Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM SELF-REPLICATING TECHNOLOGIES AND THE CHALLENGE FOR THE PATENT AND ANTITRUST LAWS ♦ DARYL LIM* Abstract Few patented inventions challenge the traditional boundaries of the patent and antitrust laws like those that are capable of multiplying as they are used. These self-replicating technologies are embedded in our food, fortify our vaccines, and form the computer code upon which the information age is based. These inventions create an inherent conflict between patentees and their customers. The conflict arises because every customer could become competitors as the product replicates, potentially making every first sale the patentee’s last. They also challenge how we think about fundamental issues of ownership as well as innovation and market competition, and make it necessary to identify what downstream uses are or should be permissible. This struggle culminated recently in the Supreme Court case of Bowman v. Monsanto. There, the Court had to determine what rights a farmer had over the genetically modified seeds he had bought. At the ♦ Permission is hereby granted for noncommercial reproduction of this Article in whole or in part for education or research purposes, including the making of multiple copies for classroom use, subject only to the condition that the name of the author, a complete citation, and this copyright notice and grant of permission be included in all copies. * Assistant Professor, The John Marshall Law School and co-consultant to the American Antitrust Institute (“AAI”) for its Supreme Court brief in Bowman v. Monsanto. Views expressed herein are my own and do not necessarily reflect those of the AAI. I am grateful to Peter Beck, Peter Carstensen, Jorge Contreras, Tom Cotter, Hugh Hansen, Ben Liu, Les Locke, Diana Moss, Mark Patterson, Josh Sarnoff, Chris Seaman, Sandra Sherman, Amelia Smith Rinehart, my colleagues and the participants of the faculty works in progress talk, the 22nd Annual Fordham IP, Media and Entertainment Law Symposium, as well as the “Hot Topics in IP Law” seminar for their helpful comments and suggestions. My gratitude also goes out to Dean Ralph Ruebner for his support and encouragement, and to Francesca Montalvo and her Board for their assistance in taking this piece to print. All figures and graphs are used with appropriate permissions, I thank Philip Howard, Kristina Hubbard, Judith Kim, Jorge Goldstein the Economic Research Service, the ETC Group, and Center for Food Safety & Save our Seeds. William Gros, J.D. 2013 provided outstanding research assistance. Research Librarian Raizel Liebler and Research Fellow Matthew Martin provided valuable editorial assistance. All errors and omissions remain my own. © 2013 Daryl Lim. 131 Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 132 CARDOZO ARTS & ENTERTAINMENT [Vol. 32:131 core of Bowman v. Monsanto was the scope of patent exhaustion, a judge-made doctrine designed to end the patent owner’s control over downstream commerce once its patented goods or methods were sold. Monsanto had also been accused of monopolizing the market, leading to upward spiraling prices and a drought of seed varieties. The Article examines the patent and antitrust issues arising in agro-biotechnology, and analyzes their impact on other self-replicating technologies. In looking at patent issues, this Article first explains how courts can apply a technology neutral three-step test to distinguish between permissible “uses” and impermissible “making” of patented articles. Second, it explores the benefits of five alternatives to patent infringement as a means of appropriating returns to innovation, and explains why their limitations vindicate the Court’s conclusion in Bowman v. Monsanto. Third, it discusses thorny matters left unresolved: inadvertent and “incidental” infringement, as well as the “conditional sale” doctrine. In looking at the antitrust issues, the Article first explains why the controversial essential facilities doctrine could prove to be a useful tool for courts to ensure adequate access to standard essential patents over traits like Roundup Ready. Second, it explains why Monsanto’s win over Bowman may hold an unexpected promise of a better future for farmers as its customers. Third, it argues that legislation similar to Paragraph IV challenges under the Hatch-Waxman Act can serve to incentivize greater competition in agro-biotechnology and other fields of technology. INTRODUCTION ................................................................................. 133   I. BOWMAN V. MONSANTO ................................................................ 