coneurring-in-part, dissenting-in-part, with whom Circuit Judge RADER joins.
I join the majority opinion with respect to the disposition of Questions 1, 2, 4, and 5. However, I must dissent from the majority’s response to Question 3 because I believe it contradicts Supreme Court precedent and policy.
In Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 1054 (1997), the Supreme Court encouraged our court to “refine the formulation of the test for equivalence.” I am convinced, however, that the majority’s new “complete bar rule,” far from being merely such a refinement, contravenes consistent Supreme Court authority. Not only does the majority’s new rule directly contradict one Supreme Court holding, but it undermines the legal standard that the Supreme Court has consistently articulated in seven other cases for determining the scope of such estoppel. Moreover, because most patents contain claims that were amended during prosecution, the majority’s holding effectively strips most pat-entees of their rights to assert infringement under the doctrine of equivalents, despite the Supreme Court’s unanimous adherence to the doctrine in Wamer-Jen-kinson. The majority’s new rule constitutes a rejection of the policy advanced by the Supreme Court in Wamer-Jenkinson that the all-elements rule and prosecution history estoppel are sufficient to balance the competing needs of granting meaningful protection to patentees and of notifying the public of the effective scope of a paten-tee’s claims.
I. The Majority’s Rule Upsets the Balance Struck by the Supreme Court Through Wamer-Jenkinson Between the Competing Needs for Meaningful Patent Protection and Adequate Public Notice.
Before discussing particular Supreme Court cases, I believe it is important to summarize the doctrinal framework that the Supreme Court has consistently employed for over a century to balance a patentee’s need for meaningful protection against copying and the public’s need for notice as to the effective scope of a paten-tee’s claims. The Supreme Court has consistently stated, and has done so as recently as Wamer-Jenkinson, that application of the all-elements rule, as supplemented by prosecution history estoppel, sufficiently balances the competing needs of meaningful patent protection and adequate public notice. Today’s majority upsets this balance, holding that the public notice function of patents can only be fulfilled by limiting the effective scope of patents with amended limitations to the literal wording of such limitations.
The limitations of a patent’s claims provide an initial measure of the effective scope of the patent, both literally and under the doctrine of equivalents. The all-elements rule provides that every limitation of a claim is material, and that an accused device lacking a corresponding el*599ement, or an equivalent thereof, for every limitation cannot infringe the claim, even under the doctrine of equivalents. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 937, 4 U.S.P.Q.2d 1737, 1741 (Fed.Cir.1987) (en banc) (holding that a “device that does not satisfy [a claim limitation] at least equivalently does not function in substantially the same way as the claimed invention,” and thus cannot infringe under the doctrine of equivalents). The Supreme Court has recognized for more than a century that the public is entitled to make, use, or sell devices that lack one or more elements corresponding to the limitations of a patent’s claims, or their equivalents. See, e.g., Shepard v. Carrigan, 116 U.S. 593, 597, 6 S.Ct. 493, 495, 29 L.Ed. 723 (1886) (“Where an applicant for a patent to cover a new combination is compelled by the rejection of his application by the patent-office to narrow his claim by the introduction of a new element, he cannot after the issue of the patent broaden his claim by dropping the element which he was compelled to include in order to secure his patent.”).
In Wamer-Jenkinson, the Supreme Court reiterated that under the all-elements rule and prosecution history estop-pel, the public receives adequate notice as to the enforceable scope of patent claims. See Warner-Jenkinson, 520 U.S. at 29-30, 117 S.Ct. at 1049 (“So long as the doctrine of equivalents does not encroach beyond the limits [of the all-elements rule] just described, or beyond related limits to be discussed infra [prosecution history estop-pel], we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.”) (citation omitted). Moreover, the Wamer-Jenkinson Court reaffirmed that, although limiting its application, the all-elements rule still accommodates the right of patentees to assert infringement of some equivalents. See id. at 32, 117 S.Ct. at 1050 (quoting Hubhell v. United States, 179 U.S. 77, 82, 21 S.Ct. 24, 26, 45 L.Ed. 95 (1900) (“If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted part is supplied by an equivalent device or instrumentality.”) (citation omitted, emphasis added)); Shepard v. Carrigan, 116 U.S. 593, 598, 6 S.Ct. 493, 495, 29 L.Ed. 723 (1886) (same); Fay v. Cordesman, 109 U.S. 408, 421, 3 S.Ct. at 244-45 (1883) (same). Under the all-elements rule, the claims themselves provide considerable notice to the public as to the effective scope of the patent (i.e., a paten-tee cannot assert infringement by a device that lacks an equivalent of one or more limitations of the claim, as issued), while preserving for the patentee a scope of protection under the doctrine of equivalents to prevent copying.
When a patent applicant narrows his claims during prosecution by adding a limitation to traverse a prior art rejection, the substance of the communications between the applicant and the examiner may further notify the public as to additional limits on the enforceable scope of the patent claims. Depending on factors such as the breadth of the examiner’s rejection, the manner in which the patent applicant amends his claims to overcome the objection, and the nature of the technology at issue, a reasonable competitor might construe the applicant’s remarks and amendments to evince a surrender of claim scope greater than the all-elements rule would require. See Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363, 219 U.S.P.Q. 473, 481 (Fed.Cir.1983) (“Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero.”). We describe this doctrine as “prosecution history estoppel,” precisely because a hypothetical reasonable competitor should be able to rely on the applicant’s representations and amendments as a surrender of subject matter.1 The doc*600trine of prosecution history estoppel supplements the all-elements rule by providing a set of rules for notifying the public whether, and to what extent, the scope of protection is even narrower than what the all-elements rule would allow. See Warner-Jenkinson, 520 U.S. at 34, 117 S.Ct. at 1051 (“[P]rosecution history estoppel places reasonable limits on the doctrine of equivalents, and further [than the all-elements rule] insulates the doctrine from any feared conflict with the Patent Act.”).
In contrast to the doctrine of prosecution history estoppel we have applied until today, the majority’s new complete bar rule does not supplement the all-elements rule as a way to further clarify the scope of equivalents available to the patentee. Rather than attempt to “refine” our case law as to how the added claim limitations should be enforced in light of the substance of the communications between examiner and applicant, the majority’s new rule simply forecloses all application of the doctrine of equivalents for any amended claim limitation. This approach by-passes the all-elements rule altogether. See Maj. Op. at 590 (“Following the methodology outlined above, we conclude that prosecution history estoppel bars the application of the doctrine of equivalents to this element of the claims of the Carroll patent. In view of this determination, we do not reach the ‘all elements’ rule.”);
The majority’s concept of prosecution history estoppel is hardly an “estoppel” at all. The majority’s approach gives no consideration to whether a reasonable competitor would rely on the nature of the rejections and of the amendments and statements between the applicant and the examiner as evidence of a surrender of subject matter. According to the majoiity, once there has been a limiting amendment, no consideration may be given to the breadth of the rejection, the closeness of the prior art, the manner of the applicant’s remarks and amendments, or the nature of the technology. All equivalents of that limitation are foreclosed by the mere fact of amendment. The majority’s rule might more aptly be called “bar by amendment” rather than “estoppel,” which has always been measured by. what a reasonable competitor would understand the applicant to have surrendered in order to procure his patent. I believe that looking solely to the fact of amendment, rather than the substance of communications between the applicant and the examiner, is contrary to the principles that the Supreme Court (and our court) has always applied in determining the scope of estop-pel.
Under the majority’s rule, in contrast to the Supreme Court’s application of the all-elements rule and prosecution history es-toppel, a patentee retains no range of equivalents for a claim limitation that has been amended for patentability reasons. This approach upsets the Supreme Court’s balance between the competing needs of sufficient public notice and meaningful patent protection. At the very minimum, I believe the majority’s rule is unfairly harmful, because it' deprives patentees of any recourse to the doctrine of equivalents for any added or narrowed limitation, no matter how minor the amendment. More importantly, however, I believe that precluding a patentee’s right to seek protection under the doctrine of equivalents for amended limitations will, in many cases, “convert the protection of the patent grant into a hollow and useless thing.” Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950).
Would-be copyists, of course, will exploit the majority’s bar. Unwittingly, the majority has severely limited the protection previously available to patentees. Indeed, it may nullify the doctrine of equivalents. Under the majority’s approach, anyone who wants to steal a patentee’s technology need only review the prosecution history to identify patentability-related amendments, *601and then make a trivial modification to that part of its product corresponding to an amended claim limitation. All the other limitations may be copied precisely. The competitor will then be free to make, use, or sell an insubstantial variant of the pat-entee’s invention. It appears to me that this complete bar approach upsets the balance that the Supreme Court has struck. Under this approach, most patentees will lose the protection against copying that the Supreme Court unanimously reaffirmed in Wamer-Jenkinson.
II. Supreme Court Precedent
The majority asserts that the Supreme Court has never “addressed or answered” the question as to whether a scope of equivalents remains after a claim limitation has been added or amended for a reason relating to patentability. The majority quotes language from six Supreme Court cases dealing with prosecution history estoppel,2 and asserts that in these six cases, “the Court did not analyze the actual scope of equivalents that might be available when prosecution history estoppel applied.” The Court thereby posits that “[w]e think it is fair to say” that this question remains open. I agree with the majority that, in four of these six cases, the Supreme Court did not address the question presently at bar. As to the other two cases, Hubbell v. United States, 179 U.S. 77, 21 S.Ct. 24, 45 L.Ed. 95 (1900), and Shepard v. Corrigan, 116 U.S. 593, 6 S.Ct. 493, 29 L.Ed. 723 (1886), the majority and I draw different conclusions. Most importantly, however, I can hardly agree with my colleagues that, upon a review of only these six Supreme Court cases, they can rightfully draw the conclusion that never has the Court “answered or addressed” today’s question.
The Supreme Court has decided many more than these six cases relevant to prosecution history estoppel. Hurlbut v. Schillinger, 130 U.S. 456, 9 S.Ct. 584, 32 L.Ed. 1011 (1889), is one particularly noteworthy case, wherein the Supreme Court ruled that a patentee, who had disclaimed a portion of his invention, and who had been found in prior litigation to be precluded from asserting his claims against one accused device in light of that disclaimer, nonetheless remained entitled to a judgment of infringement by a different device that was more closely equivalent to his claimed invention. The majority also disregards the legal standard repeatedly articulated by the Supreme Court that is consistent only with a flexible approach to prosecution history estoppel, i.e., that an amended claim may be infringed if “an omitted part is supplied by an equivalent device or instrumentality.” See, e.g., Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050; Fay v. Cordesman, 109 U.S. 408, 420-21, 3 S.Ct. 236, 244-45, 27 L.Ed. 979 (1883). Furthermore, the majority nowhere recognizes that the Supreme Court has articulated a consistent, uniform doctrine for applying the doctrine of prosecution history estoppel since the 1880s, with no suggestion in Wamer-Jenkinson or other recent cases that it sought to depart from its earlier holdings.
Many of the cases I cite were decided in the 1800s. Before discussing them, I would like to make three general points about this older precedent. First, the Supreme Court was very active in the patent field in the late 1800s. From 1880 to 1900, the Court decided no fewer than ninety patent infringement cases, with many of these cases being highly relevant to the present appeal. From my review of these cases, and the far fewer number of cases the Court decided in the 1900s, it appears *602that the Court established the basic contours of patent law in the late 1800s, including on equivalency and estoppel, and has reaffirmed these same principles ever since. Indeed, more recent Supreme Court cases, such as Warner-Jenkinson, 520 U.S. at 31, 117 S.Ct. at 1049-50; Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 608-09, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950); Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 518-19, 86 L.Ed. 736 (1942); and Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 790, 51 S.Ct. 291, 293-94, 75 L.Ed. 707 (1931), are remarkable in the degree to which they cite nineteenth century cases, and in their express insistence on adhering to older precedent.
Second, in addition to being old, many of the cases I cite involve reissue patents.3 But the law of prosecution history estoppel has developed with equal applicability to reissue patents and original patents whose claims were amended during prosecution. By at least 1879, the Supreme Court recognized that the process of obtaining a reissue patent precluded the patentee from recapturing that which he had disclaimed (i.e., surrendered) through the reissuance process. See Leggett v. Avery, 101 U.S. 256, 260, 25 L.Ed. 865 (1879); see also Union Metallic Cartridge Co. v. United States Cartridge Co., 112 U.S. 624, 642, 5 S.Ct. 475, 485, 28 L.Ed. 828 (1884) (applying principles of prosecution history estop-pel to claims of reissue patent). Considering that Leggett, which concerns a reissue patent, is the foundation for much of the Court’s subsequent treatment of what we now call “prosecution history estoppel,” see, e.g., Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 221, 61 S.Ct. 235, 240, 85 L.Ed. 132 (1940) (citing Leggett as basis of estoppel holding), I find nothing to suggest that the presence of a reissue patent, in several cases cited below, alters the legal standards articulated by the Court for resolving disputes involving prosecution history estoppel on claims issued in the original prosecution. Rather, the Supreme Court compared the original and reissue claims to measure the scope of estoppel, treating the reissue claims like amended claims.
Finally, although these older cases do not specifically recite either of the synonymous phrases “prosecution history estop-pel” or “file wrapper estoppel,” the principles articulated in these cases form the core of the doctrine of prosecution history estoppel that we have applied until today. The phrase “file wrapper estoppel” was not employed by the Supreme Court until its decision in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 128, 62 S.Ct. 513, 515, 86 L.Ed. 736 (1942), and the Supreme Court did not use the phrase “prosecution history estoppel” until Warner-Jenkinson, 520 U.S. at 30, 117 S.Ct. at 1049. Nonetheless, the Court recognized in Wamer-Jenkinson that many of the cases I cite below, such as Sutter and Hubbell, indeed set forth the principles of our present doctrine of “prosecution history estoppel.” See Warner-Jenkinson, 520 U.S. at 30-31, 117 S.Ct. at 1049-50. I believe that the absence of the phrase “prosecution history estoppel” in the cases I cite is hardly a convincing basis for distinguishing them.
A. Goodyear Dental Vulcanite Co. v. Davis
One of the first cases in which the Supreme Court discussed the principles un*603derlying our present doctrine of prosecution history estoppel is also one of the most instructive. Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 223-27, 26 L.Ed. 149 (1880) concerns a reissue patent for a rubberized dental plate, claiming “[t]he plate of hard rubber or vulcan-ite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described.” The Supreme Court recognized that the patentee, Cummings, had restricted his claims during the reissuance process to a dental plate made of hard “vulcanized” rubber, and thus that Cummings was precluded from asserting that a dental plate made of celluloid (a softer, chemically distinct, unvulcanized material) was an equivalent of the claimed invention. Notwithstanding this restriction on the available scope of equivalents, the Court nonetheless stated that Cummings could assert infringement by other products that were equivalent to those recited in the patent:
If, when the patent was granted, there were known substances, other than rubber or caoutchouc, gutta-percha, or gums, that could be vulcanized by the Goodyear process, and converted from a soft into a hard, elastic material, any use of that material for a dental plate might have been an equivalent for the Cummings material, and an infringement of his patent.
Id. at 227 (emphasis added). The Court continued, stating that although Cummings had limited his claims to a vulcanized product, and was thus precluded from asserting the equivalence of a softer, celluloid, unvulcanized product, Cummings nonetheless retained protection against equivalents. The Court stated: “It may be conceded the patentee is protected against equivalents for any part of his invention.” Id. at 230 (emphasis added). Thus, the Court recognized that although a patentee, by amending his claims, may be precluded from asserting a large range of equivalents, he may still be able to assert his patent against devices that fall within a narrower range of equivalents. This statement is only consistent with a flexible approach to prosecution history estoppel, and would be meaningless if the Court had intended a complete bar to apply.
Moreover, the Court stated that Cummings was protected against equivalents “whether he had claimed them or not.” Id. By this statement, the Court clarified that it was not necessary for patent applicants like Cummings to recite the words “or its equivalent” or “substantially as described” in the patent claims, but rather that patentees’ protection against equivalents arises independently of the particular wording of the claims.
