No. 99-1996 

In the Supreme Court of the United States 

J.E.M. AG SUPPLY, INC., DBA FARM ADVANTAGE, 
INC., ET AL., PETITIONERS 

v. 

PIONEER HI-BRED INTERNATIONAL, INC. 

ON WRIT OF CERTIORARI 
TO THE UNITED STATES COURT OF APPEALS 
FOR THE FEDERAL CIRCUIT 

BRIEF FOR THE UNITED STATES 
AS AMICUS CURIAE SUPPORTING RESPONDENT 

JAMES A. TOUPIN 

General Counsel 

JOHN M. WHEALAN 

Solicitor 

BRUCE J. CHASAN 
STEPHEN WALSH 

Associate Solicitors 
Patent and Trademark 

Office 
Washington, D.C. 20231 

JAMES MICHAEL KELLY 

Acting General Counsel 

M. BRADLEY FLYNN 

Attorney 
Department of Agriculture 
Washington, D.C. 20250 
THEODORE B. OLSON 
Solicitor General 

Counsel of Record 

STUART E. SCHIFFER 

Acting Assistant Attorney 

General 

LAWRENCE G. WALLACE 

Deputy Solicitor General 

AUSTIN C. SCHLICK 

Assistant to the Solicitor 

General 

BARBARA BIDDLE 
ALFRED MOLLIN 

Attorneys 

Department of Justice 
Washington, D.C. 20530-0001 
(202) 514–2217 

QUESTION PRESENTED 

Whether sexually reproduced plants are patentable 
subject matter under 35 U.S.C. 101. 

(I) 

TABLE OF CONTENTS 

Page 

Interest of the United States ...................................................... 
1 

Statement ........................................................................................ 2 

Summary of argument .................................................................. 
8 

Argument: 

I. Stare decisis principles foreclose petitioners’ 

arguments based upon the text of Section 101 

and the legislative histories of the PPA and the 

PVPA .................................................................................. 10 

II. Congressional action since Chakrabarty and 

Hibberd confirms that sexually reproduced 

plants are patentable under Section 101 ...................... 
17 

III. Granting utility patents for sexually reproduced 

plants under Section 101 does not conflict with 

the PVPA ........................................................................... 

21 

Conclusion ....................................................................................... 30 

TABLE OF AUTHORITIES 

Cases: 

Ajinimoto Co. v. Archer-Daniels-Midland Co., 

228 F.3d 1338 (Fed. Cir. 2000), cert. denied, 121 

S. Ct. 1957 (2001) ................................................................... 

25 

American Safety Table Co. v. Schreiber, 415 F.2d 

373 (2d Cir. 1969), cert. denied, 396 U.S. 1038 

(1970) ........................................................................................ 26 

Arzberger, In re, 112 F.2d 834 (C.C.P.A. 1940) .................. 

5 

Blau v. Lehman, 368 U.S. 403 (1962) ................................. 

17 

Blue Chip Stamps v. Manor Drug Stores, 421 

U.S. 723 (1975) ........................................................................ 

17 

Brenner v. Manson, 383 U.S. 51 (1966) ............................. 

2 

County of Yakima v. Confederated Tribes & Bands 

of the Yakima Nation, 502 U.S. 251 (1992) ...................... 

21 

Diamond v. Chakrabarty, 447 U.S. 303 (1980) ........ 

passim 

Diamond v. Diehr, 450 U.S. 174 (1981) .......................... 11, 12 

(III) 

IV 

Cases—Continued: Page 

FDA v. Brown & Williamson Tobacco Corp., 

529 U.S. 120 (2000) ............................................................ 

13, 22 

Hibberd, Ex parte, 227 U.S.P.Q. (BNA) 443 (Bd. 

Pat. App. & Interf. 1985) .............................................. 

6, 17, 22 

Hilton v. South Carolina Pub. Rys. Comm’n, 

502 U.S. 197 (1991) ................................................................ 

14 

Illinois Brick Co. v. Illinois, 431 U.S. 720 (1977) ............ 

13 

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 

(1974) ........................................................................................ 25 

Matsushita Elec. Indus. Co. v. Epstein, 516 

U.S. 367 (1996) ........................................................................ 

21 

Mazer v. Stein, 347 U.S. 201 (1954) ................................ 

26, 28 

NLRB v. International Longshoremen’s Ass’n, 

473 U.S. 61 (1985) ................................................................... 

16 

Neal v. United States, 516 U.S. 284 (1996) ........................ 

13 

Panduit Corp. v. All States Plastic Mfg. Co., 

744 F.2d 1564 (Fed. Cir. 1984) ............................................. 

14 

Patterson v. McLean Credit Union, 491 U.S. 164 

(1989) ........................................................................................ 13 

Payne v. Tennessee, 501 U.S. 808 (1991) ........................... 

15 

Planned Parenthood v. Casey, 505 U.S. 833 

(1992) .............................................................................. 

14, 15, 16 

Posadas v. National City Bank, 296 U.S. 497 

(1936) ........................................................................................ 21 

Protectors Ins. Serv., Inc. v. United States Fid. & 

Guar. Co., 132 F.3d 612 (10th Cir. 1998) ........................... 

26 

Radzanower v. Touche Ross & Co., 426 U.S. 148 

(1976) ........................................................................................ 21 

Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 

858 (Fed. Cir.), cert. denied, 469 U.S. 856 (1984) ............. 

23 

Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 

(7th Cir. 1976) ..................................................................... 

26, 27 

State Oil Co. v. Khan, 522 U.S. 3 (1997) .......................... 

13-14 

TrafFix Devices, Inc. v. Marketing Displays, Inc., 

121 S. Ct. 1255 (2001) .................................................. 2, 26-27 

V 

Cases—Continued: Page 

United States v. Borden Co., 308 U.S. 188 (1939) ............ 

22 

United States v. Dubilier Condenser Corp., 

289 U.S. 178 (1933) ................................................................ 

14 

United States v. Paramount Pictures, Inc., 

334 U.S. 131 (1948) ................................................................ 

28 

Warner-Jenkinson v. Hilton Davis Chem. Co., 

520 U.S. 17 (1997) ................................................................... 

23 

Constitution, statutes and regulations: 

U.S. Const. Art. I, § 8, Cl. 8 (Patent Clause) ..................... 

1, 27 

District of Columbia Appropriations Act, 1999, Pub. L. 

No. 106-113, Tit. II, Div. B, § 1000(a)(9), 113 Stat. 

1536 ......................................................................................... 19 

Lanham Act, 15 U.S.C. 1125(a)(3) (Supp. V 1999) .............. 

27 

Patent Act of 1790, ch. 7, 1 Stat. 109 .................................... 

2 

Patent Act of 1952, 35 U.S.C. 1 et seq.: 

35 U.S.C. 101 .................................................................... 

passim 

35 U.S.C. 101-103 (1994 & Sup. V 1999) .......................... 

24 

35 U.S.C. 112 .................................................................. 

4, 11, 25 

35 U.S.C. 114 (1994 & Supp. V 1999) ................................. 
25 

35 U.S.C. 119 (1994 & Supp. V 1999) ................................. 
19 

35 U.S.C. 119(f ) (Supp. V 1999) ........................................ 
9, 19 

35 U.S.C. 131 (1994 & Supp. V 1999) ................................. 
1, 24 

35 U.S.C. 132 .......................................................................... 
24 

35 U.S.C. 154(a) ...................................................................... 
2 

Plant Patent Act of 1930, ch. 312, 46 Stat. 376 .............. 
2 

35 U.S.C. 161 .......................................................................... 
4 

35 U.S.C. 161-164 (1994 & Supp. V 1999) ........................ 
2, 19 

35 U.S.C. 162 .......................................................................... 
4 

35 U.S.C. 163 (1994 & Supp. V 1999) ................................. 
20 

35 U.S.C. 171 .......................................................................... 
2 

35 U.S.C. 271(c) ...................................................................... 
20 

35 U.S.C. 271 note ................................................................. 
21 

35 U.S.C. 282 (1994 & Supp. V 1999) .................................. 24 

VI 

Statutes and regulations—Continued: 
Page 

Plant Patent Amendments Act of 1998, Pub. L. No. 
105-289, 112 Stat. 2780: 
§ 2, 112 Stat. 2780 .............................................................. 
20 

§ 3, 112 Stat. 2781 .............................................................. 
20 

Plant Variety Protection Act, Pub. L. No. 91-577, 
84 Stat. 1542: 
7 U.S.C. 2401(a)(9) ............................................................ 
6 

7 U.S.C. 2402 (1994 & Supp. V 1999) ............................. 
24 

7 U.S.C. 2402(a) (1994 & Supp. V 1999) (§ 42(a), 
84 Stat. 1547)) ........................................................ 
4, 5, 12 

7 U.S.C. 2422 ...................................................................... 
25 

7 U.S.C. 2422(2) ................................................................. 
25 

7 U.S.C. 2422(4) ................................................................. 
25 

7 U.S.C. 2483 (1994 & Supp. V 1999) ............................. 
5 

7 U.S.C. 2532 ...................................................................... 
5 

7 U.S.C. 2541 ...................................................................... 
5 

7 U.S.C. 2541(a)(9) ............................................................ 
26 

7 U.S.C. 2543 ...................................................................... 
9, 24 

7 U.S.C. 2544 ...................................................................... 
9, 24 

The Uruguay Round Agreements Act, Pub. L. No. 
103-465, Tit. V, § 533(a)(2), 108 Stat. 4989 ........................ 
21 

28 U.S.C. 1295(a) (1994 & Supp. V 1999) .............................. 
22 

28 U.S.C. 1338 (1994 & Supp. V 1999) ................................... 
22 

7 C.F.R. 97.6 ............................................................................... 
25 

37 C.F.R.: 

Sections 1.801-1.809 ............................................................... 

