Abstract
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For example, in the recent Supreme Court case of Bowman v. Monsanto Co., the infringing farmer and a number of supporting amici urged the Court to extend the judge-made doctrine of patent exhaustion to cover second-generation progeny of patented seeds, arguing that such an extension is necessary to shield farmers from liability for inadvertent infringement. 1 In Organic Seed Growers & Trade Ass'n v. Monsanto, organizations representing organic farmers asked the courts to declare a number of Monsanto's patents relating to genetically modified crop plants invalid under the doctrine of moral utility, alleging that the problems caused by inadvertent infringement render the claimed subject matter “injurious to the well-being, good policy, or sound morals of society.” 2 In both cases, Monsanto prevailed, in Bowman on the merits and in Organic Seed Growers on the plaintiff's inability to establish standing, but the issue has by no means been laid to rest. In Organic Seed Growers, the Federal Circuit noted that “[e]ven though the Supreme Court has not addressed the question [of inadvertent infringement], the Court's recent decision in Bowman v. Monsanto Co. leaves open the possibility that merely permitting transgenic seeds inadvertently introduced into one's land to grow would not be an infringing use.” 3 Organic Seed Growers also implied that the plaintiffs might have standing to proceed with their case if they can establish a reasonable likelihood that a farmer might “accumulate greater than trace amounts of modified seed by using or selling contaminated seed from his fields.” 4
One of the most oft-cited concerns involves contamination by “genetic drift,” a scenario in which pollen containing patented genetically modified DNA drifts onto an unwitting farmer's property, either in the form of pollen or seed, thereby contaminating the farmer's crop.
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At least in principle, the potential for genetic drift seems well established. Monsanto has in fact acknowledged that conventional crops could be exposed to “cross-pollination from nearby fields where biotech crops are grown” that could result in “Monsanto's patented traits appear[ing] inadvertently” in a conventional farmer's fields.
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But experts disagree with respect to the likelihood that such inadvertent contamination has, or will at some point, reach substantial levels. In 2010, the Supreme Court noted in a case involving the deregulation of genetically modified alfalfa (not patent infringement) that:
[the U.S. Department of Agriculture and Monsanto] submitted voluminous documentary submissions in which they purported to show that the risk of gene flow would be insignificant…. Respondents, in turn, submitted considerable evidence of their own that seemed to cut the other way. “The parties' experts disagreed over virtually every factual issue relating to possible environmental harm, including the likelihood of genetic contamination and why some contamination had already occurred.”
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Stories of farmers being sued by Monsanto after their fields were inadvertently contaminated by genetic drift are widely circulated on the Internet and in print and appear to have been accepted by much of the public. 8 For example, one of the most persistent myths is that Percy Schmeiser, a Canadian farmer whose litigation with Monsanto reached the Canadian Supreme Court, was the victim of inadvertent infringement caused by genetic drift. 9 However, it is clear from reading the judicial decisions that the Canadian judges were convinced by overwhelming evidence that Percy Schmeiser was not the victim of drift and inadvertent contamination but rather a disingenuous and willful patent infringer who deliberately grew seed from Monsanto plants that had drifted onto his property until he could plant an entire crop. 10
But putting aside genetic drift, it remains possible to imagine scenarios in which a farmer who plants second-generation patented seeds without the authority of the patentee could argue that he is only seeking access to an inexpensive source of seed, with no intent to use or benefit from any patented transgenic trait incidentally residing in the seeds. Even if the farmer knows (or at least strongly suspects) that the seeds contain the patented trait, any infringement that results from planting and cultivating the seeds might plausibly be characterized as inadvertent, because he is arguably doing nothing more than engaging in a traditional farming practice (i.e., the planting of saved seed or commodity seed), and that because of the widespread use of patented seed in his locale, he has been effectively forced to plant seed bearing the patented trait. This is essentially the argument Vernon Bowman made, after he planted commodity grain purchased from a local grain elevator. 11 It could also occur when a farmer plants seeds saved from an earlier harvest of his own field or purchased from another farmer.
