| Monsanto Canada Inc. v. Schmeiser | ||||||
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| File:Bigcancoat.png Supreme Court of Canada | ||||||
| Argued January 20, 2004 Decided May 21, 2004 | ||||||
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Monsanto Canada Inc. v. Schmeiser [2004] 1 S.C.R. 902, Template:Canlii-scc is a leading Supreme Court of Canada case on patent rights for biotechnology. The Court upheld the validity of the agricultural biotechnology patents held by Monsanto Canada Inc.. As Monsanto's patent covered only the genetically modified plant cells but not the genetically modified plants themselves, the Supreme Court heard the question of whether growing genetically modified plants constitutes "use" of the invention of genetically modified plant cells. It ruled that it does. The case drew worldwide attention.
Background
The biotechnology company Monsanto developed a glyphosate-resistant gene for the canola plant which had the effect of producing canola that was immune to their Roundup brand herbicide. Monsanto marketed the plant as Roundup Ready canola.
Percy Schmeiser, a farmer in Bruno, Saskatchewan, found that part of his crop for 1996 contained the Roundup Ready canola. A farm-hand performing the harvest saved only seed from the swathe to be replanted in the next year, and sold for feed. By 1998, over 95% of his canola crop was of the Roundup Ready variety.
Monsanto then sued Schmeiser for patent infringement, by keeping Roundup Ready canola seeds and failing to obtain a license for the canola plants. Schmeiser maintained that this was accidental. While the origin of the plants on Schmeisers farm is unclear - the trial judge found that "none of the suggested sources [proposed by Schmeiser] could reasonably explain the concentration or extent of Roundup Ready canola of a commercial quality" ultimately present in Schmeiser's crop. [1]
Trial
Schmeiser testified that in the previous year, 1997, he had suspected contamination by genetically modified Roundup-resistant canola along the roadside in one of his fields and hence had sprayed along the field edge with Roundup, whereupon he found that about 60% of the canola survived. The farm hand performing the harvest saved only seed from this contaminated roadside swathe for replanting in the next year, 1998, and presumably this seed was genetically modified Roundup-resistant seed.
Regarding the origin of the plants in his 1997 fields, Schmeiser says he did not plant them and that they must have gotten there through natural, accidental pollination. Schmeiser says that the Roundup Ready Canola plants have contaminated his fields and his custom-bred strain of canola. Monsanto claimed that Schmeiser planted Roundup Ready Canola in his fields intentionally, though they later said they could offer no evidence for this, and that it was possible for natural pollination to have caused Roundup Ready Canola to grow in Schmeiser's field. (However, at trial they were able to present evidence sufficient to persuade the judge that Roundup Ready canola had probably not appeared in Schmeiser's 1997 field by such accidental means. See paragraph 118 of the trial ruling.)
All claims relating to Roundup Ready canola in Schmeiser's 1997 canola crop were dropped prior to trial and the court only considered the canola in Schmeiser's 1998 fields. Regarding his 1998 crop, Schmeiser did not put forward any defence of accidental contamination. The evidence showed that the level of Roundup Ready canola in Mr. Schmeiser's 1998 fields was 95-98% (See paragraph 53 of the trial ruling). Evidence was presented indicating that such a level of purity could not occur by accidental means. Based on this the court found that Schmeiser had either known "or ought to have known" that he had planted Roundup Ready canola in 1998. Given this, the question of whether the canola in his fields in 1997 arrived there accidentally was ruled to be irrelevant. Nonetheless, the court said it was persuaded "on the balance of probabilities" (the standard of proof in civil cases, meaning "more probable than not" i.e. strictly greater than 50% probability) that the Roundup Ready canola in Mr. Schmeiser's 1997 field had not arrived there by any of the accidental means, such as spillage from a truck or pollen travelling on the wind, that Mr. Schmeiser had proposed.
The court summarized Mr. Schmeiser's account of how seed for his 1998 crop was obtained thus:
- [38] [...] Roundup-resistant canola was first noticed in his crop in 1997, when Mr. Schmeiser and his hired hand, Carlysle Moritz, hand-sprayed Roundup around the power poles and in ditches along the road bordering fields 1, 2, 3 and 4. These fields are adjacent to one another and are located along the east side of the main paved grid road that leads south to Bruno from these fields. This spraying was part of the regular farming practices of the defendants, to kill weeds and volunteer plants around power poles and in ditches. Several days after the spraying, Mr. Schmeiser noticed that a large portion of the plants earlier sprayed by hand had survived the spraying with the Roundup herbicide.