The majority argues that the Goodyear Court “did not discuss prosecution history estoppel.” I agree that the particular phrase “prosecution history estoppel” nowhere appears in Goodyear. However, the principles articulated in Goodyear are the foundation of the modern doctrine of prosecution history estoppel. Indeed, the Supreme Court’s first opinion to discuss the doctrine of “file wrapper estoppel,” Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 128, 62 S.Ct. 513, 515, 86 L.Ed. 736 (1942), specifically mentions Goodyear as a basis of that doctrine. It is also true, as the majority points out, that the Goodyear Court did not rule in favor of the patentee, and thus that the language I cite does not constitute a holding. I cannot agree with the majority, however, that the Court’s statements fail to constitute “explicit and carefully considered language,” and that the rule of Goodyear may be disregarded. Rather, as I will describe in the next case I cite, the Court soon thereafter applied these principles to hold that a patentee retains a range of enforceable equivalents, despite having made a disclaimer that restricted his available range of equivalents.
B. Hurlbut v. Schillinger
Hurlbut v. Schillinger, 130 U.S. 456, 9 S.Ct. 584, 32 L.Ed. 1011 (1889), and an earlier related case, California Artificial *604Stone-Pav Co. v. Schalicke, 119 U.S. 401, 7 S.Ct. 391, 30 L.Ed. 471 (1886), concern a patent for an improvement in concrete pavements, claiming an “arrangement of tar-paper or its equivalent between adjoining blocks of concrete,” such that the imposition of tar-paper between the paving blocks would facilitate the removal of a block that subsequently becomes damaged, without disrupting adjacent blocks. Schil-linger obtained a reissue patent, amending the original specification to state, among other things, that “where cheapness is an object, the tar-paper may be omitted and the blocks formed without interposing anything between their joints.” Id. at 462, 9 S.Ct. at 586. In his reissue patent, Schil-linger also obtained a claim that omitted any reference to tar-paper or its equivalent.
After obtaining his reissue patent, Schil-linger filed a disclaimer with the Patent Office, stating that his reissue claim was too broad, and covered kinds of pavement “of which your petitioner was not the first inventor.” Id. at 463, 9 S.Ct. at 586. Schillinger disclaimed any coverage to an arrangement of pavement wherein the tar-paper is omitted and no material is used to separate the concrete blocks. See id.
Schillinger brought suit against several competitors, and two of the disputes reached the Supreme Court. In the first, California Paving, 119 U.S. at 406-07, 7 S.Ct. at 394-95, the Court remarked that the accused paving was neither separated into individual blocks, and nor had any material been interposed between the blocks while they were still plastic. The Court noted that Schillinger had disclaimed “the forming of blocks from plastic material without interposing anything between their joints while in the process of formation.” Id. at 407, 7 S.Ct. at 394. The Court found no infringement, concluding that “what the defendant did was just what the patentee disclaimed.” Id. at 407, 7 S.Ct. at 395. Thus, it is clear from California Paving that Schillinger’s disclaimer was sufficient to preclude him from asserting infringement by the defendant’s arrangement of pavement. Although the Court did not employ the phrase “prosecution history estoppel” to describe this limitation on the effective scope of his patent, I think it is apparent that Schillinger’s disclaimer had invoked such an estoppel.
In Schillinger’s second suit to reach the Supreme Court, the accused product was an arrangement of pavement whose individual blocks, while still plastic, were separated from one another by means of a trowel. See Hurlbut, 130 U.S. at 467-68, 9 S.Ct. at 588. The Court recognized that the stroke of a trowel to separate the blocks was different than inserting tar-paper between the blocks. See id. The Court also recognized that Schillinger had limited the protective scope of his reissue patent through his disclaimer, and was thus precluded from asserting his claims against pavement arrangements wherein the blocks were not separated. See id. at 466, 9 S.Ct. at 587. The Court nonetheless held that Schillinger was still entitled to a range of equivalents after having made his disclaimer, and that using a trowel to separate the blocks was equivalent to using tar-paper. The Court stated:
The effect of the disclaimer was to leave the patent to be one for a pavement wherein the blocks are formed by interposing some separating material between them. To limit the patent to the permanent interposition of a material equivalent to tar-paper, would limit the actual invention. The use of a bottom layer of coarse cement, and placing it on a course of fine cement, and dividing the upper course into blocks by a trowel run partially or wholly through the upper course while it is plastic, in a line coincident with the joints between the sections in the lower layer, accomplishes the substantial results of Schillinger’s invention, in substantially the way devised by him, and is within the patent as it stands after the disclaimer.
*605Id. at 465, 9 S.Ct. at 587 (emphasis added). The Court continued, emphasizing that the effect of the disclaimer was not to completely preclude Schillinger from asserting equivalence, but rather that the scope of the preclusion was determined by reference to the actual embodiments that Sehil-linger had surrendered. The Court stated:
The disclaimer took out of the first claim of the reissue only so much thereof as claimed a concrete pavement made of the plastic material laid in detached blocks, without interposing anything in the joints in the process of formation, leaving that claim to be one for such a pavement laid in detached blocks, when free joints are made between the blocks,' by interposing permanently or temporarily between them, in the process of their formation, tar-paper or its equivalent.
Id. (emphasis added). The Court concluded that the accused pavement constituted an equivalent of the claimed invention “as it stands after the disclaimer,” and thus that Schillinger was entitled to a judgment of infringement. The Court stated:
We are, therefore, of opinion that the first claim of the reissue, as it stands after the disclaimer, is infringed, because the defendant’s pavement is a concrete pavement, laid in detached blocks or sections, substantially in the manner shown and described in the specification of the reissue, the detached blocks in the upper course being the equivalent of the detached blocks or sections of the Schil-linger pavement; and that the second claim of the reissue is infringed, because the temporary use of the trowel or cutting instrument, to divide the upper course into blocks, is the equivalent of the tar-paper of the Schillinger patent. ...
Id. at 469, 9 S.Ct. at 588 (emphasis added).
Today’s majority, noting that Schillinger recited the phrases “substantially” and “or its equivalents” in the patent claims, appears to argue that the defendant in Hurl-but had literally infringed the claims, and that the Court “did not discuss the issue of the scope of equivalents that remained under the doctrine of equivalents after the disclaimer.” I do not agree, however, that the mere presence of the words “equivalent” or “substantially” in Schillinger’s claim language somehow reduces the infringement analysis to one of literal infringement. As noted above, the Goodyear Court made clear that a patentee is protected against equivalents, “whether he had claimed them or not.” Goodyear, 102 U.S. at 230. The tension at the heart of these disputes — between meaningful patent protection and adequate public notice — persists regardless of whether “equivalents” are recited in the claims or are claimed implicitly through the doctrine of equivalents. I believe that the legal framework employed by the Hurlbut Court to limit the range of equivalents available to Schillinger applies whether or not the words “substantially” or “or its equivalents” appear in the claims.
The Court’s holding in Hurlbut is simply an application of the principles it established in Goodyear. In both cases, the Court recognized that the patent applicants’ disclaimers and amendments had precluded the patentees from asserting the equivalence of certain accused devices. In both cases, however, the Court stated that, despite the disclaimer or amendment, the patentee retained a limited scope of equivalents. Although the Court articulated its reasoning in Goodyear without holding in favor of the patentee, these same principles are the foundation of the Court’s clear holding for the patentee in Hurlbut. As I read these cases, Goodyear and Hurlbut entitle a patentee to a range of equivalents despite the fact of a limiting amendment.
C. The Majority’s Holding Contradicts Six Other Supreme Court Cases That Declare a Flexible Approach to Prosecution History Estoppel.
Goodyear and Hurlbut are the two cases I have identified where the Court has most *606fully described its flexible approach to prosecution history estoppel. These cases, however, are far from the only instances where the Court has set forth legal principles that are consistent only with a flexible approach. Following are six more cases where the Court set forth a legal standard that provides that patentees who have amended their original claims, and who are thus px-ecluded from asserting a certain range of equivalents, nonetheless retain the right to assert a more limited range of equivalents. In three of these cases, the Supreme Court declared that a patentee who had introduced a new claim limitation during prosecution or during reissuance would be entitled to enforce his amended claims by showing that in the accused device, “an omitted part is supplied by an equivalent device or instrumentality.” Hubbell v. United States, 179 U.S. 77, 82, 21 S.Ct. 24, 26, 45 L.Ed. 95 (1900); Shepard v. Carrigan, 116 U.S. 593, 598, 6 S.Ct. 493, 495, 29 L.Ed. 723 (1886); Fay v. Cordesman, 109 U.S. 408, 420-21, 3 S.Ct. 236, 244-45, 27 L.Ed. 979 (1883). Moreover, the Supreme Court restated this legal standard verbatim in Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050 (quoting Hubbell). Although the Supreme Court recited this same legal standard in the very same words on four separate occasions over the span of 113 years, today’s majority regards these cases as lacking “explicit and carefully considered language.” I cannot agree.
1. Fay v. Cordesman
Fay v. Cordesman, 109 U.S. 408, 409, 3 S.Ct. 236, 237, 27 L.Ed. 979 (1883), concerned three patents, including a reissue patent, for a mechanical saw whose blade is alternately pushed and pulled. The reissue patent contained five claims, all of which were substantially amended from the single claim of the original patent. See id. at 413, 3 S.Ct. at 239-40. Noting that the accused device, a continuously rotating band saw, did not embody an adjustable saw guard, as recited in an asserted claim of the reissue patent, the Court ruled that there could be no infringement because: “If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted part is supplied by an equivalent device or instm-mentality.” Id. at 420-21, 3 S.Ct. at 244-45 (emphasis added). Although Fay does not recite the words “prosecution history estoppel,” its legal standard has been repeatedly reaffirmed by the Supreme Court, through Wamer-Jenkinson, as governing the application of prosecution history estoppel. See Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050 (quoting Hubbell v. United States, 179 U.S. 77, 82, 21 S.Ct. 24, 26, 45 L.Ed. 95 (1900), which in turn quotes Fay). Fay, as subsequently recognized by Wamer-Jenkinson, clearly indicates that, despite having amended his claims through the reissuance process, the inventor would still be able to assert his claims against other devices that were more closely equivalent to his invention. Fay’s legal standard would be meaningless if the Court had intended to disallow equivalents for amended claims.
2. Shepard v. Carrigan
In Shepard v. Carrigan, 116 U.S. 593, 6 S.Ct. 493, 29 L.Ed. 723 (1886), the Court considered whether a skirt protector lacking a “fluted or plaited band or border” infringed a claim that had been amended to include such a limitation. The Court stated that its previous holding in Fay, 109 U.S. at 420-21, 3 S.Ct. at 244-45, was “decisive of the present case,” 116 U.S. at 598, 6 S.Ct. at 495, and thus that the proper inquiry was “ “whether an omitted part is supplied by an equivalent device or instrumentality.’ ” Id. (quoting Fay, 109 U.S. at 420-21, 3 S.Ct. at 244^5) (emphasis added). Despite ruling that the paten-tee had “explicitly abandoned” claims to an unplaited skirt protector, the Court’s legal standard clearly contemplates that other skirt protectors could be found to constitute “an equivalent device or instrumentality” of the invention claimed in the reissue *607patent. Id. Again, the legal standard governing Shepard is repeated, verbatim, in Warner-Jenkinson. See Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050. Although the Shepard Court did not use the phrase “prosecution history estoppel” to describe the limit on equivalents it applied, the Supreme Court subsequently interpreted Shepard as invoking such an estoppel. See Exhibit Supply, 315 U.S. at 128, 62 S.Ct. at 515 (citing Shepard as basis of doctrine of file wrapper estoppel).
3.Sutter v. Robinson
In Sutter v. Robinson, 119 U.S. 530, 7 S.Ct. 376, 30 L.Ed. 492 (1886), the paten-tee claimed an apparatus for “resweating” tobacco. During prosecution, the applicant amended his claims to avoid the prior art, stating that the inventive aspect was the use of a wooden, rather than metal, vessel for the tobacco. The Court stated that “the ultimate question” in the case was “whether, in such an apparatus, the use of the cases, or boxes, or packages, in which the tobacco leaves are originally packed by the producer is equivalent to the wooden tobacco-holder mentioned in the complainants’ specification.” Id. at 542, 7 S.Ct. at 382 (emphasis added). Although the Court found that the accused device could not infringe the patent in light of the applicant’s amendment, the Court’s “ultimate question” clearly contemplates that other devices, although not exact copies of the patented invention, might have infringed the amended aspect of the claim under the doctrine of equivalents. This “ultimate question,” of course, would be irrelevant if the Court intended a complete bar to govern equivalency disputes involving amended claims. The Wamer-Jenkinson Court cites Sutter as a proper application of the doctrine of prosecution history estoppel. See Warner-Jenkinson, 520 U.S. at 17 n. 5, 117 S.Ct. at 1050 n. 5 (noting that in Sutter, “estoppel applied where, during patent prosecution, the applicant Vas expressly required to state that [the device’s] structural plan was old and not of his invention’ ”).
4. Phoenix Caster Co. v. Spiegel
Phoenix Caster Co. v. Spiegel, 133 U.S. 360, 10 S.Ct. 409, 33 L.Ed. 663 (1890), concerns claims to a furniture caster. The claims had been repeatedly narrowed during prosecution to a caster containing an elliptical housing opening, a collar, and a rocker-formed collar bearing. The Court ruled that the accused device “is not of a construction similar to” the patented invention, and that the accused device did not contain “any equivalent for such ‘rocker-formed collar bearing,’ ” and thus that there was no infringement. Id. at 369, 10 S.Ct. at 412 (emphasis added). The Court did not foreclose application of the doctrine of equivalents in light of the paten-tee’s multiple narrowing amendments, but still inquired whether the accused device was “similar to” or an “equivalent for” the claimed invention. Id. Although the majority suggests that Phoenix does not involve prosecution history estoppel, the Supreme Court subsequently cited Phoenix as supporting the proposition at the heart of prosecution history estoppel that “[i]t is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been can-celled or rejected and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent.” Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21, 61 S.Ct. 235, 239, 85 L.Ed. 132 (1940).
5. Royer v. Coupe
In Royer v. Coupe, 146 U.S. 524, 13 S.Ct. 166, 36 L.Ed. 1073 (1892), the circuit court held that in light of the patentee’s multiple limiting amendments, his claims were restricted to the eight-step process described in the specification, and that to find an infringement of the process, “ ‘a person must be shown to have followed substantially the same process, the same mode of reaching the result as is described *608in the specifications.’ ” Id. at 530-31, 13 S.Ct. at 169 (quoting Royer v. Manufacturing Co., 20 F. 853, 854, 856 (C.C.N.D.Ill.1884)) (emphasis added). The Supreme Court fully endorsed this approach to limiting the application of the doctrine of equivalents, holding that “[w]e are of opinion that the views set forth by the circuit court are sound, and that the decree must be affirmed.” Id. Royer thus confirms that a patentee with an amended claim may still assert his rights against those utilizing “substantially the same process” as the claimed invention. Id. Although the phrase “prosecution history es-toppel” is nowhere found in Royer, the Supreme Court subsequently interpreted Royer as invoking such an estoppel. See Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42, 48, 55 S.Ct. 262, 265, 79 L.Ed. 747 (1935) (citing Royer to argue that “[w]here such broad claims are denied and a narrower substituted, the patentee is estopped to read the granted claim as the equivalent of those which were rejected”).
6. Hubbell v. United States
In Hubbell v. United States, 179 U.S. 77, 21 S.Ct. 24, 45 L.Ed. 95 (1900), the paten-tee had repeatedly amended his claims to a bullet cartridge. As the majority notes, the Court recognized that these amendments “must be strictly construed against the inventor and in favor of the public, and looked upon in the nature of disclaimers.” Id. at 83-84, 21 S.Ct. at 27. The Court, however, nowhere suggested that these amendments foreclosed the patentee from all protection against equivalents. To the contrary, the Court asked whether the accused device contained the limitation at issue, or, if it did not, “ ‘whether [the] omitted part is supplied by an equivalent device or instrumentality.’ ” Id. at 82, 21 S.Ct. at 26 (quoting Fay v. Cordesman, 109 U.S. 408, 3 S.Ct. 236, 27 L.Ed. 979 (1883)) (emphasis added). The Court recognized that, although the claims had been amended, the patentee was still “entitled to a fair construction of the terms of his claim as actually granted.” Id. at 80, 21 S.Ct. at 25. To me, this reference to “fair construction” can only be a reference to the doctrine of equivalents, as the Court recognized that the patentee retained the right to prohibit infringement by “an equivalent device or instrumentality.” As noted above, Hubbell’s legal standard is quoted verbatim in Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050.
