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

BRIEF FOR THE UNITED STATES 
AS AMICUS CURIAE 

ALBIN S. DROST 

Acting General Counsel 

JOHN M. WHEALAN 

Solicitor 

MARY CRITHARIAS 
STEPHEN WALSH 

Assistant Solicitors 
United States Patent and 

Trademark Office 
Washington, D.C. 20231 
SETH P. WAXMAN 

Solicitor General 

Counsel of Record 

DAVID W. OGDEN 

Assistant Solicitor 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 

Statement ........................................................................................ 1 

Discussion ........................................................................................ 4 

Conclusion ....................................................................................... 12 

TABLE OF AUTHORITIES 

Cases: 

American Fruit Growers, Inc. v. Brogdex Co., 

283 U.S. 1 (1931) ..................................................................... 

5 

Barr v. United States, 324 U.S. 83 (1945) .......................... 

7 

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

3, 4, 5, 

6, 7, 8, 11 

FDA v. Brown & Williamson Tobacco Corp., 
120 S. Ct. 1291 (2000) ............................................................ 

9 

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

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

1, 2 

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

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

8 

Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894) ................... 

11 

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

378 (7th Cir. 1976) .................................................................. 

11 

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

9 

Watt v. Alaska, 451 U.S. 259 (1981) ................................... 

9 

Statutes: 

Plant Patent Act of 1930, ch. 312, 46 Stat. 376 (35 U.S.C. 

161-164 (1994 & Supp. IV 1998)) ......................................... 

2 

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

2 

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

10 

Plant Variety Protection Act, Pub. L. No. 91-577, 

§ 42, 84 Stat. 1547 (7 U.S.C. 2321 et seq.) .......................... 

2 

7 U.S.C. 2402 (1994 & Supp. IV 1998) ........................... 

9 

7 U.S.C. 2402(a) (1994 & Supp. IV 1998) .................... 

2, 10 

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

10 

7 U.S.C. 2483 (1994 & Supp. IV 1998) ........................... 3 

(III) 

IV 

Statutes—Continued: Page 

7 U.S.C. 2542 ...................................................................... 

11 

7 U.S.C. 2543 ...................................................................... 

11 

7 U.S.C. 2544 ...................................................................... 

11 

28 U.S.C. 1292(b) ....................................................................... 

4 

35 U.S.C. 33 (1925) .................................................................... 

7 

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

passim 

35 U.S.C. 101-103 (1994 & Supp. IV 1998) ........................... 

9 

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

7, 10 

Miscellaneous: 

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

5 

S. Rep. No. 1979, 82d Cong., 2d Sess. (1952) ........................ 
5 

U.S. Patent No. 5,545,822A (Aug. 13, 1996) ......................... 
10 

U.S. Patent No. 5,977,442A (Nov. 2, 1999) ........................... 11 

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

BRIEF FOR THE UNITED STATES 
AS AMICUS CURIAE 

This brief is submitted in response to the Court’s 
order inviting the Solicitor General to express the 
views of the United States. 

STATEMENT 

1. Three different statutory schemes are relevant to 
this case. First, 35 U.S.C. 101 provides in pertinent 
part 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].” In Ex parte Hibberd, 
227 U.S.P.Q. (BNA) 443 (Bd. Pat. App. & Interf. 1985), 

(1) 

2 

the Board of Appeals and Interferences of the Patent 
and Trademark Office (PTO) held that sexually 
reproduced plants (i.e., plants reproduced from seeds) 
are eligible for patent protection under Section 101. Id. 
at 443-447. During the 15 years since that decision, the 
PTO has issued hundreds of so-called “utility patents” 
protecting sexually reproduced plants. 

Under the Plant Patent Act of 1930 (PPA), ch. 312, 
46 Stat. 376 (35 U.S.C. 161-164 (1994 & Supp. IV 1998)), 
the PTO may grant plant patents covering new and dis- 
tinct varieties of asexually reproduced plants. Asexu- 
ally reproduced plants are plants that are reproduced 
from a single parent, such as by grafting, budding, cut- 
ting, rooting, or layering. Section 161 of Title 35 pro- 
vides: 

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

35 U.S.C. 161. Section 161 further provides that, except 
as otherwise provided, “[t]he provisions of [Title 35] 
relating to patents for inventions shall apply to patents 
for plants.” 35 U.S.C. 161. The PTO has granted more 
than 10,000 plant patents under Section 161. 

