By Lawrence Hurley
WASHINGTON, Feb 21 (Reuters) - During oral argument in a
major patent case this week, it became clear that the U.S.
Supreme Court was unlikely to resolve a key legal question
raised in the dispute.
The court is weighing whether 75-year-old farmer Vernon
Bowman circumvented the law by planting a soybean crop
containing Monsanto Co patented technology that he had not
purchased from an authorized dealer.
Monsanto said such a use of its Roundup Ready technology,
which protects crops from herbicides, was unlawful. Bowman said
because the grain he used as seed was "second generation" and
not the first-generation sold by seed dealers, it was not
covered by the patent.
Oral arguments were heard on Tuesday. Patent law experts
said the court may have taken the case in large part to resolve
what Justice Sonia Sotomayor described during the argument as
"lingering confusion" over the type of conditions patent holders
can impose on sales of their products.
"I think that the conditional sales issues were the original
highlight for the court," said Dennis Crouch, a patent law
expert at the University of Missouri School of Law.
The conditional sales doctrine, as it is called, has been
embraced by the U.S. Court of Appeals for the Federal Circuit in
several cases. Under that doctrine, the court has found that
patent rights are not exhausted after any authorized sale.
That stance has been a target for criticism from various
quarters, including the Obama administration, which argues that
it is inconsistent with a 2008 Supreme Court ruling, Quanta v.
LG Electronics, which said patent rights are exhausted after an
authorized sale. Patent law experts think the Supreme Court is
looking for the right case that would allow it to address the
Bowman's attorneys said the Federal Circuit applied the
doctrine in the Monsanto case, although the company and the
Obama administration say the court did not rely on it in
reaching its conclusion. The Obama administration joined in
Tuesday's arguments in support of the Federal Circuit ruling
that found Bowman had infringed Monsanto patents despite its
opposition to the conditional sale doctrine.
During Tuesday's argument, the justices went in a different
direction. Instead of focusing on Monsanto's effort to control
the use of subsequent generations of seeds, they appeared to be
leaning toward a finding that Bowman violated the patent when he
"made" new copies of the protected product. He did this when he
grew crops using seeds he had purchased and then used the seeds
generated from that crop to plant a new crop.
"You know there are certain things that the law prohibits,"
Justice Stephen Breyer told Bowman's lawyer, Mark Walters. "What
it prohibits here is making a copy of the patented invention.
And that is what he did."
Sotomayor specifically asked Monsanto's attorney, Seth
Waxman, whether the court needed to - or should - address the
conditional sales issue.
"I think that an appropriate case will come up where it will
be important for you to determine that," Waxman responded.
Experts expect the court now to rule in favor of Monsanto on
the basis that Bowman infringed the patent due to an authorized
"making" of a copy.
When the court initially accepted the case, the justices
might have thought the so-called "conditional sale" issue was
key. But upon reading the briefs they may have realized that the
case could be decided in a more "straightforward way," said Adam
Mossoff, a law professor at George Mason University School of
Once the case reached the oral argument stage, "they thought
it was almost a no-brainer," he added.
Several experts familiar with the case said they expected
the conditional sales issue to be raised in a concurring opinion
in what could be a 9-0 ruling in favor of Monsanto.
Crouch predicted that the concurring opinion will say that
"the Federal Circuit's conditional sale doctrine is bad law and
that restrictions on the use of personal property do not
normally bind subsequent purchasers who are not privy to that
The case is Bowman v. Monsanto, U.S. Supreme Court, No.
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