25 

Section 1.806 ........................................................................... 
28 

Miscellaneous: 

C. Chong, Plant Propagation, reprinted in 1 CRC 

Handbook of Plan Science in Agriculture 
(B. Christie & A. Hanson eds., 1987 ) ................................ 

3, 5 
College of Tropical Agric. & Human Res., Univ. 
of Haw., What Makes a Good Avocado Cultivar 
Good (Mar. 1999) (available at <http:///www2.ctahr. 
hawaii.edu/oc/freepubs/pdg/F_N-1.pdf>) ......................... 3 

VII 

Miscellaneous—Continued: Page 

134 Cong. Rec. (1988): 

p. 25,564 ................................................................................... 

18 

pp. 23,565-23,566 .................................................................... 
18 

136 Cong. Rec. (1990): 

p. 2564 ...................................................................................... 

18 

p. 2565 ...................................................................................... 
18 

138 Cong. Rec. 9590 (1992) ...................................................... 
18 

139 Cong. Rec. (1993): 

p. 19,979 ................................................................................... 

18 

p. 19,980 ................................................................................... 
18 

Economic Research Serv., U.S. Dep’t of Agric., 

Agricultural Research and Development: Public 
and Private Investments Under Alternative 
Markets and Institutions (1996) (available at 
<http:///www.ers.usda.gov/publications/aer735/>) .......... 15 

8 T. Everett, The New York Botanical Garden 

Illustrated Encyclopedia of Horticulture (1981) ............ 
3 

H.R. Rep. No. 464, 106th Cong., 1st Sess. (1999) ............ 
19, 20 

H.R. Rep. No. 699, 103d Cong., 2d Sess. (1994) .................. 
15 

H.R. Rep. No. 1923, 82d Cong., 2d Sess. (1952) .................. 
11 

1077 Off. Gaz. Pat. Office (Apr. 21, 1987) .............................. 
6 

S. Rep. No. 275, 97th Cong., 1st Sess. (1982) ....................... 
14 

S. Rep. No. 1246, 91st Cong., 2d Sess. (1970) ...................... 
22 

S. Rep. No. 1979, 82d Cong., 2d Sess. (1952) ........................ 
11 

The New Royal Horticultural Society Dictionary of 

Gardening (A. Huxley, et al. eds., 1992): 

Vol. 3 .................................................................................... 

4 

Vol. 4 .................................................................................... 
3 

The Ohio State Univ., 2001 Ohio Vegetable Produc- 
tion Guide (2001) (available at <http://www.ag.ohio- 
state/edu/˜ohioline/b672/b672_20.html>) ........................... 3 

United States Patent and Trademark Office, Manual 
of Patent Examining Procedure (7th ed., 1st rev. 

Feb. 2000) ................................................................................ 
26 

U.S. Patent: 

No. 5,491,295 (Feb. 13, 1996) ............................................... 

25 

No. 5,506,367 (Apr. 9, 1996) ................................................. 
25 

No. 5,608,142 (Mar. 4, 1997) ................................................. 
23 

No. 5,668,294 (Sept. 16, 1997) .............................................. 29 

VIII 

Miscellaneous—Continued: Page 

No. 5,763,245 (June 9, 1998) ................................................. 
29 

No. 6,034,298 (Mar. 7, 2000) ................................................. 
29 

No. 6,166,290 (Dec. 26, 2000) ................................................ 29 

In the Supreme Court of the United States 

No. 99-1996 

J.E.M. AG SUPPLY, INC., DBA FARM ADVANTAGE, 
INC., ET AL., PETITIONERS 

v. 

PIONEER HI-BRED INTERNATIONAL, INC. 

ON WRIT OF CERTIORARI 
TO THE UNITED STATES COURT OF APPEALS 
FOR THE FEDERAL CIRCUIT 

BRIEF FOR THE UNITED STATES 
AS AMICUS CURIAE SUPPORTING RESPONDENT 

INTEREST OF THE UNITED STATES 

This case presents the question whether plants that are 
modified by man and reproduced from seed (specifically, 
man-modified corn seed plants) are patentable under 35 
U.S.C. 101. The United States has a substantial interest in 
the resolution of that question because Congress, pursuant 
to the Patent Clause of the Constitution, U.S. Const. Art. I, 
§ 8, Cl. 8, has charged the United States Patent and 
Trademark Office (PTO), an agency of the Department of 
Commerce, with responsibility for examining all patent ap- 
plications to ensure that they satisfy the statutory conditions 
for patentability. See 35 U.S.C. 131 (1994 & Supp. V 1999). 
For more than 15 years, the PTO has issued patents under 
35 U.S.C. 101 for plants that are reproduced from seed and 
otherwise qualify for protection. The United States also has 

(1) 

2 

an interest in preserving the balance that Congress has 
struck among the competing policy interests that underlie 
the patent system. Those interests include establishing and 
preserving incentives for innovation, disseminating useful 
knowledge, and preserving competition. 

At this Court’s invitation, the United States filed a brief 
as amicus curiae in this case at the petition stage. 

STATEMENT 

1. Three different statutory schemes are relevant to this 
case. 

Utility Patents. 

Section 101 of Title 35, which has its 

origins in the Patent Act of 1790, ch. 7, 1 Stat. 109, provides 
that “[w]hoever invents or discovers any new and useful 
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 [Title 35].” 35 U.S.C. 101. Patents issued under Section 
101 are known as “utility patents,” because of the require- 
ment that a patentable invention be “useful.” See generally 
TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S. Ct. 
1255, 1260-1263 (2001); see also Brenner v. Manson, 383 U.S. 
519, 528-536 (1966). Holders of utility patents have the right 
to exclude others from making, using, or selling their 
patented invention in the United States during the 20-year 
term of the patent. 35 U.S.C. 154(a). Utility patents are 
distinct from “design patents,” which are issued under 35 
U.S.C. 171 for “new, original and ornamental design[s]” for 
articles of manufacture. 

The Plant Patent Act. The Plant Patent Act of 1930 
(PPA), ch. 312, 46 Stat. 376 (35 U.S.C. 161-164 (1994 & Supp. 
V 1999)), authorizes the PTO to grant “plant patents” cover- 
ing new and distinct varieties of asexually reproduced 
plants. Asexual (or vegetative) reproduction of plants in- 
volves regeneration of vegetative tissues or organs into self- 

3 

supporting plants with properties similar to those of the 
source plant. Asexually reproduced plants are reproduced 
from a single parent, through processes such as grafting, 
budding, cutting, rooting, and layering.1 Asexual repro- 
duction may occur naturally, or as part of human plant- 
breeding. Either way, an asexually reproduced plant is 
genetically identical to its parent. See 8 T. Everett, The 
New York Botanical Garden Illustrated Encyclopedia of 
Horticulture 2801 (1981) (“Plants resulting from vegetative 
propagation are essent[i]ally extensions of the old ones, 
having a separate physical existence, but identical geneti- 
cally.”). Accordingly, a plant that is reproduced asexually 
will be capable of reproducing sexually through seed if, but 
only if, its parent was capable of such reproduction.2 

1 A cutting, for instance, is propagated by growing roots out of a stem 
or other vegetative part detached from the parent plant. See 4 The New 
Royal Horticultural Society Dictionary of Gardening 615 (A. Huxley, et 
al. eds., 1992). Vegetative propagation is used primarily for reproducing 
plants, such as most fruit, nut, and woody crop species, that do not 
produce from seeds with consistent genetic characteristics. See C. Chong, 
“Plant Propagation,” reprinted in 1 CRC Handbook of Plant Science in 
Agriculture 91 (B. Christie & A. Hanson eds., 1987). Asexual propagation 
also can allow more rapid production of plants because it eliminates 
problems associated with seed dormancy and germination. Id. at 92. 

