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

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore MAYER, Chief Judge, NEWMAN and LOURIE; NEWMAN
Citation200 F.3d 1374
Docket NumberHI-BRED
Decision Date19 January 2000
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:

Page 1374

200 F.3d 1374 (Fed. Cir. 2000)
PIONEER HI-BRED INTERNATIONAL, 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
United States Court of Appeals for the Federal Circuit
DECIDED: January 19, 2000
Rehearing En Banc Denied March 13, 2000.

Appealed from: U.S. District Court for the Northern District of Iowa Senior Judge Donald E. O'Brien

Page 1375

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

Page 1376

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...

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11 practice notes
  • Part II
    • United States
    • Federal Register May 22, 2008
    • May 22, 2008
    ...has spoken subsequently and more specifically to the topic at hand.''); see also Pioneer Hi-Bred Int'l, Inc. v. J.E.M. AG Supply, Inc., 200 F.3d 1374, 1376-77 (Fed. Cir. 2000) (It is a basic principle of statutory construction that ``a general statute must give way to a specific one.''). Be......
  • Smithkline Beecham Corp. v. Apotex Corp., No. 03-1285.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 8, 2005
    ...Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); Pioneer Hi-Bred Int'l, Inc. v. J.E.M. Agric. Supply, Inc., 200 F.3d 1374 (Fed.Cir.2000), aff'd 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508 (2001). Paroxetine hemihydrate now appears to be the first patent litigate......
  • Smithkline Beecham Corp. v. Apotex Corp., No. 03-1285.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 23, 2004
    ...Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); Pioneer Hi-Bred Intl, Inc. v. J.E.M. Agric. Supply, Inc., 200 F.3d 1374 (Fed.Cir.2000), affd. 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508 (2001). Paroxetine hemihydrate now appears to be the first patent litigated......
  • Monsanto Co. v. Trantham, No. 00-2656 M1/BRE.
    • United States
    • United States District Courts. 6th Circuit. Western District of Tennessee
    • August 16, 2001
    ...his request for a stay of these proceedings until the Supreme Court decides the case Pioneer Hi-Bred Int'l, Inc. v. JEM Ag. Supply, 200 F.3d 1374 (Fed.Cir.2000), cert. granted ___ U.S. ___, 121 S.Ct. 1077, 148 L.Ed.2d 954 (2001). The Court denied this request on April 4, 2001, on the ground......
  • Request a trial to view additional results
10 cases
  • Smithkline Beecham Corp. v. Apotex Corp., No. 03-1285.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 8, 2005
    ...Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); Pioneer Hi-Bred Int'l, Inc. v. J.E.M. Agric. Supply, Inc., 200 F.3d 1374 (Fed.Cir.2000), aff'd 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508 (2001). Paroxetine hemihydrate now appears to be the first patent litigate......
  • Smithkline Beecham Corp. v. Apotex Corp., No. 03-1285.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 23, 2004
    ...Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980); Pioneer Hi-Bred Intl, Inc. v. J.E.M. Agric. Supply, Inc., 200 F.3d 1374 (Fed.Cir.2000), affd. 534 U.S. 124, 122 S.Ct. 593, 151 L.Ed.2d 508 (2001). Paroxetine hemihydrate now appears to be the first patent litigated......
  • Monsanto Co. v. Trantham, No. 00-2656 M1/BRE.
    • United States
    • United States District Courts. 6th Circuit. Western District of Tennessee
    • August 16, 2001
    ...his request for a stay of these proceedings until the Supreme Court decides the case Pioneer Hi-Bred Int'l, Inc. v. JEM Ag. Supply, 200 F.3d 1374 (Fed.Cir.2000), cert. granted ___ U.S. ___, 121 S.Ct. 1077, 148 L.Ed.2d 954 (2001). The Court denied this request on April 4, 2001, on the ground......
  • Plant Genetic Systems v. Dekalb Genetics Corp., No. 3:96CV2015 (DJS).
    • United States
    • United States District Courts. 2nd Circuit. United States District Court (Connecticut)
    • September 7, 2001
    ...and seed grown plants are patentable subject matter under 35 U.S.C. § 101. See Pioneer Hi-Bred International v. J.E.M. Ag Supply Inc., 200 F.3d 1374, 1378 9. Claim 9 claims "a seed of the plant of Claim 8." 10. The plaintiffs initially argued that either one of three dates should be used, b......
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