No. 99-1996
In the Supreme Court of the United States
J.E.M. AG SUPPLY, INC., DBA FARM ADVANTAGE, INC., ET AL., PETITIONERS
v.
PIONEER HI-BRED INTERNATIONAL, INC.
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE
SETH P. WAXMAN
Solicitor General
Counsel of Record
DAVID W. OGDEN
Assistant Solicitor General
LAWRENCE G. WALLACE
Deputy Solicitor General
AUSTIN C. SCHLICK
Assistant to the Solicitor
General
BARBARA BIDDLE
ALFRED MOLLIN
Attorneys
Department of Justice
Washington, D.C. 20530-0001
(202) 514-2217
ALBIN S. DROST
Acting General Counsel
JOHN M. WHEALAN
Solicitor
MARY CRITHARIAS
STEPHEN WALSH
Assistant Solicitors
United States Patent and
Trademark Office
Washington, D.C. 20231
QUESTION PRESENTED
Whether sexually reproduced plants are patentable subject matter under 35
U.S.C. 101.
In the Supreme Court of the United States
No. 99-1996
J.E.M. AG SUPPLY, INC., DBA FARM ADVANTAGE, INC., ET AL., PETITIONERS
v.
PIONEER HI-BRED INTERNATIONAL, INC.
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE
This brief is submitted in response to the Court's order inviting the Solicitor
General to express the views of the United States.
STATEMENT
1. Three different statutory schemes are relevant to this case. First, 35
U.S.C. 101 provides in pertinent part that "[w]hoever invents or discovers
any new and useful process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of [Title 35]." In Ex parte
Hibberd, 227 U.S.P.Q. (BNA) 443 (Bd. Pat. App. & Interf. 1985), the
Board of Appeals and Interferences of the Patent and Trademark Office (PTO)
held that sexually reproduced plants (i.e., plants reproduced from seeds)
are eligible for patent protection under Section 101. Id. at 443-447. During
the 15 years since that decision, the PTO has issued hundreds of so-called
"utility patents" protecting sexually reproduced plants.
Under the Plant Patent Act of 1930 (PPA), ch. 312, 46 Stat. 376 (35 U.S.C.
161-164 (1994 & Supp. IV 1998)), the PTO may grant plant patents covering
new and distinct varieties of asexually reproduced plants. Asexually reproduced
plants are plants that are reproduced from a single parent, such as by grafting,
budding, cutting, rooting, or layering. Section 161 of Title 35 provides:
Whoever invents or discovers and asexually reproduces any distinct and new
variety of plant, including cultivated sports, mutants, hybrids, and newly
found seedlings, other than a tuber propagated plant or a plant found in
an uncultivated state, may obtain a patent therefor, subject to the conditions
and requirements of this title.
35 U.S.C. 161. Section 161 further provides that, except as otherwise provided,
"[t]he provisions of [Title 35] relating to patents for inventions
shall apply to patents for plants." 35 U.S.C. 161. The PTO has granted
more than 10,000 plant patents under Section 161.
Finally, the Plant Variety Protection Act (PVPA), Pub. L. No. 91-577, §
42, 84 Stat. 1547, provides statutory protection to novel varieties of sexually
reproduced plants that meet statutory criteria of distinctness, uniformity,
and stability. 7 U.S.C. 2402(a) (1994 & Supp. IV 1998). In providing
protection for sexually reproduced plants under the PVPA, Congress established
a regime, separate from the patent laws, under which the Department of Agriculture
issues plant variety certificates to breeders of novel varieties of sexually
reproduced plants. See 7 U.S.C. 2483 (1994 & Supp. IV 1998) ("Contents
and term of plant variety protection").
2. Respondent is the world's largest producer of seed corn, and holds utility
patents granted, under Section 101 of Title 35, for sexually produced corn
hybrids. Respondent filed suit against petitioners, alleging that they infringed
respondent's patents covering 17 corn seed products by making, using, and
selling or offering for sale seed corn of these patented hybrids. Petitioners
are not authorized sales representatives of respondent. Pet. App. 14-15.
Petitioners asserted, among other defenses, the defense of patent invalidity.
Petitioners also asserted a counterclaim seeking a declaratory judgment
that all of the patents relied upon in respondent's complaint are invalid.
Petitioners moved for summary judgment on their counterclaim, arguing that
patents directed to sexually reproduced plants are not authorized under
Section 101, and that Congress intended the PPA and PVPA to be the exclusive
means of securing protection for plants. Pet. App. 15-16.
The district court denied petitioners' motion for summary judgment and held
that Section 101 authorizes the issuance of patents covering sexually reproduced
plants. Pet. App. 13-39. Relying upon this Court's decision in Diamond v.