137   A. The Privatization of Agriculture ...................................... 137   B. The Road to the Supreme Court ...................................... 151   C. Judgment .......................................................................... 158   II. THE LIMITS OF EXHAUSTION ........................................................ 162   A. Three Lessons from History ............................................. 163   B. The Make-Use Dichotomy ............................................... 170   1. The Meaning of “Making” ......................................... 171   2. Protecting the Inventive Core ..................................... 175   3. Relative Lifespans ...................................................... 177   C. Five Alternatives to Patent Protection ............................ 179   1. Contract Law ............................................................. 179   2. Terminator Genes ....................................................... 181   3. New Weeds ................................................................ 183   4. Compulsory Licensing .............................................. 184   5. PVPA Protection Revisited ........................................ 186 Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 2013] SELF-REPLICATING TECHNOLOGIES 133 D. “Innocent” Infringers ....................................................... 187   1. Unintentional Users ................................................... 187   2. Incidental Users ......................................................... 193   3. “Mallinckrodt Users” and the Unfinished Business of Quanta ...................................................................... 194   III. MONSANTO AND THE IP-ANTITRUST INTERFACE ....................... 201   A.   Roundup Ready: A Standard Essential Patent? ............. 206   B.   Enter The Accord: Aligning Disparate Interests? .......... 214   C. Patent Evergreening and Paragraph IV Challenges ...... 217   CONCLUSION ..................................................................................... 222   INTRODUCTION Few patented inventions challenge the traditional boundaries of the patent and antitrust laws like those that are capable of multiplying as they are used. These self-replicating technologies (“SRTs”) are embedded in our food, fortify our vaccines, and form the computer code upon which the information age is based.1 These inventions create an inherent conflict between patentees and their customers. The conflict arises because every customer could become competitors as the product replicates, potentially making every first sale the patentee’s last.2 They also challenge how we think about fundamental issues of ownership as well as innovation and market competition, and make it necessary to identify what downstream uses are or should be permissible. The recent Supreme Court case of Bowman v. Monsanto became the arena for this conflict. Monsanto, an agricultural biotechnology company headquartered in St. Louis, Missouri, has won more than $23 million from hundreds of farmers accused of replanting seeds bearing 1Brief for Respondents at 2–3, Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013) (No. 11-796), 2013 WL 179941; id. at 31–32 (“Other inventions and technologies with similar characteristics would also be at risk: a software product that is replicated by a machine, a 3-D printer that can be used to print components for more 3-D printers, or a synthetic molecule that can be used to produce copies of itself.”); Brief for the United States as Amicus Curiae Supporting Affirmance at 16–17, Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013) (No. 11-796), 2013 WL 137188; id. at 16 (“Like soybeans, computer software can be reproduced in materially identical form with limited human intervention. It is often impossible, moreover, to use computer software for its intended purpose without making another copy.”); id. at 18 (“The Court’s decision could also affect the enforcement of patents for man-made cell lines, DNA molecules, some nanotechnologies, and other technologies that involve self-replicating features.”). 2Brief of Intellectual Prop. Owners Ass’n in Support of Respondents at 11, Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013) (No. 11-796), 2013 WL 267019; see also id. at 13 (“If the doctrine of patent exhaustion were improperly extended to the routine growth of recombinant host cells, this could have a devastating effect on investment in the production of new biologic drugs made from recombinant cells. If patents on recombinant cells used to make new drugs could be easily circumvented by reliance on the exhaustion doctrine, the deleterious effects on the pharmaceutical industry could be even greater than in the agricultural arena.”). Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 134 CARDOZO ARTS & ENTERTAINMENT [Vol. 32:131 its modified germplasm.3 In 2007, Monsanto accused Vernon H. Bowman, a seventy-five year old farmer from Knox County, Indiana, of patent infringement.4 First as a pro se, then as a pro bono defendant, Bowman tried to convince the courts that he should be allowed to plant and harvest crops grown from seeds he had bought from a local grain elevator.5 The Supreme Court, in affirming both the Court of Appeals for the Federal Circuit and the district court below, found that every one of the eight generations of his crop grown without Monsanto’s permission was infringing.6 The narrative of Monsanto’s patent litigation would be incomplete without also discussing its antitrust dimension. In 2007, state attorneys general reportedly launched an investigation against Monsanto for anticompetitive seed trait licensing practices that locked out competitor genetic trait providers.7 When DuPont sought to offer a stacked gene containing Monsanto’s herbicide resistant gene, it was sued by Monsanto.8 DuPont responded with a private antitrust suit, accusing Monsanto of using its monopoly in the provision of genetic traits both to exclude rivals and to gain advantage in the market for the breeding and retail of seeds.9 Other allegations include tie-in restrictions requiring farmers to apply only herbicide containing expired patents on 3CENTER FOR FOOD SAFETY & SAVE OUR SEEDS, SEED GIANTS VS. U.S. FARMERS 1 (2013), available at www.centerforfoodsafety.org/files/seed-giants_final_04424.pdf; Alessandro Garofalo, Monsanto Takes Home $23mln from Small Farmers, Seeks to Maintain ‘Seed Oligarchy’, REUTERS (Feb. 14, 2013), http://rt.com/usa/monsanto-seeds-trial-bowman-123/. 4Monsanto Co. v. Bowman, 657 F.3d 1341, 1345–46 (Fed. Cir. 2011); Heidi Ledford, Seed- patent case in Supreme Court, NATURE (Feb. 19, 2013), http://www.nature.com/news/seed- patent-case-in-supreme-court-1.12445. 5Bowman v. Monsanto Co., 133 S. Ct. 1761, 1765 (2013). 6Id. at 1769. 7Geoffrey Manne, The Seeds of an Antitrust Disaster in Iowa, FORBES, (Mar. 11, 2010), http://www.forbes.com/sites/streettalk/2010/03/11/the-seeds-of-an-antitrust-disaster-in-iowa/; see also Lina Khan, How Monsanto Outfoxed the Obama Administration, SALON (Mar. 15, 2013, 9:37 AM), http://www.salon.com/2013/03/15/how_did_monsanto_outfox_the_obama_administra tion/ (“State officials uncovered agreements that, in one form or another, required seed breeders and retailers to favor Monsanto over its competitors. One provision, for example, prohibited seed companies from combining Monsanto’s genetic traits with the traits controlled by its rivals, unless given explicit written permission from Monsanto. Since the vast majority of U.S. corn and soybean crops contain Monsanto’s genes, the company could effectively lock out competitors.”). 8Monsanto Co. v. E. I. du Pont de Nemours & Co., No. 4:09CV00686(ERW), 2009 WL 3012584 (E.D. Mo. Sept. 16, 2009). 9Id.; see also Monsanto Co. v. E.I. DuPont de Nemours & Co., No. 4:09CV00686(ERW), 2012 WL 5397601, at *1 n.4 (E.D. Mo. Nov. 2, 2012) (“Pioneer also asserted a number of antitrust counterclaims, alleging that Monsanto has abused its patent monopolies, has inserted anticompetitive restrictions into its license agreements with seed producers, and is attempting to employ an anticompetitive ‘switching strategy’ by using new licensing agreements to shift independent seed companies from the current RR trait seed lines to Roundup Ready 2 Yield®, in order to prevent generic entry into the market and extend Monsanto’ [sic] patent protection through 2020. On September 16, 2009, this Court entered its Order concluding that a separate trial of Pioneer’s antitrust counterclaims was warranted.”). Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 2013] SELF-REPLICATING TECHNOLOGIES 135 its Roundup technology to Roundup Ready crops containing its patented genes, and loyalty rebates for stocking up on Monsanto’s inventory.10 The Department of Justice (“DOJ”) followed up with its own investigations in 2010, and released a report in May 2012 highlighting the fact that farmers faced high prices and increasingly limited options for seeds as a result of companies’ merger activities.11 It warned that firm dominance in the agro-biotechnology industry promotes a “high degree of concentration, high and rising prices, limited choice, stagnant innovation.”12 In a decade, Monsanto had acquired thirty companies at the cost of $12 billion.13 Those companies that remain compete with the company they depend