ELR Citation: 43 ELR 20104
No(s). 11-796 (U.S. May 13, 2013)

The U.S. Supreme Court held that patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission. A seed manufacturer invented and patented Roundup Ready soybean seeds, which contain a genetic alteration that allows them to survive exposure to the herbicide glyphosate. It sells the seeds subject to a licensing agreement that permits farmers to plant the purchased seed in one, and only one, growing season. Growers may consume or sell the resulting crops, but may not save any of the harvested soybeans for replanting. This case arose after a farmer purchased soybeans intended for consumption from a grain elevator, planted them, treated the plants with glyphosate to kill all plants without the Roundup Ready trait, harvested the resulting soybeans that contained that trait, and saved some of these harvested seeds to use in the following season. After discovering this practice, the manufacturer sued the farmer for patent infringement. The farmer raised the defense of patent exhaustion, which gives the purchaser of a patented article, or any subsequent owner, the right to use or resell that article. But the doctrine restricts the patentee’s rights only as to the “particular article” sold; it leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item. Accordingly, by planting and harvesting the patented seeds, the farmer made additional copies of the manufacturer's patented invention. His conduct thus falls outside the protections of patent exhaustion. Were this otherwise, the manufacturer's patent would provide little benefit. Kagan, J., delivered the opinion for a unanimous Court.