throbber
(Slip Opinion)
`
`
`
` OCTOBER TERM, 2012
`
`
`Syllabus
`
`1
`
` NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
`
`
`
` being done in connection with this case, at the time the opinion is issued.
`
`
`
` The syllabus constitutes no part of the opinion of the Court but has been
`
` prepared by the Reporter of Decisions for the convenience of the reader.
`
` See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
`
`
`SUPREME COURT OF THE UNITED STATES
`
`
`
` Syllabus
`
` BOWMAN v. MONSANTO CO. ET AL.
`
`
`CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
`
`THE FEDERAL CIRCUIT
` No. 11–796. Argued February 19, 2013—Decided May 13, 2013
`
`
`Respondent Monsanto invented and patented Roundup Ready soybean
`seeds, which contain a genetic alteration that allows them to survive
`exposure to the herbicide glyphosate. It sells the seeds subject to a
`licensing agreement that permits farmers to plant the purchased
`seed in one, and only one, growing season. Growers may consume or
`sell the resulting crops, but may not save any of the harvested soy-
`beans for replanting. Petitioner Bowman purchased Roundup Ready
`soybean seed for his first crop of each growing season from a company
`associated with Monsanto and followed the terms of the licensing
`agreement. But to reduce costs for his riskier late-season planting,
`Bowman purchased soybeans intended for consumption from a grain
`
`
`elevator; planted them; treated the plants with glyphosate, killing all
`
`
`plants without the Roundup Ready trait; harvested the resulting
`soybeans that contained that trait; and saved some of these harvest-
`
`ed seeds to use in his late-season planting the next season. After dis-
`
`
`covering this practice, Monsanto sued Bowman for patent infringe-
`ment. Bowman raised the defense of patent exhaustion, which gives
`
`the purchaser of a patented article, or any subsequent owner, the
`
`right to use or resell that article. The District Court rejected Bow-
`man’s defense and the Federal Circuit affirmed.
`
`Held: Patent exhaustion does not permit a farmer to reproduce patent-
`
`ed seeds through planting and harvesting without the patent holder’s
`
`permission. Pp. 4–10.
`
`(a) Under the patent exhaustion doctrine, “the initial authorized
`
`sale of a patented article terminates all patent rights to that item,”
`
`
`Quanta Computer, Inc. v. LG Electronics, Inc., 553 U. S. 617, 625,
`
`and confers on the purchaser, or any subsequent owner, “the right to
`
`use [or] sell” the thing as he sees fit, United States v. Univis Lens Co.,
`
`
`
`
`
`
`
`

`
`BOWMAN v. MONSANTO CO.
`
`
`Syllabus
`316 U. S. 241, 249–250. However, the doctrine restricts the patent-
`ee’s rights only as to the “particular article” sold, id., at 251; it leaves
`untouched the patentee’s ability to prevent a buyer from making new
`copies of the patented item. By planting and harvesting Monsanto’s
`patented seeds, Bowman made additional copies of Monsanto’s pa-
`tented invention, and his conduct thus falls outside the protections of
`patent exhaustion. Were this otherwise, Monsanto’s patent would
`provide scant benefit. After Monsanto sold its first seed, other seed
`companies could produce the patented seed to compete with Monsan-
`to, and farmers would need to buy seed only once. Pp. 4–7.
`(b) Bowman argues that exhaustion should apply here because he
`
`is using seeds in the normal way farmers do, and thus allowing Mon-
`
`santo to interfere with that use would create an impermissible excep-
`
`tion to the exhaustion doctrine for patented seeds. But it is really
`
`Bowman who is asking for an exception to the well-settled rule that
`exhaustion does not extend to the right to make new copies of the pa-
`
`tented item. If Bowman was granted that exception, patents on
`seeds would retain little value. Further, applying the normal rule
`will allow farmers to make effective use of patented seeds. Bowman,
`who purchased seeds intended for consumption, stands in a peculiar-
`
`ly poor position to argue that he cannot make effective use of his soy-
`
`beans. Bowman conceded that he knew of no other farmer who
`
`planted soybeans bought from a grain elevator. In the more ordinary
`case, when a farmer purchases Roundup Ready seed from Monsanto
`or an affiliate, he will be able to plant it in accordance with Monsan-
`to’s license to make one crop. Pp. 7–10.
`657 F. 3d 1341, affirmed.
` KAGAN, J., delivered the opinion for a unanimous Court.
`
`
`
`
`2
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`
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`
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`
`
`
`