2 For example, most commercially grown avocados come from plants 
that are reproduced asexually through grafting. But the avocado seed, 
even from a grafted parent, is capable of producing a new cultivar. See 
College of Tropical Agric. & Human Res., Univ. of Haw., What Makes a 
Good Avocado Cultivar Good 1 (Mar. 1999) (available at <http:// 
www2.ctahr.hawaii.edu/oc/freepubs/pdf/F_N-1.pdf>). Peppermint also is 
reproduced asexually (through cuttings from the root system of the source 
plant), but peppermint does not produce seeds and it is incapable of sexual 
reproduction. See The Ohio State Univ., 2001 Ohio Vegetable Production 
Guide (Bulletin 672-01) 3 (available at <http//www.ag.ohio-state.edu/˜ 
ohioline/b672/b672_20.html>. 

4 

Section 161 of Title 35 provides: 

Whoever invents or discovers and asexually repro- 
duces any distinct and new variety of plant, including 
cultivated sports, mutants, hybrids, and newly found 
seedlings, other than a tuber propagated plant or a plant 
found in an uncultivated state, may obtain a patent 
therefor, subject to the conditions and requirements of 
this title. 

35 U.S.C. 161. Section 161 further provides that, as a gen- 
eral rule, “[t]he provisions of [Title 35] relating to patents for 
inventions shall apply to patents for plants.” 35 U.S.C. 161. 
Section 162, however, eases the “written description” and 
“distinct[] claim[]” requirements that apply to utility patents 
under 35 U.S.C. 112. In the case of an asexually reproduced 
plant, the applicant’s written description of the invention 
need only be “as complete as is reasonably possible,” and the 
subject matter that is claimed as the invention may be 
described “in formal terms,” by reference “to the plant 
shown and described.” 35 U.S.C. 162. 

The PTO has granted more than 10,000 plant patents 
under Section 161. 

The Plant Variety Protection Act. The Plant Variety 
Protection Act (PVPA), Pub. L. No. 91-577, Tit. II, § 42(a), 
84 Stat. 1547, enacted in 1970, provides protection to novel 
varieties of sexually reproduced plants. In sexually repro- 
duced plants, the fertilization process introduces genetic 
variation into the plant line.3 
To receive protection under 

3 In sexual reproduction, the genes controlling plant characteristics 
are distributed in pollen (the male genes) and in ovules (the female genes). 
Pollen grains enter the base of the developing ovule, the genetic material 
combines, and the plant embryo forms inside the seed husk. See 3 The 
New Royal Horticultural Society Dictionary of Gardening 642-643 (A. 
Huxley, et al. eds., 1992). After the seed has fully developed, it will, under 
the appropriate conditions, germinate and develop into another plant that 

5 

the PVPA, therefore, a new plant variety that is reproduced 
from seed must be clearly distinct from other known varie- 
ties; uniform, such that variations in the sexually reproduced 
plants are describable, predictable, and commercially accept- 
able; and stable, so that the essential and distinctive 
characteristics of the variety are present in sexually 
reproduced offspring. See 7 U.S.C. 2402(a) (1994 & Supp. V 
1999). 

The Department of Agriculture issues plant variety 
certificates under the PVPA to breeders of novel varieties of 
sexually reproduced plants. See 7 U.S.C. 2483 (1994 & Supp. 
V 1999) (“Contents and term[s] of plant variety protection”). 
Plant variety certificates entitle the holder to the equivalent 
of a property interest in the plant variety, for a term of 20 or 
25 years. 7 U.S.C. 2532, 2541. 

2. This Court has addressed the relationship between 
utility patenting under Section 101, and protection under the 
PPA and the PVPA. In Diamond v. Chakrabarty, 447 U.S. 
303 (1980), this Court held that a genetically engineered 
bacterium capable of breaking down crude oil, even though a 
living thing, was patentable subject matter under the plain 
language of Section 101. Id. at 305, 308-310. In so holding, 
the Court rejected the argument (made by the government 
in that case) that Congress’s adoption of the PPA and PVPA 
was evidence of the exclusion of living things from the scope 
of patentable subject matter under Section 101. Id. at 310- 
314.4 

expresses the genetic characteristics of the combination of its parents’ 
genes. Seed propagation is usually the cheapest method of plant 
reproduction. It is used for cereal grains and many other popular crops. 
C. Chong, “Plant Propagation,” reprinted in 1 CRC Handbook of Plant 
Science in Agriculture 91 (B. Christie & A. Hanson eds., 1987). 

4 Well before Chakrabarty, the PTO had held that bacteria are not 
“plants” for purposes of obtaining patent protection under the PPA. See 
In re Arzberger, 112 F.2d 834, 835-836 (C.C.P.A. 1940). Likewise, the 

6 

Five years after Chakrabarty, and in reliance on that 
decision, the PTO’s Board of Appeals and Interferences held 
that 35 U.S.C. 101 authorizes utility patent protection for 
sexually reproduced plants (specifically, corn varieties). Ex 
parte Hibberd, 227 U.S.P.Q. (BNA) 443 (1985). The Board 
deemed it established by Chakrabarty “that Section 101 
includes man-made life forms, including plant life.” Id. at 
444. The Board further rejected the argument that 
Congress implicitly carved-out from the scope of Section 101 
the subject matter covered by the PPA and PVPA. Again 
deeming this Court’s analysis in Chakrabarty to be 
dispositive, the Board explained that neither the PPA nor 
the PVPA restricts or limits the scope of patentable subject 
matter under Section 101. Id. at 445. Nor, the Board held, 
did protecting plants under Section 101 create irreconcilable 
practical conflicts with the PPA or PVPA. Id. at 446-447.5 

During the 16 years since Hibberd, the PTO has issued 
hundreds of utility patents protecting sexually reproduced 
plants under Section 101. As of April 2001, approximately 
1800 utility patents included claims to plants, seeds, plant 
parts, or plant tissues. Approximately 1300 of those utility 
patents had an explicit claim to a plant seed. 

3. Respondent in this case holds utility patents granted 
under Section 101 for sexually reproduced corn hybrids. Re- 
spondent filed suit against petitioners, alleging that they 
infringed utility patents covering 17 corn seed products by 
making, using, and selling or offering for sale seed corn of 

Department of Agriculture does not issue plant variety certificates for 
bacteria. See 7 U.S.C. 2401(a)(9) (defining “variety”). 

5 In 1987, the PTO published a Notice in its Official Gazette stating 
that it “considers nonnaturally occurring non-human multicellular living 
organisms * * * to be patentable subject matter within the scope of 
35 U.S.C. 101.” 1077 Off. Gaz. Pat. Office 24 (Apr. 21, 1987). 

7 

respondent’s patented varieties. Petitioners are not author- 
ized sales representatives of respondent. Pet. App. 14-15. 

Petitioners asserted, among other defenses, the defense of 
patent invalidity. Petitioners also asserted a counterclaim 
seeking a declaratory judgment that all of the utility patents 
relied upon in respondent’s complaint are invalid. Pet. App. 
15-16. Petitioners moved for summary judgment on their 
counterclaim, arguing that patents directed to sexually re- 
produced plants are not patentable under Section 101, 
because Congress intended the PVPA to be the exclusive 
means of securing protection for sexually reproduced plants. 
Id. at 16. 

The district court denied petitioners’ motion for summary 
judgment and held that Section 101 authorizes the issuance 
of patents covering sexually reproduced plants. Pet. App. 
13-39. Relying upon Chakrabarty as well as the plain 
language and legislative histories of Section 101, the PPA, 
and the PVPA, the district court concluded that the text of 
Section 101 authorizes the grant of patents covering plants, 
id. at 22, and that Congress’s intention in adopting the PPA 
and PVPA was not to limit Section 101, but rather “to 
extend patent protection to an area [historically] not often 
able to meet the requirements” for protection under Section 
101, id. at 29. 

Although the district court recognized that the protection 
afforded by the PVPA differs somewhat from the protection 
available under Section 101, it held that there is no irrec- 
oncilable conflict between the two forms of protection. Pet. 
App. 30-34. The district court observed that if Congress 
perceived any inconsistency between utility patent protec- 
tion and the PVPA, it could have intervened at any time 
after the PTO began issuing utility patents for plants in 
1985. Id. at 36. 