Although the majority suggests that the Hubbell Court did not “diseuss[ ] prosecution history estoppel,” the Supreme Court has indeed interpreted Hubbell as an application of prosecution history estoppel. See Warner-Jenkinson, 520 U.S. at 31 n. 5, 117 S.Ct. at 1050 n. 5 (citing Hubbell as holding that “patentee estopped from excluding a claim element where element was added to overcome objections based on lack of novelty over prior patents”). I do not agree with the majority that the absence of the words “prosecution history estoppel” in Hubbell and in the other cases discussed above somehow means that the Supreme Court “did not discuss the issue presented in En Banc Question 3.” Rather, I believe that the Supreme Court has repeatedly set forth a legal standard that preserves the right of patentees to assert equivalents for amended claim limitations.
D. Wamer-Jenkinson Reaffirms Earlier Supreme Court Précedent.
The Supreme Court’s most recent decision regarding prosecution history estop-pel is remarkable for the extent to which it reaffirms earlier precedent and affirmatively supports the application of flexible estoppel. See Warner-Jenkinson, 520 U.S. at 17, 117 S.Ct. at 1040. In analyzing whether prosecution history estoppel precludes a finding that an accused product infringes an amended patent claim under the doctrine of equivalents, the Court said that courts may determine “the reason for” and the “manner” of the amendment. Id. at 33 n. 7, 117 S.Ct. at 1051 n. 7. Such an analysis would be unnecessary, of *609course, if the Court intended a complete bar. See 5 Donald S. Chisum, Chisum on Patents, § 18.05[3][c], at 18-509 (“Reference to the ‘manner’ of the amendment hints that a court may indeed consider whether an amendment leaves some room for equivalents of the limitation added.”). The Court assumes that the PTO may have relied “upon a flexible rule of estop-pel” when evaluating patent applications, and that if so it would be improper “to upset the basic assumptions of the PTO.” Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. at 1050. As Professor Chisum has stated, to read Wamer-Jenkinson “as precluding all equivalency for a claim element added by an amendment driven by the prior art [would be] contrary to the Supreme Court’s rejection of a ‘rigid’ estop-pel approach.” Donald S. Chisum, The Scope of Protection for Patents After the Supreme Court’s Wamer-Jenkinson Decision: The Fair Protection-Certainty Conundrum, 14 Computer & High Tech. L. J. 1, 57 (1998) (emphasis added).
Wamer-Jenkinson, however, did establish a special presumption for cases where the prosecution history reveals no reason for a narrowing amendment. In these limited circumstances, the Court held that a presumption applies that the amendment was made for a reason related to patenta-bility, and that if the patentee is later unable to rebut that presumption, a bar to equivalents applies to the claim limitation added by the amendment. See Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. at 1051. Although the Court’s holding does not explicitly resolve whether a bar would apply outside of the factual circumstances of that case, nothing in the opinion suggests that the Court intended to so limit the doctrine of equivalents.
That the Court’s holding in Wamer-Jenkinson is indeed narrow, and not intended to upset the established law of estoppel, is underscored by its extensive reliance on precedent dating back to 1886. In declining the invitation to alter existing rules, the Warner-Jenkinson Court relied on older Supreme Court decisions such as Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736 (1942), Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42, 55 S.Ct. 262, 79 L.Ed. 747 (1935), Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 788, 51 S.Ct. 291, 293, 75 L.Ed. 707 (1931), Computing Scale Co. of America v. Automatic Scale Co., 204 U.S. 609, 618-20, 27 S.Ct. 307, 51 L.Ed. 645 (1907), Hubbell v. United States, 179 U.S. 77, 83, 21 S.Ct. 24, 26-27, 45 L.Ed. 95 (1900), and Sutter v. Robinson, 119 U.S. 530, 541, 7 S.Ct. 376, 381-82, 30 L.Ed. 492 (1886). The Court’s reliance on its earlier cases and its description of the methodology adopted in each of those cases indicate that the Wamer-Jen-kinson Court did not intend to overrule or change this well-established precedent; indeed, by citing to these cases, the Wamer-Jenkinson Court endorsed their approach. Further, many of the cases cited in Warner-J enkinson themselves rely on the cases I discuss above which, I believe, declare a flexible bar. See, e.g., Hubbell, 179 U.S. at 82, 21 S.Ct. at 26 (citing Fay v. Cordesman, 109 U.S. 408, 3 S.Ct. 236, 27 L.Ed. 979 (1883)); Keystone Driller, 294 U.S. at 48, 55 S.Ct. at 265 (citing Royer v. Coupe, 146 U.S. 524, 13 S.Ct. 166, 36 L.Ed. 1073 (1892)); Exhibit Supply, 315 U.S. at 136, 62 S.Ct. at 518 (citing Goodyear, 102 U.S. at 228 (1880)). The Wamer-Jenkin-son Court clearly endorsed the methodology applied in this pedigree of earlier Supreme Court cases spanning back to the nineteenth century. I believe that Warner-Jenkinson reaffirms the principles the Court set forth in Goodyear and Hurlbut, and underscores that these nine cases remain binding on this court today.
III. Federal Circuit Authority
As noted above, I recognize that today’s en banc court has the authority to overrule prior decisions of this court, and thus that our prior decisions applying flexible or measured estoppel are not binding on the en banc court. I present the following *610review of our case law, however, to highlight the magnitude of today’s sudden shift, and to suggest that the approach of today’s majority is contrary to any notion that judge-made law should evolve in a consistent, gradual, and predictable fashion.
A. Our Adoption of Flexible Estoppel in 1983 Established the Only True “Line of Authority” in This Circuit.
Consistent with Goodyear, Hurlbut, and the other Supreme Court cases reviewed above, this court has held in over fifty decisions that the scope of estoppel is measured by the scope of surrender. In Hughes Aircraft Co. v. United States, 717 F.2d 1351, 219 U.S.P.Q. 473 (Fed.Cir.1983) {Markey, Davis, Baldwin) (“Hughes /”), this court rejected a “wooden application of estoppel,” and held that the application of prosecution history estoppel does not strip a patentee of all resort to the doctrine of equivalents. Id. The court stated:
Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero. The effect may or may not be fatal to application of a range of equivalents broad enough to encompass a particular accused product. It is not fatal to application of the doctrine itself.
Id. (emphasis added).
Today’s majority, however, suggests that since Hughes I, this court has established two “lines of authority” adopting “inconsistent” views on the scope of prosecution history estoppel: one school originating with Hughes I favoring flexible es-toppel; and a second school originating with Kinzenbaw v. Deere & Co., 741 F.2d 383, 222 U.S.P.Q. 929 (Fed.Cir.1984) {Friedman, Markey, Rich, Davis, Baldwin), favoring a complete bar. I disagree with that assessment. In my opinion, there is only one “line of authority.” While the majority correctly notes that Professor Chisum opines that there are “two lines of authority,” it neglects to mention that the second “line” consists of only two cases. See Chisum, supra, § 18.05[3][b][i], at 18-496 (“Two Federal Circuit panel decisions articulated the strict approach to estoppel.”) (emphasis added). Kinzenbaw and Prodyne Enterprises, Inc. v. Julie Pomerantz, 743 F.2d 1581, 223 U.S.P.Q. 477 (Fed.Cir.1984) (Rich,4, Friedman, Cowen), however, do not hold that the mere fact of amendment triggers a complete estoppel; they simply stand for the rule that courts will not undertake a “speculative inquiry” into whether a claim amendment was necessary. Kinzenbaw, 741 F.2d at 389, 222 U.S.P.Q. at 933; Prodyne, 743 F.2d at 1583, 223 U.S.P.Q. at 478.
It is true that Kinzenbaw and Prodyne contain language which, taken alone, is arguably consistent with the complete bar imposed by the court today. On its face, however, neither opinion departs from our seminal ruling only the year before in Hughes I. In fact, each opinion purports to follow and quotes Hughes I. See Kinzenbaw, 741 F.2d at 389, 222 U.S.P.Q. at 933 (“An applicant for patent ... is not required to predict all future developments which enable the practice of his invention in substantially the same way.”) (quoting Hughes I, 717 F.2d at 1362, 219 U.S.P.Q. at 481); Prodyne, 743 F.2d at 1583, 223 U.S.P.Q. at 478 (“The doctrine of prosecution history estoppel precludes a patent owner from obtaining a claim construction that would resurrect subject matter surrendered during the prosecution of his patent application.”) (quoting Hughes I, 717 F.2d at 1362, 219 U.S.P.Q. at 481).
Further, a close reading of the opinion in each case shows that rather than substituting a complete bar for flexible estoppel based on actual surrender, the panels did indeed look to the exact scope of surrender. They simply found that the surrender covered the accused subject matter. *611See Kinzenbaw, 741 F.2d at 389, 222 U.S.P.Q. at 933 (“Instead, [the accused infringer] adopted the very element that [the patentee] had eliminated for the stated purpose of avoiding the examiner’s rejection and obtaining the patent.”); Prodyne, 743 F.2d at 1583, 223 U.S.P.Q. at 478 (“Prodyne is estopped from now broadening the description of a claim element limited during prosecution so as to encompass a structure which a competitor should reasonably be entitled to believe is not within the legal boundaries of the patent claims in suit.”). In light of the holdings of these two cases, apart from the language the majority relies on, I cannot agree with my colleagues that we have established two conflicting lines of authority regarding prosecution history estoppel.
B. This Court’s Original Interpretation of Warner-Jenkinson Was Sound, and the Majority Has Not Explained Why We Should Overrule Our Earlier Cases.
This court has issued a series of decisions since Warner-Jenkinson in which we have consistently interpreted Supreme Court law to require flexible estoppel. Today’s majority, however, fails to provide a satisfactory explanation as to why we should overrule our earlier cases. In Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 46 U.S.P.Q.2d 1321 (Fed.Cir.1998) CRader, Newman, Bryson), one of the three cases remanded to us in light of the Supreme Court’s ruling in Wamer-Jen-kinson, this court, in 1998, most emphatically adhered to the “longstanding doctrine that an estoppel only bars recapture of that subject matter actually surrendered during prosecution.” Litton, 140 F.3d at 1455, 46 U.S.P.Q.2d at 1325. Our court clearly stated that “the application of prosecution history estoppel does not necessarily limit a patentee to the literal language of the amended element — even when an amendment has been made to overcome the prior art.” Id. We reasoned that the Warner-Jenkinson Court did not intend to “change so substantially the rules of the game” concerning the scope of estoppel. Id. at 1457, 46 U.S.P.Q.2d at 1326 (citation omitted). We further noted that “the entire context of the Warner-Jenkinson opinion shows that the Supreme Court approved the PTO’s practice of requesting amendments with the understanding that the doctrine of equivalents would still apply to the amended language.” Id. at 1456-57, 46 U.S.P.Q.2d at 1326.
Similarly, in Hughes Aircraft Co. v. United States, 140 F.3d 1470, 46 U.S.P.Q.2d 1285 (Fed.Cir.1998) (Archer; Rader, Bryson) (“Hughes II”), issued the same day as Litton, a different panel of this court indicated that “the key to prosecution history estoppel is the surrender or disclaimer of the subject matter by the patentee, which the patentee is then unable to reclaim through the doctrine of equivalents.” Id. at 1476, 46 U.S.P.Q.2d at 1290 (referring to Exhibit Supply, 315 U.S. at 136, 62 S.Ct. at 518-19; Sutter, 119 U.S. at 541, 7 S.Ct. at 381-82). While amendments “serve to narrow the range of equivalents,” not all equivalents are precluded. Id. We interpreted Wamer-Jen-kinson as supporting the proposition that courts may inquire into the reason for an amendment in order to “determine what subject matter the patentee actually surrendered.” Hughes II, 140 F.3d at 1470, 46 U.S.P.Q.2d at 1290 (citing Warner-Jenkinson 520 U.S. at 33 n. 7, 117 S.Ct. at 1051 n. 7).
Indeed, the very same year, in Cybor Corp. v. FAS Tech., Inc., 138 F.3d 1448, 46 U.S.P.Q.2d 1169 (Fed.Cir.1998) (en banc) (Archer), our court, sitting en banc, stated that “[t]he relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter.” Id. at 1457, 46 U.S.P.Q.2d at 1178. I fail to see how the majority will stabilize application of the doctrine of equivalents by overruling an en banc decision that is only two years old.
Only last year, in Sextant Avionique, S.A. v. Analog Devices, 172 F.3d 817, 49 *612U.S.P.Q.2d 1865 (Fed.Cir.1999) (Lourie, Smith, Gajarsa), this court followed Supreme Court guidance in determining the novel question whether the Wamer-Jen-kinson presumption of a complete bar applies to both explained and unexplained amendments. See id. at 832, 49 U.S.P.Q.2d at 1875. The Sextant court looked to the policies “foster[ed]” in Warner-Jenlcinson to guide its reasoning. See id. at 831, 49 U.S.P.Q.2d at 1875. The court noted that the Wamer-Jenkinson Court created the presumption of a bar because “claims ... serve both a definitional and public notice function.” See id. (citing Warner-Jenkinson, 520 U.S. at 33-35, 117 S.Ct. at 1051). The court noted:
This policy of “public notice” is heavily implicated in the circumstance in which the presumption is operative because, by definition, it is unclear to one reading the prosecution history why a particular amendment was made. Accordingly, the Court, through the operation of the presumption, placed the burden on the pat-entee to clarify his reasons. The paten-tee’s failure to so clarify and thereby rebut the presumption should not work to the detriment of the public by allowing an uncertain range of equivalency to remain as to the limitation at issue.
Id. at 832, 49 U.S.P.Q.2d at 1875. The panel concluded that a complete bar applies when the Wamer-Jenkinson presumption arises and remains unrebutted. See id. (“Unguided by the prosecution history, the prior art, applicant’s argument during prosecution, and sufficient evidence in rebuttal to the presumption, we have no way to set reasonable limits on how far beyond the literal scope of the term ... the estoppel will allow the doctrine of equivalents to reach.”). The court stated that under Wamer-Jenkinson, courts must apply “a different rule of scope” when an amendment is un explained. Id. at 831, 49 U.S.P.Q.2d at 1874 (emphasis added). In the circumstance of an explained amendment, however, the Sextant court explicitly followed Supreme Court and Federal Circuit precedent in allowing the patentee a scope of protection from infringement by equivalents. See id. at 831, 49 U.S.P.Q.2d at 1874 (citing Keystone Driller Co., 294 U.S. at 47-48, 55 S.Ct. 262, 79 L.Ed. 747, and Magic City, 282 U.S. at 788-90, 51 S.Ct. at 291). The Sextant court noted that “Supreme Court case law predating Wamer-Jenkinson embraced the concept of scope in the context of amendments made to avoid prior art.” Id.
In my opinion, today’s majority has not set forth a credible explanation as to why it is overruling our prior case law interpreting Wamer-Jenkinson. The majority merely asserts, citing only “our long experience with the flexible bar approach,” that the standard we have applied until now is “unworkable.” I feel that we owe greater deference to our past interpretations of Supreme Court law, or a better explanation of why our case law is suddenly seen as “unworkable.”
C. From 1983 to 2000, This Court Has Consistently Applied Flexible, or Measured, Estoppel.
Panels of this court have consistently followed Hughes I and flexible estoppel. Indeed, in a parade of cases, from each year of this court’s eighteen-year history, successive and randomly-selected panels of this court have unanimously applied the flexible bar rule, and done so without mention of its newly-discovered “unworkability.” As the list below indicates, our court has embraced flexible estoppel in more than fifty cases. Ironically, these cases were decided by panels including nearly every member of today’s majority. In fact, most of the members of today’s majority have unitten an opinion, and indeed have done so since Wamer-Jenkinson, supporting flexible preclusion.
