4-Patents: ICTA analysis of US Supreme Court decision in plant patent case

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TITLE:  ICTA analysis of Supreme Court decision in patent case
SOURCE: International Center for Technology Assessment, USA
        posted by Farm News from Cropchoice, USA, http://www.cropchoice.com
DATE:   December 19, 2001

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ICTA analysis of Supreme Court decision in patent case

(Dec. 19, 2001 - CropChoice news) - The following is an analysis of last 
weekÕs Supreme Court decision in the case of PIONEER HI-BRED INTERNATIONAL 
v. J.E.M. AG SUPPLY, FARM ADVANTAGE, et al. 534 U.S. (2001). After the 
analysis, youÕll find a letter that North Dakota farmer Rodney Nelson wrote 
to North Dakota Sens. Dorgan and Conrad and Rep. Pomeroy about this 
decision and about the issue of seed saving.


by the International Center for Technology Assessment

In February, 1998, Pioneer Hi-Bred International sued a small Iowa seed and 
agricultural supply company named Farm Advantage, its co-owner Marvin 
Redenius, and several of its sales representatives for infringement of 
seventeen (17) Pioneer hybrid (non-genetically engineered) corn seed plant 
patents. The legal action alleged that Farm Advantage purchased corn seed 
from licensed Pioneer seed dealers and then offered the seed for resale. 
Pioneer claims that unauthorized resale of its corn seed violates its 
patents because the company only allows authorized Pioneer sales 
representative to sell the seed.

In responding to the law suit, Farm Advantage raised numerous defenses 
including a fundamental challenge to the United States Patent and Trademark 
OfficeÕs ("PTO") decision to allow the patenting of plants. Farm Advantage 
claims that its resale did not infringe on PioneerÕs patent because the 
patents were invalid as a matter of law.

The case J.E.M. Ag Supply, Inc. Farm Advantage, et al. v. Pioneer Hi-Bred 
International, Inc.. ("Farm Advantage") was heard by the Supreme Court in 
the October 2001 term. With this case the Court was faced with the 
straightforward issue of whether the PTO had illegally extended "utility" 
patent protection rights, under §101 of the Patent Act, to sexually 
reproducing plants. (Section, §101, of the Patent Act defines what products 
can obtain a utility patent.) In a 1985 decision, Ex Parte Hibberd, the PTO 
decided, without congressional approval, to extend patent protection to 
seeds. Since that time it has granted more than two thousand seed patents.

Petitioner, "Farm Advantage," argued that Congress in passing the Plant 
Patent Act (1930) and the Plant Variety Protection Act (1970) had 
specifically excluded seeds from "utility" patenting. These laws do not 
provide for patenting of seeds but rather for an alternate form of 
breederÔs rights over seeds which allows for seed saving and exchange by 
farmers, and for unencumbered research on seeds. Farm Advantage maintained 
that the PTO was acting in an illegal manner and directly contrary to 
congressional intent in its continued granting of utility patents to seeds. 
The Farm Advantage case was the first challenge to the legality of the 
PTOÕs allowance of seeds to be patented. On December 10, 2001, the Supreme 
Court issued an opinion in the case.

Brief Overview of the Decision

On December 10, 2001, by a vote of 6-2 the Supreme Court upheld the 
viability of the Pioneer Hi-Bred seed patents. Justice Thomas wrote the 
majority opinion joined by Rehnquist, Scalia, Kennedy, Souter and Ginsburg. 
Scalia wrote a brief concurrence. Justice Breyer wrote a dissenting opinion 
joined by Stevens. Justice OÕConnor recused herself as she has in the past 
from cases involving Dupont (Pioneer is now owned by Dupont), a company in 
which she or her family appears to have some fiduciary relationship.

As noted, the central issue of the Farm Advantage case was whether Congress 
ever intended to give the PTO the authority to issue patent protection over 
sexually reproducing plants. Both Farm Advantage and CTA (in its amicus 
curiae brief for the American Corn Growers Association and National Farmers 
Union) argued that the legislative history of the Plant Patent Act ("PPA") 
and Plant Variety Protection Act ("PVPA") showed that Congress clearly 
rejected extension of patents to seeds and created an alternative 
intellectual property regime for seeds - the Plant Variety Protection 
Office administered by the USDA.

Justice ThomasÕ opinion complelety ignores the congressional intent behind 
the PVPA and validates the PTOÕs ability to continue issuing utility 
patents over sexually reproducing plants (i.e. seeds). Thomas took the 
extraordinary view that passage of the PVPA as an alternative to patenting 
was somehow not specific rejection by Congress of the PTOÕs ability to 
grant seed patents. Neither Pioneer, nor any lower court opionion in this 
case, had ever even suggested this incoherent view of the PVPA. All had 
recognized that the PVPA undisputedly rejected seed patenting as an option.

