Respondent Pioneer Hi-Bred held patents on hybrid corn seeds. It licensed its corn seeds to…

Respondent Pioneer Hi-Bred held patents on hybrid corn seeds. It licensed its corn seeds to petitioner Farm Advantage (the business name of J.E.M. Ag) for use in growing corn, and specifically not for creating new seeds or resale. When petitioner Farm Advantage resold the seed corn, Pioneer sued for patent violation. Farm Advantage argued that the patent was invalid because the hybrid corn was not patentable subject matter. It pointed out that the Plant Patent Act of 1930 (PPA) protected only sexually reproduced plants (those grown without seeds) and that the Plant Variety Protection Act of 1970 (PUPA) gave only limited property protection to seeds that reproduced plants. Because of these specific acts, Farm Advantage claimed that the corn hybrids were not patentable subject matter under 101 of the general patent law. When the federal district court and the court of appeals ruled for Pioneer, the Supreme Court agreed to hear the case.

THOMAS, J.: .. .The question before us is whether utility patents may be issued for plants pursuant to § 101. The text of § 101 provides: “Whoever invents or discovers any new and use. ful 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.”

As this Court recognized over 20 years ago in  the language of § 101 is extremely broad. “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.” This Court thus concluded in  that living things were patentable under § 101, and held that a manmade micro-organism fell within the scope of the statute. As Congress recog-nized, “the relevant distinction was not between living and inanimate things, but between produces of nature, whether living or not, and human-made inventions.” In , the Court also rejected the argu-ment that Congress must expressly authorize protec-tion for new patentable subject matter: “It is, of course, correct that Congress, not the courts, must define the limits of patentability; but it is equally true that once Congress has spoken it is 'the province and duty of the judicial department to say what the law is.' Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed. . . . The subject-matter pro-visions of the patent law have been cast in broad terms to fulfill the constitutional and statutory goal of promoting 'the Progress of Science and the useful Arts' with all that means for the social and economic benefits envisioned by Jefferson.” Petitioners do not allege that Pioneer's patents are invalid for failure to meet the requirements for a utility patent. Nor do they dispute that plants fall within the terms of § 10I's broad language that includes “manufacture” or “composition of mat-ter.” Rather, petitioners argue that the PPA and PVPA provide the exclusive means of protecting new varieties of plants, and so awarding utility patents for plants upsets the scheme contemplated by Congress. Petitioners essentially ask us to deny utility patent protection for sexually reproduced plants because it was unforeseen in 1930 that such plants could receive protection under § 101. Denying patent protection under § 101 simply because such coverage was thought technologically infeasible in 1930, however, would be inconsistent with the forward-looking perspective of the utility patent statute. As we noted in , “Congress employed broad general language in drafting § 101 precisely because [new types of) inventions are often unforeseeable.” Second, petitioners maintain that the PPA's limitation to asexually reproduced plants would make no sense if Congress intended § 101 to authorize patents on plant varieties that were sexually reproduced. But this limitation once again merely reflects the reality of plant breeding in 1930. At that time, the primary means of reproducing bred plants true-to-type was through asexual reproduction. Congress thought that sexual reproduction through seeds was not a stable way to maintain desirable bred characteristics. Thus, it is hardly surprising that plant patents would protect only asexual reproduction, since this was the most reliable type of reproduction for preserving the desirable characteristics of breeding. By passing the PVPA in 1970, Congress specifically authorized limited patent-like protection for certain sexually reproduced plants. Petitioners therefore argue that this legislation evidences Congress intent to deny broader § 101 utility patent protection for such plants. Petitioners' argument, however, is unavailing for two reasons. First, nowhere does the PVPA purport to pro-vide the exclusive statutory means of protecting sexually reproduced plants. Second, the PVPA and § 101 can easily be reconciled. Because it is harder to qualify for a utility patent than for a Plant Variety Protection (PVP) certificate, it only makes sense that utility patents would confer a greater scope of protection. We also note that the PTO (Patent and Trademark Office) 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. The Board of Patent Appeals and Interferences, which has specific expertise in issues of patent law, relied heavily on this Court's decision in  when it interpreted the subject matter of § 101 to include plants. This highly visible decision has led to the issuance of some 1,800 unlit) patents for plants. Moreover, the PTO, which administers § 101 as well as the PPA, recognizes and regularly issues utility patents for plants. In addition, the Department of Agriculture's Plant Variety Protection Office acknowledges the existence of utility patents for plants. For these reasons, we hold that newly developed plant breeds fall within the terms of § 101, and that neither the PPA nor the PVPA limits the scope of § 101's coverage. As in , we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result. Accordingly, we affirm the judgment of the Court of Appeals.

Case Question

1. How does this case differ from ?

2. Why does Farm Advantage argue that § 101 does not protect Pioneer's corn?

3. 'thy does the Supreme Court rule that § 101 does protect Pioneer's corn?

4. Suppose that the Court had agreed with Farm Advantage. What could Pioneer have done in the future to protect its hybrid seed products?

 

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