- [39] In an attempt to determine why the plants had survived the herbicide spraying, Mr. Schmeiser conducted a test in field 2. Using his sprayer, he sprayed, with Roundup herbicide, a section of that field in a strip along the road. He made two passes with his sprayer set to spray 40 feet, the first weaving between and around the power poles, and the second beyond but adjacent to the first pass in the field, and parallel to the power poles. This was said by him to be some three to four acres [12,000 to 16,000 m²] in all, or "a good three acres" [12,000 m²]. After some days, approximately 60% of the plants earlier sprayed had persisted and continued to grow. Mr. Schmeiser testified that these plants grew in clumps which were thickest near the road and began to thin as one moved farther into the field.
- [40] Despite this result Mr. Schmeiser continued to work field 2, and, at harvest, Carlysle Moritz, on instruction from Mr. Schmeiser, swathed and combined field 2. He included swaths from the surviving canola seed along the roadside in the first load of seed in the combine which he emptied into an old Ford truck located in the field. That truck was covered with a tarp and later it was towed to one of Mr. Schmeiser's outbuildings at Bruno. In the spring of 1998 the seed from the old Ford truck was taken by Mr. Schmeiser in another truck to the Humboldt Flour Mill ("HFM") for treatment. After that, Mr. Schmeiser's testimony is that the treated seed was mixed with some bin-run seed and fertilizer and then used for planting his 1998 canola crop.
Supporters of Mr. Schmeiser have argued that this account still leaves open the possibility that the harvesting and replanting of Roundup Ready canola from the sprayed region was accidental and resulted from a miscommunication between Mr. Schmeiser and Mr. Moritz, or from a failure of Mr. Schmeiser to have the presence of mind to instruct Mr. Moritz to avoid taking canola seed for replanting from the sprayed region. Supporters of Monsanto have argued that an oversight of this nature is not plausible, especially in light of Mr. Schmeiser's claims regarding the extent to which he considered Roundup Ready canola undesirable in his fields and the importance he claims to have placed on the continued survival of his own strain of canola, and in light of his having been notified prior to planting his 1998 crop that Monsanto believed he had grown Roundup Ready canola in 1997. (Legally, the question is of no relevance, as an oversight of this nature is not a defence against patent infringement. Patents are civil law, not criminal law, and the presence or absence of "guilty intent" is not relevant in cases of patent infringement. On this point, note that the Federal Court of Appeal said that the case of accidental genetic contamination of a crop beyond a farmer's control should be an exception to the rule that intent is not an issue in patent disputes (see below).)
Schmeiser's principal defence at trial was that as he had not applied Roundup herbicide to his canola he had not used the invention. This argument was rejected; the court said that the patent granted for the invention did not specify the use of Roundup as part of the invention, and thus there was no basis for introducing the requirement that Roundup had to be used in order for the invention to be used. That is, a patent prohibits unauthorized use of an invention in any manner, not merely unauthorized use for its intended purpose.
Regarding the question of patent rights and the farmer's right to use seed taken from his fields, Monsanto said that because they hold a patent on the gene, and on canola cells containing the gene, they have a legal right to control its use, including the replanting of seed collected from plants with the gene which grew accidentally in someone else's field. Schmeiser insisted his right to save and replant seed from plants that have accidentally grown on his field overrides Monsanto's legal patent rights. Canadian law does not mention any such "farmer's rights"; the court held that the farmer's right to save and replant seeds are the simply the rights of a property owner over his or her property to use it as he or she wishes, and hence the right to use the seeds are subject to the same legal restrictions on use rights that apply in any case of ownership of property, including restrictions arising from patents in particular. That is to say, patent rights take priority of the right of the owner of physical property to use his property, and the entire point of a patent is to limit what the owner of physical property may do with that property, by forbidding him or her from using it to duplicate, produce or use a patented invention without permission of the patent owner. This overriding of the rights of the physical property owner at the expense of those of the intellectual property owner is the explicit purpose of the Patent Act. As property rights are not constitutional rights they do not override statutes such as the Patent Act. These issues were settled, in Monsanto's favour, at the trial before the Federal Court of Canada and upheld at the appeal level before the Federal Court of Appeal. Both courts found that a key element in Mr. Schmeiser's patent infringement in his 1998 crop was that he knew or ought to have known the nature of the seed he planted. The Federal Court of Appeal in particular stressed the importance of this fact in their decision to find Mr. Schmeiser in infringement of the patent, and noted that in a case of accidental contamination or a case where the farmer knew of the presence of the gene but took no action to increase its prevalence in his crop, a different ruling could be possible (see paragraphs 55-58 of the appeal ruling). (For the sake of precision, we note that no damages were assessed against Percy Schmeiser, the private individual. Only Mr. Schmeiser's farming corporation, Schmeiser Enterprises Ltd., was held liable, as Mr. Schmeiser had acted in his capacity as director of the corporation.)
