dissenting from the Order declining the suggestion for rehearing in banc.
There is perhaps no question more important to the health of patents than the scope and application of the judicially-created doctrine of equivalents. It permeates the entire fabric of patent law, and appears in virtually every ease involving patent enforcement. A candid appraisal of our jurisprudence in this area suggests that there is room for improvement. The Supreme Court’s latest contribution, Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), helps, but still leaves some questions unanswered.
It is not clear to me exactly what the Supreme Court had in mind when it said that, as a result of an amendment related to patentability, “prosecution history estoppel would bar the application of the doctrine [of] equivalents as to that element.” Id. at 1051. Perhaps the Court had no intention of changing our existing practice; that is the position of the panel opinion in this case, which, as I understand it, essentially attributes no special significance to the Supreme Court’s statement, and to its general explication of the doctrine of equivalents. The panel applies this court’s pre-existing mode of analysis to determine when and to what extent prosecution history estoppel operates.
Or perhaps the Court intends for us to rein in the doctrine still further and strictly limit the range of equivalents available, as sug*1473gested by Judge Gajarsa in his dissent from our failure to accept this case for rehearing in banc. He views that failure as a “missed occasion to square our view of the doctrine of equivalents with the view ... [of] the Supreme Court.” Judge Clevenger also dissents, and believes that the Supreme Court needs to tell us exactly what it meant, or that it meant what it seems to have said.
In any event, the Supreme Court in its Wamer-Jenkinson opinion charged the Federal Circuit with the responsibility to “refine the formulation of the test for equivalence in the orderly course of case-by-case determinations,” and left that refinement to this court’s “sound judgment in this area of its special expertise.” Id. at 1054. As a court, we have the responsibility to carefully choose and develop the cases that will define the doctrine of equivalents in the years ahead. It may be that the case before us — it is rather convoluted and the technology is obscure to the uninitiated — is not the best one in which to address the issue of prosecution history estoppel. This court’s decision not to rehear the ease in bane does not mean that the issue will go away. Indeed, whether our failure to do so will prove to be a missed opportunity, or simply an example of a fruit not yet ripe to pluck, remains to be seen.