`
`
`
`
`
` Cite as: 569 U. S. ____ (2013)
`
`Opinion of the Court
`
`1
`
`
` NOTICE: This opinion is subject to formal revision before publication in the
`
`
`
` preliminary print of the United States Reports. Readers are requested to
`
` notify the Reporter of Decisions, Supreme Court of the United States, Wash-
`
` ington, D. C. 20543, of any typographical or other formal errors, in order
`
`
` that corrections may be made before the preliminary print goes to press.
`
`
`
`
`SUPREME COURT OF THE UNITED STATES
`
`_________________
`
` No. 11–796
`_________________
` VERNON HUGH BOWMAN, PETITIONER v.
`
`MONSANTO COMPANY ET AL.
`
`
`ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
`
`
`APPEALS FOR THE FEDERAL CIRCUIT
`
`[May 13, 2013]
`
`JUSTICE KAGAN delivered the opinion of the Court.
`Under the doctrine of patent exhaustion, the authorized
`
`
`sale of a patented article gives the purchaser, or any sub-
`sequent owner, a right to use or resell that article. Such a
`sale, however, does not allow the purchaser to make new
`copies of the patented invention. The question in this case
`is whether a farmer who buys patented seeds may repro-
`duce them through planting and harvesting without the
`patent holder’s permission. We hold that he may not.
`I
`Respondent Monsanto invented a genetic modification
`
`that enables soybean plants to survive exposure to glypho-
`sate, the active ingredient in many herbicides (including
`Monsanto’s own Roundup). Monsanto markets soybean seed
`containing this altered genetic material as Roundup Ready
`seed. Farmers planting that seed can use a glyphosate-
`based herbicide to kill weeds without damaging their crops.
`
`
`Two patents issued to Monsanto cover various aspects
`of its Roundup Ready technology, including a seed in-
`corporating the genetic alteration. See Supp. App. SA1–21
`
`(U. S. Patent Nos. 5,352,605 and RE39,247E); see also
`
`
`
`
`
`
`
`

