concurring in part, dissenting in part.
I
In this post-Fesio era it is no longer available, for an amended claim limitation, simply to apply the classical criteria of equivalency as if the Festo holdings did not exist. From the irregular and inconsistent application of the law in this opinion, I respectfully dissent.
The claims of the Ericsson patent were amended as to the limitation that is at issue for equivalency, thereby raising the Festo presumption of estoppel. The requisite procedure is now to determine whether that presumption has been rebutted with respect to the alleged equivalent. *1380My colleagues on this panel state that the presumption did not arise (and therefore need not be rebutted) because the words “only supply power” were not amended. That is, the court holds that the Festo presumption of estoppel did not arise because these functional words remained unchanged, although the supply of power — -the limitation for which equivalency is alleged- — was restricted by amendment. The claim clause that states the conditions under which power is supplied to the telephone set when the receiver is on its cradle was amended for reasons of patentability, after the examiner persisted in rejections for anticipation and under section 112. Thus “effectively disconnects” was amended to “disables,” and “actively connects” was amended to “enables.”
1. ... which, by the control signals effectively disconnects disables the speech signals amplifiers and actively connects enables the auxiliary amplifiers so that the speech signal amplifiers, which require power, only supply power to the telephone set when the receiver is off its cradle and a call can be made.
Amendment E. This is the clause for which application of the doctrine of equivalents is sought, for in the Harris device a small amount of power is supplied when the receiver is on its cradle. The amendment narrowed the conditions under which power is supplied to the telephone set, producing a rebuttable presumption of es-toppel.
My colleagues state that the jury could have found that the Harris on-cradle power came from a source other than the amplifiers, for example, from transistors; if so, that could indeed be grounds for rebuttal of the Festo presumption, for example on the ground that the reason for the amendment was tangential to the alleged equivalent. Perhaps a court could alternatively find that the alleged equivalent was unforeseeable, thus rebutting the presumption on that ground. However, it can only mislead and confuse the public, to hold that no Festo presumption arises on the narrowing amendment. Tangentialness and unforeseeability are grounds of rebuttal established in Festo; they are not a mechanism for avoiding the presumption. The distinction now drawn does not add clarity to this jurisprudence or impart guidance to practitioners.
The district court granted JMOL of non-infringement, invoking prosecution history estoppel as barring the equivalency of the Harris provision of small amounts of power while the receiver is on the cradle. The district court observed that it was undisputed that the Harris amplifiers supply “some power” to the telephone set in the on-hook position. The district court held that Ericsson was estopped, by the amendment of “effectively disconnected” to “disabled,” from now reaching the Harris devices through equivalency. The majority’s holding that there is no estoppel or no presumption of estoppel because the three words “only supply power” were not amended, although the words concerning the supply of power were amended, produces a dramatic loophole in the Festo decisions.
This avoidance of the Festo presumption of estoppel is interesting, for had the claims in the Festo patent been so read, they too would have avoided the Festo presumption. The result in Festo would have been a simple reinstatement of the jury verdict, as is here done, on the unencumbered question of equivalency in fact. The court’s departure today from its holding in Festo ignores our responsibility to apply that law to all cases pending at the time of the Festo decisions.5
*1381This court’s remand decision in Festo imposed interpretations with which I was not in full sympathy, as I stated at the time. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359 (Fed.Cir.2003) (en banc) (Newman, J., dissenting) (criticizing the majority opinion for its application of the presumption of estoppel to claim limitations that were not amended). However, I am even less sympathetic to this inconsistency in the application of precedent. This court had been seeking a brighter line with respect to the doctrine of equivalents, and presumably found it in the Court’s holding in Festo, 535 U.S. 722, 736, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002) (a narrowing amendment made for reasons of patentability raises the rebuttable presumption of estop-pel). It is our obligation now to apply this precedent with clarity and uniformity. I discern no support for the court’s position that the Festo estoppel does not apply when there is a narrowing amendment to the clause whose equivalency is in dispute, if there are unamended words in the amended clause.
On the panel majority’s holding that no estoppel arose, I would agree that a reasonable jury could have found the facts of equivalency under the classical Graver Tank function/way/result criteria. However, the approach required by precedent is to recognize the Festo presumption of es-toppel, and remand to the district court to determine whether the presumption has been or can be rebutted on any of the grounds established in the Festo cases. Consistent guidance is required for stable law.
II
I concur in Part B of the court’s decision, on the cross-appeal.
. Although I remain of the belief that the Court did not intend its Festo decision to be *1381imposed on previously vested patent rights, see Festo, 535 U.S. at 739, 122 S.Ct. 1831 ("There is no justification for applying a new and more robust estoppel to those who relied on prior doctrine.”), the Federal Circuit adopted such retrospective application. Festo, 344 F.3d at 1370 n. 4.