Funk Bros. Seed Co. v. Kalo Inoculant Co.

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Funk Brothers Seed Co. v. Kalo Inoculant Co.
Seal of the United States Supreme Court.svg
Argued January 13, 1948
Decided February 16, 1948
Full case nameFunk Brothers Seed Co. v. Kalo Inoculant Co.
Citations333 U.S. 127 ( more )
68 S. Ct. 440; 92 L. Ed. 588; 1948 U.S. LEXIS 2842; 76 U.S.P.Q. (BNA) 280
Case history
Prior161 F.2d 981 (7th Cir. 1947) (reversed)
Holding
The properties of inhibition or of noninhibition in the bacteria were "the work of nature" and therefore not subject to being patented.
Court membership
Chief Justice
Fred M. Vinson
Associate Justices
Hugo Black  · Stanley F. Reed
Felix Frankfurter  · William O. Douglas
Frank Murphy  · Robert H. Jackson
Wiley B. Rutledge  · Harold H. Burton
Case opinions
MajorityDouglas, joined by Vinson, Black, Reed, Frankfurter, Murphy, Rutledge
ConcurrenceFrankfurter
DissentBurton, joined by Jackson
Laws applied
35 U.S.C. § 31

Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), is a United States Supreme Court decision in which the Court held that a facially trivial implementation of a natural principle or phenomenon of nature is not eligible for a patent. [1]

Contents

Factual background

Leguminous plants are able to take nitrogen from the air and fix it in the plant for conversion to organic nitrogenous compounds. The ability of these plants to fix nitrogen from the air depends on the presence of bacteria that infect the roots of the plant and form nodules on them. These bacteria include six species of the genus Rhizobium . No one species works with all species of leguminous plants, but each works with different groups of those plants. [2] Moreover, different species of Rhizobia bacteria produce an inhibitory effect on each other when mixed.

These bacteria have long been packaged for sale to and use by farmers in the inoculation of the seeds of leguminous plants, with each package containing only one species of root nodule bacteria, to avoid the mutual inhibition effect. The packaged inoculant could therefore be used successfully only in plants of the particular group corresponding to this bacterial species. Thus, if a farmer had crops of clover, alfalfa, and soybeans, they would have to use three separate inoculants.

The patentee discovered that there are strains of each species of root nodule bacteria which do not exert a mutually inhibitive effect on each other. Thus, he was able to provide a mixed culture of Rhizobia capable of inoculating plants belonging to several groups. Kalo exploited the claimed invention by selling multi-purpose packages containing a mixture of different species of Rhizobia suitable for different plants. Funk infringed by selling similar packages and Kalo sued for patent infringement. While the patent had claims both to the method of producing a multi-purpose inoculant by mixing together mutually non-inhibitive strains of Rhizobia and to the inoculant product comprising a mixture of mutually non-inhibitive strains of Rhizobia, the case before the Court involved only the product claims.

Supreme Court opinion

The majority opinion (per Justice Douglas) held that the properties of inhibition or of noninhibition in the bacteria were “the work of nature.,” and therefore not subject to being patented. “[P]atents cannot issue for the discovery of the phenomena of nature.” The Court added:

The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.

The court of appeals thought that packaging the non-inhibitory strains together went beyond the discovery of a phenomenon of nature and conferred patentability, because a “new and different composition of noninhibitive strains…contributed utility and economy to the manufacture and distribution of commercial inoculants.” But the Supreme Court disagreed, and reversed, because the “aggregation of species fell short of invention within the meaning of the patent statutes.” The Court explained:

The aggregation of select strains of the several species into one product is an application of that newly discovered natural principle. But however ingenious the discovery of that natural principle may have been, the application of it is hardly more than an advance in the packaging of the inoculants. Each of the species of root nodule bacteria contained in the package infects the same group of leguminous plants which it always infected. No species acquires a different use. The combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. Each species has the same effect it always had. The bacteria perform in their natural way. Their use in combination does not improve in any way their natural functioning. They serve the ends nature originally provided, and act quite independently of any effort of the patentee.

… The application of this newly discovered natural principle to the problem of packaging of inoculants may well have been an important commercial advance. But once nature's secret of the noninhibitive quality of certain strains of the species of Rhizobium was discovered, the state of the art made the production of a mixed inoculant a simple step. Even though it may have been the product of skill, it certainly was not the product of invention. There is no way in which we could call it such unless we borrowed invention from the discovery of the natural principle itself. That is to say, there is no invention here unless the discovery that certain strains of the several species of these bacteria are noninhibitive, and may thus be safely mixed, is invention. But we cannot so hold without allowing a patent to issue on one of the ancient secrets of nature now disclosed.

… Since we conclude that the product claims do not disclose an invention or discovery within the meaning of the patent statutes, we do not consider whether the other statutory requirements…are satisfied.

