The Honeycrisp Apple & Plant Patents

Fresh Organic Apples at a Farmers Market Stall by Natalia S

Introduction

The Honeycrisp “has an exceptionally crisp and juicy texture” according to the text of its patent, U.S. Patent No. Plant 7,197.  [1].  The Honeycrisp’s crispy yet juicy mouthfeel is a result of careful apple breeding; the Honeycrisp was bred to have bigger cells compared to other apple varieties, which burst when bitten into.  [2].  The Honeycrisp’s skin is a pleasant amalgamation of vermillion red and pale yellow, with a tiny patch of green hovering over the stem.  [3].  The Honeycrisp also keeps exceptionally well, its signature “extremely crisp texture” can be “maintained for at least 5 months in storage at 34 F.”  [4].  The Honeycrisp is favorable to farmers because its harvesting period can be extended further than other popular apple varieties such as the McIntosh.  [5].

For all these reasons, Honeycrisp is widely considered a fan favorite apple variety.  In 2016, US Apple Association ranked it as the fifth most popular apple on the market.  [6].  According to the 2019 USDA Certified Organic Summary, Honeycrisp was one of the varieties with the highest production volume in the United States organic market.  [7].  And a 2023 Statista survey found that Honeycrisp was the most consumed variety of apple, with 43% of surveyed consumers saying it was their favorite.  [8].

Its enduring popularity earned its maker, the University of Minnesota, a pretty penny.  The Honeycrisp apple patent, which expired in 2008, earned the university over $10 million in royalties during its lifetime, making it the third-most valuable invention produced by the University of Minnesota.  [9]. 

This blog examines one of the most successful and beloved plant patents: the Honeycrisp apple, and delves into the history of apple cultivation, grafting, and breeding.

An apple tree with green leaves and ripe apples by Markus Winkler

The History of the Apple: from Alma-Ata to Johnny Appleseed

Apples are an ancient fruit.  The first explicit writing of apples was in Homer’s Odyssey, written between 725–675 BCE, where the hero protagonist seeking refuge in King Alcinous’s court observes that

Beyond the courtyard, but close to the door, stands an enormous orchard, four measures of land, with a hedge on either side. Huge, richly laden trees grow there—pomegranates, pears, and apple trees with glistening fruit, sweet figs, and fertile olive trees.  [10].

The apples in King Alcinous’s orchard, and our grocery stores, are fruits of domesticated apple trees, or Malus domestica.  [11].  Famed plant explorer and botanist Nikolai Vavilov is credited to be the first to trace Malus domestica to its wild ancestor, Malus sieversii.  [12].  When exploring the city of Alma-Ata, Kazakhstan in 1929, Nikolai Vavilov observed thick forests of wild apple trees stretching for miles in every direction, bearing apples that ranged from a deep maroon to soft yellow.  [13].  Nikolai Vavilov theorized that this city, now known as Almaty which translates in as “Father of Apples” in Kazakh, was the birthplace of the apple.  [14].    

For thousands of years, Malus sieversii grew in the Yili valley, Kazakhstan, and Kyrgyzstan, protected by the Tienshan Mountains.  [15].  From this region, apple seeds were slowly spread across Asia from animals and humans traveling along the Silk Road.  [16].  Around 512 BCE, when the Persian empire stretched from Turkey and northern Egypt to India, apple trees flourished in thousands of orchards and gardens.  [17].  Apples had become a favorite of discerning royals and members of the upper echelon of the Persian empire; and the ability to not only grow but identify the different apple varieties by taste became a status symbol.  [18].  When Alexander the Great conquered Persia in 334 BCE, he took, among other things, the Persian adoration of the apple.  [19]. 

Person Carrying a Basket Full of Apples by Tulia Ilina

Because apple trees are heterozygous, the apple trees that were being spread across Asia varied wildly genetically, especially in regards to the taste of the fruit.  [20].  The only way to grow multiple trees that produce the same, desirable taste is through grafting.  [21].  Grafting is the technique of connecting two pieces of living plant tissue together such that the two pieces will unite and grow together into one composite plant.  [22].  If an apple tree bears remarkably good fruit, parts of that tree may be grafted onto other apple trees, and those trees will begin to grow the same fruit.  And so, Alexander the Great, after bringing the apples to Greece, subsequently brought in gardeners skilled in grafting in order to grow even better apples.  [23].   