`
`2
`
`
`BOWMAN v. MONSANTO CO.
`
`Opinion of the Court
`657 F. 3d 1341, 1343–1344 (CA Fed. 2011).
`
`Monsanto sells, and allows other companies to sell,
`Roundup Ready soybean seeds to growers who assent to a
`special licensing agreement. See App. 27a. That agree-
`
`ment permits a grower to plant the purchased seeds in one
`(and only one) season. He can then consume the resulting
`crop or sell it as a commodity, usually to a grain elevator
`or agricultural processor. See 657 F. 3d, at 1344–1345.
`But under the agreement, the farmer may not save any of
`the harvested soybeans for replanting, nor may he supply
`them to anyone else for that purpose. These restrictions
`reflect the ease of producing new generations of Roundup
`Ready seed. Because glyphosate resistance comes from
`the seed’s genetic material, that trait is passed on from
`the planted seed to the harvested soybeans: Indeed, a
`
`single Roundup Ready seed can grow a plant containing
`dozens of genetically identical beans, each of which, if
`replanted, can grow another such plant—and so on and so
`on. See App. 100a. The agreement’s terms prevent the
`farmer from co-opting that process to produce his own
`
`Roundup Ready seeds, forcing him instead to buy from
`
`Monsanto each season.
`
`Petitioner Vernon Bowman is a farmer in Indiana who,
`it is fair to say, appreciates Roundup Ready soybean seed.
`He purchased Roundup Ready each year, from a company
`affiliated with Monsanto, for his first crop of the season.
`In accord with the agreement just described, he used all of
`that seed for planting, and sold his entire crop to a grain
`elevator (which typically would resell it to an agricultural
`processor for human or animal consumption).
`
`Bowman, however, devised a less orthodox approach for
`
`his second crop of each season. Because he thought such
`
`late-season planting “risky,” he did not want to pay the
`premium price that Monsanto charges for Roundup Ready
`seed. Id., at 78a; see Brief for Petitioner 6. He therefore
`
`went to a grain elevator; purchased “commodity soybeans”
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`3
`
`
`Cite as: 569 U. S. ____ (2013)
`
`Opinion of the Court
`intended for human or animal consumption; and planted
`them in his fields.1 Those soybeans came from prior har-
`vests of other local farmers. And because most of those
`
`farmers also used Roundup Ready seed, Bowman could
`anticipate that many of the purchased soybeans would
`contain Monsanto’s patented technology. When he applied
`a glyphosate-based herbicide to his fields, he confirmed
`that this was so; a significant proportion of the new plants
`survived the treatment, and produced in their turn a new
`crop of soybeans with the Roundup Ready trait. Bowman
`saved seed from that crop to use in his late-season plant-
`ing the next year—and then the next, and the next, until
`he had harvested eight crops in that way. Each year, that
`is, he planted saved seed from the year before (sometimes
`adding more soybeans bought from the grain elevator),
`sprayed his fields with glyphosate to kill weeds (and any
`non-resistant plants), and produced a new crop of glyphosate-
`resistant—i.e., Roundup Ready—soybeans.
`
`After discovering this practice, Monsanto sued Bowman
`
`for infringing its patents on Roundup Ready seed. Bow-
`man raised patent exhaustion as a defense, arguing that
`Monsanto could not control his use of the soybeans be-
`cause they were the subject of a prior authorized sale
`(from local farmers to the grain elevator). The District
`Court rejected that argument, and awarded damages to
`Monsanto of $84,456. The Federal Circuit affirmed. It
`reasoned that patent exhaustion did not protect Bowman
`
`because he had “created a newly infringing article.” 657
`F. 3d, at 1348. The “right to use” a patented article follow-
`——————
`1Grain elevators, as indicated above, purchase grain from farmers
`
`and sell it for consumption; under federal and state law, they generally
`cannot package or market their grain for use as agricultural seed. See
`
`
` 7 U. S. C. §1571; Ind. Code §15–15–1–32 (2012). But because soybeans
`are themselves seeds, nothing (except, as we shall see, the law) pre-
`
`vented Bowman from planting, rather than consuming, the product he
`bought from the grain elevator.
`
`
`
`
`
`
`
`
`
`

`
`4
`
`
`BOWMAN v. MONSANTO CO.
`
`Opinion of the Court
`ing an authorized sale, the court explained, “does not
`include the right to construct an essentially new article on
`the template of the original, for the right to make the
`article remains with the patentee.” Ibid. (brackets and
`
`internal quotation marks omitted). Accordingly, Bowman
`
`could not “‘replicate’ Monsanto’s patented technology by
`planting it in the ground to create newly infringing genetic
`
`material, seeds, and plants.” Ibid.
`
`We granted certiorari to consider the important ques-
`tion of patent law raised in this case, 568 U. S. ___ (2012),
`and now affirm.
`
`
`
`
`
`
`II
`
`
`The doctrine of patent exhaustion limits a patentee’s
`right to control what others can do with an article embody-
`
`ing or containing an invention.2 Under the doctrine, “the
`initial authorized sale of a patented item terminates all
`patent rights to that item.” Quanta Computer, Inc. v. LG
`Electronics, Inc., 553 U. S. 617, 625 (2008). And by “ex-
`haust[ing] the [patentee’s] monopoly” in that item, the sale
`confers on the purchaser, or any subsequent owner, “the
`
`right to use [or] sell” the thing as he sees fit. United
`
`States v. Univis Lens Co., 316 U. S. 241, 249–250 (1942).
`We have explained the basis for the doctrine as follows:
`“[T]he purpose of the patent law is fulfilled with respect to
`any particular article when the patentee has received his
`reward . . . by the sale of the article”; once that “purpose is
`realized the patent law affords no basis for restraining the
`use and enjoyment of the thing sold.” Id., at 251.
`
`
`
`Consistent with that rationale, the doctrine restricts a
`
`patentee’s rights only as to the “particular article” sold,
`ibid.; it leaves untouched the patentee’s ability to prevent
`——————
`2The Patent Act grants a patentee the “right to exclude others from
`making, using, offering for sale, or selling the invention.” 35 U. S. C.
`
`§154(a)(1); see §271(a) (“[W]hoever without authority makes, uses,
`offers to sell, or sells any patented invention . . . infringes the patent”).
`
`
`
`
`
`
`
`

