534 U.S. 124 (2001), 99-1996, J. E. M. Ag Supply, Inc. v. Pioneer Hi-Breed International, Inc.

Docket Nº:Case No. 99-1996
Citation:534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508, 70 U.S.L.W. 4032
Party Name:J. E. M. AG SUPPLY, INC., dba FARM ADVANTAGE, INC., et al. v. PIONEER HI-BRED INTERNATIONAL, INC.
Case Date:December 10, 2001
Court:United States Supreme Court
 
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534 U.S. 124 (2001)

122 S.Ct. 593, 151 L.Ed.2d 508, 70 U.S.L.W. 4032

J. E. M. AG SUPPLY, INC., dba FARM ADVANTAGE, INC., et al.

v.

PIONEER HI-BRED INTERNATIONAL, INC.

Case No. 99-1996

United States Supreme Court

December 10, 2001

Argued October 3, 2001

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Syllabus

Respondent Pioneer Hi-Bred International, Inc. (Pioneer), holds 17 utility patents issued under 35 U.S.C. §101 that cover the manufacture, use, sale, and offer for sale of its inbred and 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, and prohibits using such seed for propagation or seed multiplication or for the production or development of a hybrid or different seed variety. Petitioner 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. Pioneer filed this patent infringement suit against Farm Advantage and distributors and customers of Farm Advantage (collectively Farm Advantage or petitioners). Farm Advantage filed a patent invalidity counterclaim, arguing that sexually reproducing plants, such as Pioneer's corn plants, are not patentable subject matter within §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 because these statutes are more specific than §101, and thus each carves out subject matter from §101 for special treatment. The District Court granted Pioneer summary judgment. Relying on this Court's broad construction of §101 in Diamond v. Chakrabarty, 447 U.S. 303, the District Court held that §101 clearly covers plant life. It also held that in enacting the PPA and the PVPA, Congress neither expressly nor implicitly removed plants from § 101's subject matter. In particular, the District Court noted that Congress did not implicitly repeal §101 by passing the more specific PVPA because there was no irreconcilable conflict between the two statutes. The Federal Circuit affirmed.

Held:

Newly developed plant breeds fall within the subject matter of 101, and neither the PPA nor the PVPA limits the scope of § 101's coverage. Pp. 130-146.

(a) In approaching the question presented here, this Court is mindful that it has already recognized that § 101's language is extremely broad and has concluded that living things are patentable under that provision,

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Chakrabarty, supra, at 308, 313, 315. Since 1985, the Patent and Trademark Office (PTO) has had an unbroken practice of conferring utility patents for plants. Nonetheless, petitioners argue that the PPA and the PVPA are the exclusive means of protecting new varieties of plants, and so awarding utility patents for plants upsets the scheme contemplated by Congress. Pp. 130-132.

(b) Neither the PPA's original nor its recodified text indicates that its protection for asexually reproduced plants was intended to be exclusive. The 1930 PPA amended the general patent provision to protect only the asexual reproduction of a plant. And Congress' 1952 revision, which placed plant patents into a separate chapter 15, was only a housekeeping measure that did not change the substantive rights or the relaxed requirements for such patents. Plant patents under the PPA thus continue to have very limited coverage and less stringent requirements than §101 utility patents. Importantly, chapter 15 nowhere states that plant patents are the exclusive means of granting intellectual property protection to plants. The arguments that petitioners advance for why the PPA should preclude assigning utility patents for plants are unpersuasive because petitioners fail to take account of the forward-looking perspective of the utility patent statute and the reality of plant breeding in 1930. Pp. 132-138.

(c) That the PVPA specifically authorizes limited patent-like protection for certain sexually reproduced plants does not evidence Congress' intent to deny broader §101 utility patent protection for such plants. While the PVPA creates a comprehensive statutory scheme with respect to its particular protections and subject matter, giving limited protection to plant varieties that are new, distinct, uniform, and stable, nowhere does it restrict the scope of patentable subject matter under §101. The PVPA contains no statement of exclusivity. Furthermore, at the time the PVPA was enacted, the PTO had already issued numerous utility patents for hybrid plant processes, which reaffirms that such material was within § 101's scope. Petitioners also err in arguing that the PVPA altered § 101's subject-matter coverage by implication. Repeal by implication requires that the earlier and later statutes be irreconcilable, Morton v. Mancari, 417 U.S. 535, 550. The differences in the requirements for, and coverage of, utility patents and PVPA plant variety certificates, however, do not present irreconcilable conflicts because the requirements for a §101 utility patent are more stringent than those for a PVP certificate, and the protections afforded by a utility patent are greater than those afforded by a PVP certificate. Petitioners' suggestion that dual protection cannot exist when statutes overlap and purport to protect the same commercially valuable attribute or thing is rejected as well. This Court has given effect to two overlapping

