bacterium. While four justices believed that this was impossible–products of nature were not generally patentable, that’s why the PPA and PVPA were necessary–five believed that congress had gotten confused, had misunderstood the power of the original patent act. This reasoning was extended from bacteria to plants in  JEM Ag Supply v Pioneer Hi-Bred:

in 1930 Congress believed that plants were not patentable under § 101, both because they were living things and because in practice they could not meet the stringent description requirement. Yet these premises were disproved over time. … Whatever Congress may have believed about the state of patent law and the science of plant breeding in 1930, plants have always had the potential to fall within the general subject matter of § 101, which is a dynamic provision designed to encompass new and unforeseen inventions.

It’s interesting to see how controversial legal decisions become standard over time, thanks the power accorded to precedent. The legal principle is stare decisis, or “no regrets.” So a 5-4 decision on bacterium patents in 1980 turned into a 7-2 decision on ordinary patents on plants in 2001 turned into a 9-0 decision last week reaffirming “that the patentee retains an undiminished right to prohibit others from making the thing his patent protects.”

On the question of whether not planting is more legal use or  illegal making, Justice Kagan’s opinion is clear:

Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them.

A penultimate remark: everything Bowman did would have been legal in 2014. Patent protection only lasts 20 years, unlike the insane 70 allotted to copyright. This case took so long from infringement to detection to lawsuit to appeal to appeal that Roundup Ready soybeans go off patent next year.

I’d like to leave you with a footnote from the case which I think captures the tension between legal dialectics of making/using, evolution/invention, and commodity/seed and their synthesis in a single strain of glycine max.

Grain elevators…purchase grain from farmers and sell it for consumption; under federal and state law, they generally cannot package or market their grain for use as agricultural seed…. But because soybeans are themselves seeds, nothing (except, as we shall see, the law) prevented Bowman from planting, rather than consuming, the product he bought.