Chakrabarty, 447 U.S. 303 (1980), the district court concluded that the
text of Section 101 authorizes the grant of patents covering plants, Pet.
App. 22, and that Congress's intention in adopting the PPA and PVPA was
not to limit Section 101, but rather "to extend patent protection to
an area [historically] not often able to meet the requirements" for
protection under Section 101, id. at 29.
3. On interlocutory appeal under 28 U.S.C. 1292(b), the court of appeals
affirmed. Starting from the premise that "Congress plainly contemplated
that [Section 101] would be given wide scope," Pet. App. 4 (quoting
Chakrabarty, 447 U.S. at 308), the court of appeals found that nothing in
the text of Section 101, the PPA, or the PVPA narrows that scope by excluding
plants from eligibility for protection, id. at 6-8. Nor did the court of
appeals find any conflict between patent protection for sexually reproduced
plants under Section 101 and certification of such plants under the PVPA.
The court determined "that the asserted conflict [between the statutes]
is simply the difference in the rights and obligations imposed," not
any difficulty in applying the two statutes simultaneously. Id. at 8-9.1
DISCUSSION
The decision of the court of appeals is correct, and is not in conflict
with any decision of this Court or any other court of appeals. Further review
by this Court is not warranted.
1. This Court held in Chakrabarty, supra, that Congress's grant of patent
authority in Section 101 should be broadly construed. Section 101 provides
that "[w]hoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter * * * may obtain a patent therefor."
35 U.S.C. 101. The Court has defined "manufacture" "to mean
'the production of articles for use from raw or prepared materials by giving
to these materials new forms, qualities, properties, or combinations.'"
Chakrabarty, 447 U.S. at 308 (quoting American Fruit Growers, Inc. v. Brogdex
Co., 283 U.S. 1, 11 (1931)). The phrase "composition of matter"
reaches "all compositions of two or more substances and . . . all composite
articles, whether they be the results of chemical union, or of mechanical
mixture, or whether they be gases, fluids, powders or solids." Ibid.
(internal quotation marks omitted). "In choosing such expansive terms,
* * * modified by the comprehensive 'any,' Congress plainly contemplated
that the patent laws would be given wide scope." Ibid.
The Chakrabarty Court also reviewed the legislative history of Section 101,
447 U.S. at 308-309, and concluded that it confirms Congress's understanding
that the patentable subject matter reached by Section 101 "include[s]
anything under the sun that is made by man," id. at 309 (quoting S.
Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No. 1923, 82d Cong.,
2d Sess. 6 (1952)), provided the other requirements for patentability are
satisfied.
In light of the text of Section 101 and its history, the Court held in Chakrabarty
that a nonnatural, genetically engineered bacterium capable of breaking
down multiple components of crude oil "plainly" was within the
subject matter of patent under Section 101, being either a "manufacture"
or "a composition of matter." 447 U.S. at 305, 309-310. The same
reasoning applies to plants, such as the patented corn hybrids at issue
in this case. Where a plant has "markedly different characteristics
from any found in nature" (which is not in dispute for purposes of
this petition) and "ha[s] the potential for significant utility"
(also not at issue here), the plant "is patentable subject matter under
§ 101." Id. at 310; see also id. at 311 (rejecting argument that
the terms "manufacture" and "composition of matter"
do not include living things). Accordingly, novel plants made by human intervention,
as well as seeds and tissue cultures from those plants, are eligible for
patent protection, subject to the conditions and requirements of Title 35.
2. Petitioners base their attempt to overcome Chakrabarty upon Congress's
extension of specific protection to plants through the PPA and PVPA. See
Pet. 7-30. Petitioners argue that Congress has chosen to limit patent and
patent-like protection for plants, unlike bacteria and other living things,
to the specific protections provided under the PPA and PVPA. Once again,
however, the contrary holding of this Court in Chakrabarty is controlling.
As petitioner in Chakrabarty, the United States similarly argued that the
adoption of specific protections for plants in the PPA and PVPA, and the
surrounding legislative history, demonstrated Congress's understanding that
Title 35 would not otherwise afford patent protection to plants, and that
the PPA and PVPA would be the exclusive means of securing patent or patent-like
protection for plants. Brief for Pet. at 21-37 (No. 79-136). This Court
rejected the government's submission, and we see no reason to revisit the
issue in this case.