upon—Monsanto—for their supply for genetic traits, limiting their product offerings.14 By November 2012, however, the DOJ decided to close its investigations without explanation.15 In a terse response to inquiries on the reasons for this closure, it stated that its investigation into “possible anticompetitive activity” in the seed industry was superseded by “marketplace developments that occurred during the pendency of the investigation.”16 The state attorneys general followed suit in discontinuing their own investigations.17 While not explicitly acknowledged, two events were responsible for keeping Monsanto out of further trouble with the antitrust enforcers. The first was Monsanto’s participation in a remarkable private sector initiative led by the Biotechnology Industry Organization (“BIO”) and the American Seed Trade Association (“ASTA”), a voluntary framework called the Accord, created to facilitate better and cheaper access to seed varieties and manage the potential trade disruption from patent expiration.18 The Accord went into effect on November 15, 2012.19 The second was Monsanto’s billion-dollar settlement with 10 Monsanto Co. v. E.I. DuPont de Nemours & Co., No. 4:09CV00686(ERW), 2012 WL 5397601, at *1 n.4 (E.D. Mo. Nov. 2, 2012). 11 DEP’T OF JUSTICE, COMPETITION AND AGRICULTURE: VOICES FROM THE WORKSHOPS ON AGRICULTURE AND ANTITRUST ENFORCEMENT IN OUR 21ST CENTURY ECONOMY AND THOUGHTS ON THE WAY FORWARD 13 (2012), 2012 WL 1828869. 12 Tom Philpott, DOJ Mysteriously Quits Monsanto Antitrust Investigation, MOTHER JONES, (Dec. 1, 2012), http://www.motherjones.com/tom-philpott/2012/11/dojs-monsantoseed-industry- investigation-ends-thud. 13 Khan, supra note 7. 14 Id. 15 Id. (“The DOJ released no written public statement.”). 16 See Philpott, supra note 12. 17 Khan, supra note 7 (“The state attorneys general who initiated the probe five years ago also closed their inquiry and have chosen not to comment.”). 18 Factsheet, AM. SEED TRADE ASS’N & BIOTECHNOLOGY INDUS. ORG. (Oct. 31, 2012), http://www.agaccord.org/include/facts.pdf; see also Khan, supra note 7 (“Months after the Justice Department followed suit in 2009, Monsanto announced it would allow farmers to continue using its leading soybeans, Roundup Ready 1, even after its patent expired in 2014.”). 19 The Accord: Generic Event Marketability and Access Agreement Is Now Effective, BIO (Nov. Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 136 CARDOZO ARTS & ENTERTAINMENT [Vol. 32:131 DuPont, which was publicly announced in March 2013.20 As part of that settlement, Monsanto agreed to license DuPont’s subsidiary Pioneer the rights to stack its next-generation herbicide resistant gene, Roundup Ready 2 Yield, in its seed offerings for $1.75 billion.21 In return, Monsanto will gain access to DuPont technology related to crop disease resistance.22 These developments are a promising start to ensuring better access to seed varieties as well as cheaper seeds. More, however, can and should be done to promote competition in the industry for seeds and other SRTs. This Article discusses the key patent and antitrust controversies relating to SRTs. Part I describes Monsanto’s path to the Supreme Court. The last century witnessed a dramatic transformation in the relationship between farmers and the crops they tend. It is a transformation closely linked to a shift in using patents to protect agro- biotechnology. While farmers can now tap into the unlocked secrets of genes, they can no longer freely replant seeds, even from their own harvest. Instead they must return to biotech companies each season for new seeds at ever-higher prices or risk being sued for patent infringement, as Bowman was. The Court’s decision in Bowman v. Monsanto affirms that the law favors giving companies like Monsanto broad rights to control the use of SRTs. However, its brief ten-page judgment23 serves more as a data point than a roadmap for those seeking guidance in this important area upon which our subsistence and sustenance depends. Part II fills that gap by examining the traditional doctrinal and policy underpinnings of patent exhaustion, and the extent to which they may be applied to SRTs. First, it explains how courts can apply a technology neutral three-step test to distinguish between permissible “uses” and impermissible “makings” of patent articles. Second, it explores the benefits and limitations of five alternatives to patent infringement: contract law, technology “locks,” natural inducements to 15, 2012), http://www.bio.org/media/press-release/accord-generic-event-marketability-and- access-agreement-now-effective. As of June 2013, the ten signatories are the American Farm Bureau Federation, the American Seed Trade Association, the American Soybean Association, BASF Plant Science LP, Bayer CropScience, Dow AgroSciences L.L.C., Dupont Pioneer, Gro Alliance, L.L.C., Monsanto Company and National Corn Growers Association. Generic Event Marketability and Access Agreement (GEMAA), AGACCORD.ORG, http://www.agaccord.org/ ?p=GEMAA (last visited Oct. 22, 2013). 