4. The court of appeals affirmed. Starting from the pre- 
mise that “Congress plainly contemplated that [Section 101] 

8 

would be given wide scope,” Pet. App. 4 (quoting Chakra- 
barty, 447 U.S. at 308), the court of appeals found nothing in 
Section 101, the PPA, or the PVPA that narrows that broad 
scope by excluding plants from eligibility for protection, id. 
at 6-8. Nor did the court of appeals find any conflict between 
utility patent protection for sexually reproduced plants and 
certification of such plants under the PVPA. The court 
determined “that the asserted conflict [between the stat- 
utes] is simply the difference in the rights and obligations 
imposed,” not any difficulty in applying the two statutes 
simultaneously. Id. at 9. 

SUMMARY OF ARGUMENT 

1. In Diamond v. Chakrabarty, 447 U.S. 303 (1980), this 
Court held that patentable subject matter under 35 U.S.C. 
101 “include[s] anything under the sun that is made by man.” 
447 U.S. at 309. The Chakrabarty Court rejected the argu- 
ment that the PPA and the PVPA demonstrate a congres- 
sional understanding that living things are not protectable 
under Section 101. Specifically addressing protection of 
sexually reproduced plants, the Court held that “[t]here is 
nothing in [the PVPA’s] language or history to suggest that” 
the law was enacted because Section 101 precluded 
patenting of living things. Id. at 313. 

Petitioners urge the Court to overrule Chakrabarty’s 
construction of Section 101 and to revisit Chakrabarty’s 
reasoning concerning the relationship between Section l01 
and the PVPA. Those aspects of Chakrabarty, however, are 
quintessentially deserving of repose. Chakrabarty involved 
statutory rather than constitutional construction, and 
Congress could have overridden this Court’s interpretation 
of Section 101 if it disagreed. In the two decades since 
Chakrabarty, plant breeders and genetic engineers have 
invested time and resources in reliance upon the availability 
of patent protection, and such protection has proved 

9 

workable in practice. Finally, petitioners’ arguments for 
overruling Chakrabarty are not materially different from 
the arguments the Court rejected 21 years ago. 

2. Congress has acquiesced, both implicitly and explic- 
itly, in the patenting of sexually reproduced plants. Con- 
gress has not overruled Chakrabarty, even though legisla- 
tors have acknowledged the PTO’s practice of granting 
utility patents for sexually reproduced plants. In 1999, 
moreover, Congress added a new provision to Title 35 (35 
U.S.C. 119(f ) (Supp. V 1999)), which assumes the patentabil- 
ity of plants under Section 101. 

3. Petitioners are incorrect in arguing that specific 
provisions of the PVPA are irreconcilable with utility patent 
protection for sexually reproduced plants. All of the expert 
bodies that have considered the relationship between the 
PVPA and Section 101—including the Senate Judiciary 
Committee, the PTO, the Department of Agriculture’s Plant 
Variety Protection Office, and the United States Court of 
Appeals for the Federal Circuit—agree that both statutes 
can be applied to sexually reproduced plants without any 
necessary conflict between them. The PVPA and Section 
101 simply provide different protection for such plants. In 
particular, the PVPA’s authorization of non-infringing uses 
that would not be permissible uses of a patented plant (see, 

e.g., 7 U.S.C. 2543, 2544), does not show that patenting sexu- 
ally reproduced plants defeats the purposes of the PVPA. 
The PVPA’s defenses expressly apply only to infringement 
actions brought under the PVPA, not to actions under 
Section 101 or other competition-related statutes. Further- 
more, the lesser degree of protection afforded to holders of 
plant variety certificates matches the lesser contribution to 
public knowledge that an inventor makes when applying for 
a plant certificate, as compared to a utility patent. As a 
general matter, moreover, there is no prohibition on protect- 

10 

ing qualifying inventions under more than one statutory 
scheme. 

Petitioners’ objections to protecting new plant technolo- 
gies under Section 101 ultimately reduce to the argument 
that Section 101 affords plant developers too much protec- 
tion against those who wish to use the developers’ new 
technologies without paying for a license. That objection is 
for the legislature, not the courts, to address. Intellectual 
property protection rests upon the assumption that 
rewarding inventors benefits the public as well. That logic is 
as valid in the field of agriculture as it is in other areas of 
endeavor. If petitioners can show that Section 101 over- 
rewards plant developers for their novel and useful dis- 
coveries, then petitioners should take their evidence to 
Congress. 

ARGUMENT 

I. STARE DECISIS PRINCIPLES FORECLOSE PETI- 
TIONERS’ ARGUMENTS BASED UPON THE TEXT 

OF SECTION 101 AND THE LEGISLATIVE HIS- 
TORIES OF THE PPA AND THE PVPA 

Petitioners contend (Br. 19-21, 27-43) that passage of the 
PPA and the PVPA confirmed a longstanding understanding 
that plants are outside the scope of patentable subject 
matter under Section 101. In particular, petitioners assert 
that “[t]he PVPA was enacted [in 1970] because sexually 
reproducing plant varieties and their seeds were not and had 
never been intended by Congress to be included within the 
classes of things patentable under Title 35.” Br. 42-43. 

This Court rejected that very argument in Diamond v. 
Chakrabarty, 447 U.S. 303 (1980). Initially, the Chakrabarty 
Court held that Congress’s grant of patent authority in 
Section 101 is broad on its face. Id. at 308-310. Although “a 
new plant found in the wild is not patentable subject 
matter,” id. at 309, the Court explained that the subject 

11 

matter potentially patentable under Section 101 “include[s] 
anything under the sun that is made by man,” ibid. (quoting 
S. Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No. 
1923, 82d Cong., 2d Sess. 6 (1952)); accord Diamond v. Diehr, 
450 U.S. 175, 182 (1981). Specifically, living things modified 
by man are within the scope of Section 101 because they 
qualify as either a “manufacture” or a “composition of 
matter” under the ordinary dictionary definitions of those 
terms. 447 U.S. at 308. 

The Chakrabarty Court then rejected the argument that 
Congress’s enactment of the PPA and the PVPA reflected 
an understanding that plants could never be patented under 
Section 101. 447 U.S. at 310-314. The Court explained that 
plants historically were thought ineligible for utility patent 
protection, not as a matter of law, but as a matter of practice, 
because (1) plants were products of nature rather than of 
man and (2) they could not be described with sufficient 
precision to satisfy the “written description” requirement of 
the general patent law, see 35 U.S.C. 112. 447 U.S. at 311- 
312. Congress dispelled the former concern and specifically 
addressed the latter when, in 1930, it drafted the PPA’s 
special provisions for patenting asexually reproduced plants. 
Id. at 312-313. 

The Court noted in Chakrabarty that when 

Congress enacted the PPA, “[n]o Committee or Member of 
Congress * * * expressed the broader view, now urged by 
the petitioner, that the terms ‘manufacture’ or ‘composition 
of matter’ exclude living things.” Id. at 312. 

The Court further held that passage of the PVPA in 1970 
did not suggest that utility patents are unavailable for living 
things. Sexually reproduced plants, the Court determined, 
were not made patentable under the PPA because it was not 
possible in 1930 to produce plants with consistent genetic 
qualities through seed. 447 U.S. at 313. When sexual repro- 
duction of uniform and stable plant varieties became possi- 
ble, Congress enacted the PVPA as an analog to the PPA. 

12 

See id. at 311-312, 313; 7 U.S.C. 2402(a) (1994 & Supp. V 
1999). “There is nothing in [the PVPA’s] language or his- 
tory,” the Court concluded, “to suggest that it was enacted 
because § 101 did not include living things.” 447 U.S. at 313. 

The four dissenting Justices in Chakrabarty particularly 
disagreed with the Court’s analysis of the PPA and the 
PVPA. 447 U.S. at 319-321 (Brennan, J., dissenting). The 
dissenting Justices viewed the PPA and PVPA as “dis- 
positive” (id. at 319 n.2), because if plants were within the 
scope of Section 101, they “could have been patented without 
new legislation” (id. at 320). Those Justices read the 
legislative history of the PPA and PVPA as indicating that 
Congress intended to realize “benefits * * * from 
extending patent protection to plants” that were “previously 
unavailable” because plants were outside the scope of paten- 
table subject matter under Section 101. Ibid. 