To highlight the degree by which today’s majority departs from our settled law, I have provided the following list of cases that today’s ruling overturns.
*613Federal Circuit Cases Applying Flexible Estoppel: 1983-2000
1983: Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1362, 219 U.S.P.Q. 473, 481 (Fed.Cir.1983) (Markey, Davis, Baldwin): (“We, as has the Supreme Court, reject the view [that amendment bars all resort to the doctrine of equivalence] as a wooden application of estop-pel, negating entirely the doctrine of equivalents and limiting determination of the infringement issue to consideration of literal infringement alone.”).
1984: Bayer Aktiengesellschaft v. Duphar Int’l Research B.V., 738 F.2d 1237, 1243, 222 U.S.P.Q. 649, 653 (Fed.Cir.1984) (Kashiwa, Cowen, Bennett) (“[Wjhenever the doctrine of file history estoppel is invoked, a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender. The fact that claims were narrowed does not always mean that the doctrine of file history estoppel completely prohibits a patentee from recapturing some of what was originally claimed.”).
1985: Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 871, 228 U.S.P.Q. 90, 96 (Fed.Cir.1985) (Baldwin, Davis, Kashiwa).
1986: Mannesmann Demag Corp. v. Engineered Metal Prod. Co., Inc., 793 F.2d 1279, 1284, 230 U.S.P.Q. 45, 48 (Fed.Cir.1986) (Newman, Baldwin, Cowen) (“Amendment of claims during patent prosecution does not necessarily bar all benefit of the doctrine of equivalents.”); Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159, 166, 228 U.S.P.Q. 356, 359-60 (Fed.Cir.1986) (Rich, Markey, Kashiwa); Moeller v. Ionetics, Inc., 794 F.2d 653, 659, 229 U.S.P.Q. 992, 996 (Fed.Cir.1986) (Nichols, Friedman, Smith); Chemical Eng’g Corp. v. Essef Indus., Inc., 795 F.2d 1565, 1573 n. 8, 230 U.S.P.Q. 385, 391 n. 8 (Fed.Cir.1986) (Markey, Rich, Baldwin).
1987: Townsend Eng’g Co. v. Hitec Co., Ltd., 829 F.2d 1086, 1090, 4 U.S.P.Q.2d 1136, 1139 (Fed.Cir.1987) (Friedman, Baldwin, Newman); Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1026, 4 U.S.P.Q.2d 1283, 1290 (Fed.Cir.1987) (Newman, Friedman, Archer); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 939 n. 2, 4 U.S.P.Q.2d 1737, 1743 n. 2 (Fed.Cir.1987) (en banc).
1988: Hi-Life Prod., Inc. v. American Nat’l Water-Mattress Corp., 842 F.2d 323, 325, 6 U.S.P.Q.2d 1132, 1134 (Fed.Cir.1988) (Bissell, Markey, Davis); Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 667, 7 U.S.P.Q.2d 1097, 1102 (Fed.Cir.1988) (Nies, Archer, Skelton); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 681, 7 U.S.P.Q.2d 1315, 1320 (Fed.Cir.1988) (Newman, Davis, Archer).
1989: LaBounty Mfg., Inc. v. United States Int’l Trade Comm’n, 867 F.2d 1572, 1576, 9 U.S.P.Q.2d 1995, 1999 (Fed.Cir.1989) (per curiam) (Nies, Bis-sell, Archer) (“[T]he breadth of the amendment does not necessarily equate with the breadth of the resulting estop-pel.”); Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 987, 10 U.S.P.Q.2d 1338, 1345 (Fed.Cir.1989) (Newman, Friedman, Bennett) (“The scope of estoppel must be determined in light of the prior art that occasioned the change, as well as representations made to the patent examiner as to the reason for the change.”); Environmental Instruments, Inc. v. Sutron Corp., 877 F.2d 1561, 1566, 11 U.S.P.Q.2d 1132, 1136 (Fed.Cir.1989) (Rich, Nies, Michel); Black & Decker, Inc. v. Hoover Serv. Ctr., 886 F.2d 1285, 1295, 12 U.S.P.Q.2d 1250, 1258 (Fed.Cir.1989) (Markey, Newman, Archer).
1990: Jonsson v. Stanley Works, 903 F.2d 812, 817, 14 U.S.P.Q.2d 1863, 1868 (Fed.Cir.1990) (Re, Markey, Newman); Hormone Research Found, Inc. v. Genentech, Inc., 904 F.2d 1558, 1564, 15 *614U.S.P.Q.2d 1039, 1044 (Fed.Cir.1990) (Archer, Cowen, Michel); Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 703, 15 U.S.P.Q.2d 1295, 1298 (Fed.Cir.1990) (Archer, Mayer, Skelton).
1991: Dixie USA, Inc. v. Infab Corp., 927 F.2d 584, 588, 17 U.S.P.Q.2d 1968, 1970-71 (Fed.Cir.1991) (Lourie, Mayer, Friedman) (“Appellants argue that they should be able to obtain some degree of equivalence even in the face of prosecution history estoppel, and that a total preclusion of equivalence should not apply. As a general proposition, that principle is correct ... ”); Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 882, 20 U.S.P.Q.2d 1045, 1054 (Fed.Cir.1991) (Lourie, Newman, Rader); Laitram Corp. v. NEC Corp., 952 F.2d 1357, 1361, 21 U.S.P.Q.2d 1276, 1279-80 (Fed.Cir.1991) (Newman, Archer, Rader).
1992: Charles Greiner & Co., Inc. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1036, 22 U.S.P.Q.2d 1526, 1530 (Fed.Cir.1992) (Rader, Plager, Smith).
1993: Texas Instruments, Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1174, 26 U.S.P.Q.2d 1018, 1025 (Fed.Cir.1993) {Clevenger, Nies, Kaufman) (“Application of this test [to determine whether the patentee may assert the doctrine of equivalents,] requires, in each case, examination of the prosecution history taken as a whole.”); Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 26 U.S.P.Q.2d 1767 (Fed.Cir.1993) (Lourie, Archer, Clevenger); Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951, 28 U.S.P.Q.2d 1936, 1939 (Fed.Cir.1993) (Plager, Smith, Clevenger).
1994: Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1567, 31 U.S.P.Q.2d 1161, 1170 (Fed.Cir.1994) (Plager, Cowen, Lourie).
1995: Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579, 34 U.S.P.Q.2d 1673, 1676 (Fed.Cir.1995) (Michel, Lourie, Bryson); Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1219, 36 U.S.P.Q.2d 1225, 1230 (Fed.Cir.1995) (Newman, Rich, Mayer).
1996: Modine Mfg., Co. v. United States Int’l Trade Comm’n, 75 F.3d 1545, 1556, 37 U.S.P.Q.2d 1609, 1616 (Fed.Cir.1996) (Newman, Mayer, Clevenger); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582, 37 U.S.P.Q.2d 1365, 1373 (Fed.Cir.1996) (Michel, Nies, Clevenger); Insituform Tech., Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1101, 40 U.S.P.Q.2d 1602, 1609 (Fed.Cir.1996) (Michel, Archer, Schall).
1997: Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1525, 35 U.S.P.Q.2d 1641, 1651 (Fed.Cir.1995) (per curiam); Wang Labs., Inc. v. Mitsubishi Elecs. Amer., Inc., 103 F.3d 1571, 1578, 41 U.S.P.Q.2d 1263, 1269 (Fed.Cir.1997) (Rich, Mayer, Schall); Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1574-75, 41 U.S.P.Q.2d 1961, 1968 (Fed.Cir.1997) (Lourie, Mayer, Rader).
1998: Cybor Corp. v. FAS Tech, Inc., 138 F.3d 1448, 1460, 46 U.S.P.Q.2d 1169, 1178 (Fed.Cir.1998) (en banc) (Archer); Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1455, 46 U.S.P.Q.2d 1321, 1326 (Fed.Cir.1998) (Rader, Newman, Bryson) (“In accord with the Supreme Court’s understanding, this court has repeatedly stated that application of prosecution history estoppel does not necessarily limit a patentee to the literal language of the amended element — even when an amendment has been made to overcome the prior art.”); Hughes Aircraft Co. v. United States, 140 F.3d 1470, 1476, 46 U.S.P.Q.2d 1285, 1290 (Fed.Cir.1998) (Archer, Rader, Bryson)(“[T]he key to prosecution history estop-pel is the surrender or-diselaimer of subject matter by the patentee, which the patentee is then unable to reclaim through the doctrine of equivalents.... In evaluating the reason behind an amendment, a court must ‘determine what subject matter the patentee actual*615ly surrendered.’ ”); Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1464, 46 U.S.P.Q.2d 1609, 1615-16 (Fed.Cir.1998) (Lourie, Michel, Skelton); EMI Group North Amer. Inc. v. Intel Corp., 157 F.3d 887, 897, 48 U.S.P.Q.2d 1181, 1189 (Fed.Cir.1998) (Newman, Plager, Bryson) (“Cancellation of a claim that is written broadly does not always generate an estoppel to narrower subject matter. The particular facts must be considered.”); Desper Prod., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1338, 48 U.S.P.Q.2d 1088, 1098 (Fed.Cir.1998) (Plager, Clevenger, Gajarsa); Bai v. L & L Wings, Inc., 160 F.3d 1350, 1356, 48 U.S.P.Q.2d 1674, 1679 (Fed.Cir.1998) (Lourie, Rich, Rader); Insituform Tech., Inc. v. Cat Contracting, Inc., 161 F.3d 688, 692, 48 U.S.P.Q.2d 1610, 1614 (Fed.Cir.1998) (Michel, Archer, Schall).
1999: Pharmacia & Upjohn Co. v. Mylan Pharms., Inc., 170 F.3d 1373, 1377, 50 U.S.P.Q.2d 1033, 1037 (Fed.Cir.1999) (Lourie, Newman, Schall); Sextant Avionique, S.A. v. Analog Devices, Inc., 172 F.3d 817, 830-32, 49 U.S.P.Q.2d 1865, 1870-72 (Fed.Cir.1999) (Lourie, Smith, Gajarsa); Augustine Med. Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1298, 50 U.S.P.Q.2d 1900, 1905 (Fed.Cir.1999) (Mayer, Rader, Gajarsa); Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1323, 50 U.S.P.Q.2d 1865, 1871 (Fed.Cir.1999) (Archer, Michel, Plager); Merck & Co. v. Mylan Pharms. Inc., 190 F.3d 1335, 1341, 51 U.S.P.Q.2d 1954, 1958 (Fed.Cir.1999) (Newman, Lourie, Clevenger); K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1368, 52 U.S.P.Q.2d 1001, 1008 (Fed.Cir.1999) (Clevenger, Rader, Gajar-sa) (In order to prevent infringers from “stealing the benefits of an invention, ... the doctrine of equivalents must ... remain within the boundaries established by the prior art, the scope of the patent claims themselves, and any surrendered subject matter.”).
2000: Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1251, 54 U.S.P.Q.2d 1711, 1717 (Fed.Cir.2000) (Schall, Clevenger, Bryson); KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1358, 55 U.S.P.Q.2d 1835, 1842 (Fed.Cir.2000) (Rader, Plager, Clevenger).
IV. The Majority’s Rule Likely Will Have Unintended and Adverse Consequences that Undermine the Policies Advanced by the Supreme Court’s Interpretation of the Doctrine of Equivalents.
The doctrine of equivalents was created to prevent “fraud on a patent,” such as near-literal copying of the claimed invention with the addition of merely insubstantial changes in order to avoid liability for literal infringement. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). Winans v. Denmead, 56 U.S. 330, 15 How. 330, 14 L.Ed. 717 (1853), was the first Supreme Court case to address the doctrine of equivalents. In Winans, the Court adopted the doctrine in order to prevent precisely the abuse that today’s ruling will allow, namely, the appropriation of patented inventions by making trivial modifications to a claimed device. The Court recognized that “the exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.” Id. at 343. In Graver Tank, the Court reiterated the necessity of the doctrine of equivalents, stating:
[Cjourts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law.
*616339 U.S. at 607, 70 S.Ct. at 856 (emphasis added).
Despite repeated petitions seeking to abolish the doctrine of equivalents, the Supreme Court has steadfastly ruled that patentees are entitled to its protection. See Warner-Jenkinson, 520 U.S. at 21, 117 S.Ct. at 1045 (declining to “speak the death of that doctrine”). As a lower court, we must respect the Supreme Court’s decision to accord patentees the benefits of the doctrine 'of equivalents. I believe that the majority’s new rule, far from providing patentees the protections the Supreme Court has guaranteed, unfairly strips most patentees of the right to assert infringement under the doctrine of equivalents.
A. Today’s Ruling Provides Copyists with a Fail-Safe Method to Avoid Liability for Infringement.
The majority discusses the unpredictability of prosecution history estoppel under a flexible approach, and how its complete bar “eliminates the public’s need to speculate as to the subject matter surrendered by a narrowing claim amendment.” As a solution to this problem of the doctrine of equivalents, today’s ruling simply denies any resort to the doctrine, for amended claim limitations.
Today’s ruling will allow copyists to readily avoid liability despite practicing the substantial equivalent of the claimed invention. Anyone seeking to lawfully copy a patented technology will only have to adopt the following method: (1) read the prosecution history to identify amendments made for patentability reasons; (2) copy every other limitation exactly, but substitute any known interchangeable structure, matter, or step for any limitation that has been amended. Any change, no matter how “unimportant and insubstantial,” to even one amended limitation will be sufficient to avoid liability under the majority’s rule.
The ease and certainty with which this method can be applied may be readily appreciated -with reference to cases such as Insituform Technologies, Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 40 U.S.P.Q.2d 1602 (Fed.Cir.1996). The asserted patent in Insituform claimed a process for impregnating the interior felt repair lining of an underground pipe with resin by using a cup attached over a hole on the outside of the pipe to apply a vacuum downstream of the resin. The resin is thereby made to flow along the interior of the pipe towards the vacuum, permeating the felt and curing it. See id. at 1103, 40 U.S.P.Q.2d at 1605. The pat-entee had amended the asserted patent claim in response to an examiner’s patent-ability rejection to include the limitation that the vacuum be applied sequentially in a stepwise fashion using a cup that was repeatedly removed from one location along the pipe and moved further downstream once the resin had profused near the original location of the cup. See id. at 1104, 40 U.S.P.Q.2d at 1606.
A copyist’s first step in exploiting today’s ruling to avoid liability, then, would be to identify a claim limitation that was amended for patentability reasons. Here, that is the limitation requiring the successive application of a cup to different locations along the outside of the pipe. The second step, then, would be to determine the most convenient substitute for this limitation. In this case, the copyist could simply apply the vacuum simultaneously using two cups. . As we held in Insituform, this would be sufficient to avoid literal infringement. 99 F.3d at 1106-07, 40 U.S.P.Q.2d at 1608. And under today’s ruling the amended limitation is not entitled to any protection under the doctrine of equivalents, so the copyist will have succeeded in avoiding all liability by simply practicing the claimed invention, but using two cups.
Because today’s ruling completely eliminates protection against known substitutes for the amended limitation, any competitor adopting this method would be free from liability, as the amended limitation is not met literally but rather is supplied by an *617obvious equivalent. To me, protection against such “close copying” is the central office of the doctrine of equivalents. The Supreme Court clearly warned of this danger in Graver Tank. See 339 U.S. at 607, 70 S.Ct. at 856 (“Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbal-ism and would be subordinating substance to form. It would deprive him of the benefit of his invention.”).
Prosecution history estoppel, moreover, is an equitable doctrine. By its very purpose, equity jurisprudence provides a remedy individually tailored to the circumstances of the dispute at hand. As stated by the Supreme Court:
The essence of equity jurisdiction has been the power of the Chancellor to do equity and to mould each decree to the necessities of the particular case. Flexibility rather than rigidity has distinguished it. The qualities of mercy and practicality have made equity the instrument for nice adjustment and reconciliation between the public interest and private needs as well as between competing private claims.
