After-discovered equivalents and the nomination of Harriet Miers
From the Sarnoff paper:
In 1870 in Seymour v. Osborne, n137 the Supreme Court addressed an
original and four reissue patents for improvements to reaping and harvesting machines...After upholding the claims of the improvement patents, the Court held that they were limited in their scope of application to equivalents that contained elements known to be substitutes at the time the patent had issued.
The dicta of Seymour is significant, because it requires
treating substituted, later-arising technologies as non-equivalent,i.e., as "substantially different." n147
Following Seymour, the Court routinely held that the scope of an
improvement patent was limited to equivalents with elements that were known to be substitutes at the time of patent issuance.
Although the narrower range of equivalents was logically compelled by the existence of prior art, the limitation of improvement
patents to existing technologies was not. n151
These limits also prevented pioneering invention patents from claiming or having their claims apply to later-arising, substituted technologies that the inventor had not invented, disclosed, or enabled. The subsequent creation of the doctrine of equivalents in Graver Tank -- without intervening legislation -- is truly remarkable in light of this history.
Nor did Congress extend the doctrine of equivalents to later-arising technologies.
In the 1952 Patent Act, Congress did not explicitly reverse the long
line of decisions (culminating in Halliburton Oil Well Cementing Co. v. Walker) n240 that limited improvement patents to a narrow scope of equivalents and that precluded improvement patents from applying to later-arising technologies.
***Separately, one notes recent text
Justice Roberts' experience as an advocate in IP litigation before the Supreme Court and Federal Circuit is even more impressive. He was the successful attorney in Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998); TrafFix Devices v. Marketing Displays Inc., 532 U.S. 23 (2001); Intergraph Corp. v. Intel Corp., 195 F.3d 1346 (Fed. Cir. 2001), distinguishing himself as the most knowledgeable IP attorney to reach our highest court.
in an article at law.com.