Petitioners challenge (Br. 28-31) Chakrabarty’s holding 
(reaffirmed in Diamond v. Diehr, 450 U.S. at 182) that pat- 
entable subject matter under Section 101 “include[s] any- 
thing under the sun that is made by man.” 447 U.S. at 309. 
According to petitioners, this Court’s interpretation of Sec- 
tion 101 rests on “a snippet of a sentence from the legislative 
history” (Br. 30-31) that is taken out of context. Repeating 
another argument made and rejected in Chakrabarty, peti- 
tioners also maintain (Br. 19) that “there would have been no 
reason for Congress to have passed the 1930 PPA” if plants 
were already patentable under Section 101.6 Relatedly, peti- 

6 The government argued as petitioner in Chakrabarty that enact- 
ment of the PVPA in 1970 “enlarged the class of protectable living things 
by authorizing patent-type protection for new types of sexually repro- 
duced plants,” and that the PVPA “would be redundant” if Congress had 
thought that sexually reproduced plants already were protectable under 
Section 101. See Brief for the Petitioner (Chakrabarty Pet. Br.), No. 79- 
136, at 22. The government cited extensive legislative history in support 
of the view that Section 101, the PPA, and the PVPA all provide non- 

13 

tioners suggest (Br. 33-37) that, under FDA v. Brown & Wil- 
liamson Tobacco Corp., 529 U.S. 120 (2000), the mere fact 
that Congress established a special regime to protect sexu- 
ally reproduced plants is sufficient grounds to deem utility 
patent protection unavailable. That argument is just a varia- 
tion of the argument, rejected in Chakrabarty, that Con- 
gress’s enactment of plant-specific laws showed that Con- 
gress deemed such laws necessary to fill gaps in the Patent 
Act. See 447 U.S. at 311; see also note 10, infra. 

This Court should not revisit the holdings of Chakrabarty. 
Indeed, traditional principles of stare decisis weigh power- 
fully against the reconsideration of Chakrabarty that peti- 
tioners urge. 

First, stare decisis has “special force” where, as here, a 
statutory construction is involved. Patterson v. McLean 
Credit Union, 491 U.S. 164, 172 (1989). When only the inter- 
pretation of a congressional enactment is at issue, Congress 
can correct, through further legislation, any perceived error 
in the Court’s decisions. Id. at 172-173; Illinois Brick Co. v. 
Illinois, 431 U.S. 720, 736 (1977). If Congress has not acted 
to override this Court’s understanding of a statute, changing 
the Court’s interpretation threatens to usurp congressional 
authority and to discourage Congress from fulfilling its 
assigned constitutional role. See Neal v. United States, 516 
U.S. 284, 296 (1996) (“Were we to alter our statutory inter- 
pretations from case to case, Congress would have less rea- 
son to exercise its responsibility to correct statutes that are 
thought to be unwise or unfair.”).7 

overlapping protection—the very same legislative history on which 
petitioners now rely. Compare id. at 24 (quoting Senate Report on PPA) 
with Pet. Br. 38 (quoting same passage); and compare Chakrabarty Pet. 
Br. 28 (quoting House Report on PVPA and citing Senate Report) with 
Pet. Br. 40 (quoting same passages of House and Senate Reports). 

7 The principle of deference to congressional legislation is not tem- 
pered in this case by the common-law tradition. Cf. State Oil Co. v. Khan, 

14 

Congress has had 21 years to consider the implications of 
Chakrabarty and, if it disagreed with the Court, to make a 
legislative response. Sixteen years have passed since the 
PTO, relying upon Chakrabarty, approved utility patents for 
sexually reproduced corn varieties. Congress has never 
expressed disagreement with those decisions. To the con- 
trary, Congress recently expressed its understanding that 
sexually reproduced plants are patentable under Section 101. 
See Point II, infra. The Court should accord “weight to 
[Congress’s] continued acceptance of ” Chakrabarty. 

Hilton 

v. South Carolina Pub. Rys. Comm’n, 502 U.S. 197, 202 
(1991). 

Second, the agriculture industry’s reliance upon the 
availability and enforceability of utility patents for sexually 
reproduced plants makes this a “classic case” for adherence 
to the earlier decision. Planned Parenthood v. Casey, 505 
U.S. 833, 855 (1992). Because financial reliance is generally 
inherent in developing an invention and securing a patent, 
Congress has been particularly concerned with “doctrinal 
stability in the field of patent law.” Panduit Corp. v. All 
States Plastic Mfg. Co., 744 F.2d 1564, 1573 (Fed. Cir. 1984) 
(quoting S. Rep. No. 275, 97th Cong., 1st Sess. 5 (1982)). For 
example, Congress consolidated appeals of cases involving 
patent claims in the Federal Circuit specifically to address 
the “significant problem” of uncertainty in judicial 
precedent. Id. at 1574 (quoting S. Rep. No. 275, supra, at 5). 

As Congress and the Department of Agriculture have 
found, “[t]he development of new plant varieties is arduous, 
time-consuming, and costly. Many years must be spent in 
the development of a single new variety, with no guarantee 

522 U.S. 3, 20-21 (1997). Section 101 is to be read strictly in accordance 
with its broad terms, without “limitations and conditions which the 
legislature has not expressed.” Chakrabarty, 447 U.S. at 308 (quoting 
United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933)). 

15 

of its success or profit.” H.R. Rep. No. 699, 103d Cong., 2d 
Sess. 9, 18 (1994) (House Agriculture Committee Report on 
PVPA amendments, quoting Department of Agriculture 
testimony). On a daily basis for at least 16 years, plant 
breeders have engaged in “advance planning of great 
precision” with the assumption that utility patent protection 
would be available for qualifying plant inventions. Casey, 
505 U.S. at 856. Likewise, genetic engineers have under- 
taken the painstaking work of inserting new genes into 
plants and recombining plant genes, to give the resulting 
transgenic plants new and improved properties.8 Plant 
breeders and genetic engineers have made large invest- 
ments in the intellectual property that is protected by their 
utility patents.9 Given the magnitude of the industry’s 
reliance upon the current regime that allows protection 
under Section 101 as well as under the PPA and the PVPA, 
and given Congress’s special concern for stability in inter- 
preting patent law, this Court should be particularly hesitant 
to revisit Chakrabarty’s analysis. See Payne v. Tennessee, 
501 U.S. 808, 828 (1991) (“Considerations in favor of stare 
decisis are at their acme in cases involving property and 
contract rights, where reliance interests are involved.”). 

8 More than 1600 utility patents claim transgenic plant technology, 
including claims to plants, seeds, and plant tissues. Genetically engineered 
plants are often protected most effectively under Section 101, rather than 
under the PPA or the PVPA, because the invention typically involves 
more than one plant variety, and may relate to a whole species. See p. 23, 
infra. 

9 In 1992, the agriculture industry in the United States spent $400 
million on research and development associated with plant breeding, as 
compared to $97 million in 1980. Economic Research Serv., U.S. Dep’t of 
Agric., Agricultural Research and Development: Public and Private In- 
vestments Under Alternative Markets and Institutions (Agricultural 
Economic Report No. 735) 37, Table 10 (1996) (availalble at <http:// 
www.ers.usda.gov/publications/aer735/>). 

16 

Third, there is no indication that granting both utility 
patent protection under Section 101 and certification under 
the PVPA “has proven to be intolerable simply in defying 
practical workability.” Casey, 505 U.S. at 854. Petitioners 
argue (Br. 22-24, 43-46) that the utility patent and PVPA 
regimes “conflict[]” in certain details. We explain below that 
those asserted conflicts do not exist. See Point III, infra. 
The important point for present purposes, however, is that 
utility patent protection and PVPA certification indisputably 
are coexisting in practice. Petitioners acknowledge (Br. 5) 
that the subjects of some of the utility patents at issue in this 
very case are also the subjects of plant variety certificates. 
In light of the practical reality that, for more than 15 years, 
plant inventions protected under the PVPA have been 
patentable under Section 101 if they meet the requirements 
of Title 35, by now there would be ample evidence that 
simultaneous protection produces “intolerable” conflicts 
between the statutes—if that were the case. 

Fourth, there has been no material change in the facts 
surrounding Section 101 and the PVPA since Chakrabarty, 
see Casey, 505 U.S. at 854-855, nor even a change in the 
evidence of contemporaneous congressional intent being put 
before the Court, see NLRB v. International Longshore- 
men’s Association, 473 U.S. 61, 84 (1985). See also note 6, 
supra. Petitioners’ arguments were not found persuasive 
when put forward in Chakrabarty, and, having been rejected 
two decades ago, they should be far less persuasive today. 

In light of those considerations, the inquiry in this case 
should be whether there is “some special reason,” aside from 
arguments about the correctness of Chakrabarty, for re- 
opening the Court’s constructions of Section 101 and the 
PVPA. Casey, 505 U.S. at 864. No such special reason 
exists. 