Finally, the Plant Variety Protection Act (PVPA), 
Pub. L. No. 91-577, § 42, 84 Stat. 1547, provides statu- 
tory protection to novel varieties of sexually repro- 
duced plants that meet statutory criteria of dis- 
tinctness, uniformity, and stability. 7 U.S.C. 2402(a) 
(1994 & Supp. IV 1998). In providing protection for 
sexually reproduced plants under the PVPA, Congress 

3 

established a regime, separate from the patent laws, 
under which the Department of Agriculture issues 
plant variety certificates to breeders of novel varieties 
of sexually reproduced plants. See 7 U.S.C. 2483 (1994 
& Supp. IV 1998) (“Contents and term of plant variety 
protection”). 

2. Respondent is the world’s largest producer of 
seed corn, and holds utility patents granted, under Sec- 
tion 101 of Title 35, for sexually produced corn hybrids. 
Respondent filed suit against petitioners, alleging that 
they infringed respondent’s patents covering 17 corn 
seed products by making, using, and selling or offering 
for sale seed corn of these patented hybrids. Peti- 
tioners are not authorized sales representatives of re- 
spondent. 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 patents relied upon in respondent’s complaint are 
invalid. Petitioners moved for summary judgment on 
their counterclaim, arguing that patents directed to 
sexually reproduced plants are not authorized under 
Section 101, and that Congress intended the PPA and 
PVPA to be the exclusive means of securing protection 
for plants. Pet. App. 15-16. 

The district court denied petitioners’ motion for sum- 
mary judgment and held that Section 101 authorizes the 
issuance of patents covering sexually reproduced 
plants. Pet. App. 13-39. Relying upon this Court’s 
decision in Diamond v. Chakrabarty, 447 U.S. 303 
(1980), the district court concluded that the text of Sec- 
tion 101 authorizes the grant of patents covering plants, 
Pet. App. 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 [histori- 

4 

cally] not often able to meet the requirements” for 
protection under Section 101, id. at 29. 

3. On interlocutory appeal under 28 U.S.C. 1292(b), 
the court of appeals affirmed. Starting from the pre- 
mise that “Congress plainly contemplated that [Section 
101] would be given wide scope,” Pet. App. 4 (quoting 
Chakrabarty, 447 U.S. at 308), the court of appeals 
found that nothing in the text of Section 101, the PPA, 
or the PVPA narrows that scope by excluding plants 
from eligibility for protection, id. at 6-8. Nor did the 
court of appeals find any conflict between patent 
protection for sexually reproduced plants under Section 
101 and certification of such plants under the PVPA. 
The court determined “that the asserted conflict 
[between the statutes] is simply the difference in the 
rights and obligations imposed,” not any difficulty in 
applying the two statutes simultaneously. Id. at 8-9.1 

DISCUSSION 

The decision of the court of appeals is correct, and is 
not in conflict with any decision of this Court or any 
other court of appeals. Further review by this Court is 
not warranted. 

1. This Court held in Chakrabarty, supra, that Con- 
gress’s grant of patent authority in Section 101 should 
be broadly construed. Section 101 provides that 
“[w]hoever invents or discovers any new and useful 
process, machine, manufacture, or composition of mat- 
ter * * * may obtain a patent therefor.” 35 U.S.C. 
101. The Court has defined “manufacture” “to mean 
‘the production of articles for use from raw or prepared 

1 The court of appeals declined to address other claims regard- 
ing the validity of respondent’s particular plant patents, which the 
district court had not considered and petitioners do not advance 
before this Court. Pet. App. 9. 

5 

materials by giving to these materials new forms, quali- 
ties, properties, or combinations.’ ” 

Chakrabarty, 447 
U.S. at 308 (quoting American Fruit Growers, Inc. v. 
Brogdex Co., 283 U.S. 1, 11 (1931)). The phrase “com- 
position of matter” reaches “all compositions of two or 
more substances and . . . all composite articles, 
whether they be the results of chemical union, or of 
mechanical mixture, or whether they be gases, fluids, 
powders or solids.” Ibid. (internal quotation marks 
omitted). “In choosing such expansive terms, * * * 
modified by the comprehensive ‘any,’ Congress plainly 
contemplated that the patent laws would be given wide 
scope.” Ibid. 