Bowman and others argued that the use of commodity grain as seed is an important and traditional farming practice, 12 but there is reason to question the authenticity of this assertion. A number of amici who filed briefs with the Supreme Court in support of Monsanto, including representatives of grain elevator operators, mainstream farmers, and seed companies, argued that the planting of commodity seeds is in fact not a practice engaged in by most farmers. CHS Inc., a farmer-owned cooperative that markets grain in the United States and abroad and whose operations comprise an integrated network of elevators, marketing offices, and export terminals, argued in its brief that the use of commodity grain as seed is not a traditional or common practice among farmers, and that commodity grain is inferior to the seed that farmers normally purchase from seed purveyors. 13 In its brief, seed developer Pioneer Hi-Bred argued that Bowman's planting of commodity seed violated a variety of state and federal laws, including the Plant Variety Protection Act. 14 An amicus brief filed on behalf of growers of soybeans, corn, wheat, and sugar beets also made the point that the planting of commodity grain is an unorthodox practice fraught with risk because of the lack of verification or certification with respect to germination rate or seed maturity and of the potential for contamination by crop residue, foreign matter, and weed seeds (“the soybean's natural enemy”). 15
Bowman himself acknowledged that “the use of commodity grain as seed is occasional.” 16 He also recognized that when commodity seeds are used, the second crop will generally result in a significantly smaller yield because of factors such as lack of uniformity in maturity, decreased disease resistance, and the absence of other beneficial traits typically provided in commercially supplied seeds. 17 Nonetheless, he maintained that the use of commodity grain constitutes an important traditional farming practice that “growers have done for generations.” 18 In any event, Monsanto apparently deemed Bowman's unauthorized planting of commodity seed of sufficient commercial significance to warrant an infringement action, which suggests that the potential for inadvertent infringement based on the planting of commodity seed is not an issue so de minimis in nature that it can be dismissed out of hand. Indeed, in its brief, CHS, Inc. argued that if the Supreme Court ruled in favor of Bowman, this could encourage other farmers to adopt the practice on a larger scale, which would in turn “disincentive innovators from investing in the development of new genetically enhanced seed.” 19
To date, inadvertent infringement based on genetic drift or the presence of trace amounts of contaminating patented seed in a farmer's field does not appear to have ever resulted in a lawsuit by Monsanto. 20 In Organic Seed Growers, the district court found that although the “plaintiffs allege without specification that [Monsanto has] accused certain non-intentional users of Monsanto's seed of patent infringement and threatened them with [litigation, no] plaintiffs claim to have been so threatened.” 21 The complaint identified specific lawsuits that allegedly had been filed against farmers who had not intentionally planted patented Monsanto seeds (none of whom were plaintiffs in the case), but the district court found that this assertion was “belied by the decisions in the suits against the referenced individuals.” 22 In fact, the cases cited by the plaintiff as supposed examples of Monsanto suing inadvertently infringing farmers invariably involved a defendant charged with intentionally saving and replanting second-generation patented seeds or inducing others to infringe Monsanto's patents. 23
In fact, in every case involving an allegation of patent infringement of a Monsanto seed patent by a farmer that has been addressed at the appellate level (by the Court of Appeals of the Federal Circuit or the Supreme Court), there has invariably been compelling evidence that the infringing farmer intentionally planted infringing seeds and benefited from the patented technology. I have not reviewed every single lawsuit filed by Monsanto against a farmer, but I have looked at every one that has resulted in a decision reported in the Westlaw database, and although the district courts often state that proof of knowledge or intent is not necessary to establish direct infringement, it certainly appears to be the case that in most (if not all) of the cases, the farmer is at least knowledgeable of the fact that he is infringing, and in most cases, there is evidence that the farmer is taking advantage of the patented technology, e.g., by spraying his fields with herbicide that would kill his crops in the absence of the patented technology.
For its part, Monsanto has publicly committed never “to exercise its patent rights where trace amounts of [its] patented seeds or traits are present in a farmer's field as a result of inadvertent means.” 24 This commitment played a crucial role in the Federal Circuit's decision to dismiss Organic Seed Growers as a result of the plaintiff's lack of standing, and the court held the commitment to be binding on Monsanto as a matter of judicial estoppel. 25 Still, Monsanto's stated commitment extends only to “trace” amounts of contamination, and at this point, it is unclear what extent of contamination would be deemed by Monsanto to exceed trace amounts and how Monsanto might respond to inadvertent infringement that it believes exceeds that threshold. In Organic Seed Growers, the Federal Circuit pointedly noted that during oral argument, “Monsanto's counsel was quite careful never to represent that Monsanto would forgo suit against a grower who harvested and replanted windblown seeds—even if that grower gained no advantage by doing so (for example, by a farmer who does not spray herbicide on patented herbicide-resistant crop inadvertently growing on the farmer's field).” 26
The absence of lawsuits against inadvertently infringing farmers might be attributable, at least in part, to discretion and forbearance on the part of Monsanto. But beyond that, it seems to me that the nature of the patented trait that has been the subject of all of Monsanto's enforcement actions to date has also played a role. In particular, after reviewing all of the numerous lawsuits filed by Monsanto against farmers that have resulted in a decision reported in Westlaw, I have been unable to identify a single one that did not involve an allegation that a farmer had illicitly planted seeds containing Roundup Ready, a patented Monsanto trait that renders plants tolerant to the herbicide glyphosate. 27 In other words, not one of the lawsuits I was able to examine was based solely on an allegation that a farmer had engaged in unauthorized activities involving a trait other than Roundup Ready, e.g., a trait conferring drought tolerance or insect resistance.
