Plant breeders and plant explorers once captivated the imagination as our true American heroes in the late 19th and early 20th century.
Luther Burbank, our country’s most famous plant breeder, became known as the “Edison of the Garden” and the “Wizard of Santa Rosa.” His small office in his research gardens—where he used to meet with the likes of Thomas Edison and Henry Ford—is preserved at the historical Greenfield Village in Dearborn, Michigan.
One of our most intrepid plant explorers, John Muir, would walk from the Indiana border to Florida, surveying the flora of the post-Civil War landscape in 1867. This trek is recounted in Muir’s epic journal, A Thousand-Mile Walk to the Gulf. Kentucky’s oak trees merited the highest praise from Muir: “Far grandest of all Kentucky plants are her noble oaks. They are the master existences of her exuberant forests. Here is the Eden, the paradise of oaks.”
Despite their heroic reputations, the actual “discoveries” of plant explorers and plant breeders are treated quite differently under United States plant patent laws. Plant specimens found by explorers in uncultivated areas cannot be patented; whereas, plants grown by plant breeders in cultivated areas can constitute patentable subject matter. This article analyzes this vital distinction central to the holding of In re Beineke , 690 F.3d 1344 (Fed. Cir. 2012).
Case Facts and Proceedings
Fast forward to autumn 1980. Professor Walter Beineke notices two white oak trees in the front lawn of a home near Vallonia, Indiana. They appear “to display superior genetic traits as compared to other white oak trees, such as excellent timber quality and strong central stem tendency.” He collects their acorns for further testing. At the time of Beineke’s discovery, these oak trees are respectively 105 and 118 years old. One of these oak trees had already begun growing when Muir began his solitary walk from Indiana to Florida.
After more than 20 years of testing the progeny of these two oak trees for their unique characteristics, Beineke applied for U.S. plant patent protection for the cultivars he designated as AFTO-2 and AFTO-3. He had already obtained a number of plant patents for black walnut tree varieties; in other words, he is “skilled in the art.”
The USPTO examination and subsequent appeals focused on whether Beineke had discovered the oak tree plants in a cultivated or an uncultivated state. The historical records showed that the oak trees had most likely begun their lives in wooded pasture lands. The nearby house was built in 1930; the wooded pasture became its lawn.
The USPTO rejected his applications, determining that Beineke had failed to establish that the claimed oak trees had been found in a cultivated state. The Federal Circuit ultimately affirmed the rejection of these white oak tree variety plant patent applications. The Supreme Court denied Beineke’s petition for a writ of certiorari in February 2013.
The Plant Patent Statute
The Beineke case turns on interpretation of 35 U.S.C. § 161. That statute reads as follows:
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 propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
Beineke’s basic pro-patenting argument is this: he (1) discovered and then (2) asexually reproduced (3) two new and distinct oak tree cultivar varieties that (4) had been found in a cultivated area. As discussed in more detail below, Beineke had the better of a § 161 text-based argument—but the Federal Circuit’s analysis floats rather freely over the actual language of § 161.
The Federal Circuit’s Holding Denying Patentability
In denying patentability, the Federal Circuit concluded that “two things were necessary for an applicant to obtain plant patent protection: (1) the plant must have been created in its inception by human activity, i.e., it must have been the product of plant breeding or other agricultural or horticultural efforts; and (2) the plant must have been created by the ‘inventor,’ i.e., the person seeking the patent must have contributed to the creation of the plant in addition to having appreciated its uniqueness and asexually reproduced it.”
Neither of these In re Beineke plant patenting “requirements” emerge immediately or ineluctably from the language of § 161. They appear to be a distillation of the Federal Circuit’s review and analysis of the legislative history of the Plant Patent Act of 1930 (the “PPA”) and its later revision in 1954. Unfortunately, a key piece of legislative history receives no attention in the Court’s opinion, even though it presciently anticipates the very fact scenario presented by Professor Beineke’s patenting work.
Why is Cultivation Important?
Before analyzing the Federal Circuit’s “atextual” plant patent requirements, it is useful to understand why the “cultivation” element became part and parcel of the PPA. That legislation could also be called the “Luther Burbank Memorial Act.” The PPA legislation was promoted by Mrs. Luther Burbank and Thomas Edison as a tribute to Burbank’s (then deceased) brilliant legacy as a plant breeder. It was a means for putting plant breeder inventive work on a par with those inventing machinery and other mechanical devices. The PPA was not intended to “provide for patents upon varieties of plants newly found by plant explorers or others, growing in an uncultivated or wild state.”
The justification for a “cultivation” requirement is explained in the PPA legislative history: “[A] plant discovery resulting from cultivation is unique, isolated and not repeated by nature, nor can it be reproduced by nature unaided by man, and such discoveries can be made available to the public by encouraging those who own a single specimen to reproduce it asexually and thus create an adequate supply.”