The Chakrabarty Court also reviewed the legislative 
history of Section 101, 447 U.S. at 308-309, and con- 
cluded that it confirms Congress’s understanding that 
the patentable subject matter reached by Section 101 
“include[s] anything under the sun that is made by 
man,” id. at 309 (quoting S. Rep. No. 1979, 82d Cong., 
2d Sess. 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d 
Sess. 6 (1952)), provided the other requirements for 
patentability are satisfied. 

In light of the text of Section 101 and its history, the 
Court held in Chakrabarty that a nonnatural, geneti- 
cally engineered bacterium capable of breaking down 
multiple components of crude oil “plainly” was within 
the subject matter of patent under Section 101, being 
either a “manufacture” or “a composition of matter.” 
447 U.S. at 305, 309-310. The same reasoning applies to 
plants, such as the patented corn hybrids at issue in this 
case. Where a plant has “markedly different charac- 
teristics from any found in nature” (which is not in 
dispute for purposes of this petition) and “ha[s] the 
potential for significant utility” (also not at issue here), 
the plant “is patentable subject matter under § 101.” 

6 

Id. at 310; see also id. at 311 (rejecting argument that 
the terms “manufacture” and “composition of matter” 
do not include living things). Accordingly, novel plants 
made by human intervention, as well as seeds and 
tissue cultures from those plants, are eligible for patent 
protection, subject to the conditions and requirements 
of Title 35. 

2. Petitioners base their attempt to overcome 
Chakrabarty upon Congress’s extension of specific 
protection to plants through the PPA and PVPA. See 
Pet. 7-30. Petitioners argue that Congress has chosen 
to limit patent and patent-like protection for plants, 
unlike bacteria and other living things, to the specific 
protections provided under the PPA and PVPA. Once 
again, however, the contrary holding of this Court in 
Chakrabarty is controlling. 

As petitioner in Chakrabarty, the United States 
similarly argued that the adoption of specific protec- 
tions for plants in the PPA and PVPA, and the sur- 
rounding legislative history, demonstrated Congress’s 
understanding that Title 35 would not otherwise afford 
patent protection to plants, and that the PPA and 
PVPA would be the exclusive means of securing patent 
or patent-like protection for plants. Brief for Pet. at 21- 
37 (No. 79-136). This Court rejected the government’s 
submission, and we see no reason to revisit the issue in 
this case. 

In reaching the conclusion that the PPA and PVPA 
do not impliedly establish an exclusion from the scope 
of patentable subject matter under Section 101, this 
Court reviewed the history of both statutes. The Court 
explained that, when Congress enacted the PPA in 
1930, it sought to address two restrictions in the patent 
laws that were then thought to preclude protection for 
asexually reproduced plants as a practical matter. The 

7 

first restriction was the belief, in some quarters, that 
plants were products of nature rather than of man for 
purposes of patent law, and remained so even if 
artificially bred. Chakrabarty, 447 U.S. at 311-312. The 
second restriction was the requirement that the subject 
of the patent be described in writing in sufficient detail 
to allow reproduction of the invention, a requirement 
that it was thought impossible to satisfy in the case of 
plants. Id. at 312; see 35 U.S.C. 33 (1925) (“inventor 

* * * shall file * * * a written description of the 
[invention]”); 35 U.S.C. 112 (current codification of 
“written description” requirement). Congress resolved 
both issues in favor of patentability through the PPA, 
thereby ensuring that patent protection would be 
afforded to innovations in plant breeding notwithstand- 
ing the difficulties in obtaining protection under Section 
101. Accordingly, the Court held in Chakrabarty that 
the legislative history of the PPA does not reveal a con- 
gressional understanding that plants necessarily are, or 
thereafter would be, outside the broad scope of paten- 
table subject matter under Section 101. 447 U.S. at 
312-313; see generally Barr v. United States, 324 U.S. 
83, 90 (1945) (“[I]f Congress has made a choice of 
language which fairly brings a given situation within a 
statute, it is unimportant that the particular application 
may not have been contemplated by the legislators.”). 
The Court similarly held in Chakrabarty that the 
PVPA was enacted to reflect advances in breeding 
techniques that made it possible to reproduce new 
varieties of plants, true-to-type, through seeds.2 Again, 
the Court concluded that nothing in the language or 
legislative history of the PVPA reflects a congressional 

2 In true-to-type reproduction, the plant inherits genetic 
characteristics identical to those of the parent plant. 

8 

view that plants were or would be categorically ineligi- 
ble for protection under Section 101, in the event that 
eligibility could be established in accordance with the 
terms of Section 101 and Title 35. Chakrabarty, 447 
U.S. at 313. 