In reaching the conclusion that the PPA and PVPA do not impliedly establish
an exclusion from the scope of patentable subject matter under Section 101,
this Court reviewed the history of both statutes. The Court explained that,
when Congress enacted the PPA in 1930, it sought to address two restrictions
in the patent laws that were then thought to preclude protection for asexually
reproduced plants as a practical matter. The first restriction was the belief,
in some quarters, that plants were products of nature rather than of man
for purposes of patent law, and remained so even if artificially bred. Chakrabarty,
447 U.S. at 311-312. The second restriction was the requirement that the
subject of the patent be described in writing in sufficient detail to allow
reproduction of the invention, a requirement that it was thought impossible
to satisfy in the case of plants. Id. at 312; see 35 U.S.C. 33 (1925) ("inventor
* * * shall file * * * a written description of the [invention]");
35 U.S.C. 112 (current codification of "written description" requirement).
Congress resolved both issues in favor of patentability through the PPA,
thereby ensuring that patent protection would be afforded to innovations
in plant breeding notwithstanding the difficulties in obtaining protection
under Section 101. Accordingly, the Court held in Chakrabarty that the legislative
history of the PPA does not reveal a congressional understanding that plants
necessarily are, or thereafter would be, outside the broad scope of patentable
subject matter under Section 101. 447 U.S. at 312-313; see generally Barr
v. United States, 324 U.S. 83, 90 (1945) ("[I]f Congress has made a
choice of language which fairly brings a given situation within a statute,
it is unimportant that the particular application may not have been contemplated
by the legislators.").
The Court similarly held in Chakrabarty that the PVPA was enacted to reflect
advances in breeding techniques that made it possible to reproduce new varieties
of plants, true-to-type, through seeds.2 Again, the Court concluded that
nothing in the language or legislative history of the PVPA reflects a congressional
view that plants were or would be categorically ineligible for protection
under Section 101, in the event that eligibility could be established in
accordance with the terms of Section 101 and Title 35. Chakrabarty, 447
U.S. at 313.
The dissenting Justices in Chakrabarty, like the government in that case
and petitioners here, argued that, when it adopted the PPA and PVPA, "Congress
thought it had to legislate in order to make agricultural 'human-made inventions'
patentable." 447 U.S. at 321. Accordingly, the dissenters concluded
that such agricultural inventions are protectable only insofar as they come
within the scope of the PPA or PVPA. Id. at 318-322 (Brennan, J., dissenting).
The dissenters' view, of course, was rejected. Petitioner does not suggest
any justification for reopening that decision. This Court, moreover, has
consistently recognized that the doctrine of stare decisis has special force
in matters of statutory interpretation, which Congress remains free to address
through amending legislation. See, e.g., Hilton v. South Carolina Pub. Rys.
Comm'n, 502 U.S. 197, 205 (1991) ("stare decisis is most compelling"
where "a pure question of statutory construction" is involved).
3. Petitioner argues (Pet. 24-27) that interpreting Section 101 as allowing
utility patent protection for sexually reproduced plants that otherwise
meet the requirements of Title 35 would create "[i]rreconcilable [c]onflicts"
(Pet. 24) with the PVPA, so that Congress should be presumed to have intended
that protection under Section 101 would not be available. As both the district
court and the court of appeals determined, however, the asserted "conflicts"
between Section 101 and the PVPA are merely "difference[s]" in
the requirements for obtaining protection, the administrative schemes, and
the scope of the protection afforded. Pet. App. 9, 30-34. While some overlap
is possible, petitioners do not establish (Pet. 24-27) that implementation
of one scheme precludes implementation of the other.
Nor does implementation of the provisions of Section 101 in the context
of sexually reproduced plants nullify the PVPA. Section 101 and the PVPA
instead provide distinct and complementary protection. See generally Watt
v. Alaska, 451 U.S. 259, 267 (1981) ("We must read the statutes to
give effect to each if we can do so while preserving their sense and purpose.");
United States v. Borden Co., 308 U.S. 188, 198-199 (1939) ("When there
are two acts upon the same subject, the rule is to give effect to both if
possible. * * * It is not sufficient * * * to establish that subsequent
laws cover some or even all of the cases provided for by [the prior act]
* * *. There must be a positive repugnancy between the provisions of the
new law, and those of the old.") (citations and internal quotation
marks omitted).3
For instance, an invention or discovery must be new, useful, and not obvious
to receive utility patent protection under Section 101. 35 U.S.C. 101-103
(1994 & Supp. IV 1998). Plant variety protection certificates, however,
may be issued with respect to sexually reproduced plant varieties that are
new, distinct, uniform, and stable. 7 U.S.C. 2402 (1994 & Supp. IV 1998).
Thus, as the name indicates, utility patents under Section 101 require usefulness,
whereas the PVPA does not. The characteristics of the plant variety protected
under the PVPA also may not meet the requirement of non-obviousness that
applies to a utility patent.