`
`
`
` Cite as: 569 U. S. ____ (2013)
`
`Opinion of the Court
`a buyer from making new copies of the patented item.
`“[T]he purchaser of the [patented] machine . . . does not
`acquire any right to construct another machine either for
`
`his own use or to be vended to another.” Mitchell v.
`Hawley, 16 Wall. 544, 548 (1873); see Wilbur-Ellis Co. v.
`Kuther, 377 U. S. 422, 424 (1964) (holding that a purchas-
`er’s “reconstruction” of a patented machine “would im-
`pinge on the patentee’s right ‘to exclude others from mak-
`
`ing’ . . . the article” (quoting 35 U. S. C. §154 (1964 ed.))).
`Rather, “a second creation” of the patented item “call[s]
`the monopoly, conferred by the patent grant, into play for
`a second time.” Aro Mfg. Co. v. Convertible Top Replace-
`
`ment Co., 365 U. S. 336, 346 (1961). That is because the
`patent holder has “received his reward” only for the actual
`article sold, and not for subsequent recreations of it.
`Univis, 316 U. S., at 251. If the purchaser of that article
`could make and sell endless copies, the patent would
`effectively protect the invention for just a single sale.
`Bowman himself disputes none of this analysis as a gen-
`eral matter: He forthrightly acknowledges the “well set-
`tled” principle “that the exhaustion doctrine does not
`extend to the right to ‘make’ a new product.” Brief for
`Petitioner 37 (citing Aro, 365 U. S., at 346).
`
`Unfortunately for Bowman, that principle decides this
`case against him. Under the patent exhaustion doctrine,
`Bowman could resell the patented soybeans he purchased
`from the grain elevator; so too he could consume the beans
`himself or feed them to his animals. Monsanto, although
`the patent holder, would have no business interfering in
`
`
`those uses of Roundup Ready beans. But the exhaustion
`
`
`doctrine does not enable Bowman to make additional
`patented soybeans without Monsanto’s permission (either
`express or implied). And that is precisely what Bowman
`did. He took the soybeans he purchased home; planted
`them in his fields at the time he thought best; applied
`glyphosate to kill weeds (as well as any soy plants lacking
`
`
`
`
`
`
`
`
`
`5
`
`
`
`

`
`BOWMAN v. MONSANTO CO.
`
`Opinion of the Court
`the Roundup Ready trait); and finally harvested more
`(many more) beans than he started with. That is how “to
`‘make’ a new product,” to use Bowman’s words, when the
`original product is a seed. Brief for Petitioner 37; see
`Webster’s Third New International Dictionary 1363 (1961)
`
`(“make” means “cause to exist, occur, or appear,” or more
`specifically, “plant and raise (a crop)”). Because Bowman
`thus reproduced Monsanto’s patented invention, the ex-
`
`haustion doctrine does not protect him.3
`Were the matter otherwise, Monsanto’s patent would
`
`provide scant benefit. After inventing the Roundup Ready
`trait, Monsanto would, to be sure, “receiv[e] [its] reward”
`for the first seeds it sells. Univis, 316 U. S., at 251. But
`in short order, other seed companies could reproduce the
`product and market it to growers, thus depriving Mon-
`santo of its monopoly. And farmers themselves need only
`buy the seed once, whether from Monsanto, a competitor,
`or (as here) a grain elevator. The grower could multiply
`his initial purchase, and then multiply that new creation,
`ad infinitum—each time profiting from the patented seed
`without compensating its inventor. Bowman’s late-season
`
`plantings offer a prime illustration. After buying beans
`for a single harvest, Bowman saved enough seed each year
`
`to reduce or eliminate the need for additional purchases.
`
`——————
` 3This conclusion applies however Bowman acquired Roundup Ready
`
`seed: The doctrine of patent exhaustion no more protected Bowman’s
`reproduction of the seed he purchased for his first crop (from a Monsanto-
`affiliated seed company) than the beans he bought for his second
`(from a grain elevator). The difference between the two purchases was
`that the first—but not the second—came with a license from Monsanto
`to plant the seed and then harvest and market one crop of beans. We
`do not here confront a case in which Monsanto (or an affiliated seed
`company) sold Roundup Ready to a farmer without an express license
`agreement. For reasons we explain below, we think that case unlikely
`
`to arise. See infra, at 9. And in the event it did, the farmer might
`
`reasonably claim that the sale came with an implied license to plant
`and harvest one soybean crop.
`
`
`
`
`
`6
`
`
`
`
`