Hecht Co. v. Bowles, 321 U.S. 321, 329-30, 64 S.Ct. 587, 592, 88 L.Ed. 754 (1944) (emphasis added). Today’s ruling, however, imposes a rigid legal rule upon the application of the equitable doctrine of prosecution history estoppel. The complete bar eliminates the flexibility that equity demands. Without this flexibility, courts are precluded from protecting pat-entees from copyists.
B. The Ability of Copyists to Avoid Liability Under the Complete Bar Will Be Particularly Severe in Certain Types of Technology.
Copyists will be able to apply today’s ruling, using the fail-safe method noted above, to avoid liability in many, if not all, areas of technology. Biotechnology is one critical field of technology that may be particularly harmed by today’s ruling. Completely barring resort to the doctrine of equivalents for amended claim limitations may drastically limit the scope of protection for biotechnology patents, such as those claiming a protein molecule. See Amicus Curiae Brief on behalf of Chiron Corporation in support of Respondent at 16, 17, Warner-Jenkinson (No. 95-728).
A protein molecule can only be claimed as the complete and specific sequence of amino acids comprising the protein. See 37 C.F.R. § 1.821 (2000). The particular amino acids that comprise a protein chain are frequently interchangeable with other amino acids without changing the protein or its functions. As our court noted with respect to a patent claiming the protein erythropoietin, “over 3,600 different [protein] analogs can be made by substituting [interchangeable acids] at only a single amino acid position, and over a million different analogs can be made by substituting three amino acids.” Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213, 18 U.S.P.Q.2d 1016, 1026 (Fed.Cir.1991). Many such analogs are functionally identical to the claimed protein. Thus, a competitor seeking to make, use, or sell a protein that is protected by a patent containing an amended claim limitation will only have to substitute at a particular location in the chain an interchangeable amino acid for the particular amino acid recited in the patent claim as occupying that location. It appears that, in order to thwart such copying, a patent applicant would have to disclose and claim every single analog that is functionally equivalent to the claimed protein. Considering the vast number of specific amino acid sequences that an applicant would be forced to disclose and claim in order to secure meaningful protection for his invention, I feel the majority’s rule puts an impossible burden on both the applicant and the PTO.
C. Amending Claims for Patentability Reasons Is a Common Practice That Should Not Trigger a Complete Bar.
The majority gives no hint of the magnitude of the effects that will ensue from its *618new rule. The vast majority of patent applications contain claims that are initially rejected in view of the prior art, and are only allowed after being amended. Patent prosecution is an iterative process in which the applicant typically submits claims that are thought to be allowable, the examiner rejects the claims in view of the prior art, and the applicant then amends the claims to traverse the examiner’s patentability rejections. See, e.g., Hughes I, 717 F.2d at 1363, 219 U.S.P.Q. at 481 (“Amendment of claims is a common practice in prosecution of patent applications. No reason or warrant exists for limiting application of the doctrine of equivalents to those comparatively few claims allowed exactly as originally filed and never amended.”).
Today’s ruling may prove impractical because it provides that the mere act of amendment to traverse a patentability rejection eliminates all protection under the doctrine of equivalents, even for equivalents that were not the subject of the amendment. This is ill-suited to the iterative process by which patent applications are prosecuted. In Wamer-Jenkinson, the Supreme Court refused to apply prosecution history estoppel regardless of the reason for amendment expressly because to do so would “subvert the various balances” inherent in the process of rejection followed by amendment. 520 U.S. at 32 n. 6, 117 S.Ct. at 1050 n. 6. In holding that any amendment made for patentability reasons triggers a complete bar to protection under the doctrine of equivalents, today’s ruling will “subvert the various balances” inherent in the process of patent prosecution. Id.
Rather than acquiesce to patentability rejections and thereby surrender all recourse to the doctrine of equivalents, applicants will be increasingly likely to file administrative and judicial appeals. The PTO Board of Patent Appeals and Interferences is already backlogged and often takes years to decide an appeal. Neither the PTO, nor our court, is prepared to handle any significant increase in such appeals. Such an increase could result in a significant lengthening in the average time and cost required to prosecute an application to issuance.
Furthermore, this court’s imposition of a complete bar creates a perverse incentive for patent applicants, particularly those who are financially unable to invoke the appeals process, to simply abandon their applications. In many cases, it may be more effective to protect an invention by maintaining it as a trade secret than by accepting a patent that will publicize the invention, but provide protection only from literal infringement. See Graver Tank, 339 U.S. at 607, 70 S.Ct. at 856 (“[Protecting against only literal infringement] would deprive [the inventor] of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system.” (emphasis added)). As a result, the public may be deprived of useful teachings contained in patent applications that are simply abandoned after a rejection is made regarding a critical claim limitation.
D. Today’s Ruling Will Significantly, and Unfairly, Reduce the Value of All Unexpired Patents That Were Amended for Patentability Reasons.
The effect of today’s ruling upon previously-issued but unexpired patents may be dramatic. While I cannot predict all the consequences that may flow from today’s decision, I think it is safe to say that the majority’s rule will reduce the effective scope, and thus, the value, of most of the 1,200,000 patents that are unexpired and enforceable. Wholly apart from other long-term effects of the majority’s rule, I feel that today’s ruling will be unfairly disruptive of existing commercial relations. Today’s ruling offers no “grandfathering” provision for the vast numbers of unexpired patents that contain amended claim limitations, and thus that will become increasingly susceptible to copying under today’s new rule. Patent applicants who *619prosecuted their claims under the rule of a flexible bar will have protection limited now by our new rule of complete estoppel. As today’s adoption of the complete bar was utterly unpredictable, these applicants had no way to avoid the harm that now befalls them.
I think that today’s ruling might most directly impact untold numbers of licensing agreements that are predicated on the assumption that patent claims with an amended limitation are still entitled to a range of equivalents. Licensees will be tempted to exploit today’s ruling using the method for liability-free copying discussed above. A licensee could make a minor substitution of a known interchangeable element for an amended claim limitation, and then correctly claim that it is no longer practicing the patented — and licensed— invention. The licensor would then be powerless to enforce the license because the amended claim or claims simply would not cover the licensee’s newly-modified product or process.
As discussed above, the Supreme Court specifically refused in Warner-Jenkinson to “upset the basic assumptions” regarding prosecution history estoppel. See 520 U.S. at 32, 117 S.Ct. at 1050. I feel that today’s ruling will upset basic assumptions regarding the effective scope of patents, and will unfairly disrupt commercial relations based on these assumptions.
V. Conclusion
In the face of over one hundred years of Supreme Court case law, today’s en banc majority lacks authority to establish a complete bar rule. The majority also abruptly abandons eighteen years of unvarying Federal Circuit precedent as articulated in over fifty decisions, and does so without showing their error. Moreover, I believe that imposing a complete and automatic bar to the doctrine of equivalents for claim limitations amended for patentability reasons will have adverse, unfair, and unintended consequences. I accordingly must dissent from the majority’s answer to Question 3.
RADER, Circuit Judge,concurring-in-part, dissenting-in-part
A primary justification for the doctrine of equivalents is to accommodate after-arising technology. Without a doctrine of equivalents, any claim drafted in current technological terms could be easily circumvented after the advent of an advance in technology. A claim using the terms “anode” and “cathode” from tube technology would lack the “collectors” and “emitters” of transistor technology that emerged in 1948. Thus, without a doctrine of equivalents, infringers in 1949 would have unfettered license to appropriate all patented technology using the out-dated terms “cathode” and “anode”. Fortunately, the doctrine of equivalents accommodates that unforeseeable dilemma for claim drafters. Indeed, in Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 37, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), the Supreme Court acknowledged the doctrine’s role in accommodating after-arising technology.
Unfortunately, by barring all application of the doctrine of equivalents for amended claims, this court does not account at all for the primary role of the doctrine. All patent protection for amended claims is lost when it comes to after-arising technology, while the doctrine of equivalents will continue to accommodate after-arising technology in unamended claims. For a reason far more important than disparate treatment of claims, however, this result defies logic.
Prosecution history estoppel is an estop-pel doctrine. Estoppel prevents a litigant from denying an earlier admission upon which another has already relied.* BlaCK’s Law DictionaRY 570 (7th ed.1999). In the case of patent law, the admission is *620the applicant’s surrender of claim scope to acquire the patent. Today’s rule forfeits all protection of the doctrine of equivalents whenever applicants amend their claims, regardless of, whether they in fact surrendered coverage. By definition, applicants could not have surrendered something that did not even exist at the time of the claim amendment, namely after-arising technology-
The court reasons today that it will not inquire about the scope of an estoppel because it cannot with certainty ascertain the scope of the applicant’s surrender. Although that premise is questionable for the reasons enunciated by Judges Michel and Linn, one thing is beyond question: That premise does not apply to after-arising technology. Because after-arising technology was not in existence during the patent application process, the applicant could not have known of it, let alone surrendered it. Nonetheless, the court would apply an es-toppel where none exists and defeat the doctrine of equivalents.
LINN, Circuit Judge,concurring-in-part, dissenting-in-part, in which Circuit Judge RADER joins.
I join the majority’s articulate and well-reasoned answers to Questions 1, 2 and 4; however, I must, respectfully, dissent from the answer of the majority to Question 3 and from Part III, Section C of the opinion of the court. In my opinion, the majority’s new rigid bright line rule, eliminating all flexibility in the scope afforded certain claim limitations amended for a statutory purpose just because they were amended for a statutory purpose, goes too far. The reasons expressed by the majority do not justify this dramatic policy shift.
With all due respect to my colleagues in the majority, the new bright line rule, as simple as it is hoped to be in application, wrongfully sets in place a regime that increases the cost and complexity of patent prosecution to the detriment of individual inventors, start-up companies, and others unable to bear these increased costs. The new regime also places greater emphasis on literary skill than on an inventor’s ingenuity; gives unscrupulous copyists a free ride on the coattails of legitimate inventors; and changes the rules under which prosecution strategies were formulated for thousands of extant patents no longer subject to correction. I find particularly apt here the concerns expressed by the Supreme Court in Wamer-Jenkinson when it considered the petitioner’s request for a bright line rule precluding “recapture” of any part of surrendered subject matter under the doctrine of equivalents: “[t]o change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 32 n. 6, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).
In my opinion, the approach to prosecution history estoppel as articulated by the Supreme Court and long followed by this court should remain the rule. As long as the reason for an amendment is explained, an estoppel by amendment should only bar recapture of the subject matter actually surrendered, as discerned from the amended claim language and the reasons articulated by the applicant for the change. The mere fact that an amendment to a claim is made pursuant to a statutory requirement is insufficient in and of itself to conclude that all subject matter beyond the literal scope of the amended claim language has been surrendered, even where the amendment is made to overcome prior art.
Both by taking an expansive view of what constitutes a “substantial reason relating to patentability” and by applying prosecution history estoppel as a complete bar to any reliance on the doctrine of equivalents for claim limitations narrowed by amendment, the majority unfairly tips the balance away from pat-entees and toward competitors by con*621straining the legitimate rights of paten-tees to their inventions, even where competitors can reasonably determine the reasons for any amendments and the scope of any subject matter surrendered. In my view, this is an ill-advised major policy shift that is neither compelled nor justified at this time.
DISCUSSION
Purpose, of the Patent System
The Constitution authorizes Congress “[t]o promote the Progress of ... useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries.” U.S. Const, art. I, § 8, cl. 8. The foregoing evinces the founding fathers’ intent that the federal patent laws of the United States be directed to the public purpose of fostering technological progress. See Hilton Davis Chem. Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1536, 35 U.S.P.Q.2d 1641, 1660 (Fed.Cir.1995) (en banc) (Newman, J., concurring), rev’d on other grounds, 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).
An exclusive right granted by the government for one’s invention has value to an inventor as a guarantee of protection, and, thus, stimulates inventors to add to the sum of human knowledge. See Paul C. Craane, At The Boundaries Of Law And Equity: The Couri Of Appeals For The Federal Circuit And The Doctrine Of Equivalents, 13 N. Ill. U.L.Rev. 105, 107-OS (1992). To obtain this exclusive right, the inventor must disclose his invention to the public. Thus, the patent also is of value to the public because such disclosures will stimulate others to add to the sum of human knowledge through the creation of other inventions utilizing the lessons learned by the patentee. See id. at 108-09.
Strong patent protection is key to encouraging innovation, economic growth, and American competitiveness. See Paul J. Otterstedt, Unwrapping File Wrapper Estoppel In The Federal Circuit: A New Economic Policy Approach, 67 St. John’s L. Rev. 405, 422 (1993). “From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very life blood of a competitive economy.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989). Thus, the patent laws attempt to provide each inventor with reasonable assurances that the reward to which he or she is entitled will, in fact, be given. And, these same laws also attempt to provide competitors with notice of the patent owner’s rights. Strong patent protection must both accommodate and balance justice to the patentee and notice to the public of the patentee’s rights.
Claims Use Ordinary Language to Captwre Concepts
To protect an invention through the United States patent laws, an inventor must use patent “claims.” See 35 U.S.C. § 112, second paragraph (1994). The purpose of this requirement is to give notice of the technology that the patent controls. See Slimfold Mfg. Co. v. Kinkead Indus., 932 F.2d 1453, 1457 (Fed.Cir.1991) (“Inherent in our claim-based patent system is ... the principle that the protected invention is what the claims say it is, and thus that infringement can be avoided by avoiding the language of the claims.”)
There is no disputing that an inventor is free to craft claims any way he sees fit to “particularly point[ ] out and distinctly elaim[] the subject matter [that he] regards as his invention.” 35 U.S.C. § 112, second paragraph. However, a claim is a linguistic description of a mental concept. Due to the inherent limitations of language, the fit between the description and the concept is almost always inexact. See Br. for Amicus Curiae Fed. Cir. Bar Assoc. in Hilton Davis Chem. Co. v. Warner-Jenkinson, Inc., Appeal No. 93-1088, 3 *622Fed. Cir. B.J. 345, 348 (1993). In addition to the inexact fit caused by the inherent limitations of language, the language itself may not be adequately developed at the early stages when patent applications typically are filed, particularly in rapidly evolving research fields.
Besides the foregoing language issues, the early patent application filings encouraged by the U.S. patent laws give rise to additional difficulties in crafting a claim that particularly points out the subject matter that the inventor regards as his invention. For inventions in rapidly evolving fields, application filings are often made while the inventions are still in their nascent stages, i.e., early in the evolutionary process, necessitating inevitable and sometimes considerable fine tuning of claim language after the initial application filings have been made. Moreover, while an inventor is often aware of relevant prior art relating to the area he is developing, he is not always fully cognizant of all of the relevant prior art until after his application has been filed, thus again necessitating some fine tuning of claim language after the initial application filing has been made.
As a consequence of the foregoing, it is quite difficult for claim drafters to draft initial claims that adequately and accurately cover the “invention” on the day the patent application is filed. Consequently, claims are commonly amended during prosecution to more particularly point out and distinctly claim that which is regarded to be the invention. See Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 871, 228 U.S.P.Q. 90, 96 (Fed.Cir.1985) (noting that comparatively few claims are allowed exactly as originally filed), overruled on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 46 U.S.P.Q.2d 1097 (Fed.Cir.1998); Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363, 219 U.S.P.Q. 473, 481 (Fed.Cir.1983); Litton Sys. Inc., v. Honeywell, Inc., 140 F.3d 1449, 1455, 46 U.S.P.Q.2d 1321, 1325 (Fed.Cir.1998).
While the majority opinion is very clear that the court’s new bright line rule applies only to claim limitations narrowed by amendment, it does not articulate with like clarity what it considers to be a “narrowing” amendment. In drafting an original claim of a patent application, the writer sets out the metes and bounds of the invention using words in their ordinary sense or in any special sense ascribed to those words in the written description. When the claim drafter amends the terms used in the original claims, such as by adding an adjective or choosing a different word than originally used, such changes will serve to more distinctly point out that which is the invention and ordinarily, though not inevitably, will signify a difference in intended claim coverage. If the change is merely the substitution of one synonymous word for another or the mere clarification of language from a foreign translation, the claim drafter may intend no change whatsoever in claim scope; but the drafter’s word choice may be construed after grant of the patent to imply a different scope simply because changes to claim language are not made merely for aesthetic reasons. However, just because the claim drafter amends a claim limitation, does not mean he “intends” to narrow the scope of his claim coverage or to give up all subject matter beyond the literal scope of the amended language. The only inference one should draw from the mere fact alone that an amendment was made is that the claim drafter “intends” the patent to be issued. See Glenn K. Beaton, File Wrapper Estoppel And The Federal Circuit, 68 Denv. U.L.Rev. 283, 286 (1991) (noting that the patentee presumably “intends” that his reward for promoting the progress of the useful arts be as great as possible and that the limits to his reward be as small as possible).
