Orange Book Blog

    by Christopher P. Singer

On January 23, 2013,
a group of major universities and technology transfer offices filed an
amicus brief urging the United States
Supreme Court to affirm the Federal Circuit in Monsanto v. Bowman.  The amici argued that reversing the Federal
Circuit, which ruled that Bowman infringed Monsanto’s patents for Roundup
Ready® soybean seeds, would have a substantial negative impact on university
research directed toward artificial, progenitive technologies and the
technology transfer function that is vital to bringing such technologies to
market for the public benefit.

In their brief, amici noted that "[i]n 2009, academic
institutions performed over half (53%) of all basic research in the United
States . . . and 14% of total U.S. research and development."  In particular, amici pointed out that research into artificial, progenitive
technologies affects a wide range of areas like "stem cells, mutant genes, DNA
vectors and molecules, viral vectors, bacterial strains, RNA enzymes, cell
lines, and organic computers."  Much of
their research is performed under the auspices of the Bayh-Dole Act, which
allows universities to obtain patent protection for inventions developed with
federal funding and then license those patents to help make the inventions
accessible to the public.  Amici argued that reversing the Federal
Circuit would harm the value of patents covering artificial, progenitive
technologies, making it very difficult for universities and their technology
transfer offices to license those patents for the purpose of making them
available to the public.

Amici also argued that when Bowman used harvested soybean seeds to grow
further generations, he "made" new seeds that infringed Monsanto’s patents
because "[e]ven authorized purchasers of a patented article cannot make 'a
second creation of the patented entity.'"  Drawing on Supreme Court precedent, amici argued that "[u]nder any definition, Bowman certainly 'made' infringing seeds
in this case, even though he grew them rather than genetically engineering them
from starting materials."  Moreover, amici argued that this case did not
present any unique concerns regarding "innocent infringement" that are not
present in any other patent infringement case, and that in any event, Bowman
was not an "innocent infringer" owing to his scheme to use illegally-purchased
commodity seeds as "a cheap source of seed."

Amici signing on to the brief included the Wisconsin Alumni Research
Foundation, Association of University
Technology Managers, Association of Public and Land-grant Universities,
Association of American Universities, The Regents of the University of
California, The Board of Trustees of the University of Illinois, University of
Florida, Duke University, Emory University, University of Georgia Research
Foundation, Inc., Iowa State University of Science and Technology, NDSU
Research Foundation, University of Iowa, University of Missouri-Columbia, South
Dakota State University, NUtech Ventures, University of Nebraska-Lincoln, University of Kentucky, University of Kansas, Kansas State University, Montana
State University, and University of Delaware. 

The brief was authored by Scott P. McBride, Stephen M.
Wurth, and Caroline A. Teichner of McAndrews, Held, and Malloy, Ltd.