From Greece, these new apples, and the knowledge of plant grafting, traveled along the Silk Road to the Romans, who in turn began to grow their own apple orchards.  [24].  The Romans produced a multitude of varieties of apples, more than any other fruit; according to Pliny the Elder, the Romans had cultivated 23 different varieties of apple.  [25].  And as the Roman Empire spread across Europe, so too did the superior Roman apples.  [26]. 

Explorers and colonizers from Europe brought their love of apples with them to the New World in the sixteenth and seventeenth century.  [27].  The European arrivals attempted to plant and grow their grafted apple trees, with little to no success.  [28].  However, there was great success with growing apple trees from seeds, so apple seeds were sown in orchards throughout the United States as Europeans and early Americans spread westward from the east coast.  [29]. 

A picture of Johnny Appleseed in "Pecos Bill and Other Tales" by Irwin Shapiro and Illustrated by Al Schmidt. (Golden Press, 1958).  "Johnny Appleseed" by Svadilfari is licensed under CC BY-ND 2.0.

One of those early Americans was John Chapman, better known as Johnny Appleseed.   [30].  Born in Massachusetts in1774, Johnny Appleseed planted so many apple seeds across the midwestern United States he became a folk hero.  [31].  So named because he spread apple seeds instead of grafted apple trees, Johnny Appleseed embraced the chaotic nature of the heterozygous apple tree.  [32].  Johnny Appleseed’s efforts produced hundreds of new apple varieties that had never been seen before.  [33].  One of Johnny Appleseed’s favorite apple variety was Rambo, which, over two hundred years later, would inspire author David Morrell to name the protagonist of his novel First Blood “Rambo”, who would later be portrayed by Sylvester Stallone in the film franchise.  [34]. 

The Birth of the Honeycrisp Apple

Johnny Appleseed may have preferred seeds, but apple breeders in the late eighteenth and early nineteenth century preferred grafting.  [35].  American apple breeders began developing massive apple orchards with accompanying breeding and grafting programs, and from these orchards came well-known American apple varieties like Baldwin, Green Newton, and York Imperial.  [36].  However, true American apple ingenuity emerged from the Midwest, where there was a high demand for apples that could grow in a cold climate after famed newspaper editor Horace Greely wrote “Never move to Minnesota . . . You can’t grow apples there!” in 1860.  [37]. 

Fruit on Branch in Winter - Kaboompics.com

The University of Minnesota took that personally.

And so, the university went to work to develop a cold-tolerant apple variety in earnest.  In the late 1860’s, the university received 150 cold-tolerant Russian apple varieties and began fastidiously testing and grafting them over the next few decades.  [38].  Apple trees derived from those imported varieties produced thousands of seedlings, and the record-breaking cold winter of 1917-1918 provided an effective means of weeding out the weaker brood.  [39].  Since the 1930s, the University of Minnesota’s apple breeding program has steadily churned out cold-tolerant apple varieties for apple lovers in the Midwest, including Fireside, Regent, State Fair, Honeygold, and, of course, Honeycrisp.  [40]. 

Today, the university is one of only three large-scale apple breeding programs in the United States; at any given moment the program is growing 20,000 to 25,000 apple trees in orchards throughout Minnesota.  [41].  To date, the University of Minnesota has developed 29 apple varieties since the breeding program was launched in 1878.  [42].

The goal of the apple breeding program is to produce “élite” apple trees, or trees which have, for several years in a row, produced exceptionally good apples.  [43].  Once a tree obtains élite status it is given a number, and four clones are made, and those four cloned trees are planted and grown under commercial conditions on another orchard.  [44].  The cloned trees are then evaluated annually, sometimes for a decade, for a wide range of properties: hardiness, size, fruit yield, and of course, properties of the fruit it bears.  [45]. 