`
`
`
`7
`
`
`
` Cite as: 569 U. S. ____ (2013)
`
`Opinion of the Court
`Monsanto still held its patent, but received no gain from
`Bowman’s annual production and sale of Roundup Ready
`soybeans. The exhaustion doctrine is limited to the “par-
`ticular item” sold to avoid just such a mismatch between
`invention and reward.
`
`Our holding today also follows from J. E. M. Ag Supply,
`
`
`Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U. S. 124 (2001).
`We considered there whether an inventor could get a
`patent on a seed or plant, or only a certificate issued under
`the Plant Variety Protection Act (PVPA), 7 U. S. C. §2321
`et seq. We decided a patent was available, rejecting the
`claim that the PVPA implicitly repealed the Patent Act’s
`coverage of seeds and plants. On our view, the two stat-
`utes established different, but not conflicting schemes:
`The requirements for getting a patent “are more stringent
`than those for obtaining a PVP certificate, and the pro-
`tections afforded” by a patent are correspondingly greater.
`J. E. M., 534 U. S., at 142. Most notable here, we ex-
`plained that only a patent holder (not a certificate holder)
`could prohibit “[a] farmer who legally purchases and
`plants” a protected seed from saving harvested seed “for
`
`replanting.” Id., at 140; see id., at 143 (noting that the
`
`Patent Act, unlike the PVPA, contains “no exemptio[n]” for
`“saving seed”). That statement is inconsistent with apply-
`ing exhaustion to protect conduct like Bowman’s. If a sale
`
`cut off the right to control a patented seed’s progeny, then
`
`(contrary to J. E. M.) the patentee could not prevent the
`
`buyer from saving harvested seed. Indeed, the patentee
`could not stop the buyer from selling such seed, which
`even a PVP certificate owner (who, recall, is supposed to
`have fewer rights) can usually accomplish. See 7 U. S. C.
`§§2541, 2543. Those limitations would turn upside-down
`the statutory scheme J. E. M. described.
`
`Bowman principally argues that exhaustion should
`apply here because seeds are meant to be planted. The
`exhaustion doctrine, he reminds us, typically prevents a
`
`
`
`
`
`
`
`

`
`
`
`
`
`
`
`8
`
`
`BOWMAN v. MONSANTO CO.
`
`Opinion of the Court
`patentee from controlling the use of a patented product
`following an authorized sale. And in planting Roundup
`Ready seeds, Bowman continues, he is merely using them
`in the normal way farmers do. Bowman thus concludes
`that allowing Monsanto to interfere with that use would
`“creat[e] an impermissible exception to the exhaustion
`doctrine” for patented seeds and other “self-replicating
`technologies.” Brief for Petitioner 16.
`But it is really Bowman who is asking for an unprece-
`
`dented exception—to what he concedes is the “well settled”
`rule that “the exhaustion doctrine does not extend to the
`right to ‘make’ a new product.” See supra, at 5. Reproduc-
`ing a patented article no doubt “uses” it after a fashion.
`But as already explained, we have always drawn the
`boundaries of the exhaustion doctrine to exclude that
`activity, so that the patentee retains an undiminished
`right to prohibit others from making the thing his patent
`protects. See, e.g., Cotton-Tie Co. v. Simmons, 106 U. S.
`
`89, 93–94 (1882) (holding that a purchaser could not “use”
`the buckle from a patented cotton-bale tie to “make” a new
`tie). That is because, once again, if simple copying were a
`protected use, a patent would plummet in value after the
`first sale of the first item containing the invention. The
`undiluted patent monopoly, it might be said, would extend
`not for 20 years (as the Patent Act promises), but for only
`one transaction. And that would result in less incentive
`for innovation than Congress wanted. Hence our repeated
`insistence that exhaustion applies only to the particular
`
`item sold, and not to reproductions.
`
`Nor do we think that rule will prevent farmers from
`making appropriate use of the Roundup Ready seed they
`
`buy. Bowman himself stands in a peculiarly poor position
`to assert such a claim. As noted earlier, the commodity
`soybeans he purchased were intended not for planting, but
`for consumption. See supra, at 2–3. Indeed, Bowman
`conceded in deposition testimony that he knew of no other
`
`
`
`
`
`
`
`