17 

II. CONGRESSIONAL ACTION SINCE CHAKRA- 
BARTY AND HIBBERD CONFIRMS THAT SEXU- 
ALLY REPRODUCED PLANTS ARE PATENTABLE 
UNDER SECTION 101 

Petitioners contend (Br. 24-26) that, apart from whether 
Congress intended to preclude utility patent protection 
for plants when it enacted the PVPA in 1970, later 
Congresses have understood that the PVPA’s protection is 
exclusive of patent protection under Section 101. Legislative 
developments since Chakrabarty and Ex parte Hibberd, 227 
U.S.P.Q. (BNA) 443 (Bd. Pat. App. & Interf. 1985), however, 
disprove petitioners’ view. 

The most conspicuous fact about Congress’s reaction to 
Chakrabarty and Hibberd is that Congress has not stopped 
the PTO from issuing utility patents for sexually reproduced 
plants under Section 101. Cf. Blue Chip Stamps v. Manor 
Drug Stores, 421 U.S. 723, 733 (1975) (“Congress’s failure to 
reject [a judicial construction of the Securities and Exchange 
Act] argues significantly in favor of acceptance of [the lower 
courts’ construction] by this Court.”); Blau v. Lehman, 368 
U.S. 403, 412-413 & n.13 (1962) (same). That failure to act is 
especially significant because Congress has amended the 
PVPA and the Patent Act in other respects since Hibberd, 
and therefore had repeated opportunities to override the 
PTO’s application of Section 101 if it disagreed. Yet, during 
the late 1980s and early 1990s, legislators addressed related 
questions under the patent laws without suggesting that 
Congress should override Hibberd. 

In 1988, the PTO’s issuance of the first patent for a 
transgenic animal (the “Harvard mouse”) prompted congres- 
sional interest in Chakrabarty. Soon thereafter, several bills 
(none of which became law) were introduced to address the 
issuance of patents on animals and humans. For example, 
the Transgenic Animal Patent Reform Act (H.R. 4970), 

18 

which the House approved during the 100th Congress, 
addressed farm uses of patented animals, and would have 
prohibited the patenting of human beings, but it would not 
have placed any restriction on the patentability of plants. 
See 134 Cong. Rec. 23,564, 23,565-23,566 (1988). 

During the 101st Congress, Senator Hatfield introduced 
legislation that would have imposed a moratorium on patent- 
ing animal life. In so doing, he criticized the PTO’s appli- 
cation of Chakrabarty to that technology. 136 Cong. Rec. 
2564, 2565 (1990). Senator Hatfield, however, stressed that 
his bill was “not an attempt to halt the promising field of 
genetic engineering,” and that “[t]he various techniques of 
biotechnology * * * when used responsibly, have enormous 
potential in a number of areas including * * * agricultural 
products.” Id. at 2564. Senator Hatfield thus sought “to 
rescind” PTO precedent that allowed the patenting of ge- 
netically engineered animals (id. at 2565), without affecting 
PTO precedent that allowed the patenting of sexually repro- 
duced plants. Representative Cardin, who introduced Sena- 
tor Hatfield’s bill in the 102d Congress, made an almost 
identical statement regarding his legislation. 138 Cong. Rec. 
9590 (1992). Thus, at a time when members of Congress 
were actively considering the PTO’s patenting of living 
things and its implementation of Chakrabarty, there was no 
movement to stop the PTO from issuing patents for sexually 
reproduced plants. 

During the 104th Congress, Senator Kerrey went one step 
further when he introduced a set of proposed amendments to 
the PVPA. In his explanation of the proposed amendments, 
Senator Kerrey explicitly noted that “[b]oth asexually and 
sexually-reproduced plants which have been developed by 
traditional breeding, genetic engineering, tissue culture, and 
various other methods have received utility patents.” 139 
Cong. Rec. 19,979, 19,980 (1993). There is no evidence of 
legislative disagreement with that practice. 

19 

In 1999, Congress acquiesced affirmatively in Chakra- 
barty and Hibberd. That year, Congress amended 35 U.S.C. 
119 to enable utility patent applicants in the United States to 
obtain a right of priority retroactively, back to the date on 
which they filed a plant breeder’s rights application in a 
qualifying foreign country. Pub. L. No. 106-113, Tit. II, Div. 
B, § 1000(a)(9), 113 Stat. 1536. New Section 119(f) of Title 35 
provides: 

Applications for plant breeder’s rights filed in a 
[World Trade Organization (WTO)] member country (or 
in a foreign [International Convention for the Protection 
of New Varieties of Plants (UPOV)] Contracting Party) 
shall have the same effect for the purpose of the right of 
priority under subsections (a) through (c) of this section 
as applications for patents, subject to the same condi- 
tions and requirements of this section as apply to appli- 
cations for patents. 

35 U.S.C. 119(f) (Supp. V 1999). 

The language of Section 119(f ), as part of the general 
provisions of Title 35 rather than the PPA (35 U.S.C. 161-164 
(1994 & Supp. V 1999)), suggests recognition that plants are 
patentable under Section 101. And if there were any doubt 
on that score, it is resolved by the Conference Report that 
accompanied new Section 119(f ). See H.R. Rep. No. 464, 
106th Cong., 1st Sess. 145-146 (1999). The Conference 
Report explains that under Section 119 as it stood before the 
amendment, plant breeders who had secured intellectual 
property protection in countries that “provide only a sui 
generis system of protection for plant varieties,” and do not 
issue patents or inventor’s certificates for plants, could not 
obtain priority rights in the United States based upon their 
foreign filings. Ibid. Under new Section 119(f ), applicants 
could “base a priority claim on a foreign application for a 
plant breeder’s right [that is not a patent or an inventor’s 

20 

certificate] when seeking plant patent or utility patent 
protection for a plant variety in this country.” Id. at 146 
(emphasis added). As of 1999, therefore, Congress clearly 
understood and accepted that utility patents are available 
for plant varieties under Section 101. 

In an effort to show that recent Congresses have not 
deemed sexually reproduced plants patentable, petitioners 
cite (Br. 25-26) a 1998 amendment to 35 U.S.C. 163, which 
addressed the enforcement of plant patents against the 
unauthorized use, sale, and importation of plant parts. See 
Plant Patent Amendments Act of 1998, Pub. L. No. 105-289, 
§ 3, 112 Stat. 2781. Petitioners argue that “[t]here was no 
[similar] amendment to § 101 because none was needed since 
§ 101 does not afford protection to plant varieties.” Br. 25- 

26. Petitioners are right that no amendment to the general 
provisions of the Patent Act was needed, but that was so for 
a different reason. Congress’s statement of Findings and 
Purposes in Public Law No. 105-289, § 2, 112 Stat. 2780, 
explains that holders of plant patents under the PPA were 
losing royalties due to the sale of plant parts from illegally 
reproduced and imported plants, and that the amendment to 
Section 163 was needed to protect against such unauthorized 
sales. The 1998 amendment therefore closed, for plant 
patents, a loophole that Congress had closed four years 
earlier for utility patents. As amended in 1994, 35 U.S.C. 
271(c) provides: 

Whoever offers to sell or sells within the United 
States or imports into the United States a component of 
a patented machine, manufacture, combination or com- 
position, or a material or apparatus for use in practicing a 
patented process, constituting a material part of the 
invention, knowing the same to be especially made or 
especially adapted for use in an infringement of such 
patent, and not a staple article or commodity of 

21 

commerce suitable for substantial noninfringing use, 
shall be liable as a contributory infringer. 

The Uruguay Round Agreements Act, Public Law No. 103- 
465, Tit. V, § 533(a)(2), 108 Stat. 4989, substituted, in the 
first lines of the above paragraph, the phrase “offers to sell 
or sells within the United States or imports into the United 
States” for the word “sells.” See 35 U.S.C. 271 note 
(“Amendment of Section”). Having amended the general 
provisions of the Patent Act in 1994 to address infringing 
imports, Congress had no need to make any further amend- 
ment to protect utility patent holders against infringing 
imported plant parts. 