To obtain utility patent protection, moreover, the applicant must provide
a written description of how to make and use the disclosed invention. 35
U.S.C. 112. That disclosure requirement benefits the public by ensuring
that others will be able to make, use, and build upon patented discoveries
once the patent expires. (As discussed above, the difficulty plant breeders
had in complying with the disclosure requirement led Congress to adopt the
PPA's less-rigorous requirement that the applicant's written description
must be "as complete as is reasonably possible." 35 U.S.C. 162.)
By contrast with the requirements for issuance of a patent under both Section
101 and the PPA, the PVPA requires only a description of the plant, along
with a deposit of seed in a public depository. 7 U.S.C. 2422.4
Although more difficult to obtain, utility patent protection for sexually
reproduced plants and seeds under Section 101 is broader in scope than the
protection afforded by a plant variety protection certificate under the
PVPA. The protection afforded by a certificate is limited to the particular
variety described therein. See 7 U.S.C. 2402(a) (1994 & Supp. IV 1998).
A utility patent, by contrast, may be granted to protect discoveries embracing
a class or species of plants, and does not have to be limited to a particular
plant variety.5 The PVPA also establishes several exemptions to infringement
that do not apply to utility patents. The exclusive rights granted by a
certificate of plant variety protection are subject to a prior use clause
(7 U.S.C. 2542), a research exemption (7 U.S.C. 2544), and a crop exemption
for farmers (7 U.S.C. 2543), all of which may limit the breeder's ability
to recover an economic return.
For those applicants who can comply with the stringent requirements for
patentability under Section 101, utility patent protection offers more extensive
protection than the PVPA. Limiting the scope of Section 101 to exclude sexually
reproduced plants-thus denying that broader protection-would be contrary
to congressional intent (as interpreted in Chakrabarty, supra) and would
reduce incentives for research and development in the agricultural and horticultural
arts.
4. Finally, citing Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir.
1976), petitioners suggest that the court of appeals wrongly approved "[d]ual
protection of the same invention." Pet. 26-27. Ropat held that dual
patents (a design patent and a utility patent) could not be issued on the
same aspect of the same invention. 535 F.2d at 381. The court of appeals
in that case simply applied the settled rule that, in order to avoid prolonging
the period of a patent monopoly beyond that intended by Congress, "two
valid patents for the same invention cannot be granted either to the same
or to a different party." Miller v. Eagle Mfg. Co., 151 U.S. 186, 197
(1894).
Here, the only relevant patents held by respondent are utility patents issued
under Section 101, and petitioners' challenge to their validity is based
on the argument that respondent should have secured protection under the
PVPA instead. See Pet. 3-5. The record thus indicates that respondent holds
only one patent for each invention, and the rule against "double patenting"
is not implicated.
CONCLUSION
The petition for a writ of certiorari should be denied.
Respectfully submitted.
SETH P. WAXMAN
Solicitor General
DAVID W. OGDEN
Assistant Solicitor General
LAWRENCE G. WALLACE
Deputy Solicitor General
AUSTIN C. SCHLICK
Assistant to the Solicitor
General
BARBARA BIDDLE
ALFRED MOLLIN
ALBIN S. DROST
Acting General Counsel
JOHN M. WHEALAN
Solicitor
MARY CRITHARIAS
STEPHEN WALSH
Assistant Solicitors
United States Patent and
Trademark Office
Attorneys
JANUARY 2001
1 The court of appeals declined to address other claims regarding the validity
of respondent's particular plant patents, which the district court had not
considered and petitioners do not advance before this Court. Pet. App. 9.
2 In true-to-type reproduction, the plant inherits genetic characteristics
identical to those of the parent plant.
3 Petitioners' reliance (Pet. 12-14) upon the Court's prioritization of
conflicting statutes in FDA v. Brown & Williamson Tobacco Corp., 120
S. Ct. 1291, 1301 (2000), is thus misplaced.
4 The seed deposit requirement ensures that the statutory criteria of uniformity
and stability are satisfied, but, unlike the description requirements of
Title 35, does not suffice to place the invention in the public domain after
the term of protection expires.
5 For example, the PTO has issued a utility patent covering rice plants
with increased resistance to herbicides. See U.S. Patent No. 5,545,822A
(Aug. 13, 1996). The broader coverage available through Section 101 is increasingly
important in light of advances in genetic engineering, such as use of recombinant
DNA technology to develop utility-patented plants having improved insecticidal
properties. See U.S. Patent No. 5,977,442A (Nov. 2, 1999). The breadth of
coverage afforded by utility patents may be essential in some circumstances
to protect plant inventions produced by genetic engineering.