Supreme Court Grants Cert Petitions In Seed Patenting, Malpractice Cases

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The U.S. Supreme Court granted petitions for certiorari in two cases Oct. 5 of interest to the patent community.

Despite a recommendation by the solicitor general to deny review (186 PTD, 9/26/12), the high court agreed to hear a case finding patent infringement in the replanting of second-generation seeds. Bowman v. Monsanto Co. ( U.S., No. 11-796, review granted 10/5/12).

A farmer is appealing the U.S. Court of Appeals for the Federal Circuit's ruling affirming an infringement judgment in favor of Monsanto Co., which was enforcing its Roundup Ready patents. Monsanto Co. v. Bowman, 657 F.3d 1341, 100 USPQ2d 1224(185 PTD, 9/23/11).

According to the petition, Monsanto has exhausted its patent rights after an authorized sale “for their natural and foreseeable purpose--namely, for planting.” Should the Federal Circuit's ruling stand, the petition said, this would create an exception to the patent exhaustion doctrine for self-replicating technologies.

The Federal Circuit, however, declined to apply the patent exhaustion doctrine on the basis that the restriction was part of a conditional sale, and did not implicate Monsanto's patent rights.

Patent Attorney Malpractice Issue.

The court will also hear arguments on the standards for determining when a malpractice complaint against a patent attorney should be heard in state or federal court. Gunn v. Minton ( U.S., No. 11-1118, review granted 10/5/12).

The petition, filed March 13, seeks reversal of a 5-3 Texas Supreme Court decision moving jurisdiction of a patent attorney malpractice complaint to federal court. Minton v. Gunn, No. 10-0141 (Tex. Dec. 16, 2011). That court overturned a judgment to the contrary by the Texas Court of Appeals (206 PTD, 10/28/09).

The question presented challenges “the Federal Circuit's mistaken standard” that “state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts.”

The Federal Circuit has been engaged in an internal debate on the issue as well, such as in Byrne v. Wood, Herron & Evans LLP, 676 F. 3d 1024, 102 USPQ2d 1073 (Fed. Cir. 2012). A cert petition was filed in that case as well, and it was scheduled for the high court's conference the same day the petition in Minton was granted. No. 11-1497 (U.S., docketed Nov. 18, 2011).

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