dissenting from the Order declining the suggestion for rehearing in banc.
As Judge Gajarsa demonstrates in his opinion, explicit language in the Supreme Court’s Wamer-Jenkinson opinion states that when a limitation in a claim is amended for patentability reasons (or is presumed to be amended for that reason in the absence of another explanation) the doctrine of equivalents is not available for assertion with respect to the amended limitation. Indeed, the Supreme Court’s words “bar the application of the doctrine of equivalents” to the amended limitation.
The long-standing law of prosecution history estoppel holds that when a limitation in a claim is amended for patentability reasons, the doctrine of equivalents is available for assertion with respect to the amended limitation, but that the patentee may not assert as an equivalent to the amended limitation any matter surrendered in order to overcome the threat to patentability presented by the originally claimed limitation. Thus, under the pre-Wamer-Jenkinson law of prosecution history estoppel, a patentee potentially could assert a range of equivalents to a claim amended for reasons of patentability.
In this case, the panel decision holds that the Supreme Court in Wamer-Jenkinson did hot mean to alter the range of equivalents available to a patentee under the doctrine of equivalents, notwithstanding the explicit language in the Supreme Court’s opinion stating that no equivalents are available to a claim limitation amended for reasons of patentability.
Whether to read the Supreme Court’s opinion at face value, or whether to discount its explicit language as unintended, unclear, uninformed, unfathomable, or whatever, seems to me a matter of considerable importance, so much so that the matter satisfies the test for issues that should be decided by an in bane court.
Although we let a panel decide whether the Supreme Court sought to narrow the reach of the doctrine of equivalents, or whether it instead sought to leave the doctrine “as is” (the latter being the panel decision in this case), hopefully the Supreme Court will have an occasion to decide whether our panel got it right. Someone, in this ease or in another case soon, should explain to the Supreme Court that — if this panel is correct in granting a range of equivalents to limitations of claims amended for patentability reasons — its Wamer-Jenkinson decision had no meaningful effect at all on the doctrine of equivalents. This is so because the so-called “all elements” rule described by the Supreme Court has been around for a long time, deeply embedded in Federal Circuit jurisprudence, and the presumption that claims are amended for patentability reasons unless proven to the contrary adds not much to the law, since claims are rarely amended for reasons other than patentability. The new, and significant, narrowing of the doctrine of equivalents that shows on the face of the Supreme Court’s opinion is the point that the panel decision in this case rejects: that *1474limitations in claims amended for patentability reasons lose, entirely, the benefits of the doctrine of equivalents.