A critical difference between Roundup Ready and other traits such as insect resistance or drought tolerance is that the value of Roundup Ready manifests itself only when the farmer performs the overt act of spraying his fields with glyphosate, which, in the absence of the Roundup Ready trait, would kill his crop. It would be irrational for a farmer to spray glyphosate on his field of soybeans unless he knows that at least a substantial percentage of those soybeans bear the Roundup Ready trait, and thus, if it can be shown that a farmer has sprayed his crops with glyphosate, it becomes difficult for him to argue persuasively that he was not aware he is infringing and moreover that infringement was not his desired objective.
As a consequence, a farmer's protestations ring hollow when he claims that he is merely following the age-old practice of saving and replanting seeds, or of planting commodity seeds provided by a grain elevator, if he has been spraying with glyphosate, thereby unambiguously availing himself of valuable technology that is present in his crops only as a result of the efforts of Monsanto. All of the equitable considerations that have been raised regarding the traditional rights of farmers, which might seem compelling when expressed in the abstract, seem to be undercut by the facts of the cases that have been pursued by Monsanto, particularly at the appellate level. Bowman, for example, was very upfront about the fact that he knew that the soybeans he was growing harbored Monsanto's patented Roundup Ready trait and that he had taken advantage of that fact by spraying his fields with glyphosate.
The situation might become more complicated in the not-too-distant future as advances in technology and developments in the market render it increasingly likely that infringement lawsuits will be filed in cases where it is more difficult to prove that a farmer has taken overt action unambiguously establishing the intentional use of patented technology, or even knowledge that a patented plant is growing in the farmer's field. One factor that could contribute to this is the imminent expiration of the patents on the Roundup Ready trait in soybeans and the anticipated development of “generic” Roundup Ready seeds by other seed developers. Monsanto's patents covering the original Roundup Ready trait (now referred to as “first-generation Roundup Ready,” or “Roundup Ready 1”) will expire by 2015, ending Monsanto's legal right to exclusivity. 28 Monsanto has already developed and released a next-generation glyphosate-tolerance trait, which it markets as Roundup Ready 2. 29 However, Monsanto is also cooperating with other seed developers to make it possible for them to incorporate the first-generation Roundup Ready trait into their seeds, which will not be covered by any active Monsanto patent. 30 In effect, for the first time, generic versions of a genetically modified crop could become available to farmers. If this happens, a farmer will be able to apply glyphosate to his soybeans without necessarily infringing a Monsanto patent. Significantly, no longer will a farmer's application of glyphosate to his fields serve as evidence of knowledge of modified seeds or intent to infringe a Monsanto patent.
If seeds incorporating generic Roundup Ready enter the market, they will coexist with Monsanto's Roundup Ready 2, which is already on the market and which will be covered by patents long after first-generation Roundup Ready has “gone generic.” 31 As a consequence, glyphosate tolerance will no longer equate with patented, and a farmer found to have cultivated seeds containing patented Roundup Ready 2 seeds, perhaps obtained as commodity seed from a local grain elevator, might plausibly argue that he only sought to take advantage of generic Roundup Ready and did not intend to benefit from any inadvertent (and arguably unavoidable) presence of Roundup Ready 2-containing seeds in his field.
A second factor that could contribute to lawsuits under circumstances where it is difficult to establish knowledge or intent will be the increasing commercialization of patented transgenic traits that do not require a farmer to engage in any overt activity in order to experience the benefit of the technology, such as insect resistance and drought tolerance, thereby rendering it more difficult to prove that a farmer has intentionally used and benefited from the patented technology. 32 Although Bt soybeans are not commercially available in the U.S., Dow AgroSciences recently reported U.S. approval of an insect-resistance trait comprising two Bt genes, 33 and Monsanto is currently exploring “how Bt soybeans could fit into the U.S. agricultural landscape.” 34 A farmer found to be infringing a patent on such a trait by using commodity grain as seed, for example, might argue that he was simply trying to save money by obtaining cheap germplasm (one of the arguments Bowman made) and had no intention of planting infringing seeds. In fact, the farmer could argue that the patentee's own actions had rendered infringement unavoidable by encouraging neighboring farmers to adopt the patented technology, thereby effectively pushing the technology into local grain elevators.
In any event, it seems clear that the Supreme Court's decision in Bowman has only partially resolved the legal and policy questions raised by the potential for farmers to infringe seed patents inadvertently. When faced with a case in which the equities tilt more favorably in favor of an accused farmer, it is important that the courts bear in mind that a decision that effectively weakens patent protection for the sake of that farmer (and similarly situated farmers) could have unintended negative consequences for the rights of patent owners, and to strive to maintain a balance between the desire to protect potentially “innocent” infringers and the need to maintain a vibrant patent system to foster further innovation in this important area of technology.