20 Carey Gillam, Monsanto, DuPont strike $1.75 billion licensing deal, end lawsuits, REUTERS (Mar. 26, 2013), http://www.reuters.com/article/2013/03/26/us-monsanto-dupont-gmo- idUSBRE92P0IK20130326. 21 Andrew Pollack, Monsanto and DuPont Settle Fight Over Patent Licensing, NYTIMES.COM (Mar. 26, 2013), http://www.nytimes.com/2013/03/27/business/monsanto-and-dupont-settle- fight-over-roundup-ready-technology.html. 22 Gillam, supra note 20. 23 Bowman v. Monsanto Co., 133 S. Ct. 420 (2013). Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 2013] SELF-REPLICATING TECHNOLOGIES 137 innovation as new herbicide-resistant weeds evolve, compulsory licensing, and protection under patent-specific legislation. Third, it examines the Court’s concern with “innocent” infringement. It discusses unintentional infringement by organic farmers and the limitations of disclaimers against litigation, labeling and state laws in protecting unintentional infringers. It then discusses incidental infringement and the impact of Bowman v. Monsanto on other forms of SRTs such as stem cells, genetically modified microorganisms, eukaryotic cells and plasmids. Finally, it looks at the third group of infringers who may remain vulnerable to patent infringement suits through post-sale licensing restrictions. It argues that patent owners should not be allowed an end-run around exhaustion using such restrictions, and that only contractual remedies should be allowed subject to the restrictions not falling afoul of federal preemption, patent misuse and the antitrust laws. Part III examines the debate through an antitrust lens. First, it explains why the controversial essential facilities doctrine (“EFD”) could prove to be a useful tool for courts to ensure adequate access to standard essential patents over the Roundup Ready soybean trait and SRTs. Second, it discusses the Accord’s relationship with antitrust law and why Monsanto’s win over Bowman may hold an unexpected promise of a better future for farmers. Third, it argues that the drug industry holds important lessons for making the agro-biotechnology more competitive. In particular, steps should be taken to prevent protection of undeserving patents through “product-hopping.” In addition, Congress should consider enacting legislation similar to the Hatch-Waxman Act to incentivize challenges of poor quality patents. I. BOWMAN V. MONSANTO Agriculture in the United States is largely a private sector enterprise, with innovation fueled by a variety of plant-related intellectual property rights, each decidedly more robust than the last. Bowman was an archetypal Midwestern soybean farmer. His decision to replant seeds saved from an earlier harvest, however, caused him to become ensnared in Monsanto’s web of patent rights over those seed. The question of how far Monsanto’s control could reach was argued to a Supreme Court whose decision left unresolved questions that future courts will have to grapple with. A. The Privatization of Agriculture Soybeans are the second-most planted field crop in the United States, covering seventy-seven million24 acres over 280,000 farms in 24 Background, USDA (Oct. 10, 2012), http://www.ers.usda.gov/topics/crops/soybeans-oil-crops/ Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 138 CARDOZO ARTS & ENTERTAINMENT [Vol. 32:131 thirty-one states.25 They account for a tenth of agricultural production and generate $43 billion in sales revenue.26 Soybeans can be consumed by humans as edamame, or processed into a variety of food products, including soymilk, tofu, and soy sauce.27 Soybeans are also used to feed livestock.28 Central to the discussion, soybean seeds can be planted and cultivated into new soybean plants.29 Monsanto is the largest seed company in the world.30 Ninety-three percent of soybean farmers in the United States use Monsanto’s flagship glyphosate-resistant technology, “Roundup Ready,” which compliments Monsanto’s glyphosate herbicide, Roundup.31 Roundup kills competing vegetation by inhibiting the metabolic activity of 5- enolpyruvylshikimate-3-phosphate synthase (“EPSPS”), an enzyme necessary for plant growth.32 Roundup Ready technology was claimed under the asserted “U.S. Patent Nos. 5,352,605 (‘‘605 patent’) and RE39, 247E (‘‘247 patent’).”33 Roundup Ready is “by far the most background.aspx#.Um7d9PmsiM4. 