`
`
`
`9
`
`
`
` Cite as: 569 U. S. ____ (2013)
`
`Opinion of the Court
`farmer who employed beans bought from a grain elevator
`to grow a new crop. See App. 84a. So a non-replicating
`use of the commodity beans at issue here was not just
`available, but standard fare. And in the more ordinary
`case, when a farmer purchases Roundup Ready seed qua
`seed—that is, seed intended to grow a crop—he will be
`able to plant it. Monsanto, to be sure, conditions the
`farmer’s ability to reproduce Roundup Ready; but it does
`not—could not realistically—preclude all planting. No
`sane farmer, after all, would buy the product without
`
`some ability to grow soybeans from it. And so Monsanto,
`predictably enough, sells Roundup Ready seed to farmers
`with a license to use it to make a crop. See supra, at 2, 6,
`n. 3. Applying our usual rule in this context therefore will
`allow farmers to benefit from Roundup Ready, even as it
`rewards Monsanto for its innovation.
`
`Still, Bowman has another seeds-are-special argument:
`
`that soybeans naturally “self-replicate or ‘sprout’ unless
`stored in a controlled manner,” and thus “it was the planted
`soybean, not Bowman” himself, that made replicas of
`Monsanto’s patented invention. Brief for Petitioner 42;
`see Tr. of Oral Arg. 14 (“[F]armers, when they plant seeds,
`they don’t exercise any control . . . over their crop” or “over
`
`the creative process”). But we think that blame-the-bean
`defense tough to credit. Bowman was not a passive ob-
`server of his soybeans’ multiplication; or put another way,
`the seeds he purchased (miraculous though they might be
`in other respects) did not spontaneously create eight suc-
`cessive soybean crops. As we have explained, supra at
`2–3, Bowman devised and executed a novel way to harvest
`crops from Roundup Ready seeds without paying the usual
`premium. He purchased beans from a grain elevator
`anticipating that many would be Roundup Ready; applied
`a glyphosate-based herbicide in a way that culled any
`
`plants without the patented trait; and saved beans from
`the rest for the next season. He then planted those
`
`
`
`
`
`
`
`

`
`10
`
`
`BOWMAN v. MONSANTO CO.
`
`Opinion of the Court
`Roundup Ready beans at a chosen time; tended and treated
`them, including by exploiting their patented glyphosate-
`resistance; and harvested many more seeds, which he
`either marketed or saved to begin the next cycle. In all
`
`this, the bean surely figured. But it was Bowman, and not
`the bean, who controlled the reproduction (unto the eighth
`generation) of Monsanto’s patented invention.
`
`Our holding today is limited—addressing the situa-
`
`tion before us, rather than every one involving a self-
`replicating product. We recognize that such inventions
`
`are becoming ever more prevalent, complex, and diverse.
`In another case, the article’s self-replication might occur
`outside the purchaser’s control. Or it might be a necessary
`but incidental step in using the item for another purpose.
`Cf. 17 U. S. C. §117(a)(1) (“[I]t is not [a copyright] in-
`fringement for the owner of a copy of a computer program
`to make . . . another copy or adaptation of that computer
`program provide[d] that such a new copy or adaptation is
`created as an essential step in the utilization of the com-
`puter program”). We need not address here whether or
`how the doctrine of patent exhaustion would apply in such
`circumstances. In the case at hand, Bowman planted
`Monsanto’s patented soybeans solely to make and market
`replicas of them, thus depriving the company of the re-
`ward patent law provides for the sale of each article.
`
`Patent exhaustion provides no haven for that conduct. We
`accordingly affirm the judgment of the Court of Appeals
`
`for the Federal Circuit.
`
`
`
`
`
`
`
`
`
`
`
`It is so ordered.

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