Rationale and subsequent developments

The Court decided this case under the patent statute in effect before the 1952 recodification, which distinguished obviousness from "invention." It is therefore not certain from the language used whether the Court held that the claimed invention was too obvious to justify a patent or, as appears more likely, that when the discovery of a phenomenon of nature is implemented in a facially trivial manner, the subject matter is not patent-eligible.

However, on the basis of how subsequent Supreme Court opinions, such as Gottschalk v. Benson [3] and Parker v. Flook , [4] treat Funk, it appears that the opinion is one on patent-eligibility.

A lower court opinion illustrating the application of the doctrine of the Funk case is Armour Pharmaceutical Co. v. Richardson Merrell, Inc. [5] In that case, the patentee desired to administer trypsin orally for use as an anti-inflammatory. He discovered that trypsin could be absorbed effectively in the lower small intestine (ileum). However, stomach acids destroyed trypsin. The patentee proposed and claimed coating trypsin with an enteric coating (stomach-acid-resistant coating), which permitted the trypsin to pass through the stomach to the small intestine without damage to be absorbed and then, it would act as an anti-inflammatory or analgesic. However, the enteric coating expedient was already known for other products. The United States Court of Appeals for the Third Circuit invalidated the patent on the basis of Funk:

Our reading of the Supreme Court's opinion in Funk leads us to conclude that the test of patentability of a natural phenomenon is as follows: Would an artisan, knowing the newly discovered natural phenomenon require more than ordinary skill to discover the process by which to apply that phenomenon as the patentee had done? Once nature's secret that the ileum would absorb trypsin was uncovered, any artisan would have known the process of enterically coating the trypsin to enable it to pass through the acidic environment of the stomach and continue into the ileum.... [The inventor’s] application of that newly discovered principle would itself have to be inventive in order to sustain [the] patent. [6]

Thus, the court held that according to Funk the manner of implementation of a natural principle must itself be patentable, as Parker v. Flook subsequently held. [7]

Related Research Articles

Rhizobia

Rhizobia are diazotrophic bacteria that fix nitrogen after becoming established inside the root nodules of legumes (Fabaceae). To express genes for nitrogen fixation, rhizobia require a plant host; they cannot independently fix nitrogen. In general, they are gram negative, motile, non-sporulating rods.

<i>Rhizobium</i> Genus of nitrogen-fixing bacteria

Rhizobium is a genus of Gram-negative soil bacteria that fix nitrogen. Rhizobium species form an endosymbiotic nitrogen-fixing association with roots of (primarily) legumes and other flowering plants.

Diazotrophs are bacteria and archaea that fix atmospheric nitrogen gas into a more usable form such as ammonia.

<i>Ensifer meliloti</i> Species of bacterium

Ensifer meliloti are an aerobic, Gram-negative, and diazotrophic species of bacteria. S. meliloti are motile and possess a cluster of peritrichous flagella. S. meliloti fix atmospheric nitrogen into ammonia for their legume symbionts, such as alfalfa. S. meliloti forms a symbiotic relationship with legumes from the genera Medicago, Melilotus and Trigonella, including the model legume Medicago truncatula. This symbiosis promotes the development of a plant organ, termed a root nodule. Because soil often contains a limited amount of nitrogen for plant use, the symbiotic relationship between S. meliloti and their legume hosts has agricultural applications. These techniques reduce the need for inorganic nitrogenous fertilizers.

Root nodule Plant part

Root nodules are found on the roots of plants, primarily legumes, that form a symbiosis with nitrogen-fixing bacteria. Under nitrogen-limiting conditions, capable plants form a symbiotic relationship with a host-specific strain of bacteria known as rhizobia. This process has evolved multiple times within the legumes, as well as in other species found within the Rosid clade. Legume crops include beans, peas, and soybeans.

Nod factor Signaling molecule

Nod factors, are signaling molecules produced by soil bacteria known as rhizobia in response to flavonoid exudation from plants under nitrogen limited conditions. Nod factors initiate the establishment of a symbiotic relationship between legumes and rhizobia by inducing nodulation. Nod factors produce the differentiation of plant tissue in root hairs into nodules where the bacteria reside and are able to fix nitrogen from the atmosphere for the plant in exchange for photosynthates and the appropriate environment for nitrogen fixation. One of the most important features provided by the plant in this symbiosis is the production of leghemoglobin, which maintains the oxygen concentration low and prevents the inhibition of nitrogenase activity.

Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether living organisms can be patented. Writing for a five-justice majority, Chief Justice Warren E. Burger held that human-made bacterium could be patented under the patent laws of the United States because such an invention constituted a "manufacture" or "composition of matter". Justice William J. Brennan Jr., along with Justices Byron White, Thurgood Marshall, and Lewis F. Powell Jr., dissented from the Court's ruling, arguing that because Congress had not expressly authorized the patenting of biological organisms, the Court should not extend patent law to cover them.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The case was argued on April 25, 1978 and was decided June 22, 1978. This case is the second member of the Supreme Court's patent-eligibility trilogy.