Doctrine of Equivalents: Borne of Equity
“That the claims of a patent should be clear and should control the determination of infringement has been emphasized by *623the Supreme Court for over a century.” Donald S. Chisum, The Scope Of Protection For Patents After The Supreme Count’s Warner-Jenkinson Decision: The Fair Protection-Certainty Conundrum, 14 Santa Clara Computer & High Tech. L. J. 1, 6 (1998) (citing 5 Donald S. Chisum, Chisum on Patents, § 8.02[3] (1997)); Merrill v. Yeomans, 94 U.S. 568, 573-74, 24 L.Ed. 235 (1876) (“[N]othing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented and for what he claims a patent.”) Nevertheless, the Supreme Court has recognized that “strict and literal adherence to the written claim in determining the scope of protection [to afford to a patentee] can invite subversion of a valuable right and substantially diminish the economic value of patents.” Chi-sum, supra, at 6 (citing Chisum on Patents, supra, § 18.02); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). In other words, a system of protection for patentees limited to literal infringement subjects the patentee to the mercy of verbalism and “would convert the protection of the patent grant into a hollow and useless thing.” Graver Tank, 339 U.S. at 607, 70 S.Ct. 854.
Thus, “[t]o temper unsparing logic and prevent an infringer from stealing the benefit of the invention” and thereby ensure that the patent grant is not converted into a useless thing by being subject to the mercy of verbalism, the Supreme Court embraced the doctrine of equivalents. Id. at 608, 70 S.Ct. 854 (quoting Judge Learned Hand in Royal Typewriter Co. v. Remington Rand, 168 F.2d 691, 692 (2d.Cir.1948)). This doctrine was borne of equity to allow room for justice to the patentee against those who manage to avoid the letter of the invention as it was claimed in the patent through “unimportant and insubstantial changes.” Id. at 607, 70 S.Ct. 854; see Harold C. Wegner, Equitable Equivalents: Weighing the Equities to Determine Patent Infringement in Biotechnology and Other Emerging Technologies, 18 Rutgers Computer & Tech. L. J. 1, 6-16 (1992) (providing a definitive discussion of the origin of the doctrine of equivalents); Donald R. Dunner & J. Michael Jakes, The Equitable Doctrine of Equivalents, 75 J. Pat. & Trademark Off. Soc’y 857, 859 (1993) (“[T]he doctrine of equivalents did not originate strictly as a way to catch infring-ers who avoided the literal language of patent claims [since the doctrine of equivalents dates back long before peripheral claiming]. The doctrine was primarily an equitable one, to be applied against copyists who made only slight changes in the form of the invention.”); but see Robert P. Taylor and Celine T. Callahan, The Doctrine of Equivalents After Hilton Davis: Many Unansivered Questions, 489 PLI/ Pat 7, 26-27 (1997) (noting that the Supreme Court in Warner-Jenkinson appears to have held that the doctrine of equivalents is not a doctrine of equity).
While it is generally agreed that the doctrine of equivalents stands at the intersection of justice to the patentee and notice to competitors of the patentee’s rights, the United States patent law embraces this conflict to provide an inventor with security in the patent rights granted by the law and to stimulate technological progress. See Graver Tank, 339 U.S. at 607, 70 S.Ct. 854 (noting that subjecting the inventor to the mercy verbalism would deprive the inventor of his invention and would foster concealment rather than disclosure of invention); see also Hilton Davis, 62 F.3d at 1531, 35 U.S.P.Q.2d at 1656 (Newman, J., concurring) (noting that the dependence of industry on technology, the reduced opportunity to rely on trade secrecy because of today’s enlarged analytical capability, the ease and speed of imitation and modification once the innovator has shown the way, the harshness of modern competition, and the ever-present need for industrial incentives are factors that favor a rule that tempers the rigor of literalness); Wegner, supra, at 31-32 (not*624ing that “[p]atent protection that can be easily circumvented is antithetical to building a strong research-based industrial technology”).
The problems noted above regarding the inherent limitations of language and the early stage of filing applications have provided justification for the lengthy history of applying the doctrine of equivalents to all claim language to adequately protect the patentee’s right to his invention, despite the public notice function the claim terms serve. Even with the majority’s new rule, these concepts continue to provide justification for the application of the doctrine of equivalents to original claim language.
In my opinion, the majority’s new bright line rule eliminating all flexibility in the scope of claim limitations amended for a statutory purpose reflects an unjustified faith in the draftsperson to select language to perfectly describe a new and unobvious invention at an early stage of the development process. The same limitations of language noted in selecting words to describe an invention in the first instance are no less present in selecting words to avoid an examiner’s rejection of that original language for one statutory reason or another.
Furthermore, the majority’s new rule will substantially increase the cost of obtaining patent protection, and may in fact become prohibitively high for individual inventors and start-up companies. It will require applicants to undertake exhaustive pre-filing searches, which will not only be costly but also time consuming. It will also require applicants to file in an original application numerous “narrow” claims or, if “broad” claims are sought, to be prepared to argue to the patent examiner, to the board of appeals, and to this court the impropriety of all rejections for patentability reasons, rather than to amend those claims, given the harsh consequences of amendments under the majority’s new bright line rule. It will also deter applicants from attempting to expedite prosecution and attain early allowance by making minor or clarifying amendments to the claims, either in anticipation of the initial office action or at subsequent times during prosecution, for fear of triggering a complete bar to later reliance on the doctrine of equivalents. This will result in protracted prosecution and dramatically increased costs for many applications. These increases in costs and complexity will also come at a time when greater prosecution investments may be hard for many applicants to justify because the commercial value of the inventions covered may not then be fully apparent. In my view, this will most detrimentally impact individual inventors and start-up companies, and may have the effect of impeding, not advancing, technological progress, contrary to the purpose of the patent system.
Wamer-Jenkinson’s Effect on the Doctrine of Equivalents
While I agree with the majority that the question of the scope of equivalents available to a claim element that has been amended for a known patentability reason was not directly addressed by Wamer-Jenkinson, the Supreme Court did discuss the fact that an amendment to a claim element “does not necessarily preclude infringement by equivalents of that element.” Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040. In fact, where the record reveals a reason for the claim amendment, the Court noted that those “reasons for a claim amendment may avoid application of prosecution history estop-pel.” Id. In addition, the Court recognized that whether or not prosecution history estoppel is avoided will depend upon the “reason (right or wrong) for the [examiner’s rejection of the claim prior to its being amended] and the manner in which the amendment addressed and avoided that [rejection].” Id. at 33 n. 7, 117 S.Ct. 1040.1
*625After specifically stating that the reasons for a claim amendment are relevant to any subsequent application of prosecution history estoppel as a bar to the application of the doctrine of equivalents, see id. at 30-32, 117 S.Ct. 1040, the Court noted that the definitional and notice functions of the claims require the patentee to establish a reason for an amendment in order to avoid the estoppel, see id. at 33, 117 S.Ct. 1040. In the absence of a reason, the Court explained that “prosecution history estoppel would bar the application of the doctrine of equivalents as to that element,” because it would be presumed that the limiting element added by amendment was for a substantial reason related to patenta-bility. Id. The Court determined that “[ajpplied in this fashion, prosecution history estoppel places reasonable limits on the doctrine of equivalents, and further insulates the doctrine from any feared conflict with the Patent Act.” Id. at 34, 117 S.Ct. 1040.
If the doctrine of equivalents is completely barred when no reason for an amendment can be discerned from the prosecution history, and it is likewise completely barred when a. reason is stated, what is the point of exploring the “reason (right or wrong) for the [examiner’s rejection of the claim prior to its being amended] and the manner in which the amendment addressed and avoided that [rejection?]” Id. at 33 n. 7, 117 S.Ct. 1040. Thus, adoption of a rebuttable presumption of estoppel for an amendment that was made for an unknown reason necessarily presupposes the possibility that no estoppel will apply where the reason for the amendment is known, or where the presumption is rebutted.
The petitioner argued to the Supreme Court in Wamer-Jenkinson that “any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed.” Id. at 30, 117 S.Ct. 1040. The Supreme Court rejected that argument. See id. I think it is fair to conclude that Wamer-Jenkinson reaffirmed the long standing principle applied by this court before today that to determine the scope of prosecution history estoppel, if any, to be applied to an amended claim limitation with reasons extant in the prosecution file, one must look to the exchange between the examiner and the patentee in the prosecution file to determine that which was surrendered by the patentee in making the amendment.2
In applying the majority’s new rule, a court does not explore the exchange that occurred between the examiner and the patentee during the prosecution of the patent to elucidate the construction the paten-tee intended to disavow. Thus, the majority’s new rule, invoking a complete estoppel with no flexibility for a narrowing amendment made for a statutory purpose, effectively disregards the “reason” for a *626change, in contravention of Wamer-Jen-kinson.
Public Policy
The majority contends that the disclaimer effect, the notice function, and the need for certainty in patent law are supporting public policies for its new strict rule regarding amended limitations. See maj. op. at 573-74. The majority asserts that by amending a claim for any reason related to a statutory requirement for obtaining a patent, the patentee disclaims subject matter encompassed by the original claim. In view of this disclaimer, the majority contends that it must be strictly construed against the inventor in favor of the public, otherwise the benefit of the doubt as to what was disclaimed comes at the' public’s expense. See id. at 573-74. But the same arguments can be made for originally filed claim limitations, which, like amended claim limitations, are a disclaimer of certain subject matter.
As mentioned previously, 35 U.S.C. § 112, second paragraph, requires that the patentee specifically claim the invention covered by the patent. The purpose of this statutory requirement to notify the public of the scope of conduct forbidden by the patent is applicable whether a limitation is originally presented by the applicant or added by amendment for any reason related to one of the statutory requirements for obtaining a patent. The majority does not explain why a new bright line rule is compelled to strictly construe the inventor’s choice of words in amendments but is not similarly compelled for original claim limitations. Certainly, the benefit of the doubt as to what was disclaimed comes at the public’s expense in either case.
Paradoxically, the scope and meaning of claim limitations may be more easily discerned for amended limitations, as compared with originally drafted claim limitations, based on the record developed during prosecution. First-action allowances, with no real interchange or substantive commentary between the applicant and the examiner regarding any of the originally drafted claim limitations, provide no notice of the scope and meaning of those limitations beyond the words themselves as used in the written description and claims. Thus, in some ways, the public-notice function may be better served by explained amended language than by unexplained original claim language, yet the majority’s new rule favors the latter by leaving the doctrine of equivalents unrestrained for claim limitations that are not amended.
As the Supreme Court noted in Warner-Jenkinson, “the lengthy history of the doctrine of equivalents strongly supports adherence to [the] refusal [by the Court] in [Graver Tank ] to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses.” Warner-Jenkinson, 520 U.S. at 28, 117 S.Ct. 1040. The Court specifically noted that the policy arguments that justify keeping or eliminating the doctrine are best addressed by Congress, not the Court. See id. Since the issuance of the Supreme Court’s opinion in Warner-Jenkinson, Congress has not chosen to eliminate the doctrine of equivalents partially or entirely, and I do not believe it is the province of this court to partially legislate out of existence that doctrine for amended claim limitations; particularly in the absence of a compelling justification for treating amended claim language differently than original claim language.
Promoting Free Riders v. Promoting Progress of the Useful Arts
The majority contends that the certainty provided by the complete bar approach to amended limitations “will stimulate investment in improvements and design-arounds because the risk of infringement will be easier to determine.” Maj. op. at 575. However, in my opinion, limiting the pat-entee to protection of only the literal language of an amended claim limitation is *627not likely to promote the progress of the useful arts. Rather, the majority’s new bright line rule, by constraining limitations amended for a statutory purpose to their literal terms, is likely to encourage insubstantial changes to an established product, rather than investment in break-through technological advancements. Such a rule, therefore, promotes free riding and undercuts the return on a patentee’s investment,
In other words, the majority’s new rule hands the unscrupulous copyist a free ride on potentially valuable patented technology, as long as the copyist merely follows the prosecution history road map and makes a change, no matter how trivial or insubstantial, to an element otherwise covered by such a narrowed claim limitation. Every other detail of the patented invention may be imitated with impunity. Such an “unscrupulous copyist” appropriates the substance of the invention while avoiding the letter of the claims, yet adds nothing to the technology. The copyist, transformed as a lawful competitor, can take refuge in the excuse that if the patentee wanted better coverage, the claims should have been prosecuted more competently.
As our predecessor court aptly stated: “[t]o allow literality to satisfy the test for infringement would force the patent law to reward literary skill and not mechanical creativity.” Autogiro Co. of Am. v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 399 (1967). I do not think that is how our patent system or any patent system was intended to work. Patent laws seek to benefit the inventor’s genius, not the scrivener’s talents. See id. The majority’s new rule, which sanctions the behavior of the copyist who avoids the letter of the claims and adds nothing to' the technology, is likely to be a disincentive for inventors to bear the commercial risk in developing and disclosing new technology.
The majority’s concern regarding certainty is that under our previous precedent the scope of the estoppel had a spectrum of coverage and there was no precise metric to determine the exact range of equivalents within that spectrum. See maj. op. at 575. This concern regarding the public’s ability to know what is and what is not within the confines of a patent monopoly is not a new one.
The dissents in Winans v. Denmead3, 56 U.S. (15 How.) 330, 14 L.Ed. 717 (1853), and Graver Tank4 strongly disagreed with their respective majority’s liberal view towards infringement by equivalence, feeling that to interpret the language of the patent to include equivalents would undermine the claiming system and destroy the public’s ability to rely on the patent claiming system to mark the boundaries granted to the patentee. See Craane, supra, at 134-35. However, it is noteworthy that the forebodings expressed in the Winans and Graver Tank dissents regarding the impediment to economic growth have not *628been realized. Competition still abounds in the marketplace and technology has progressed at a remarkable rate.
Subject Matter Surrendered
Our prior precedent instructs that “amendments may be of different types and may serve different functions. Depending on the nature and purpose of an amendment, it may have a limiting effect within a spectrum ranging from great to small to zero. The effect may or may not be fatal to application of a range of equivalents broad enough to encompass a particular accused product. It is not fatal to application of the doctrine itself.” Hughes, 717 F.2d at 1363. For at least the past seventeen years, beginning with our seminal case in Hughes, we have consistently held that prosecution history es-toppel bars infringement by equivalents by reason of the patentee’s manifest intent to disavow or abandon a construction of the patent claim as a condition of the patent grant. See Bayer, 738 F.2d at 1243, 222 U.S.P.Q. at 653; Loctite, 781 F.2d at 871, 228 U.S.P.Q. at 96; Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 987, 10 U.S.P.Q.2d 1338, 1345 (Fed.Cir.1989); Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285, 291, 36 U.S.P.Q.2d 1095, 1100 (Fed.Cir.1995); Sextant Avionique, S.A. v. Analog Devices, 172 F.3d 817, 830-32, 49 U.S.P.Q.2d 1865, 1870-72 (Fed.Cir.1999). Moreover, we have instructed that the intended construction that has been disavowed is to be determined from an objective evaluation of the exchange .between the examiner and the patentee that occurred in the prosecution history, whether explicit or implicit.