The dissenting Justices in Chakrabarty, like the 
government in that case and petitioners here, argued 
that, when it adopted the PPA and PVPA, “Congress 
thought it had to legislate in order to make agricultural 
‘human-made inventions’ patentable.” 447 U.S. at 321. 
Accordingly, the dissenters concluded that such agricul- 
tural inventions are protectable only insofar as they 
come within the scope of the PPA or PVPA. Id. at 318- 
322 (Brennan, J., dissenting). The dissenters’ view, of 
course, was rejected. Petitioner does not suggest any 
justification for reopening that decision. This Court, 
moreover, has consistently recognized that the doctrine 
of stare decisis has special force in matters of statutory 
interpretation, which Congress remains free to address 
through amending legislation. See, e.g., Hilton v. South 
Carolina Pub. Rys. Comm’n, 502 U.S. 197, 205 (1991) 
(“stare decisis is most compelling” where “a pure ques- 
tion of statutory construction” is involved). 

3. Petitioner argues (Pet. 24-27) that interpreting 
Section 101 as allowing utility patent protection for 
sexually reproduced plants that otherwise meet the 
requirements of Title 35 would create “[i]rreconcilable 
[c]onflicts” (Pet. 24) with the PVPA, so that Congress 
should be presumed to have intended that protection 
under Section 101 would not be available. As both the 
district court and the court of appeals determined, 
however, the asserted “conflicts” between Section 101 
and the PVPA are merely “difference[s]” in the re- 
quirements for obtaining protection, the administrative 
schemes, and the scope of the protection afforded. Pet. 

9 

App. 9, 30-34. While some overlap is possible, peti- 
tioners do not establish (Pet. 24-27) that implemen- 
tation of one scheme precludes implementation of the 
other. 

Nor does implementation of the provisions of Section 
101 in the context of sexually reproduced plants nullify 
the PVPA. Section 101 and the PVPA instead provide 
distinct and complementary protection. See generally 
Watt v. Alaska, 451 U.S. 259, 267 (1981) (“We must 
read the statutes to give effect to each if we can do so 
while preserving their sense and purpose.”); United 
States v. Borden Co., 308 U.S. 188, 198-199 (1939) 
(“When there are two acts upon the same subject, the 
rule is to give effect to both if possible. * * * It is not 
sufficient * * * to establish that subsequent laws 
cover some or even all of the cases provided for by [the 
prior act] * * *. There must be a positive repugnancy 
between the provisions of the new law, and those of the 
old.”) (citations and internal quotation marks omitted).3 

For instance, an invention or discovery must be new, 
useful, and not obvious to receive utility patent pro- 
tection under Section 101. 35 U.S.C. 101-103 (1994 & 
Supp. IV 1998). Plant variety protection certificates, 
however, may be issued with respect to sexually repro- 
duced plant varieties that are new, distinct, uniform, 
and stable. 7 U.S.C. 2402 (1994 & Supp. IV 1998). 
Thus, as the name indicates, utility patents under 
Section 101 require usefulness, whereas the PVPA does 
not. The characteristics of the plant variety protected 
under the PVPA also may not meet the requirement of 
non-obviousness that applies to a utility patent. 

3 Petitioners’ reliance (Pet. 12-14) upon the Court’s prioritiza- 
tion of conflicting statutes in FDA v. Brown & Williamson 
Tobacco Corp., 120 S. Ct. 1291, 1301 (2000), is thus misplaced. 

