J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc. - 534 U.S. 124, 122 S. Ct. 593 (2001)

Rule:

Newly developed plant breeds fall within the terms of 35 U.S.C.S. § 101, and neither the Plant Patent Act of 1930, 35 U.S.C.S. §§ 161-164, nor the Plant Variety Protection Act, 7 U.S.C.S. § 2321 et seq., limits the scope of 35 U.S.C.S. § 101's coverage.

Facts:

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, 65 L. Ed. 2d 144, 100 S. Ct. 2204, 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.

Issue:

Do newly developed plant breeds fall within the subject matter of § 101?

Answer:

Yes.

Conclusion:

 The court determined that utility patents could be issued for plants pursuant to 35 U.S.C.S. § 101. The PPA and PVPA did not provide the exclusive means of protecting new varieties of plants. The PVPA did not alter the subject-matter coverage of 35 U.S.C.S. § 101 by implication; the differences in the requirements for, and coverage of, utility patents and plant variety certificates did not present irreconcilable conflicts.