## Facts

- Monsanto owned patents covering genetically engineered “Roundup Ready” soybeans that survive glyphosate herbicide; the trait is inherited by harvested soybeans.
- Monsanto sold Roundup Ready seed under a Technology/License Agreement allowing a grower to plant the purchased seed for one season, sell or consume the crop, and forbidding saving harvested soybeans for replanting.
- Vernon Hugh Bowman, an Indiana soybean farmer, bought licensed Roundup Ready seed for his first crop each year and complied with the one-season restriction.
- For a second late-season crop, Bowman bought “commodity soybeans” from a grain elevator, planted them, and sprayed glyphosate to kill non–Roundup Ready plants.
- Bowman harvested the surviving soybeans (largely containing the patented trait) and saved part of that harvest to replant in later seasons, repeating this practice for multiple years.
- Monsanto sued Bowman for patent infringement based on his planting and saving of progeny Roundup Ready seeds.

## Issues

1. Whether patent exhaustion from an authorized sale of patented seeds permits the purchaser to reproduce the patented invention by planting and harvesting and then replanting progeny seeds without the patentee’s permission.

## Decision

- The Supreme Court affirmed judgment for Monsanto in a unanimous opinion by Justice Kagan.
- Patent exhaustion applied to the particular seeds sold in authorized sales but did not permit Bowman to create new generations of patented seeds.
- Bowman’s conduct constituted an unauthorized “making” of the patented invention under 35 U.S.C. § 271(a) and therefore infringed.
- The Court declined to create a general exhaustion-based exception for self-replicating technologies and noted that broader policy changes are for Congress.

## Legal Principles

- An authorized sale of a patented article exhausts the patentee’s rights in that specific item, permitting its use or resale.
- Patent exhaustion does not authorize a buyer to make new copies of the patented invention; the right to exclude others from “making” remains enforceable.
- Planting patented seed and harvesting progeny for replanting is “making” new patented articles, not merely using the purchased item.
- A purchaser who actively causes replication and exploits the resulting copies cannot invoke exhaustion to avoid infringement liability.

## Conclusion

The Court held that although authorized sales exhausted Monsanto’s patent rights in the seeds sold, exhaustion did not permit Bowman to reproduce the patented soybeans by planting commodity beans, harvesting progeny, and saving seed for replanting; that conduct was infringement because it involved making new patented articles without permission.


Bowman v. Monsanto Co., 569 U.S. 278 (2013)