The Thomas opinion states that because the actual text of the PPA and PVPA 
do not specifically state that patents cannot be issued over seed, then 
Congress actually allowed the PTO to extend patents to seeds.As pointedly 
noted in the Breyer dissent, the Thomas opinion completely ignores the 
clear legislative history of the Congressional creation of the the PVPA. 
Specifically, in 1968 Congress rejected extending the patenting of seeds, 
and then later crafted compromise legislation, the PVPA, to grant a lesser 
form intellectual property to plant breeders.

The contorted reasoning in the Thomas opinion reflects the difficult task 
this case presented for the majority. Any rational analysis of the 
legislative history of the PVPA would leave no doubt as to its rejection of 
the patenting option for seeds. However this would mean the Supreme Court 
rescinding more than two thousand seed patents, which would not sit well 
with agribusiness . In a battle between business interests and the law, big 
business won the majority of the Court, no matter how legally 
incomprehensible the opinion.

The Thomas opinion may however have some unforeseen consequences which 
could come back to haunt the Court. ThomasÕ extremely myopic view of 
legislation, limiting analysis to the letter of the statute and ignoring 
intent and purpose, if it were followed in other cases could lead to 
legislative chaos. Congress would be forced to try and include in the 
actual text of each law all of the contingencies and potential federal 
agency actions that the law precludes. For example, the Clean Water Act 
would have to include in its text a specific prohibition of the EPA 
unilaterally determining there is an entirely different way, outside the 
scope of the Clean Water Act, in which the EPA can regulate discharge of 
water pollution. Congress simply cannot specifically enumerate each and 
every potential contingency or preclude option with each bill. Thus, in 
attempt to ensure that corporations can patent seeds Justice Thomas has 
oddly granted agencyÕs extraordinary power to ignore laws passed by 
Congress and to implement their own regulatory regimes without concern for 
Congressional intent. It is unlikely that Thomas or the justices joining 
him understood the implications of his contorted ruling. They simply wanted 
avoid rescinding all seed patenting in the United States. However, should 
ThomasÕ contempt for congressional intent and legislative purpose continue 
as a legal trend this decision and future similar rulings could threaten 
our democratic process of creating law.



Excerpts for the Opinion

(A). Excerpts from the Justice ThomasÕ Opinion (concurring opinion by 
Justice Scalia)

. . . The 1930 PPA conferred patent protection to asexually reproduced 
plants. Significantly, nothing within either the original 1930 text of the 
statute or its recodified version in 1952 indicates that the PPAÕs 
protection for asexually reproduced plants was intended to be exclusive. 
(Emphasis added).

. . . Importantly, chapter 15 nowhere states that plant patents are the 
exclusive means of granting intellectual property protection to plants. 
Although unable to point to any language that requires, or even suggests, 
that Congress intended the PPAÕs protections to be exclusive, petitioners 
advance three reasons why the PPA should preclude assigning utility patents 
for plants. We find none of these arguments to be persuasive.

 (B). Excerpt from Justice BreyerÕs Dissent (Joined by Justice Stevens):

. . . I believe that the words "manufacture "or "composition of matter " do 
not cover these plants. That is because Congress intended the two more 
specific statutes to exclude patent protection under the Utility Patent 
Statute for the plants to which the more specific Acts directly refer. And, 
as the Court implicitly recognizes, this Court neither considered, nor 
decided, this question in Diamond v.Chakrabarty,447 U.S.303 (1980). 
Consequently, I dissent.

. . . Nothing in the history, language, or purpose of the 1970 statute 
suggests an intent to reintroduce into the scope of the general words 
"manufacture, or composition of matter " the subject matter that the PPA 
had removed, namely plants. To the contrary, any such reintroduction would 
make meaningless the two exceptions —for planting and for research —that 
Congress wrote into that Act. It is not surprising that no party argues 
that passage of the PVPA somehow enlarged the scope of the Utility Patent 
Statute.


Next Steps

The Farm Advantage case was the best opportunity available to overturn the 
1985 decision by the PTO to allow the patenting of plants. However, while 
this crucial battle was lost, the campaign to halt plant patenting is far 
from over. Potentially effective legislative and litigation efforts must be 
launched quickly to respond to this decision.

(A). Legislative Action - All that is needed to overturn the Thomas opinion 
is one sentence added to the PVPA. This sentence would simply affirm that 
the PVPA is intended by Congress to be the sole manner of gaining 
intellectual property rights over seeds. Significant pressure must be 
mounted by the farm community to make this small but crucial amendation to 
the PVPA. CTA has already been contacted by several farm and agriculture 
groups eager to launch this battle. This decision while deeply unfortunate 
does allows for a unique education campaign to farmers on the dangers of 
seed patenting. Obviously, explaining to farmers and small agricultural 
businesses that Clarence Thomas has taken away their rights to save, or 
exchange seeds is a powerful message and rallying cry. Moreover, it is 
important to note that two of the most progressive members of the court 
agreed with the Farm Advantage and CTA view of the PVPA. This should be 
helpful with the formidable task of mobilizing Democratic legislators 
behind the effort.