After a tree has successfully earned good marks for several years it is named, it is patented, and its clones are sold to nurseries.  [46].  For each tree sold to a nursery, the university collects a roughly $1 royalty during the lifetime of the plant patent.  [47].

An apple orchard with a dirt path by Mark Stebnicki

The story of Honeycrisp begins in 1982, when David Bedford, co-inventor of Honeycrisp, took the helm of the apple breeding program at the University of Minnesota.  [48].  His predecessor had the clones of an élite tree, MN 1711, marked for termination because the mother tree hadn’t done well for several years.  [49].  However, Bedford noticed that the mother tree had been planted in the lowest, wettest part of the orchard, and decided to give it another chance.  [50].

Bedford had the right instincts on MN 1711.  The apple tree thrived and was given a name, Honeycrisp, and was patented in 1991, thirty-one years after the mother tree was grafted.  [51].  Honeycrisp became a national and international sensation; in 2006, the Association of University Technology Managers included Honeycrisp on a list of twenty-five innovations that changed the world.  [52].  The University of Minnesota earned over $10 million in royalties from the Honeycrisp apple patent, earning about $1.30 for each tree sold.  [53]. 

Plant Patents: Asexual vs. Sexual Reproduction

The Plant Patent Act of 1930 (the “PPA”) provides that plant patents may be issued for asexually reproduced plants.  [54].  An asexually reproduced plant is one that is produced by a propagation method from a single parent plant, such as “cuttings, grafting, tissue culture, and propagation by root division.”  [55].  A plant patent owner has the exclusive right to asexually reproduce, use, offer to sell, sell, and import the patented plant, or any parts thereof.  [56]. 

Critically though, a plant patent does not grant its owner the exclusive right to sexual reproduction of a plant, i.e., reproduction through seeds.  [57].  In 1995, the Federal Circuit Court of Appeals confirmed that, in order to infringe a plant patent, a patent owner “must prove that the alleged infringing plant is an asexual reproduction, that is, that it is the progeny of the patented plant.”  [58].  Basically, because asexual reproduction is a propagation method from a parent plant, in order to establish infringement, a patent owner has to prove that the alleged infringer’s plant is a descendent from the parent plant.  [59].  Thus, a valid defense to infringement of a plant patent is arguing that the allegedly infringing plant was the result of independent creation, and is not a descendent from the patented plant.  [60]. 

Cutting - Kaboompics.com

While it may seem like a plant patent owner is getting the short end of the stick because a plant patent doesn’t extend to sexual reproduction, a plant owner may not want nor care about having exclusive rights relating to sexual reproduction. 

An asexually reproduced plant, as discussed above, is produced using a method of propagation of a parent plant, which means it is genetically identical to the parent plant.  A sexually reproduced plant, on the other hand, is genetically distinct from the parent plant.  So, a plant patent owner who only wants to produce one type of genetically identical plant may have little to no interest in protecting the exclusive rights related to sexual reproduction for their plant.

Enter the star of this blog post, the apple tree.  Recall that apple trees are heterozygous, which means that apple seeds from a parent tree will grow into trees that are genetically distinct from the parent.  As a result, those apple trees may produce fruit that taste drastically different than that of the parent (and not in a good way).  And so, for many centuries, people all over the world worked diligently on perfecting their grafting technique to ensure production of certain types of apples.  So, with regards to commercialization of apples, having exclusive rights to asexual reproduction is paramount to ensure that all the apples in their orchard have the same taste, quality, and even color from tree to tree!

Calico Kitten Holding Onto Branch of Apple Tree - MM Fotovideo

Having the exclusive right to asexual reproduction of an apple tree is necessary, and ultimately very valuable, because it is the only means of guaranteeing an apple tree will produce the exact same fruit as the parent.  Which is why the Honeycrisp plant patent was such asset to the University of Minnesota, and why the apple breeding program continues to get plant patents for all of its élite apple trees!

Sources

[1] U.S. Patent No. Plant 7,197 at col. 2 lines 9-10.

[2] Alex Abad-Santos. Honeycrisp was just the beginning: inside the quest to create the perfect apple, Vox.  11 September 2017. <https://www.vox.com/culture/2016/10/6/13078268/honeycrisp-apple-explainer-club-apples>.

