I had the privilege of being involved in the seminal U.S. Supreme Court case that held that utility patents are properly available for plant varieties, J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001). My father, Ed Sease, a named partner of our firm and a career intellectual property (IP) litigator, argued the case. It represented the culmination of his career and I got to have a small part in the case. My father argued several significant cases at the Federal Circuit and other Courts of Appeals around the country, for example, one establishing the doctrine of assignor estoppel, (Diamond Scientific Co. v. Ambico, Inc. 848 F.2d 1220 (Fed. Cir. 1988), abrogated by Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. 559 (2021)), and he left an indelible mark on both our firm and United States patent law before he retired.
The case began when an unlicensed seed dealer began re-selling Pioneer hybrid seed, in contravention of Pioneer's patents to the hybrid. The seed re-seller was represented by a local attorney who was a keen issue spotter and had already taken one case to the U.S. Supreme Court. Faced with the re-seller case, he seized upon the issue of a potential conflict between the Plant Variety Protection Act (PVPA) with its farmer's saved seed and research exemptions and the prohibition of the same under the utility patent statute. Did Congress intend that plant variety protection (PVP) would provide the only form of protection for plant varieties? Was there an inherent conflict between the dual forms of IP protection?
A motion to dismiss was filed that the patents at issue (and the 1,800 other patents issued by the U.S. Patent and Trademark Office (USPTO) since the Board of Appeals and Interferences of the USPTO affirmed the procedure in 1985), were invalid, and that the two statutes, each allowing different intellectual property rights to the same hybrid seed variety were irreconcilable. The district court denied the motion, and an interlocutory appeal went to the Federal Circuit Court of Appeals, who affirmed. A petition for certiorari was granted and we found ourselves on the way to the Supreme Court of the United States in what at the time was a rare granting of certiorari for a patent case.
Wrestling with the obvious question—"why would the Supreme Court grant certiorari if only to affirm the activity of the USPTO?"—we hired a Supreme Court expert to help us prepare the case, Richard Taranto, who now serves as a Judge at the Federal Circuit Court of Appeals.
The first thing he said to us was, "when arguing before the Supreme Court don't argue precedent." This was contrary to everything we were ever taught in law school, but he emphasized that we are, after all, at THE Supreme Court. The Court is interested in what SHOULD be the law, not what the state of the law currently is. Things like the impact on the seed industry of invalidating close to 2,000 patents, the value of agriculture to the country, how farmers felt about the advances in plant breeding that resulted in protected seed: these were the things they wanted to learn about, and why it was decided that an Iowan should be arguing the case.
The oral argument was held in October 2001, immediately following the September 11 terrorist attacks. It was ominous to see our Capital shut down, similar to what we saw during the pandemic. My father had to go through media training, as the case had garnered national attention and he needed to be prepared to handle the questions of even the savviest reporter. Block and Bridge, anyone? He also had to carry a second suit in his briefcase. There was concern that protestors might throw pollen or other things at him before the argument, making his rattled appearance evidence of their outrage at the concept of IP rights in living plants.
After months of the preparation, we were ready for oral argument.
When you file into the Supreme Court for the day's arguments, the first thing you are struck with is how small the courtroom is. It felt like we were mere feet from the judges! I also remember Chief Judge Rehnquist constantly standing up during arguments, as he had a bad back. The arguments began and J.E.M.'s counsel went first. Questions I recall included the Chevron deference principle, (recently overturned by the current Court), and whether a bacterium was a plant. The latter was relevant in light of the earlier Supreme Court case, Diamond v. Chakrabarty, which confirmed patentability for a genetically modified bacteria strain. 447 U.S. 303 (1980).
The question to our side that I recall the most was from Justice Ruth Bader Ginsberg: "Isn't it true Mr. Sease that in order to get a patent you need to do more." Justice Ginsberg, I later learned in her autobiography, was known for getting right to the heart of the issue with her questions. Somehow, I knew in my heart when Dad answered that question, that we were going to win the case. The Des Moines Register, however, had no such feeling. They ran a headline, "High Court Hints at Ruling Against Pioneer." We were devastated—were they at a different oral argument?
Our decision came down on December 10, 2001, authored by Clarence Thomas, who, consistent with his reputation, remained silent during the argument.
The Court in its opinion, opined:
"To be sure, there are differences in the requirements for, and coverage of, utility patents and PVP certificates issued pursuant to the PVPA. These differences, however, do not present irreconcilable conflicts because the requirements for obtaining a utility patent under § 101 are more stringent than those for obtaining a PVP certificate, and the protections afforded by a utility patent are greater than those afforded by a PVP certificate. Thus, there is a parallel relationship between the obligations and the level of protection under each statute."
534 U.S. 124, 142 (2001). The case remains a seminal case and indeed other high courts (Canada and Australia) have considered the issue and have similarly held. Other issues raised in the case, such as patent eligibility under 35 U.S.C. § 101, legislative history, and statutory construction, were similarly decided in Pioneer's favor.
The decision was widely reported in the media and the original CNN artist sketch of Dad before the Supreme Court hangs in our offices at 801 Grand Avenue in Des Moines, Iowa. It is with great pride that I recall a case that affirmed and strengthened IP rights, in light of all of the recent messaging and controversy of late de-valuing the patent right. IP rights in plants remain, and will always be, invaluable to our seed industry and our food secure country.
Thanks Dad.
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