J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.

PETITIONER: J. E. M. Ag Supply, Inc.
RESPONDENT: Pioneer Hi-Bred International, Inc.
LOCATION: Los Angeles City Hall

DOCKET NO.: 99-1996
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 534 US 124 (2001)
ARGUED: Oct 03, 2001
DECIDED: Dec 10, 2001

ADVOCATES:
Bruce E. Johnson - Argued the cause for the petitioners
Edmund J. Sease - Argued the cause for the respondent
Lawrence G. Wallace - Department of Justice, on behalf of the United States, as amicus curiae, in support of the respondent

Facts of the case

Pioneer Hi-Bred International, Inc. holds 17 utility patents issued under 35 USC section 101 that cover the manufacture, use, sale, and offer for sale of its hybrid corn seed products. Pioneer sells its patented hybrid seeds under a limited label license that allows only the production of grain and/or forage. J. E. M. Ag Supply, Inc., doing business as Farm Advantage, Inc., bought patented seeds from Pioneer in bags bearing the license agreement and then resold the bags. Subsequently, Pioneer filed a patent infringement suit. In response, Farm Advantage filed a patent invalidity counterclaim, arguing that sexually reproducing plants, such as Pioneer's corn plants, are not patentable subject matter within section 101. Farm Advantage maintained that the Plant Patent Act of 1930 (PPA) and the Plant Variety Protection Act (PVPA) set forth the exclusive statutory means for protecting plant life. The District Court granted Pioneer summary judgment. The court held that section 101 clearly covers plant life and that in enacting the PPA and the PVPA, Congress neither expressly nor implicitly removed plants from section 101's subject matter. The Court of Appeals affirmed.

Question

May utility patents be issued for plants under 35 USC section 101?

Media for J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.

Audio Transcription for Oral Argument - October 03, 2001 in J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.

Audio Transcription for Opinion Announcement - December 10, 2001 in J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.

William H. Rehnquist:

J.E.M. Ag Supply, Inc. versus Pioneer Hi-Bred International will be announced by Justice Thomas.

Clarence Thomas:

This case comes to us on a writ of certiorari to the United States Court of Appeals for the Federal Circuit.

Respondent, Pioneer Hi-Bred International, holds 17 utility patents for its inbred and hybrid corn seeds.

Petitioner, J.E.M. Ag Supply, doing business as Farm Advantage, purchase Pioneer’s patent of hybrid seeds and reslae them in violation of the limited label license attached to the bags of seeds.

Pioneer brought suit for patent infringement against Farm Advantage.

Farm Advantage counterclaimed with patent invalidity arguing that sexually reproducing plant such as hybrid corn plants at issue are not patenable subject matter under section 101 of tittle 35 of the U.S. Code.

The District Court granted summary judgment to Pioneer and the Court of Appeals affirmed.

In an opinion filed with the Clerk today, we also affirm.

This Court has interpreted section 101’s subject matter terms broadly in Diamond versus Chakrabarty.

In that case, we held that Section 101’s term manufacture or composition of matter include living things.

The Board of Patent Appeals and Interference, subsequently held that plants are within the coverage of section 101.

Farm Advantage argues however, that two more specific statutes the Plant Patent Act of 1930, the PPA and the Plant Variety Protection Act, the PVPA, foreclose utility patent protection for plants.

Today we hold that these plants specific statutes do not diminish the breadth of the subject matter terms of Section 101.

The PPA and the PVPA each have different requirements and scope of coverage.

Neither of these plants specific statutes conflicts with conferring utility patent protection to plants.

As utility patents have more stringent requirements and generally more extensive protection.

Moreover, we recognized that the Patent and Trademark Office has assigned over 1800 utility patents for new plant breeds in the last 16 years, and there has been no indication from either Congress or agencies with expertise that such coverage is inconsistent with the PPA or the PVPA.

We decline to narrow the reach of Section 101 where congress has given us no indication that it intends this result.

To do so it would be inconsistent with the forward-looking nature of the patent law.

Justice Scalia has filed a concurring opinion; Justice Breyer has filed a dissenting opinion in which Justice Stevens has joined.

Justice O’Connor took no part in the consideration or decision of this case.