Monsanto Canada Inc. v. Schmeiser

Monsanto Canada Inc. v. Schmeiser [2004] 1 S.C.R. 902, 2004 SCC 34 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 has the effect of producing canola that is resistant to their Roundup brand of herbicide. Monsanto marketed the seed as Roundup Ready Canola. Farmers using the system are able to control weed competition using Roundup, while avoiding damage to the Roundup-resistant crops. Users are required to enter into a formal agreement with Monsanto, which specifies that new seed must be purchased every year, and an annual licensing fee of C$15 per acre be paid. Roundup Ready Canola was introduced in Canada in 1996, and by 1998, it accounted for 25% of the country's canola area.

In 1997, Percy Schmeiser, a canola breeder and grower in Bruno, Saskatchewan, discovered that a section of one of his fields contained canola that was resistant to herbicide Roundup. A farmhand later harvested and saved the seed from this area, this seed was used to replant in 1998. That harvest was sold for feed. During 1998, over 95% of Schmeiser's canola crop of approximately 1,000 acres (4 km²) was identified as 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. Patents being in federal jurisdiction, the case went to federal court.

Origin of the patented seed in Schmeiser's fields
As established in the original Federal Court trial decision, Schmeiser first discovered Roundup-resistant canola in his crops in 1997. He had used Roundup herbicide to clear weeds around power poles and in ditches adjacent to a public road running beside one of his fields, and noticed that some of the canola which had been sprayed had survived. Schmeiser then performed a test by applying Roundup to an additional three to four acres of the same field. He found that 60% of the canola plants survived. At harvest time, Schmeiser instructed a farmhand to harvest the test field. That seed was stored separately from the rest of the harvest, and used the next year to seed approximately 1,000 acres (4 km²) of canola.

At the time, Roundup Ready canola was in use by several farmers in the area. Schmeiser claimed that he did not plant the initial roundup ready canola, and that his field of custom-bred canola had been accidentally contaminated. Possibly routes of this Gene flow include seed which escaped from passing trucks containing Roundup Ready harvests, or natural, accidental pollination. Monsanto initially claimed that Schmeiser planted Roundup Ready Canola in his fields intentionally, though they could offer no evidence for this. The company later admitted that it was possible for unintentional gene flow to have resulted in the initial presence of Roundup Ready Canola in Schmeiser's field. While the origin of the plants on Schmeisers farm remains 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.

Patent rights versus property rights
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 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. Overriding the rights of the physical property owner for the protection 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.

Publicity
Beginning with the lead-up to the initial Federal Court trial, the case drew widespread public attention and media coverage. The contest was portrayed as a David and Goliath struggle, with Schmeiser cast as the small farmer underdog fighting the unscrupulous major corporation. Both parties were well-suited to their respective roles. Schmeiser was articulate, outspoken, and politically savvy, having in the past served as the mayor of his town and a member of the provincial legislature in Saskatchewan. Monsanto had been dogged by bad press related to various aspects of its former chemical and current biotechnological businesses, called "Monsatan" and its GE products dubbed "Frankenfood". Environmental groups and anti-genetic engineering activists championed Schmeiser's cause, he spoke on the case around the world, and hundreds of thousands of dollars were raised from donations for his defense fund.

Monsanto v. Schmeiser was at times portrayed as part of the process of legally defining the bounds of new biotechnologies, including genetic engineering and ownership of higher lifeforms. The case was frequently connected with that of the so-called Harvard mouse, where in 2002 the Supreme Court had rejected a patent for a special breed of mouse developed for research by Harvard University. It was a precedent-setting case in the right to own higher lifeforms, where the Canadian ruling went against findings in the US and Europe, where the patent was upheld. This angle on Monsanto vs. Schmeiser was misleading, as the Supreme Court eventually took pains to point out, as the case focussed strictly on the application of existing patent law, and did not break new ground in biotechnology areas.

Initial trial and appeal
The issues of patent infringement and "farmer's rights" 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 case was initially tried on June 5-20, 2000, in the Federal Court of Canada, at Saskatoon, Saskatchewan.

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, at trial, Monsanto was able to present evidence sufficient to persuade the Court that Roundup Ready canola had probably not appeared in Schmeiser's 1997 field by such accidental means (paragraph 118). 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.

In the public arena, Schmeiser supporters argued that his 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 Schmeiser and his farmhand, or from a failure of Schmeiser to have the presence of mind to instruct his farmhand to avoid taking canola seed for replanting from the sprayed region. Supporters of Monsanto argued that an oversight of this nature is not plausible, especially in light of 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, an oversight of this nature is not a defence against patent infringement, and was therefore irrelevant. Patents are civil law, and the presence or absence of "guilty intent" is not a factor in determining patent infringement. On this point, the Federal Court of Appeal noted 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.

The Court's ruling concluded:


 * ... on the balance of probabilities, the defendants infringed a number of the claims under the plaintiffs’ Canadian patent number 1,313,830 by planting, in 1998, without leave or licence by the plaintiffs, canola fields with seed saved from the 1997 crop which seed was known, or ought to have been known by the defendants to be Roundup tolerant and when tested was found to contain the gene and cells claimed under the plaintiffs’ patent. By selling the seed harvested in 1998 the defendants further infringed the plaintiffs’ patent."

The case was then heard by the Federal Court of Appeal at Saskatoon, Saskatchewan, beginning May 15, 2002. The Federal Court of Appeal upheld the ruling of the trial judge.

The Federal Court of Appeal in particular stressed the importance of the finding that Schmeiser had knowingly used the seed, in their decision to find 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). 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.

Leave was requested of the Supreme Court of Canada to hear the case. This was granted in May, 2003, and the trial began on January 20, 2004. The issue before the Supreme Court was whether Schmeiser's planting and cultivation of genetically modified canola constituted "use" of Monsanto's patented invention of genetically modified canola cells.

Arguments
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.

The Court 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. 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.

Judgment
The Supreme Court ruled in favor of Monsanto. Schmeiser won a partial victory, where 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 he 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 not having to pay damages, Schmeiser was also saved from having to pay Monsanto's legal bills, which amounted to several hundred thousand dollars and exceeded his own.

Reasons 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.

In the ruling, the court made it clear that patent infringement was the sole consideration, and concerns related to genetic engineering in agriculture were not within the scope of the case:


 * 93 Inventions in the field of agriculture may give rise to concerns not raised in other fields -- moral concerns about whether it is right to manipulate genes in order to obtain better weed control or higher yields. It is open to Parliament to consider these concerns and amend the Patent Act should it find them persuasive.


 * 94 Our task, however, is to interpret and apply the Patent Act as it stands, in accordance with settled principles. Under the present Act, an invention in the domain of agriculture is as deserving of protection as an invention in the domain of mechanical science. Where Parliament has not seen fit to distinguish between inventions concerning plants and other inventions, neither should the courts.

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.

Consequences
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.

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.

The ruling did increase the protection available to biotechnology companies in Canada, a situation which had been left open with the Harvard mouse decision, where it was determined that a "higher lifeform", such as an animal, or by extension a plant, cannot be patented. This put Canada at odds with the other G8 countries where the patent had been granted. In Monsanto vs. Schmeiser, it was determined that protection of a patented gene or cell extends to its presence in a whole plant, even while the plant itself, as a higher lifeform, cannot be patented. This majority view, based on the precedent of mechanical devices, was central to the Supreme Court's decision, and put the onus on the Canadian Parliament to make distinctions between machines and lifeforms as it saw fit.

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.