The suit went to the Supreme Court of Canada, which considered the question of whether knowingly (or, where one ought to have known) planting and cultivating genetically modified canola constitutes "use" of Monsanto's patented invention of genetically modified canola cells, even if the crop is not treated with Roundup and the presence of the gene affords no advantage to the farmer. In international news, the court ruled in favour of Monsanto, holding that his use of the patented genes and cells was analogous to the use of a machine containing a patented part: "It is no defence to say that the thing actually used was not patented, but only one of its components." The court also held that by planting genetically modified Roundup resistant canola, Schmeiser made use of the "stand-by" or insurance utility of the invention. That is, he left himself the option of using Roundup on the crop should the need arise. This was considered to be analogous to the installation of patented pumps on a ship: even if the pumps are never actually switched on, they are still used by being available for pumping if the need arises.
Schmeiser won a partial victory at the Supreme Court: the court held that he did not have to pay Monsanto his profits from his 1998 crop, since the presence of the gene in his crops had not afforded him any advantage and had had made no profits on the crop that were attributable to the invention. The amount of profits at stake was relatively small, C$19,832, however by winning a partial victory Schmeiser was saved from having to pay Monsanto's legal bills, which amounted to several hundred thousand dollars and exceeded his own.
After about six years of court battling, Schmeiser guesses his legal bills have totalled close to 400 thousand Canadian dollars. Schmeiser says he has lost the right to use his strain of canola, which took him 50 years to develop, because he can not prove they do not include the Roundup Ready gene Monsanto patented. (Furthermore, he says that on the advice of his lawyers, he destroyed all his seed and purchased new seed, so his strain of canola no longer exists, which presents an additional obstacle to his continuing to farm it. However, he was ordered to turn over all his remaining seed from his 1997 and 1998 crops to Monsanto, so even if he hadn't eradicated his own strain on his own initiative, it would likely not have survived.) This interpretation is not consistent with the court rulings, which place no onus on a farmer in general nor Schmeiser in particular (for example, see paragraph 76 of the Federal Court of Appeal ruling) to prove the absence of the patented gene prior to growing seed.
Appeal
The Federal Court of Appeal upheld the ruling of the trial judge but noted noted that in a case of accidental contamination or a case where the farmer knew of the presence of the gene but took no action to increase its prevalence in his crop, a different ruling could be possible (see paragraphs 55-58 of the appeal ruling).
The issue before the Surpeme Court was whether Schmeiser knowingly or ought to have known that planting and cultivating genetically modified canola constitutes "use" of Monsanto's patented invention of genetically modified canola cells.
Opinion of the Court
The majority was written by McLachlin C.J. with Major, Binnie, Deschamps and Fish JJ. concurring.
The Court dismissed the argument that "use" of patented cells or genes applied only in the context of their isolated form. Nor does the fact that Schmeiser did not use Roundup herbicide on his crops preclude "use" of the gene. Even though the plants propagate without human intervention the realities of modern agriculture mean there is always human intervention in the growth of plants and thus farming is a method of "use" of plant genes.
The Court ruled that Schmeiser deprived Monsanto of its monopoly on the special canola plant by storing and planting the Roundup Ready canola seeds pursuant to his commercial interests. Thus, Schmeiser is considered to have infringed section 42 of the Patent Act. The Court, however, disagreed with the damages given by the trial judge as there was no profit directly resulting from the invention itself.
Dissent
Arbour J., writing for Iacobucci, Bastarache, and LeBel JJ., dissented in part. The reasoning of the dissent closely follows that of the majority in Harvard College v. Canada (Commissioner of Patents) that concluded that though a company can patent products and processes, they cannot patent higher forms of life such as the whole plant itself. That is, "the plant cell claim cannot extend past the point where the genetically modified cell begins to multiply and differentiate into plant tissues, at which point the claim would be for every cell in the plant" (para. 138), which would extend the patent too far. The patent can only be for the founder plant and not necessarily its offspring.
Aftermath
A widespread misunderstanding of the case is that at issue was the question of accidental contamination, and that a victory for Monsanto would place farmers in jeopardy for contamination of their fields which was beyond their control. In fact, the courts at all three levels noted that the case of accidental contamination beyond the farmer's control was not under consideration but rather that Mr. Schmeiser's action of having identified, isolated and saved the Roundup-resistant seed placed the case in a different category. The appellate court also discussed a possible intermediate scenario, in which a farmer is aware of contamination of his crop by genetically modified seed, but tolerates its presence and takes no action to increase its abundance in his crop. The court held that whether such a case would constitute patent infringement remains an open question but that it was a question that did not need to be decided in the Schmeiser case.
In 2005, a "documentary theatre" production dramatizing the court battle, entitled Seeds, by Annabel Soutar, was staged in Montreal. The dialogue was derived entirely verbatim from various archival sources.
External links
- Monsanto Canada Inc. v. Schmeiser, [2004] 1 S.C.R. 902, 2004 SCC 34 (CanLII),
- Percy Schmeiser's website