I agree that the extent to which the patentee would be deprived of equivalents according to our past precedent necessarily involves the often arduous task of reviewing difficult and complex prosecution histories, as well as difficult and complex technologies. I also agree that these difficulties may give rise to differing opinions as to what subject matter is within the scope of the claim and what has been surrendered. However, the mere fact that this court’s new rule is a brighter line for determining whether a patentee is es-topped from asserting infringement by equivalents, cannot be justification for adopting a rule that so substantially changes the rules of the game and discounts the intrinsic worth in treating more fairly the individual inventor whose patent right is under administrative scrutiny and is subject to the inherent limitations of language. The Supreme Court in Warner-Jenkinson saw no “substantial cause for requiring a more rigid rule invoking an estoppel [as a complete bar with no flexibility] regardless of the reason for a change.” Warner-Jenkinson, 520 U.S. at 32, 117 S.Ct. 1040. Likewise, I find that the majority’s opinion lacks substantial cause for its rigid rule.
The majority contends that the approach followed by our court in Kinzenbaw v. Deere & Co., 741 F.2d 383, 222 U.S.P.Q. 929 (Fed.Cir.1984), is different than the flexible bar approach espoused in Hughes and its progeny. I disagree. In Kinzen-baw our court examined the prosecution record and noted that whether or not the patentee needed to specify the radius of the gauge wheel to overcome the rejection of the claims over specified prior art, he did in fact do just that. Kinzenbaw, 741 F.2d at 388, 222 U.S.P.Q. at 932-33. After our analysis of the prosecution record, the court also noted that a reasonable competitor would believe that the patentee had surrendered the relevant subject matter in view of the file which “explicitly showed that in response to the examiner’s rejection, [the inventor] narrowed his claims to a planter in which ‘the radius of the wheel ... [is] less than the radius of the disc.’ ” Id. In other words, this court’s position was that when the prosecution record is viewed objectively, the patentee manifested an intention to disavow anything but the relationship of the radius of the gauge wheel to the radius of the discs to obtain *629his patent from the Patent Office, even though it might not have been necessary.
The foregoing does not evince a split in our precedent, but rather comports with Hughes that courts must undertake an examination of the prosecution record to determine the subject matter the patentee disavowed by amendment, whether or not the patentee contends the amendment was necessary to obtaining the patent. As this court has stated: “[ujnmistakable assertions made by the applicant to the ... PTO ... in support of patentability, whether or not required to secure allowance of the claim, ... may operate to preclude the patentee from asserting equivalency....” Texas Instruments Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1174, 26 U.S.P.Q.2d 1018, 1025 (Fed.Cir.1993). The patentee’s subjective determination of whether or not an amendment would have been needed to secure allowance of a claim is irrelevant. If an unmistakable assertion was made by the applicant to the Patent Office to obtain allowance of the patent, as viewed from the objective standpoint of a reasonable competitor, then the scope of prosecution history estoppel is zero. Kinzenbaio is a case that emphasizes that a patentee cannot take one position before the Patent Office to get his claim allowed, whether that position was necessary or not, and then assert a different position in court to prove infringement.
As explained above, I believe it is fair to conclude that the Supreme Court in Warner-Jenkinson left intact the principle of determining that which the patentee surrendered by looking at the exchange between the examiner and the patentee recorded in the prosecution history. Some amendments may be made for a statutory reason, such as providing proper antecedent basis, which is required by 35 U.S.C. § 112, second paragraph’s requirement that the applicant particularly point out and distinctly claim that which is regarded as the invention. However, while such an amendment affects issuance of the patent, it is a trivial matter. Restricting such an amended claim limitation to its literal scope would unfairly penalize patent owners beyond what is necessary to provide notice and certainty to competitors. As long as the reason for an amendment is explained, and a competitor can reasonably determine what subject matter the applicant surrendered, prosecution history es-toppel should preclude the patent holder from recapturing only the surrendered subject matter, not from accessing the doctrine of equivalents entirely. In my view, the flexible approach best balances fairness to inventors with certainty to competitors and strikes an appropriate accord between the required rewards for the already expensive and lengthy process of innovation, and the extra public costs of monopoly profits. See Otterstedt, supra, at 424.
CONCLUSION
Because claims are commonly amended during prosecution, prosecution history es-toppel touches almost every doctrine of equivalents infringement analysis. See Loctite, 781 F.2d at 871, 228 U.S.P.Q. at 96. Although a complete bar would provide bright line enhancement of the notice function of claims, it unfairly subjects almost every patentee to the mercy of ver-balism at an early stage of development. See Graver Tank, 339 U.S. at 607, 70 S.Ct. 854. Rather than promote technological growth, the majority’s new rigid rule will effect a serious invasion of the patentee’s security of receiving the full benefit of his invention and is likely to be a disincentive to early disclosure of new inventions and discoveries. I see no substantial cause for the majority’s drastic action, and I must, respectfully, dissent from the pronouncement that any time a claim limitation is narrowed by amendment for any statutory purpose, regardless of the nature and extent óf the change, prosecution history es-toppel completely bars the application of the doctrine of equivalents.
*630PAULINE NEWMAN, Circuit Judge,concurring in part, dissenting in part.
This appeal returns to the Federal Circuit on GVR from the Supreme Court,1 with instructions to reconsider our prior decision in accordance with the law announced in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 U.S.P.Q.2d 1865 (1997). Two major issues are presented for our review on remand: (1) application of the Court’s new rebuttable presumption and any ensuing estoppel to the claims of Festo’s Carroll and Stoll patents; and (2) application of the all-elements rule to the sealing rings of the Carroll and Stoll patents and the magnetizable sleeve of the Stoll patent.
For the first remand issue, today’s majority opinion departs from the holdings of Warner-Jenkinson in three important ways. First, the majority holds that all equivalency is barred as to any claim element that is narrowed or added for reasons relating to patentability; access to the doctrine of equivalents is barred whether or not the Court’s new rebuttable presumption arises and whether or not it is rebutted. Second, the majority denies consideration to any rebuttal evidence that is not already in the prosecution record, thereby converting the rebuttable presumption into an irrebuttable fiat. Third, the majority’s inappropriately broad definition of “reasons related to patentability” further limits a patentee’s access to equivalency, and exacerbates the conflict with the holdings of Wamer-Jenkinson. The result is to negate infringement by equivalents, as a matter of law, thereby providing a blueprint for ready imitation of patented products.
The majority does not reach the second remand issue, the application of the all-elements rule. However, the all-elements rale is central to the Supreme Court’s treatment of the tension between the doctrine of equivalents and the “notice function” of patent claims. Although my colleagues in the majority identify the “notice function” as the reason for their new and extreme restraints on the doctrine of equivalents, the majority opinion neither discusses nor acknowledges the Court’s considered actions to reinforce the notice function.
Thus the majority ignores the bases of the GVR which returned this case to us, and instead manipulates the issues of equivalency and estoppel to achieve a policy-driven result. In acting to severely limit the doctrine of equivalents, this court has made a deliberate change in the relationship between innovator and competitor. Although the Supreme Court rejected judicial entry into this policy arena, the majority has entered headlong, criticizing 150 years of Supreme Court precedent and 18 years of Federal Circuit precedent as “unworkable.” This spontaneous judicial action represents a venture into industrial policy whose consequences have been inadequately considered. The majority’s announced purpose of facilitating competition by restricting patentees’ access to the doctrine of equivalents has not been evaluated for its effect on the nation’s technology-based industry, for its effect on the system of patents as an innovation incentive, or indeed for its effect on competition. The interdependent policy aspects of technologic innovation, industrial growth, and competition were not briefed, and do not inhere in this court’s “special expertise” in adjudication of patent disputes.
*631I
CONFLICTS WITH THE LAW OF WARNER-JENKINSON
Prosecution History Estoppel
The Court in Wamer-Jenkinson confirmed its precedent that estoppel flows from a patent applicant’s disclaimer or surrender of subject matter for reasons of patentability; precedent has never held that no equivalency whatsoever is availablé to amended claim elements. The majority’s departures from this law are summarized in its rulings that “an amendment that narrows the scope of a claim for any reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element,” maj. op. at 563, that “no range of equivalents is available for the amended claim element,” id., and that amendments made to comply with virtually any provision of the Patent Act will raise this estoppel, id. at 566-67. These rulings contravene the Court’s holdings in Wamer-Jenkinson.
In Wamer-Jenkinson the Court summarily dismissed the argument that “any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed.” Warner-Jenkinson, 520 U.S. at 30, 117 S.Ct. 1040, 137 L.Ed.2d 146, 41 U.S.P.Q.2d at 1871. The Court held that the patentee Hilton Davis, upon establishing the reason why the applicant amended the claims to include a lower pH limit of “approximately 6.0,” may be entitled to prove equivalency between a pH of 5.0 and approximately 6.0 in the process of that invention. Observing that it was unclear why the pH limit of 6.0 had been added to the claims, the Court ruled that inclusion of this limitation did not necessarily preclude a finding of infringement based on equivalency:
[W]hile a lower limit of 6.0, by its mere inclusion, became a material element of the claim, that did not necessarily preclude the application of the doctrine of equivalents as to that element.
Id. at 32, 520 U.S. 17, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1872. The majority’s new rules would bar the inquiry for which the Court remanded Wamer-Jenkinson to the Federal Circuit.
The Court in Wamer-Jenkinson reaffirmed its precedent wherein the patentee is estopped from reaching, through equivalency, subject matter that the applicant had disclaimed or surrendered in order to obtain the patent. See, e.g., Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-137, 62 S.Ct. 513, 86 L.Ed. 736 (1942) (the patentee had “surrendered by amendment,” “proclaimed his abandonment of’ and “disclaimed” the subject matter that was used by the accused infringer); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 790, 51 S.Ct. 291, 75 L.Ed. 707 (1931) (describing an amendment made after persistent examiner’s rejection as a “disclaimer”); Weber Electric Co. v. E.H. Freeman Electric Co., 256 U.S. 668, 676, 41 S.Ct. 600, 65 L.Ed. 1162 (1921) (“it is clear that the chief concern of the applicant [after rejection] was to distinguish his construction from that of Kenny, which is very similar to [that of the accused infringer]”). These cases, although mentioned in the majority opinion, do not support the majority’s new rules, for in no case did the Court find an estoppel as to subject matter that was not surrendered in order to obtain the patent and that was not embraced in the difference between the prior art and the applicant’s invention.
The majority recasts prosecution history estoppel in a legally incorrect and equitably unjust manner. As illustrated by the Carroll and Stoll patents in suit, equivalents are now held forfeited whether or not the claimed element itself was amended, or even discussed, during prosecution. In contrast, the Court has consistently held that the law of estoppel requires determination of what was surrendered and why, *632measured by the representations made by the applicant in order to obtain the patent. Precedent as to prosecution history estop-pel is strikingly uniform in not only the judicial statement of the law, but in its application. There has been no groundswell of concern for unpredictable judicial application of the rules of estoppel, even by those who have expressed concern for unpredictable application by juries of the rules of equivalency. Today’s actions imposing an absolute estoppel against equivalency — instead of sharpening the criteria for determining equivalency (as the Court instructed) — make manifest the magnitude of the majority’s change in the law.
The Rebuttable Presumption
As part of its reinforcement of the notice function of claims, the Court established a new rebuttable presumption. In accordance with this presumption, when the prosecution record is silent as to the reason for a change to the claims, the presumption arises that the change was made for “a substantial reason related to patent-ability.” Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873. This new presumption and ensuing estop-pel are carefully designed controls that require consideration of the “reasoning behind the Patent Office’s insistence upon a change in the claims.” Id. at 32, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1872. The Court recognized that estoppel does not arise from every change, but depends on whether the change was made for patentability reasons:
Where the reason for the change was not related to avoiding the prior art, the change may introduce a new element, but it does not necessarily preclude infringement by equivalents of that element.
Id. The patentee may then come forward with evidence to rebut the presumption. Id. at 33, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873.
The majority holds that the presumption can only be rebutted by evidence that is already present in the prosecution record. Maj. op. at 586 (“a patent holder seeking to establish the reason for an amendment must base his arguments solely upon the public record of the patent’s prosecution, ie., the patent’s prosecution history”). Thus the majority holds that the rebutta-ble presumption concerning the reason for an amendment, which presumption arises when the prosecution record is silent as to the reason for the amendment, can not be rebutted with evidence outside of the prosecution record. The rebuttable presumption thereby becomes irrebuttable, because the prosecution record is necessarily silent in order for the presumption to arise at all. This impossibility of rebuttal was surely not contemplated by the Court in creating “[t]he presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established .... ” Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873.
The nature of a presumption is that it is not sacrosanct on the grounds on which it arose, but can be countered by evidence. See Fed.R.Evid. 301 (“a presumption imposes on the party against whom it is directed the burden of going forward with evidence to rebut or meet the presumption”). A presumption is a procedural expedient whereby a conclusion of law or ultimate fact is deemed established upon the proof of certain evidentiary or historical facts. An opposing party may rebut the presumption by coming forward with evidence sufficient to negate the conclusion or its factual premises. See generally 21 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 5124 (3d ed.1998). The majority’s ruling confuses the grounds on which a presumption arises with the grounds on which it is subject to rebuttal. The role of the prosecution record is to establish whether the presumption arises at all, not whether it has been rebutted.
That the majority’s ruling makes rebuttal impossible is illustrated by the patents in suit. Since Festo’s explanation of its *633amendment to the Carroll claims is now limited to the prosecution record, the presumption can not be rebutted because the prosecution record is silent as to the reason for the amendment. Indeed, since there is no requirement that a patent applicant explain amendments made before an examiner’s rejection on the merits — the situation for both the Carroll and Stoll patents — evidence explaining such amendments is not normally present in the prosecution record.
The Supreme Court was explicit that “The presumption we have described [is] subject to rebuttal_” 520 U.S. at 33, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873. The majority’s denial of rebuttal evidence outside the prosecution record is equally explicit, with the consequence that the subject matter of unexplained amendments can receive “no range of equivalents.” Maj. op. at 568. The error in this implementation is made clear in the Wamer-Jenkinson case itself. In Wamer-Jenkin-son the Court observed that “the record seems not to reveal the reason” for the amendment setting the lower pH limit, that the patentee has the burden of establishing the reason, and that “respondent has not proffered in this Court a reason for the addition of a lower pH limit.” The Court therefore remanded to the Federal Circuit for determination of whether the patentee could establish a reason for this amendment. Under the regime established by the majority opinion, the Court’s remand would be pointless. The Court similarly remanded the Festo case now before us. Our obligation is to implement the remand in accordance with its terms, and to determine whether Festo can rebut the presumption that the claims were changed for a reason related to patentability.
“Reasons Related to Patentability”
In Warner-Jenkinson the Court explained that amendments made for “a substantial reason related to patentability” means amendments made to establish pat-entability in view of substantive rejections. The Court observed that there are “a variety of other reasons why the PTO may request a change in claim language” without producing an estoppel, 520 U.S. at 31, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1872, citing the amicus curiae brief of the United States. The United States had pointed out that amendments “to reflect the scope of what was enabled or to add specificity raise considerations different from those raised by amendments to avoid prior art.” Brief for United States as Amicus Curiae at 22-23, 1996 WL 172221, *22-*23. The Court endorsed this understanding of es-toppel, explaining:
Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons, and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change.
520 U.S. at 32, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1872.
The Court’s emphasis on a “limited set of reasons” is in striking contrast to the unconstrained estoppel established by the majority for any change made in connection with any provision of the Patent Act. In Warner-Jenkinson the Court unequivocally rejected this position, stating that the petitioner “reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel.” 520 U.S. at 30, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1867. The Court stated: “That petitioner’s rule might provide a brighter line for determining whether a patentee is estopped under certain circumstances is not a sufficient reason for adopting such a rule.” Id. at 32 n. 6, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1872 n. 6. The majority now adopts this rejected position.
Supreme Court and Federal Circuit precedent have well recognized that, prosecution history estoppel flows from amendments on substantive grounds of patentability. The principal statutory provisions involved during examination for patentability are 35 U.S.C. § 102 and *634§ 103; parts of § 112 may also give rise to estoppel. However, not every rejection based on the Patent Act is concerned with substantive grounds of patentability, as the Court also recognized. An illustration is the Stoll claims, which were rejected not on prior art but as being in improper multiple dependent form, another provision of § 112; Stoll’s claims amended in response to this ground of rejection are today held barred from access to the doctrine of equivalents.