III. GRANTING UTILITY PATENTS FOR SEXUALLY 
REPRODUCED PLANTS UNDER SECTION 101 
DOES NOT CONFLICT WITH THE PVPA 

Petitioners also argue (Br. 22-24, 43-46) that Congress 
must have meant to narrow the scope of patentable subject 
matter under Section 101 when it enacted the PVPA, 
because the terms and conditions under which plant 
breeders hold plant variety certificates are inconsistent with 
the terms and conditions surrounding utility patents. That 
argument for narrowing the construction of Section 101 that 
this Court announced in Chakrabarty must overcome a very 
high hurdle. “[I]t is a ‘cardinal rule’ ” that repeals by implica- 
tion are disfavored. County of Yakima v. Confederated 
Tribes & Bands of the Yakima Nation, 502 U.S. 251, 262 
(1992) (quoting Posadas v. National City Bank, 296 U.S. 
497, 503 (1936)); see Matsushita Elec. Indus. Co. v. Epstein, 
516 U.S. 367, 381 (1996) (noting that “[t]he rarity with which 
[the Court] ha[s] discovered implied repeals is due to the 
relatively stringent standard for such findings”). For there 
to be an implied repeal, it must be impossible for the statutes 
to coexist. Radzanower v. Touche Ross & Co., 426 U.S. 148, 
153-157 (1976). “There must be a positive repugnancy 

22 

between the provisions of the new law, and those of the old; 
and even then the old law is repealed by implication only pro 
tanto to the extent of the repugnancy.” United States v. 
Borden Co., 308 U.S. 188, 198-199 (1939) (internal quotation 
marks omitted). 

10 

All of the expert bodies that have considered the issue 
have found that the PVPA and Section 101 can coexist. The 
Senate Judiciary Committee, when it considered the 
proposed PVPA, did not believe that the bill limited the 
scope of patentability under the Patent Act. S. Rep. No. 
1246, 91st Cong., 2d Sess. 3 (1970) (PVPA “does not alter 
protection currently available within the patent system”). 
The PTO, which is charged with administering Section 101 
as well as the plant-specific provisions of the PPA, similarly 
found in Hibberd that the PVPA and Section 101 do not 
conflict. 227 U.S.P.Q. (BNA) at 446-447. The Department of 
Agriculture’s Plant Variety Protection Office has found that 
the availability of utility patent protection for sexually 
reproduced plants does not impair its administration of the 
PVPA. Finally, the Federal Circuit, which has exclusive 
jurisdiction over both patent claims and claims under the 
PVPA (see 28 U.S.C. 1295(a), 1338 (1994 & Supp. 1999)), 

10 Brown & Williamson, on which petitioners heavily rely (Br. 33-37), 
is entirely consistent with this Court’s strong presumption against implied 
repeal of established statutory provisions. The Court determined in 
Brown & Williamson, 529 U.S. at 137-139, 155-158, that regulation of 
tobacco products under the general provisions of the Food, Drug, and 
Cosmetic Act (FDCA) was “incompatible with” later-enacted federal 
statutes that specifically addressed tobacco, id. at 156. In particular, the 
FDCA, if applicable, would have required the FDA to ban cigarettes and 
smokeless tobacco, which was “foreclosed” by the tobacco-specific laws. 
Id. at 137. As explained below, there is no such repugnance between the 
PVPA and Section 101 when both are applied to sexually reproduced 
plants. Moreover, as shown in Point II, above, Congress has affirmatively 
acquiesced in the patenting of sexually reproduced plants. There was no 
such acquiescence to regulation of tobacco under the FDCA. 

23 

found in this case that there is no irreconcilable incon- 
sistency between plant certification and utility patent 
coverage for man-made plants. Pet. App. 8-9. That common 
conclusion by the Senate committee that oversees patent 
law; by the two agencies charged with administering the 
laws under which plants are protected; and by the court with 
“special expertise” in patent matters (Warner-Jenkinson Co. 

v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)), is correct. 
Although the terms of protection under Section 101 and the 
PVPA differ, they do not conflict. Cf. Roche Prods., Inc. v. 
Bolar Pharm. Co., 733 F.2d 858, 863-865 (Fed. Cir.) (reject- 
ing argument that amendments to FDCA created implied 
defense to patent infringement), cert. denied, 469 U.S. 856 
(1984). 

As an initial matter, the scope of certification under the 
PVPA is narrower than the scope of patentability available 
for sexually reproduced plant technologies under Section 
101. Whereas the PVPA allows protection only for particu- 
lar plant varieties, Section 101 allows patent protection for 
an invention that subsumes multiple sexually reproduced 
plant varieties. For example, when all varieties of cotton 
plants can be altered for better pest-resistance by adding a 
new gene, the inventor of the altered cotton can receive a 
single utility patent covering all the new varieties. See U.S. 
Patent No. 5,608,142 (Mar. 4, 1997). That kind of blanket 
protection for multiple varieties is not available under the 
PVPA. 

Even with respect to their common subject matter, 
Section 101 and the PVPA establish distinct criteria for pro- 
tection. As a general rule, a plant certificate under the 
PVPA is easier to obtain than a utility patent (just as Con- 
gress intended when it enacted the PVPA, see Chakrabarty, 
447 U.S. at 311-313). In addition to easing the “written 
description requirement” discussed in Chakrabarty (see 447 
U.S. at 312), Congress made plant variety certification 

24 

available under 7 U.S.C. 2402 (1994 & Supp. V 1999) even if 
the new variety does not meet the usefulness and non- 
obviousness requirements of the Patent Act, 35 U.S.C. 101- 
103 (1994 & Supp. V 1999). A plant certified under the 
PVPA also is not required to undergo the extensive ex- 
amination required for a utility patent. See 35 U.S.C. 131 
(1994 & Supp. V 1999); 35 U.S.C. 132. 

Although typically harder to obtain, a utility patent 
generally affords greater protection to its holder than a plant 
variety certificate. For example, as petitioners stress (Br. 
22, 43-44), the PVPA establishes some defenses to infringe- 
ment, especially 7 U.S.C. 2543 (farmer’s right to save and 
replant seed) and 7 U.S.C. 2544 (use of a protected variety 
for breeding and research), that would not be a defense to 
infringement of a utility patent. 

11 The differences in 
defenses do not make it impossible to apply both statutes to 
asexually reproduced plants, however. Even if the same 
seed were protected under both Section 101 and the PVPA, 
it would simply be the case that saving the seed or using the 
seed in breeding or research would infringe the utility 
patent, but not the plant certificate. There is no incon- 
sistency between finding infringement of a utility patent and 
the defenses enumerated in the PVPA, for the PVPA 
defenses do not grant any affirmative right to save protected 
seed or to use seed or use a protected plant variety for 
breeding and research. The PVPA provides only that those 
uses are not infringements of the protections afforded under 
the PVPA. 7 U.S.C. 2543, 2544. 

Furthermore, the stronger protection against infringe- 
ment afforded to a utility-patent holder is harmonious with 
the utility-patent holder’s obligation to make an “enabling 
disclosure” that tells the public how to make and use the 

11 The defenses to a patent infringement suit are set forth in 35 U.S.C. 
282 (1994 & Supp. V 1999). 

25 

invention after the patent term expires. See 35 U.S.C. 112; 
see also 35 U.S.C. 114 (1994 & Supp. V 1999) (PTO may 
require specimens for inspection or experiment). The 
inventor’s disclosure required by the Patent Act is “the quid 
pro quo of the right to exclude.” Kewanee Oil Co. v. Bicron 
Corp., 416 U.S. 470, 484 (1974). Applicants for plant variety 
certificates need not provide similar disclosure. See 7 U.S.C. 
2422; see also Chakrabarty, 447 U.S. at 312 (discussing 
relaxed written description requirement of PPA). 

12 Because 
certificate holders under the PVPA are not required to make 
the same level of contribution to the public that patent 
holders must make, Congress reasonably determined that 
certificate holders’ rights to exclude others from using their 
inventions should be less absolute during the term of the 
certificate than the rights of patent holders under Section 
101. 

Petitioners err in asserting (Br. 44-47) that the possibility 
of liability under both the Patent Act and the PVPA for the 
same infringing act makes the two statutes inherently re- 

12 The PVPA requires a description of the plant, along with a deposit of 
seed in a public depository. 7 U.S.C. 2422(2) and (4); see 7 C.F.R. 97.6. 
The deposited seed is used to meet the needs of the Plant Variety Protec- 
tion Office and to ensure the long-term availability of germ plasm for 
research. The seed is not available to the general public during the term 
of the PVPA certificate. 

Seeds deposited in conjunction with a utility 

patent, by contrast, are immediately in the public domain, although no 
infringing use may be made of them until the patent term expires. See 37 
C.F.R. 1.801-1.809 (rules for disclosure of biotechnology inventions 
through deposits); see generally Ajinimoto Co. v. Archer-Daniels- 
Midland Co., 228 F.3d 1338, 1345-1346 (Fed. Cir. 2000) (discussing en- 
abling disclosure through deposit), cert. denied, 121 S. Ct. 1957 (2001). 
Petitioners therefore are incorrect in suggesting (Br. 29-30 n.10) that 
respondent has made a less complete disclosure of its patented inventions 
than would have been required under the PVPA. See also 2 J.A. 39 
(noting seed deposits for U.S. Patent No. 5,491,295), 2 J.A. 50 (noting 
deposits for U.S. Patent No. 5,506,367). 