Here, the question posed by the Beineke case is this: did the cultivated lawn surrounding the oak trees influence their apparently unique characteristics? It is certainly conceivable that these oak trees—freed from competition with other plant growth that would otherwise occur in an uncultivated area—could develop unique, patentable traits. What importance should be ascribed to the cultivated lawn in which these trees were found?
The Federal Circuit’s Curious, Selective Reading of Legislative History
In 1954, the PPA was amended to include “newly found seedlings” other than those found in an uncultivated state. In questioning the constitutionality of this proposed legislation and recommending against its enactment, the Department of Commerce included a legal memorandum in the legislative record raising the following salient, prescient points:
It is possible that the references to cultivation in the present bill might be urged as distinguishing from a pure chance find. However, there is nothing in the language used which would require the prospective patentee to have made any contribution whatever to the producing of the plant, or even to its cultivation. Apparently he might have discovered it in a neighbor’s garden. Accordingly, so far as the constitutionality of the bill is concerned, the language of the bill does not differ materially from the inclusion of any newly discovered plant already existing in nature.
Apart from any possible bearing on the question of constitutionality, there seems to be no good reason for limiting patentable discoveries of plants to those in cultivated areas. On the contrary, it would seem that the progress of science and the useful arts would be better promoted by rewarding one who has gone to the trouble and expense of locating and making available a new plant found in a remote area, than one who has merely accidently discovered such a plant in his own or another’s garden.
It would appear, moreover, that the language of the bill would give rise to difficult questions of interpretation. It is not certain whether the new plant itself must be the subject of cultivation, or must merely be found in a cultivated area.
The 1954 PPA amendment passed in its present form despite these concerns raised by the Department of Commerce. The Beineke decision fails to address the import of this legal analysis (prepared in 1953) and its impact on evaluating congressional intent. Further,Beineke’s express limitations on the scope of plant patent laws are difficult to square with the broad scope afforded patentable subject matter, as set forth in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. 534 U.S. 124 (2001)(holding that utility patents may be issued for plants under 35 U.S.C. § 101, “especially when § 101 can protect different attributes and has more stringent requirements than does § 161.”; emphasis added.).
Even more curious is the Beineke discussion regarding necessity of exercising one’s “inventive faculty” as part of the inventive process, with the inference being that Professor Beineke somehow did not exercise his “inventive faculties” in assessing the unique attributes of the subject white oak cultivars.
Although this concept of the “exercise of inventive faculties” had been excised and banished from patenting considerations through the Patent Act of 1952, the Beineke opinion does not grapple with that sea change in the law: “Patentability shall not be negated by the manner in which the invention was made.” By definition, plant patents are subject to the general rules of patent law.
In CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1295-97 (Fed. Cir. 2013), the cardinal importance of this change in the patent law is discussed at length:
Before 1952, the courts had used phrases including “creative work,” “inventive faculty,” and “flash of creative genius” which compared the existing invention to some subjective notion of sufficient “inventiveness” as the test for patentability—by definition a hindsight analysis. See Giles S. Rich, Principles of Patentability, 28 Geo. Wash. L.Rev. 393, 404 (1960). These standardless terms and tests created wildly disparate approaches to determine sufficiency for “invention.” Id. at 403–04. Judge Rich observed that with “invention” as the test, “judges did whatever they felt like doing according to whatever it was that gave the judge his feelings—out of the evidence coupled with his past mental conditioning—and then selected those precedents which supported his conclusions.” Sirilla, 32 J. Marshall L.Rev. at 501 (internal quotation marks omitted). * * * *
After enactment of the 1952 Act, both of its principal architects recognized the significance of the elimination of a subjective test for “invention.” Judge Rich, a House Committee architect of the 1952 Act and later an esteemed jurist, applauded the fact that the Patent Act of 1952 makes no “reference to ‘invention’ as a legal requirement.”Principles of Patentability, 28 Geo. Wash. L.Rev. at 405 (emphasis omitted). Judge Rich emphasized that using “the past tense in referring to” what “used to be called the requirement of ‘invention’” could not be overemphasized. Id. (emphasis in original). Federico expressed the same sentiments. See Federico’s Commentary at 182–83 (explaining that while perhaps the word “invented” in the prior patent act may have been the source of judicial demand for more than just novelty, Section 103 replaced any requirement for “invention”).
In affirming the rejection of Professor Beineke’s plant patent claims, the Federal Circuit effectively categorized his white oak discoveries as the “chance find” of a plant explorer. The two requirements that the Federal Circuit now imposes by judicial fiat on all plant patent applications through its Beineke decision—i.e., that the plant be the product itself of plant breeding and have been created by the “inventor”—find historical grounding in the nature of plant breeding and the impetus for passage of the PPA in 1930. But they do not flow readily from the actual text of § 161, as amended in 1954 in a broadening fashion.