dissenting from the court’s denial of rehearing in banc,
with whom RICH and NEWMAN, Circuit Judges, join.I dissent from the court’s decision not to hear this case in banc. I do so for two reasons. First, it is contrary to our case law and procedures for a panel to act contrary to a prior precedent of this court. Kimberly Clark Corp. v. Fort Howard Paper Co., 772 F.2d 860, 863, 227 USPQ 36, 37 (Fed.Cir.1985). If this panel thought Scripps was wrongly decided (and I do not), it was either bound to follow our precedents or to seek an in banc review. It did neither, seeking to excuse its lapse by means of footnote 2, which merely states a reason why Scripps was wrongly decided with respect to the product-by-process issue. That reason doesn’t override our precedent.
Second, the panel broadly holds that “process terms in product-by-process claims serve as limitations in determining infringement.” I believe that, irrespective of the fact that this conclusion is contrary to our precedent in Scripps, the panel should not and need not have written so *1299broadly when it could have decided its issue more simply.
The patentee in this case itself characterized claim 24 as being limited to the process by which the claimed innersole was made. An inventor determines what he or she regards as his or her invention. 35 U.S.C. § 112. So why does the panel devote pages and pages of analysis of all the old cases to end up with an unnecessary rule? If the inventor said his claim was limited to the process and if the accused infringer didn’t use that process, then the issue is decided. Our task is to decide actual cases that come before us, not to broadly settle issues that aren’t before us. Most of the instances where the product-by-process issue comes up these days are complex chemical cases, in which there may be (or may have been) no other way to define a product. So why are we setting out a broad based rule of law mostly affecting complex chemical cases when the fact situation before us involves an innersole and the parties have neither briefed nor argued the issue as it applies to other than innersoles? Hard cases make bad law and so do cases not limited to their own facts. Scripps should not be redecided here.
I believe the court fails to correct a serious error when it votes not to hear this case in banc for the purpose of limiting to its facts the holding concerning infringement of claim 24.