26 

pugnant. There is no general prohibition on “dual 
protection” (Pet. Br. 44) of an innovation. See, e.g., Mazer v. 
Stein, 347 U.S. 201, 216-219 (1954) (holding that a manufac- 
turer’s design patent is not a bar to a copyright infringement 
suit). The PTO’s Manual of Patent Examining Procedure 
(7th ed. 1st rev. Feb. 2000) explains, for example, that 
“[t]here is an area of overlap between copyright and design 
patent statutes” (id. § 1512(I)); that “[a] design patent and a 
trademark may be obtained on the same subject matter” (id. 
§ 1512(III); and that “[i]nventions claimed under 35 U.S.C. 
101 may include the same asexually reproduced plant which 
is claimed under [the PPA]” (id. § 1601). Dual grounds for 
recovery, moreover, work no unfairness on the infringer 
because the plaintiff can recover damages only once. See, 

e.g., American Safety Table Co. v. Schreiber, 415 F.2d 373, 
381-382 (2d Cir. 1969) (bar against double recovery precludes 
damages for both patent infringement and unfair competi- 
tion during patent infringement period), cert. denied, 396 
U.S. 1038 (1970); see also Protectors Ins. Serv., Inc. v. 
United States Fid. & Guar. Co., 132 F.3d 612, 615-618 (10th 
Cir. 1998) (in contract case, applying prohibition on double 
recovery for a single economic injury). 

13 

Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir. 
1976), and TrafFix Devices, Inc. v. Marketing Displays, Inc., 

13 Petitioners suggest (Br. 21) that 7 U.S.C. 2541(a)(9), which protects 
the holder of a plant patent from an infringement suit based on asexual 
reproduction that is brought by the holder of a plant variety certificate, 
shows that Congress did not intend dual protection under Section 101 and 
the PVPA. Section 2541(a)(9), however, does not address dual protection 
for sexually reproduced varieties. It indicates only that one person can 
have a plant variety certificate on a sexually reproduced plant under the 
PVPA, and another person can have a plant patent on the same plant, 
asexually reproduced, under the PPA. Section 2541(a)(9) therefore under- 
cuts, rather than supports, petitioners’ argument that the various forms of 
intellectual property protection are mutually exclusive. 

27 

121 S. Ct. 1255 (2001), do not support petitioners’ theory that 
protection under both Section 101 and the PVPA is im- 
proper. See Pet. Br. 45-47. In Ropat, the Seventh Circuit 
applied the principle that the holder of a utility patent under 
Title 35 should not be permitted to extend the term of that 
patent by obtaining a design patent under Title 35 for the 
very same invention. See 535 F.2d at 380. Ropat did not 
address simultaneous protection of the same innovation 
under different statutory schemes. 

In TrafFix, this Court held that an expired utility patent 
was “strong evidence” of functionality, which tended to 
undermine a claim that the same essential feature (a spring 
design for road signs) was eligible for trade dress protection 
under the Lanham Act, 15 U.S.C. 1125(a)(3) (Supp. V 1999). 
121 S. Ct. at 1260-1261. TrafFix involved the “evidentiary 
significance” of a patent issued under Section 101. Id. at 
1261. It did not present the question of whether simultane- 
ous protection under different intellectual property statutes 
is permissible for innovations that meet the requirements of 
each statute. Indeed, having found the claimed feature to be 
functional and therefore ineligible for trade dress protection 
under the Lanham Act, the Court specifically declined in 
TrafFix to address the argument that in any event the 
holder of an expired utility patent could not, consistent with 
the Patent Clause, U.S. Const. Art. I, § 8, Cl. 8, subsequently 
claim trade dress protection that would have the practical 
effect of extending the patent. 121 S. Ct. at 1263. 

At bottom, petitioners’ objections to patenting sexually 
reproduced plant innovations rest on the policy argument 
that utility patents afford too much protection to plant 
developers, at the expense of farmers and others who wish 
to use these new varieties without paying for that right 
during the patent term. See Pet. Br. 48-49; see also 
American Corn Growers Ass’n Br. 13-30. Petitioners object 
that the agriculture industry suffers when its members must 

28 

consider “the risk of becoming embroiled in a patent in- 
fringement lawsuit” (Br. 49), but a similar argument could be 
made against any application of intellectual property laws, 
including application of the PPA or the certification pro- 
visions of the PVPA. 

As the government noted in Chakrabarty, the proper 
balance to be struck in the area of patenting living things “is 
far from clear.” 79-136 Reply Br. for Pet. at 5. What is clear, 
however, is that such questions are for Congress to answer. 
And there is no reason to doubt that Congress could sensibly 
have decided that allowing utility patent protection for 
qualifying innovations in sexually reproduced plant varieties 
best serves the public interest. As this Court has explained, 
rewarding patent holders for their enterprise is only “a 
secondary consideration” in affording patent protection. 
United States v. Paramount Pictures, Inc., 334 U.S. 131, 158 
(1948). “The economic philosophy” underlying patent protec- 
tion “is the conviction that encouragement of individual 
effort by personal gain is the best way to advance public 
welfare through the talents of * * * inventors.” Mazer, 347 
U.S. at 219. It follows that users of innovations will bear 
some cost for that right during the term of protection. 

The utility patents at issue in this case suggest readily 
identifiable benefits to farmers, for which some farmers may 
be willing to pay. One of the corn lines protected by 
respondent’s utility patents, for example, is said to have a 
superior yield (2 J.A. 29-30), while another is said to have 
good drought tolerance and disease tolerance (2 J.A. 44). As 
a result of respondent’s seed deposits, those lines will be 
available to the general public for at least 30 years, and 
longer if there is ongoing demand for access to the seed. See 
37 C.F.R. 1.806. 

When plant researchers undertake an innovation in reli- 
ance upon the availability of patent protection, benefits 
accrue to the general public—not just to “large corporate 

29 

entities,” as petitioners suggest (Pet. Br. 49). For example, 
patented plants have been genetically engineered to resist 
pests so that farmers can bring their crop to harvest with a 
greater yield and with less use of pesticides (thus lowering 
the cost of producing food and addressing pollution con- 
cerns). See U.S. Patent No. 5,763,245 (June 9, 1998). Other 
engineered plants work as “edible vaccines,” so that humans 
or animals could be vaccinated by eating, say, a potato. See 
U.S. Patent No. 6,034,298 (Mar. 7, 2000). 

Dr. Chakrabarty’s bacterium was eligible for a patent 
because it had been genetically engineered by human inter- 
vention to digest crude oil and clean up pollution. See 447 
U.S. at 305. The PTO has issued utility patents for 
genetically engineered plants that meet the same social 
need. One patented process produces plants that resist and 
reduce mercury and metal contamination in the soil. See 
U.S. Patent No. 5,668,294 (Sept. 16, 1997). Another produces 
plants that detoxify herbicides and other organic compounds. 
See U.S. Patent No. 6,166,290 (Dec. 26, 2000). The new field 
of phytoremediation, which includes such innovations, is 
precisely the kind of “unforeseeable” development that the 
Court in Chakrabarty anticipated when it emphasized Con- 
gress’s decision to give the scope of patentable innovations 
under Section 101 comprehensive breadth. 447 U.S. at 316. 
Petitioners have failed to show any clear instruction from 
Congress to deny such plant innovations, if they otherwise 
meet the requirements of Section 101, the same protection 
afforded to the comparable bacterial innovations in Chakra- 
barty. 

30 

CONCLUSION 

The judgment of the court of appeals should be affirmed. 

Respectfully submitted. 

JAMES A. TOUPIN 

General Counsel 

JOHN M. WHEALAN 

Solicitor 

BRUCE J. CHASAN 
STEPHEN WALSH 

Associate Solicitors 
Patent and Trademark 

Office 

JAMES MICHAEL KELLY 

Acting General Counsel 

M. BRADLEY FLYNN 

Attorney 
Department of Agriculture 
THEODORE B. OLSON 
Solicitor General 

STUART E. SCHIFFER 

Acting Assistant Attorney 

General 

LAWRENCE G. WALLACE 

Deputy Solicitor General 

AUSTIN C. SCHLICK 

Assistant to the Solicitor 

General 

BARBARA BIDDLE 
ALFRED MOLLIN 

Attorneys 

JUNE 2001