As the U.S. Supreme Court begins its 2012 October term, the Court added two new patent-related cases to its docket. In Bowman v. Monsanto Corp., No. 11-796, the Court will consider the extent of patent rights in the sale of genetically altered seeds. In particular, the Court will examine whether Monsanto’s sale of seeds exhausts any rights to a second generation of those seeds. The Federal Circuit rejected Bowman’s call for a “robust” exhaustion doctrine that encompasses the progeny of seeds and other self-replicating biotechnologies, finding that each new generation of seeds is a newly infringing article subject to Monsanto’s patent rights.
In Gunn v. Minton, No. 11-1118, the Court will examine federal jurisdiction in patent malpractice cases. The Texas Supreme Court, applying a U.S. Supreme Court multi-prong test in this area, found that federal courts have exclusive jurisdiction over malpractice cases where a patent issue is a necessary, disputed, and substantial element of the malpractice claim. A dissent at the Texas Court argued the patent issue in question was not “disputed” or “substantial.” The dissent further claimed that this decision upset the balance between federal and state courts by locking all patent malpractice decisions in federal courts and providing precedent to improperly remove state jurisdiction over malpractice actions that implicate federal issues.