[3] Abad-Santos supra note 2; See U.S. Patent No. Plant 7,197 at col. 2 lines 9-10.

[4] U.S. Patent No. Plant 7,197 at col. 1 lines 18-20.

[5] Id. at col. 1 lines 25-33.

[6] Abad-Santos supra note 2.

[7] Apples, Agricultural Marketing Resource Center.  April 2024. <https://www.agmrc.org/commodities-products/fruits/apples>.

[8] Preferred apple varieties in the United States in 2023, Statista. 30 October 24. <https://www.statista.com/statistics/718864/preferred-apple-varieties/>.

[9] John Seabrook. Building a Better Apple, The New Yorker. 13 November 2011. <https://www.newyorker.com/magazine/2011/11/21/crunch>.

[10] Erika Janik, Apple: A Global History (2011) at p. 15; Homer, Odyssey (trans. Ian Johnston, 2002) at p. 116.

[11] Seabrook supra note 9; Meiling Yang et al. Ecological Distribution, Reproductive Characteristics, and In Situ Conservation of Malus sieversii in Xinjiang, China, HortScience Vol 51(9): 1197-1201 at 1197.  September 2016.

[12] See Janik supra note 10 at p. 10; see Yang supra note 11 at 1197.

[13] Janik supra note 10 at p. 10.

[14] Janik supra note 10 at pp. 12-13; Muhammad Ali Pasha. Tracing Apple’s Journey from Ancient Kazakhstan to Modern Cultivation, The Astana Times. 13 August 2024. <https://astanatimes.com/2024/08/tracing-apples-journey-from-ancient-kazakhstan-to-modern-cultivation/>.

[15] Yang supra note 11 at 1200.

[16] Janik supra note 10 at p. 13.

[17] Id. at p. 16.

[18] Id. at pp. 16-17.

[19] Id. at p. 17.

[20] Id. at pp. 13-14.

[21] Id. at p. 14.

[22] Tom Michaels et al. The Science of Plants (2022) at 10.1.

[23] Janik supra note 10 at p. 17.

[24] Id. at p. 20.

[25] Id.

[26] Id. at pp. 21-23.

[27] Id. at p. 25.

[29] Id.

[30] Id.

[31] Id. at p. 47.

[32] Id.

[33] Id.

[34] Id.

[35] Id. at pp. 78-79.

[36] Id. at p. 79.

[37] Id. at p. 80.

[38] Id.

[39] Apple breeding at the University of Minnesota, Minnesota Hardy. 11 October 2024 <https://mnhardy.umn.edu/apples>.

[40] Janik supra note 10 at p. 83.

[41] Seabrook supra note 9; All University of Minnesota Apple Varieties, Minnesota Hardy. 11 October 2024 <https://mnhardy.umn.edu/apples/varieties>.

[42] Minnesota Hardy supra note 41.

[43] Seabrook supra note 9.

[44] Seabrook supra note 9; Minnesota Hardy supra note 39.

[45] Seabrook supra note 9.

[46] Seabrook supra note 9.

[47] Seabrook supra note 9.

[48] Seabrook supra note 9; U.S. Patent No. Plant 7,197.

[49] Seabrook supra note 9.

[50] Seabrook supra note 9.

[51] Seabrook supra note 9.

[52] Seabrook supra note 9.

[53] Seabrook supra note 9; Abad-Santos supra note 2.

[54] 35 U.S.C. § 161.

[55] 7 U.S.C. § 2401(a)(1).

[56] 35 U.S.C. § 163

[57] 8 Chisum on Patents § 24.02 [4] Infringement.

[58] Imazio Nursery Inc. v. Dania Greenhouses, 69 F.3d 1560, 1569 (Fed. Cir. 1995), cert. denied, 518 U.S. 1018, 116 S. Ct. 2549, 135 L. Ed. 2d 1069 (1996); see 8 Chisum on Patents § 24.02 at [4] Infringement.

[59] Chisum on Patents supra note 58.

[60] Imazio Nursery Inc., 69 F.3d at 1570; see Chisum on Patents supra note 58.