(B). Legal Action - There are two legal strategies that will continue to 
put pressure on plant patenting. The first such strategy is to file further 
legal challenges against the broad policy of allowing seed patents. The 
Farm Advantage case challenged the patenting of seed under only on section 
of the Patent Act (§101). However there are other sections of the Patent 
Act violated by seed patenting. These Patent Act requirements, including 
such areas as the legality of description and deposit requirements, cannot 
be legally met in the area of sexually reproducing plants. The inherent 
inability of seed patenting to conform with traditional patent law was a 
major reason Congress rejected the patenting option when passing the PVPA. 
CTA legal staff is working with other attorneys to file these subsequent 
challenges to the broad policy of the patentability of seeds.

A more narrow approach is to challenge a number of specific plant patents 
creating useful precedent for a wide ranging recission of plant patents. 
Over several years CTA worked with Vandana Shiva and other Third World 
activists to legally challenge the patents by a U.S. company, RiceTech 
Inc., on Basmati rice. Earlier this year, the challenge to that patent, 
ultimately brought by the Indian government, resulted in the rescission of 
17 out of 19 patent claims on Basmati rice.

Additionally, CTA has recently consulted on several legal challenges to 
specific plant patents. One such case was decided on August 8, 2001 when 
patents on broccoli sprouts were invalidated. The Federal District Court 
for the District of Maryland found the patents invalid because the subject 
matter, sprouts, lacked novelty. Courts, and even the PTO itself, are 
showing that patent challenges can succeed. The task for the public 
interest community is to significantly increase the number of legal 
challenges to such seed patents.


Conclusion

The Farm Advantage case was an unprecedented challenge to agribusiness and 
the whole concept of seed patenting. Marvin Redenius, the owner of Farm 
Advantage deserves our deepest appreciation for his courage and 
tenaciousness in fighting Pioneer (and then DuPont) in this multi-year 
battle. Bruce Johnson the principal attorney in the case also did an 
extraordinary job in representing Farm Advantage and defending the rights 
of farmers everywhere. CTA was proud to be involved in the case as legal 
and funding support. We also wish to recognize the American Corn Growers 
Association and National Farmers Union for joining in an Amicus brief in 
support of Farm Advantage. As the legal battles continue and the 
legislative battle begins, hopefully this case can become a national 
rallying cry for farmers, small agricultural businesses and activists 
against the corporate enclosure of the seeds of the Earth.

Here is the Nelson letter mentioned earlier.

As a family farmer, I urge you to defend a grower's right to save seed. In 
the recent decision (J.E.M. Ag Supply v. Pioneer Hi-bred No. 99-1996) in 
which the Supreme Court ruled that plants and seeds of those plants were 
entitled to utility patent protection, the High Court decided that 
CongressÕs intent in passing the PVPA (7 USC 2321) was irrelevant. In its 
decision the Court held that since the PVPA did not explicitly prohibit the 
patenting of plants (and seeds they produce) the Court could not assume it 
was CongressÕs intent to provide plant breeders protection solely through 
the PVPA. Now we have essentially lost the right to save seed, a right that 
has existed for millennia. A right our competitors from all over the globe 
still possess.

A farmerÕs right to save seed and for there to be free exchange of plant 
material amongst researchers has been a principle that has served this 
Nation well and was ardently supported by the founders of this Nation, 
Washington and Jefferson. Now farmers must return year after year to 
repurchase new (expensive) seed when, in the course of growing the original 
crop, I set many times more seed than I can plant the following year. Now I 
am forced to sell my grain and oilseeds at low market prices and then buy 
seed the following year at a price a dozen times higher than my globalized 
harvest fetched. Large agribusiness would not accept this and family farms 
certainly should not be forced to sell at pennies on the dollar and buy at 
a premium. This is inequitable and another financial blow to grain, cotton 
and oilseed farmers. It would also mean that Congress has broken numerous 
pledges to farmers (during Rep. Kika de la Garza hearings and hearings 
prior to the passage of the Bayh-Dole act) never to take away a farmerÕs 
right to save seeds. Were Congress to ignore this issue and grant the 
merged chemical/seed conglomerates their seed patents, farmers would move 
one step closer to becoming contract workers in the ongoing consolidation 
of American agriculture.

I urge you to amend the PVPA with a single sentence that says, "The PVPA 
shall be the exclusive means by which certificate holders prevent unlawful 
reproduction of new varieties entitled to plant certificates under this 
Act." In the alternative, I urge you to amend Title 35 of the Utility Act 
to carve out the very exemptions Congress intended to preserve in passing 
the PVPA, namely, the right of farmers to save seed despite the 
prohibitions contained in Title 35 and the right of researchers to use 
plant varieties for research to advance plant varieties.

I would appreciate a response informing me of your position on granting 
patents to seed that effectively bar seed saving and new plant variety 
research.

Sincerely,



--


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