Loading...
 

J.E.M. Ag Supply dba Farm Advantage v. Pioneer Hi-Bred Intl.

J.E.M. AG Supply, Inc., dba Farm Advantage, Inc. v. Pioneer Hi-Bred International, Inc.
534 U.S. 124, 122 S.Ct. 593
Facts: Pioneer created and sold genetically modified seeds for which it held patents. Pioneer sold these seed under a limited label license that allowed the purchaser to only use the seed for the production of grain, and prohibited the use of the seeds for either seed propagation or the production or development of a hybrid or different seed variety. J.E.M. bought some of these seeds the then resold the bags. Pioneer filed a patent infringement claim that stated that J.E.M. had been infringing Pioneer’s patents by “making, using, selling, or offering for salecorn seeds of the … hybrids in infringement of these patents-in-suit.” J.E.M. countered with a patent invalidity claim, claiming that the Plant Patent Act of 1930 (PPA) and the Plant Variety Protection Act (PVPA) set the exclusive statutory means for protecting plant life because they are more specific than 35 U.S.C. § 101, which sets the standard for patentability.
Procedural History: Pioneer initiated a claim against J.E.M. for patent infringement. J.E.M. counterclaimed for patent invalidity. The District Court granted Pioneer summary judgment. J.E.M. filed an interlocutory appeal. The U.S. Court of Appeals for the Federal Circuit affirmed. SCOTUS granted certiorari.
Holding: Notwithstanding the higher standards for protecting plant life set forth by the PPA and the PVPA, newly developed plant strains are patentable subject matter. The PPA was passed in 1930, recodified in 1952 into 35 U.S.C. §§ 161-164, and the realities of plant breeding in those years were far different than today. Scientific genetic modification of plants was only a dream in those days. The PPA limited protection to the asexual reproduction of plants, which occurs by “grafting, budding, or the like, and produces an offspring with a genetic combination identical to that of the single parent – essentially a clone.” The PPA issues a “plant patent” which follows the general patentability requirements of § 101, but with the exclusion of the description requirement. Also, the PPA does not state that plant patents are the only means by which intellectual property rights are obtained in plants.
The PVPA provides “limited patent-like protection for certain sexually reproduced plants.” However the PVPA does not state that it is the only federal means for protecting intellectual property rights in sexually reproduced plants, similar to the PPA not claiming exclusive protection for asexual reproduction of plants. Also, a PVPA patent is easier to obtain than a general utility patent. This should make it obvious that a utility patent provides greater protection for the resulting plant than a PVPA.
Analysis: Ultimately this case is not really about the patentability of certain plants, but about a potential conflict of laws. However, the conflict was not as great as the petitioner was hoping for. Although the PPA and PVPA granted a different type of protection to plant breeders, they were not exclusive. The court plainly stated that if the PPA and PVPA were meant by Congress to be the sole means of plant patentability, then they would have plainly stated so in those statutes, or would have modified § 101. Since the Court had previously decided in Diamond v. Chakrabarty that plant life was covered by § 101, and Congress had been silent on any potential conflict or desire to modify current patentability requirements, it was found that the general requirements for patentability in § 101 applied to plant life.







Contributors to this page: strat71 .
Page last modified on Saturday 09 of May, 2009 21:52:14 GMT by strat71.
Portions © 2006-2019 by Michael Risch, Some Rights Reserved | Copyright Notice| Legal Disclaimer