<i>Bradyrhizobium</i> Genus of bacteria

Bradyrhizobium is a genus of Gram-negative soil bacteria, many of which fix nitrogen. Nitrogen fixation is an important part of the nitrogen cycle. Plants cannot use atmospheric nitrogen (N2); they must use nitrogen compounds such as nitrates.

Microbial inoculants also known as soil inoculants or bioinoculants are agricultural amendments that use beneficial rhizosphericic or endophytic microbes to promote plant health. Many of the microbes involved form symbiotic relationships with the target crops where both parties benefit (mutualism). While microbial inoculants are applied to improve plant nutrition, they can also be used to promote plant growth by stimulating plant hormone production.

In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if it (1) is implemented by a particular machine in a non-conventional and non-trivial manner or (2) transforms an article from one state to another.

Biofertilizer

A biofertilizer is a substance which contains living micro-organisms which, when applied to seeds, plant surfaces, or soil, colonize the rhizosphere or the interior of the plant and promotes growth by increasing the supply or availability of primary nutrients to the host plant. Biofertilizers add nutrients through the natural processes of nitrogen fixation, solubilizing phosphorus, and stimulating plant growth through the synthesis of growth-promoting substances. The microorganisms in biofertilizers restore the soil's natural nutrient cycle and build soil organic matter. Through the use of biofertilizers, healthy plants can be grown, while enhancing the sustainability and the health of the soil. Biofertilizers can be expected to reduce the use of synthetic fertilizers and pesticides, but they are not yet able to replace their use. Since they play several roles, a preferred scientific term for such beneficial bacteria is "plant-growth promoting rhizobacteria" (PGPR).

<i>Bradyrhizobium japonicum</i> Species of bacterium

Bradyrhizobium japonicum is a species of legume-root nodulating, microsymbiotic nitrogen-fixing bacteria. The species is one of many Gram-negative, rod-shaped bacteria commonly referred to as rhizobia. Within that broad classification, which has three groups, taxonomy studies using DNA sequencing indicate that B. japonicum belongs within homology group II.

Mesorhizobium tianshanense, formerly known as Rhizobium tianshanense, is a Gram negative species of bacteria found in the root nodules of many plant species. Its type strain is A-1BS.

Rhizobium hainanense is a Gram negative root nodule bacteria. Strain CCBAU 57015 (166) is the type strain.

Mesorhizobium mediterraneum is a bacterium from the genus Mesorhizobium, which was isolated from root nodule of the Chickpea in Spain. The species Rhizobium mediterraneum was subsequently transferred to Mesorhizobium mediterraneum. This species, along with many other closely related taxa, have been found to promote production of chickpea and other crops worldwide by forming symbiotic relationships.

Rhizobium loessense is a root nodule bacteria, first isolated from nodules of Astragalus and Lespedeza species. Its type strain is CCBAU 7190BT.

Ensifer medicae is a species of gram-negative, nitrogen-fixing, rod-shaped bacteria. They can be free-living or symbionts of leguminous plants in root nodules. E.medicae was first isolated from root nodules on plants in the genus Medicago. Some strains of E.medicae, like WSM419, are aerobic. They are chemoorganotrophic mesophiles that prefer temperatures around 28 °C. In addition to their primary genome, these organisms also have three known plasmids, sized 1,570,951 bp, 1,245,408 bp and 219,313 bp.

Rhizobium lentis is a gram-negative bacterium which was isolated from root nodules of lentils in Bangladesh.

In re Roslin Institute (Edinburgh), 750 F.3d 1333, is a 2014 decision of the United States Court of Appeals for the Federal Circuit rejecting a patent for a cloned sheep known as "Dolly the Sheep"— the first mammal ever cloned from an adult somatic cell.

References

  1. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948). PD-icon.svg This article incorporates public domain material from this U.S government document.
  2. For example, Rhizobium leguminosarum bv. trifolii works with clover; Sinorhizobium meliloti works with alfalfa; and Bradyrhizobium japonicum works with soybeans.
  3. Gottschalk v. Benson , 409 U.S. 63 (1972).
  4. Parker v. Flook , 437 U.S. 584 (1978).
  5. Armour Pharmaceutical Co. v. Richardson Merrell, Inc., 396F.2d70 ( 3d Cir. 1968).
  6. 396 F.2d at 74.
  7. Other lower court cases stating so are National Lead Co. v. Western Lead Co., 324 F.2d 539 (9th Cir. 1963); Davison Chem. Corp. v. Joliet Chems., Inc., 179 F.2d 793 (7th Cir. 1950); Loew’s Drive-In Theatres v. Park-In Theatres, 174F.2d547 ( 1st Cir. 1949).