10 

To obtain utility patent protection, moreover, the 
applicant must provide a written description of how to 
make and use the disclosed invention. 35 U.S.C. 112. 
That disclosure requirement benefits the public by 
ensuring that others will be able to make, use, and build 
upon patented discoveries once the patent expires. (As 
discussed above, the difficulty plant breeders had in 
complying with the disclosure requirement led Con- 
gress to adopt the PPA’s less-rigorous requirement 
that the applicant’s written description must be “as 
complete as is reasonably possible.” 35 U.S.C. 162.) By 
contrast with the requirements for issuance of a patent 
under both Section 101 and the PPA, the PVPA 
requires only a description of the plant, along with a 
deposit of seed in a public depository. 7 U.S.C. 2422.4 

Although more difficult to obtain, utility patent pro- 
tection for sexually reproduced plants and seeds under 
Section 101 is broader in scope than the protection 
afforded by a plant variety protection certificate under 
the PVPA. The protection afforded by a certificate is 
limited to the particular variety described therein. See 
7 U.S.C. 2402(a) (1994 & Supp. IV 1998). A utility 
patent, by contrast, may be granted to protect dis- 
coveries embracing a class or species of plants, and does 
not have to be limited to a particular plant variety.5 

4 The seed deposit requirement ensures that the statutory 
criteria of uniformity and stability are satisfied, but, unlike the 
description requirements of Title 35, does not suffice to place the 
invention in the public domain after the term of protection expires. 

5 For example, the PTO has issued a utility patent covering rice 
plants with increased resistance to herbicides. See U.S. Patent 
No. 5,545,822A (Aug. 13, 1996). The broader coverage available 
through Section 101 is increasingly important in light of advances 
in genetic engineering, such as use of recombinant DNA technol- 
ogy to develop utility-patented plants having improved insecticidal 

11 

The PVPA also establishes several exemptions to 
infringement that do not apply to utility patents. The 
exclusive rights granted by a certificate of plant variety 
protection are subject to a prior use clause (7 U.S.C. 
2542), a research exemption (7 U.S.C. 2544), and a crop 
exemption for farmers (7 U.S.C. 2543), all of which may 
limit the breeder’s ability to recover an economic 
return. 

For those applicants who can comply with the strin- 
gent requirements for patentability under Section 101, 
utility patent protection offers more extensive protec- 
tion than the PVPA. Limiting the scope of Section 101 
to exclude sexually reproduced plants—thus denying 
that broader protection—would be contrary to congres- 
sional intent (as interpreted in Chakrabarty, supra) and 
would reduce incentives for research and development 
in the agricultural and horticultural arts. 

4. Finally, citing Ropat Corp. v. McGraw-Edison 
Co., 535 F.2d 378 (7th Cir. 1976), petitioners suggest 
that the court of appeals wrongly approved “[d]ual pro- 
tection of the same invention.” Pet. 26-27. Ropat held 
that dual patents (a design patent and a utility patent) 
could not be issued on the same aspect of the same 
invention. 535 F.2d at 381. The court of appeals in that 
case simply applied the settled rule that, in order to 
avoid prolonging the period of a patent monopoly 
beyond that intended by Congress, “two valid patents 
for the same invention cannot be granted either to the 
same or to a different party.” Miller v. Eagle Mfg. Co., 
151 U.S. 186, 197 (1894). 

properties. See U.S. Patent No. 5,977,442A (Nov. 2, 1999). The 
breadth of coverage afforded by utility patents may be essential in 
some circumstances to protect plant inventions produced by gene- 
tic engineering. 

12 

Here, the only relevant patents held by respondent 
are utility patents issued under Section 101, and peti- 
tioners’ challenge to their validity is based on the argu- 
ment that respondent should have secured protection 
under the PVPA instead. See Pet. 3-5. The record thus 
indicates that respondent holds only one patent for each 
invention, and the rule against “double patenting” is not 
implicated. 

CONCLUSION 

The petition for a writ of certiorari should be denied. 

Respectfully submitted. 

ALBIN S. DROST 

Acting General Counsel 

JOHN M. WHEALAN 

Solicitor 

MARY CRITHARIAS 
STEPHEN WALSH 

Assistant Solicitors 
United States Patent and 

Trademark Office 
SETH P. WAXMAN 

Solicitor General 

DAVID W. OGDEN 

Assistant Solicitor General 

LAWRENCE G. WALLACE 

Deputy Solicitor General 

AUSTIN C. SCHLICK 

Assistant to the Solicitor 

General 

BARBARA BIDDLE 
ALFRED MOLLIN 

Attorneys 

JANUARY 2001