25 Kevin E. Noonan, It Ain’t Necessarily So Down on the Farm: Not All Farmers Agree with Farmer Bowman in Bowman v. Monsanto, PATENT DOCS (Jan. 31, 2013), http:// www.patentdocs.org/2013/02/it-aint-necessarily-so-down-on-the-farm-not-all-farmers-agree- with-farmer-bowman-in-bowman-v-monsant.html; National Agricultural Statistics Service et al., Acreage 15 (2012), available at http://www.usda.gov/nass/PUBS/TODAYRPT/acrg0612.pdf; Ted Covey & Kevin Patrick, Cash Receipts By Commodity Group, USDA Economic Research Service (USDA ERS), available at http://www.ers.usda.gov/topics/crops/.aspx#.UeiugY21GSp (“Corn is the most widely produced feed grain in the United States, with most of the crop providing the main energy ingredient in livestock feed.”). 26 Soystats: 2012 Highlights, THE AMERICAN SOYBEAN ASSOCIATION, http://soystats.com/2012- soybean-highlights/ (last visited Nov. 2, 2013). 27 See Brief of CropLife Am. as Amicus Curiae Supporting Affirmance at 2–3, Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013) (No. 11-796), 2013 WL 314456. 28 Id. at 2. 29 Id. at 3. 30 Greg Stohr, Monsanto Seed Patent Case Gets U.S. Supreme Court Review, BLOOMBERG BUSINESSWEEK (Oct. 5, 2012), http://www.businessweek.com/news/2012-10-05/monsanto-seed- patent-case-gets-u-dot-s-dot-supreme-court-review. 31 Brief of Am. Soybean Ass’n et al. as Amici Curiae in Support of Respondents at 7, Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013) (No. 11-796), 2013 WL 315223. 32 Monsanto Co. v. Bowman, 657 F.3d 1341, 1343 (Fed. Cir. 2011). 33 See Monsanto Co. v. Bowman, 657 F.3d 1341, 1343–44 (Fed. Cir. 2011) (“The ‘605 and ‘247E Patents cover different aspects of the Roundup Ready® technology . . . . The invention of the ‘605 Patent relates to the use of viral nucleic acid from the cauliflower mosaic virus (‘CaMV’), a virus capable of infecting plant cells, as a vector for incorporating new genetic material into plant cells (a ‘transformation’ of the plant cells). To accomplish this transformation, the CaMV promoter region is isolated from the CaMV genome and combined with a heterologous protein- encoding DNA sequence, forming a chimeric gene to be expressed in the plant cell . . . . The invention of the ‘247E Patent involves the transformation of plant cells—using, for example, the CaMV promoters disclosed in the ‘605 Patent—to transform plant cells with novel protein- encoding gene sequences that encode for EPSPS, a glyphosate-tolerant enzyme. These genetically modified plants express EPSPS and exhibit glyphosate resistance. ‘247E Patent, col.1 ll.15–46. The advantage of this technology, which can be incorporated into a variety of crops, is that farmers can treat their fields with glyphosate-based herbicide to control weed growth without damaging their crops.”). Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 2013] SELF-REPLICATING TECHNOLOGIES 139 widely used” genetic trait in American agriculture making up more than $11.7 billion or 75% of Monsanto’s net annual income.34 Roundup Ready has benefited farmers in a number of ways. It has allowed for aerial spraying for weeds, instead of manual scouring, and it has matched specific herbicides to the weeds, thus reducing labor costs by $6.50 per acre and herbicide costs by $8.68 per acre.35 This technology allowed farmers to reduce soil tillage compared with conventional methods.36 The reduced soil tillage has enabled farmers to plant in narrower rows and has increased the number of plants grown per acre.37 Many amici briefs supporting Monsanto assert a positive correlation between progressively stronger patent protection and innovation.38 Others are more skeptical. For instance, the Center for Food Safety and Save Our Seeds argued that the “vast majority” of plant innovation was accomplished without inducement by the patent system.39 Indeed, according to the Center, “[f]or the first two centuries of this country’s history, Congress consistently refused to authorize patents on staple food crops.”40 The Center also stated that the current regime was formed “under increasing pressure and marketing from agrichemical companies, seed patent and intellectual property law,” and that this pressure had resulted in “policies [which] have enshrined corporate interests instead of safeguarding farmers and small, independent businesses.”41 The impetus for advancing agro-technology was evident early in the nation’s history. In 1800, Thomas Jefferson declared that “[t]he greatest service which can be rendered any country is, to add an [sic] 34 Monsanto: The Parable of the Sower, THE ECONOMIST (Nov. 19, 2009), http:// www.economist.com/node/14904184; Joseph M. Purcell, Jr., Note, The “Essential Facilities” Doctrine in the Sunlight: Stacking Patented Genetic Traits in Agriculture, 85 ST. JOHN’S L. REV. 1251, 1252 (2011). 