Pioneer Hi-Bred Int'l v. J.E.M. AG

Decision Date19 January 2000
Docket NumberHI-BRED
Parties(Fed. Cir. 2000) PIONEERINTERNATIONAL, INC.,Plaintiff-Appellee, v. J.E.M. AG SUPPLY, INC. (doing business as Farm Advantage, Inc.), FARM ADVANTAGE, INC., LARRY BENZ, MERLE PRUETT (doing business as Siouxland Seeds, Inc.), KEVIN WOLFSWINKEL, TIM KAMSTRA, and TOM EISCHEN SEED AND CHEMICALS, Defendants-Appellants. 99-1035 DECIDED:
CourtU.S. Court of Appeals — Federal Circuit

Edmund J. Sease, Zarley, McKee, Thompte, Voorhees & Sease, P.L.C., of Des Moines, Iowa, argued for plaintiff-appellee. With him on the brief was Daniel J. Cosgrove. Of counsel on the brief was Herbert H. Jervis, Vice President & Chief Intellectual Property Counsel, Pioneer Hi-Bred International, Inc., of Johnston, Iowa.

Bruce E. Johnson, Lewis, Webster, Johnson, Van Winkle & DeVolder, L.L.P., of Des Moines, Iowa, argued for defendants-appellants. With him on the brief was S. P. DeVolder.

Warren D. Woessner, Schwegman, Lundberg, Woessner & Kluth, P.A., of Minneapolis, Minnesota, for amicus curiae American Intellectual Property Law Association.

Before MAYER, Chief Judge, NEWMAN and LOURIE, Circuit Judges.

NEWMAN, Circuit Judge.

The defendants in this patent infringement suit are J.E.M. Ag Supply, Inc. (doing business as Farm Advantage, Inc.), Larry Benz, Merle Pruett (doing business as Siouxland Seeds, Inc.), Kevin Wolfswinkel, Tim Kamstra, and Tom Eischen Seed & Chemicals. The patents in suit, owned by Pioneer Hi-Bred International, Inc., are directed to plants and seed for new varieties of hybrid and inbred corn. The United States District Court for the Northern District of Iowa, denying the defendants' motion for summary judgment, ruled that seeds and plants grown from seed, that is, sexually reproduced plants, are patentable subject matter within the scope of 35 U.S.C. 101.1 On interlocutory appeal of the denial of summary judgment under 28 U.S.C. 1292(b)2, we affirm the district court's ruling.

DISCUSSION

The district court held that the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980), in stating that "Congress intended statutory subject matter to `include anything under the sun that is made by man,'" (quoting S. Rep. No. 1979 at 5 (1952)), confirmed that there is no basis in law for excluding living things, in this case seeds and seed-grown plants and parts thereof, from the subject matter included in 101:

35 U.S.C. 101 Whoever 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 this title.

In Chakrabarty the Court dealt directly with this provision, responding to the arguments concerning patentability of Dr. Chakrabarty's new bacterium that was engineered to consume oil spills. The Court explained that the patent system is directed to the inventive works of mankind, and is not otherwise limited: "In choosing such expansive terms as `manufacture' and `composition of matter,' modified by the comprehensive `any,' Congress plainly contemplated that the patent laws would be given wide scope." 447 U.S. at 308, 206 USPQ at 197.

The defendants do not dispute that the subject matter of the patents in suit is within the scope of the Chakrabarty decision; their argument is that this decision does not apply to plants because plants were intended to be excluded from the patent system, as evidenced by the enactment of other statutes to provide protection to plants. Thus the defendants argue that seeds and seed-grown plants are excluded from Title 35 and may be protected only under the Plant Variety Protection Act, 7 U.S.C. 2321 et seq.

The district court observed that the Patent and Trademark Office has been granting patents on new and unobvious varieties of seed-grown plants for at least fifteen years. In In re Hibberd, 227 USPQ 443, 444 (Bd. Pat. App. & Interf. 1985) the Board confirmed this PTO position, rejecting the argument that "the plant-specific Acts (PPA [Plant Protection Act] and PVPA [Plant Variety Protection Act]) are the exclusive forms of protection for plant life covered by those acts." Although the defendants criticize Hibberd, the district court reached the same conclusion as did the Board. Indeed, the "increasing adaptation [of the patent laws] to the uses of society" was remarked by the Court a century earlier, in Kendall v. Winsor, 62 U.S. (21 How.) 322, 328 (1859).

The district court discerned no historical basis for excluding seed-grown plants from the scope of 101, referring to the Supreme Court's explanation of why plants were not previously deemed to be patentable: first, plants are "products of nature," and second, plants could not be described with sufficient precision to satisfy the written description requirement of the patent statute. Chakrabarty, 447 U.S. at 311, 206 USPQ at 198. Now, however, mankind is learning how to modify plants in ways unknown to nature. In addition, precision of description is no longer an insurmountable obstacle, due both to rules authorizing the deposit of new species in publicly available depositories, and advances in botanical understanding and analysis. The Court, cognizant of advances in science, has ratified the traversal of these past impediments to the compass of 101. Although there remain the traditional categories that have never been viewed as patentable subject matter, viz., laws of nature, natural phenomena, and abstract ideas, the policy underlying the patent system fosters its application to all areas of technology-based commerce.

On appeal, the defendants argue that the history of plant protection legislation shows that plants were never intended to be included in the patent statute. The defendants state that the existence of the PPA and the PVPA precludes application to plants of 35 U.S.C. 101, citing the rule of construction that a general statute must give way to a specific one. See Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 228-29, 113 USPQ 234, 237 (1957) ("specific terms prevail over the general in the same or another statute which otherwise might be controlling"). The defendants argue that the Chakrabarty decision can not overtake this rule of statutory construction, and thus that the Court's interpretation of 101 does not apply to plants because there are statutes specific to plant protection.

The district court viewed Chakrabarty as resolving the uncertainty that previously existed as to the patentability of living things, and concluded that there is no impediment to reading all of the statutes concerning plant protection in harmony. See Radzanower v. Touche Ross & Co., 426 U.S. 148, 155 (1976) ("when two statutes are capable of co-existence, it is the duty of the courts . . . to regard each as effective"). Thus the district court concluded that a person who develops a new plant variety may have recourse either to patenting under Title 35 or to registration under the PVPA.

The first statute that related specifically to plant protection was the Townsend-Purnell Plant Patent Act of 1930 (PPA), codified at 35 U.S.C. ' 161-164. This statute provided patent protection for asexually reproduced plants, and relaxed the written description requirement to accommodate the then-available modes of describing plant varieties:

161. 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...

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