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statutes, so long as each reaches some distinct cases, see Connecticut Nat. Bank v. Germain, 503 U.S. 249, 253, and it has allowed dual protection in other intellectual property cases, see, e. g., Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484. In this case, many plant varieties that are unable to satisfy § 101's stringent requirements might still qualify for the PVPA's lesser protections. Pp. 138-144.

(d) The PTO has assigned utility patents for plants for at least 16 years, and there has been no indication from either Congress or agencies with expertise that such coverage is inconsistent with the PVPA or the PPA. Congress has not only failed to pass legislation indicating that it disagrees with the PTO's interpretation of § 101; it has even recognized the availability of utility patents for plants. Pp. 144-145.

200 F.3d 1374, affirmed.

Thomas, J., delivered the opinion of the Court, in which Rehnquist, C. J., and Scalia, Kennedy, Souter, and Ginsburg, JJ., joined. Scalia, J., filed a concurring opinion, post, p. 146. Breyer, J., filed a dissenting opinion, in which Stevens, J., joined, post, p. 147. O'Connor, J., took no part in the consideration or decision of the case.

Bruce E. Johnson argued the cause for petitioners. With him on the briefs was S. P. DeVolder.

Edmund J. Sease argued the cause for respondent. With him on the brief were Herbert H. Jervis, Daniel J. Cosgrove, and Richard G. Taranto.

Deputy Solicitor General Wallace argued the cause for the United States as amicus curiae urging affirmance. With him on the brief were Solicitor General Olson, Acting Assistant Attorney General Schiffer, Austin C. Schlick, Barbara Biddle, Alfred Mollin, John M. Whealan, Bruce J. Chasan, Stephen Walsh, and James Michael Kelly. [*]

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Justice Thomas delivered the opinion of the Court.

This case presents the question whether utility patents may be issued for plants under 35 U.S.C. § 101 (1994 ed.), or whether the Plant Variety Protection Act, 84 Stat. 1542, as amended, 7 U.S.C. § 2321 et seq., and the Plant Patent Act of 1930, 35 U.S.C. §§ 161-164 (1994 ed. and Supp. V), are the exclusive means of obtaining a federal statutory right to exclude others from reproducing, selling, or using plants or plant varieties. We hold that utility patents may be issued for plants.

I

The United States Patent and Trademark Office (PTO) has issued some 1,800 utility patents for plants, plant parts, and seeds pursuant to 35 U.S.C. § 101. Seventeen of these patents are held by respondent Pioneer Hi-Bred International, Inc. (Pioneer). Pioneer's patents cover the manufacture, use, sale, and offer for sale of the company's inbred and hybrid corn seed products. A patent for an inbred corn line protects both the seeds and plants of the inbred line and the hybrids produced by crossing the protected inbred line with another corn line. See, e. g., U.S. Patent No. 5,506,367, col. 3, App. 42. A hybrid plant patent protects the plant, its seeds, variants, mutants, and trivial modifications of the hybrid. See U.S. Patent No. 5,491,295, cols. 2-3, id., at 29-30.

Pedigree inbred corn plants are developed by crossing corn plants with desirable characteristics and then inbreeding the resulting plants for several generations until the resulting plant line is homogenous. Inbreds are often weak

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and have a low yield; their value lies primarily in their use for making hybrids. See, e. g., U.S. Patent No. 5,506,367, col. 6, id., at 43 (describing the traits and applications of the inbred corn line PHP38 by reference to the qualities exhibited in hybrid plants created with PHP38).

Hybrid seeds are produced by crossing two inbred corn plants and are especially valuable because they produce strong and vibrant hybrid plants with selected highly desirable characteristics. For instance, Pioneer's hybrid corn plant 3394 is "characterized by superior yield for maturity, excellent seedling vigor, very good roots and stalks, and exceptional stay green." U.S. Patent No. 5,491,295, cols. 2-3, id., at 29-30. Hybrid plants, however, generally do not reproduce true-to-type, i. e., seeds produced by a hybrid plant do not reliably yield plants with the same hybrid...

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