35 Brief for Respondents, supra note 1, at 2–3. 36 Wade A. Givens et al., Roundup Ready® Crops Have Major Positive Impact on Tillage Practices (2009), available at http://www.monsanto.com/weedmanagement/Documents/ Benchmark-TillageSummaryRept2.pdf. 37 Janet Carpenter & Leonard Gianessi, Herbicide Tolerant Soybeans: Why Growers are Adopting Roundup Ready Varieties, 2 AGBIOFORUM 65, 65–72 (1999), available at http://agbioforum.org/v2n2/v2n2a02-carpenter.pdf. 38 Brief of Am. Soybean Ass’n et al. as Amici Curiae in Support of Respondents, supra note 31, at 5 (“During the past few decades, enormous progress has been made in improving new seed varieties based upon the protections initially afforded by the Plant Variety Protection Act of 1970. Genetic innovation in soybeans grew exponentially, like Jack’s magical beanstalk, after this Court’s 1980 decision in Diamond v. Chakrabarty, 447 U.S. 303, which confirmed the applicability of utility patent protection to qualifying organisms.”). 39 CENTER FOR FOOD SAFETY & SAVE OUR SEEDS, supra note 3, at 4. 40 Id. 41 Id. Lim-galleyed-FINAL.docx (Do Not Delete) 12/22/13 1:54 PM 140 CARDOZO ARTS & ENTERTAINMENT [Vol. 32:131 useful plant to its culture.”42 During colonial times, wealthy merchants brought seeds from Europe to America.43 Successful crops were shared among the select few who belonged to agricultural societies.44 Given the yoke of patent lawsuits that farmers have borne in more recent years, it is perhaps ironic that it was the then Commissioner of Patents, Henry Ellsworth, who in 1839 obtained federal funds to collect and distribute new plant varieties to farmers for free.45 The Department of Agriculture was later established to carry on this task, among others.46 Farmers who benefited from the system in turn donated their seed to a seed bank that freely distributed approximately a billion seed packets a year to other farmers.47 A small private seed industry existed even then, but it was limited to vegetables and flowers grown by home gardeners.48 Early breeders lacked the incentive to invest in developing more productive plants.49 In addition to their inability to control the commercial exploitation of their genetic material, the free seed program crowded out private breeders from the marketplace.50 As early as 1885, private interests successfully lobbied the government for a plant patent system.51 Seed companies began to invest in plant variety research, increasing their ability to express desirable traits.52 Hybrid crops were a particularly lucrative source of investments 42 THOMAS JEFFERSON, THOMAS JEFFERSON: WRITINGS 703 (Merrill D. Peterson ed., 1984). 43 Keith Aoki, Weeds, Seeds & Deeds: Recent Skirmishes in the Seed Wars, 11 CARDOZO J. INT’L & COMP. L. 247, 262 (2003). 44 See ALFRED CHARLES TRUE, A HISTORY OF AGRICULTURAL EXPERIMENTATION AND RESEARCH IN THE UNITED STATES 6–7 (1937); see also Nathan A. Busch, Jack and the Beanstalk: Property Rights in Genetically Modified Plants, 3 MINN. INTELL. PROP. REV. 1, 9 (2002) (“Because the common farmer could not gain membership to these agricultural societies he had either no or limited access to these new and exotic varieties. The common farmer was then economically disadvantaged in a system that granted an exclusive interest to those who could afford to develop the plant varieties best suited to agriculture in the United States.”). 45 Aoki, supra note 43, at 265. 46 An Act to Establish a Department of Agriculture, ch. 72, 12 Stat. 387 (1862); Busch, supra note 44, at 10–11 (“To rationalize and continue the centralized control of germplasm development and distribution, Congress in 1862 established the United States Department of Agriculture (USDA) to ‘acquire and to diffuse among the people of the United States useful information in subjects connected with agriculture in the most general and comprehensive sense of that word, and to procure, propagate, and distribute among the people new and valuable seeds and plants.’”). 47 See Busch, supra note 44, at 14. 48 Id. at 16 (“By the beginning of the twentieth century, the seed manufacturing industry had gained only a small fraction of the market for field crop seeds, a market that was almost exclusively dominated by on-farm production of the seed and sale of the seed through inter-farm commerce.”). 49 Aoki, supra note 43, at 268. 50 JACK RALPH KLOPPENBURG, JR., FIRST THE SEED: THE POLITICAL ECONOMY OF PLANT BIOTECHNOLOGY (1988). 51 Id. 52 See also Jorge Fernandez-Cornejo, The Seed Industry in U.S. Agriculture: An Exploration of