After-discovered equivalents and the nomination of Harriet Miers

Text by Joshua D. Sarnoff in the June 2005 issue of JPTOS (87 J. Pat. & Trademark Off. Soc'y 441) is not unrelated to articles I have written in Intellectual Property Today about the extension of the doctrine of equivalents to after-discovered technology. The extension made in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and confirmed in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), giving patent protection under the doctrine of equivalents to later-arising technologies not contemplated by the inventor, was not presented on the facts of either case (neither of which involved after-discovered technology) and was in direct conflict with previous Supreme Court precedent. This vigorous modification in the law of the doctrine of equivalents was made in a decision written by Justice Thomas. In turn, the decision by Justice Scalia in Merck v. Integra arguably expanded the rights of researchers to use inventions under the exception of 271(e)(1). In the current discussion of the Supreme Court nomination of Harriet Miers, one has to recognize the ultimately context-based nature of "strict construction." Although Justices Thomas and Scalia are models of strict construction in certain areas, they were neither strict constructionists nor conservatives in these particular intellectual property cases.

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.