The majority discards as “unworkable,” maj. op. at 575, the vast body of precedent which holds that determination of the extent of estoppel requires consideration of the reason for the amendment. See, e.g., Bayer Aktiengesellschaft v. Duphar Int’l Research B.V., 738 F.2d 1237, 222 U.S.P.Q. 649 (1984) (cited in Wamer-Jenkinson) (“Whenever the doctrine of file history es-toppel is invoked, a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender.”) Instead, the majority adopts the brighter line that the Court rejected. Thus although I concur with the majority’s answer to Question 1 in that precedent holds that estoppel may arise on substantive grounds of patentability in addition to those of § 102 and § 103, I do not share the majority’s application of this answer to include any amendment responding to a rejection under any provision of the Patent Act.
Federal Circuit Precedent
The majority seeks to buttress its departure from the law of Wamer-Jenkin-son by stating that it is simply resolving “conflicting lines” of Federal Circuit precedent. However, that is neither an accurate description of our precedent, nor an adequate reason to discard it.
Federal Circuit decisions applying the doctrine of equivalents have turned not on “conflicting lines” of precedent, but on the facts of each case. This precedent illustrates the variety of situations that can arise as to the technologic facts of asserted equivalency, as well as the variety of circumstances of estoppel. At one factual pole are cases that illustrate a patentee’s disclaimer, during prosecution, of precisely what the accused infringer is doing. Such cases tend to inspire righteous judicial rhetoric against over-reaching patentees; these opinions voice what the majority terms a “strict” approach to the doctrine of equivalents. At the other factual pole are cases that the majority classifies as the “flexible” approach, the majority’s disapproving term for those decisions where liability based on equivalency was found.
This jurisprudence reflects not two disparate lines of conflicting authority, but rulings of estoppel and findings of equivalency vel non in a continuum of situations, from those that clearly warranted liability to those that clearly did not. It is inappropriate to convert the extremes of this continuum into “conflicting lines,” and then to use this contrived conflict to justify changing the law to eliminate not only both lines but also everything in-between.
The principal case cited for the majority’s “strict line” is Kinzenbaw v. Deere & Co., 741 F.2d 383, 222 U.S.P.Q. 929 (Fed.Cir.1984). In Kinzenbaw the accused device “adopted the very element that [the patentee] had eliminated for the stated purpose of avoiding the examiner’s rejection and obtaining the patent.” Id. at 389, 222 U.S.P.Q. at 933. Holding that the patentee was estopped from asserting equivalency, the Federal Circuit stated that it would not undertake to decide whether Kinzenbaw gave up more than he had to in order to obtain allowance. Kin-zenbaw has not heretofore been viewed as producing an irreconcilable conflict in precedent. As it was contemporaneously explained, Kinzenbaw “highlight[s] that application of prosecution history estoppel to limit the doctrine of equivalents should be performed as a legal matter on a case-by-case basis, guided by equitable and public policy principles underlying the doctrines involved and by the facts of the particular case.” Loctite Corp. v. Ultraseal Ltd., 781 *635F.2d 861, 871 n. 7, 228 U.S.P.Q. 90, 96 n. 7 (Fed.Cir.1985).
The majority flags Hughes Aircraft Co. v. United States, 717 F.2d 1351, 219 U.S.P.Q. 473 (Fed.Cir.1983), as the pole of the disapproved “flexible line.” In Hughes Aircraft this court reiterated the rule that a patentee is estopped to recover through equivalency the scope that was disclaimed for reasons of patentability. Id. at 1362, 219 U.S.P.Q. at 481. The ruling of equivalency on the facts of Hughes Aircraft, an issue of later-developed technology, has repeatedly been sustained. See Hughes Aircraft v. United States, 140 F.3d 1470, 46 U.S.P.Q.2d 1285 (Fed.Cir.1998) (redetermination of equivalency upon the GVR, 520 U.S. 1111, 117 S.Ct. 1240, 137 L.Ed.2d 323 based on Wamer-Jenkinson).
Although the questions presented in precedent were often close, and not every judge was always of identical view, not even the “strict line” attributed to Kinzen-baiu represents the extreme position now adopted. In Wamer-Jenkinson the Court rejected the position that any surrender of subject matter establishes “bright lines beyond which no equivalents may be claimed.” 520 U.S. at 30, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1871. The law of Warner-J'enkinson bars the position now taken.
The “Notice Function” of Claims
The Supreme Court, reviewing its precedent on equivalency since Winans v. Denmead, 56 U.S. (15 How.) 330, 14 L.Ed. 717 (1853), recognized the long-standing tension between equivalency and the “notice function” of patent claims. The Court acted to reinforce the “notice function” by imposing a new combination of criteria for equivalency, comprising (1) the new rebut-table presumption for unexplained amendments, (2) the all-elements rule, and (3) the obligation to examine “the role played by each element in the context of the specific patent claim.” Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1875.
Discussing the rebuttable presumption, the Court stated that “The presumption we have described ... gives proper deference to the role of claims in defining an invention and providing public notice.... ” Id. at 33-34, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873. The Court also explained that the all-elements rule secures the “central functions of the patent claims themselves,” id. at 30, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1871, while prosecution history estoppel, reinforced by the new rebuttable presumption, “further insulates the doctrine from any feared conflict with the Patent Act.” Id. at 34, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1873. The Court also mentioned factors such as known interchangeability and other criteria relevant to the determination of equivalency.
The notice function of claims was thereby enhanced, for there can be no liability for infringement, even by a clear techno-logic equivalent, unless every claimed element of the patented device is appropriated and used, in the same role as in the claim, without encountering estoppel. A device that does not meet all of these legal and factual criteria does not incur liability despite technologic equivalency. However, a device that is unable to omit or substantially change even one claimed element, and that is not released by the prosecution history, has notice of probable liability for infringement.
Thus the Court acted to preserve the purpose of the doctrine of equivalents to prevent “fraud on the patent,” while taking specific steps to reinforce the notice function of patent claims. The majority opinion remains silent on this important action to sharpen application of the doctrine of equivalents while preserving the principle of its availability. Instead, the majority relies on its “experience” as justification for its changes of law, but makes no mention of the Court’s careful balance of controls, or explain why it is inadequate. See maj. op. at 574-75 (“Our decision to reject the flexible bar approach adopted in Hughes I comes after nearly twenty years *636of experience in performing our role as the sole court of appeals for patent matters.”) We should use that experience to refíne the criteria of equivalency, as the Court expected, instead of eliminating it entirely, a ruling that bars remedy to the deserving and undeserving alike.
In the complex of risk-laden concerns and uncertainties involving inventions, entrepreneurship, and competition, the doctrine of equivalents weighs on the side of the patentee, for it provides the possibility of protection against close copies which merely skirt the patent’s claims. In this way it adds weight to the patent system as an innovation incentive. The majority of this court apparently views the existing balance between inventor and imitator as disadvantageous to the nation, for the court now sets as “paramount” the “notice function” to the would-be competitor. However, the optimum balance between innovator and imitator in a technology-dependent economy involves many considerations in addition to the primacy of notice.
II
THE PATENTS IN SUIT
Applying the pre-Warner-Jenkinson law of equivalency, the district court adjudged both the Carroll and Stoll patents to be infringed, the Carroll patent on summary judgment and the Stoll patent by jury verdict. On the prior law, and again on the law of Wamer-Jenkinson, those judgments were twice affirmed on appeal. Today the merits are not reached, simply because the claims of both patents were rewritten in narrower form before they were examined. For the Carroll patent, Festo added an element to the claims before reexamination. For the Stoll patent, Festo rewrote improper multiple dependent claims, dropping the broader claim. In neither the Carroll nor the Stoll patent were the elements at issue amended; however, in both patents estoppel is now held to be complete, barring any assertion of equivalency as to these elements.
The Carroll Patent
Festo requested reexamination of the Carroll patent in light of German Patent No. 1,982,379, which had not been included in the original examination. After the reexamination request was granted but before reexamination on the merits, Festo cancelled original claim 1 and added a new claim which differed from the original claim in several ways including the addition of “a pair of resilient sealing rings.” Festo did not explain these changes; nor was explanation required, for the changes were made before action by the examiner.
The majority holds that the presumption arises that the sealing rings were added to the claim for reasons of patentability, for the prosecution record does not state why this amendment was made. However, the majority limits the rebuttal evidence to the prosecution record that produced the presumption. See maj. op. at 586 (“We therefore hold that a narrowing amendment will give rise to prosecution history estoppel unless the prosecution history of the patent reveals that the amendment was made for a purpose unrelated to patentability concerns.”) Since the prosecution history is silent as to the reason for the amendment, Festo is held unable to rebut the presumption.
Festo points out on this appeal that sealing rings were described in the cited German patent, and thus that this element did not impart a distinction from the prior art. Festo’s argument during reexamination related to other components of the device:
[The cited references] do not disclose the overall structure of the device for moving articles set forth in the claim, and in particular do not disclose 1) a plurality of cylindrically-shaped permanent magnets mounted on a central mounting member and spaced axially apart from each other ... 2) an exterior body including a plurality of annularly shaped permanent magnets spaced *637apart from each other and 3) a pair of cushion members formed of resilient material.... [Emphases in original]
The examiner mentioned several components of the combination in the “Reasons for Allowance,” but not the sealing rings:
Claims 8, 4, 5, 6, and 9 are deemed allowable over the prior art of record, including German Patent No. 1,982,379 because the prior art does not teach or render obvious the claimed combination which includes the plurality of magnets, end members, and cushion members in the claimed relationship.
The sealing rings raise the only issue with respect to infringement under the doctrine of equivalents; all of the other claim elements were conceded to be literally present in the SMC devices.
The sealing rings were not amended during prosecution. No argument by the applicant was directed to the sealing rings, and no issue of patentability concerning the sealing rings was raised by the examiner. Nonetheless, the majority holds that it suffices as a “narrowing amendment” that the claim as a whole was narrowed when the sealing rings were added before examination. Applying the majority’s new rule that any narrowing amendment entirely bars access to equivalency, the factual question of equivalency between the claimed pair of sealing rings and the SMC two-way sealing ring is not reached.2 Thus the majority holds that the addition of the sealing rings to the Carroll claims before examination, without more, immunizes the SMC devices from the charge of infringement under the doctrine of equivalents.
The Stoll Patent
The Stoll patent application was filed in the United States as the English translation of a prior German patent application. In the first action in the United States, the examiner rejected the application under 35 U.S.C. § 112 ¶ 1, stating: “Exact method of operation unclear. Is device a true motor or magnetic clutch?” The examiner also objected to claims 4-12, which apparently were filed in the same form as in the foreign priority application, as being in improper multiple dependent form, citing 35 U.S.C. § 112 ¶ 2 [sic: ¶5?]. The examiner also listed three references as “believed pertinent”; the references were not discussed and no rejection was made on prior art.
In response, Stoll explained the method of operation and amended the specification accordingly. Stoll also rewrote the claims, eliminating the improper multiple dependent form. Stoll cancelled original claim 1 and filed a new independent claim that included the subject matter of original dependent claims 4 and 8. From claim 4 Stoll took “first sealing rings located axially outside said guide rings,” and from claim 8 Stoll took “a cylindrical sleeve made of a magnetizable material and encircles said tube.” Thus in the new claim these elements were more narrowly claimed than in original claim 1, although not more narrowly than in original dependent claims 4 and 8. The record states no reason for these changes.
Stoll also submitted two German patents that had been cited during examination of the corresponding German application, with the following explanation:
Applicant wishes to make of record German Offenlegungsschrift No. 27 37 924 and German Gebrauchsmuster No. 19 82 379. These references were cited in the first Office Action received in the corresponding German application. These references are obviously clearly distinguishable over the subject matter of the claims now present in this application. Accordingly, further comment about the subject matter of these references is believed unnecessary. It is clear that neither of these references discloses the *638use of structure preventing the interference of impurities located inside the tube and on the outside of the tube while the arrangement is moved along the tube.
The majority finds that the above reference to “structure preventing the interference of impurities” relates to the sealing rings; nonetheless, the majority also rules that all access to equivalency is barred because the broadest claim was “narrowed” by amendment, although the scope of the elements as stated in the original dependent claims was not at issue. Disposing of Festo’s argument that the prosecution history shows that the claims were rewritten in response to the rejection for improper multiple dependent form, the majority holds that “Because a claim will not issue unless it satisfies the requirements of section 112, an amendment made to satisfy the statute is an amendment made for a reason related to patentability.” Maj. op. at 589. Thus this amendment is held to bar access to the doctrine of equivalents because the rejection was based on a statutory formal requirement.
The court does not reach the questions of identity of function, way, and result, or the insubstantiality of the change, or interchangeability in the context of the invention. The formulaic framework of the majority opinion thus vitiates the doctrine of equivalents, without respect to the merits of any particular claim.
The Retroactive Effect
It has been routine practice for patent solicitors to initially present broad claims to an invention, in the expectation of honing the claims in interaction with the examiner. As very few patent applications traverse the PTO without amendment or argument,3 few issued patents will be free of the consequences of these changes in the law, for the majority has declined to act on the warnings against derogation of vested rights and expectancies, and has declined to make this decision applicable only prospectively. See Warner-Jenkinson, 520 U.S. at 41-2, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1876 (Ginsburg, J., concurring).
In addition, a profound inequity is now created between those patents that may fortuitously have managed to avoid amendment or argument as to all elements subject to imitation by insubstantial change, and those that have not. The practical significance has not been explored in the majority opinion, and indeed this aspect was not briefed or argued.
Ill
INNOVATION AND COMPETITION POLICY
Although various policy arguments were briefed to the Court in the Wamer-Jen-kinson appeal, the Court declined to enter the policy arena:
The lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.
520 U.S. at 28, 117 S.Ct. 1040, 41 U.S.P.Q.2d at 1871. The majority disregards this admonition and, despite the absence of development of policy issues on this appeal, legislates a new balance between inventor and imitator. The opti*639mum balance is critical to the nation’s economy.
The modern industrial economy is driven by technologic innovation. It has long been understood that technological advance and industrial vigor flow from legal and economic policies that encourage invention and support investment in the products of invention. The extensive scholarship in this area is founded on the classical studies of Joseph A. Schumpeter, Capitalism, Socialism and Democracy, Harper, New York (3d ed.1950) (recognizing the economic impact of patent-based innovation as new industries and new goods displace the old), and has been broadly explored, e.g., Kenneth J. Arrow, Economic Welfare and the Allocation of Resources for Invention (1962) (discussing intellectual property rights in a free enterprise economy); Robert Solow, Technical Change and the Aggregate Production Function, 39 Rev. Econ. & Stat. 312 (1957).
The encouragement of invention and investment in new ideas and their embodiments is a primary function of patent systems, aimed at the national purpose of development of new industries, improved productivity, increased employment, and overall economic growth as well as techno-logic advance. There is burgeoning modern scholarship directed to studies of invention, investment, and patent systems, generally building on the work of William D. Nordhaus, Invention, Growth, and Welfare: A Theoretical Treatment of Technological Change, M.I.T. Press, Cambridge (1969), and other scholars such as Kenneth M. Dam, The Economic Underpinnings of Patent Laio, 23 J. Leg. Studies 247 (1994); David Silverstein, Patents, Science and Innovation: Historical Linkages and Implications for Global Technological Competitiveness, 17 Rutgers Computer & Tech. L. J. 261 (1991); and Friedrich-Karl Beier, The Significance of the Patent System for Technical, Economic and Social Progress, 11 Int’l Rev. Indus. Prop. & Copyright L. 563 (1980). Critical attention has been given to aspects such as the nature of the technology, the rate of technologic change in the particular field, the maturity of the field, the cost of invention and development for various technologies, market risks and competitive structures, the ease and cost of imitation, and the choice between disclosure in patents and maintaining the technology in secrecy. International patenting and trade aspects have been explored, as well as the cost of patenting and the cost of enforcement. E.g., Nancy T. Gallini, Patent Policy and Costly Imitation, 32 RAND J. Econs. 56 (1992) (discussing factors such as licensing policy and technological difficulties); Richard J. Gilbert & David M.G. Newberry, Preemptive Patenting and the Persistence of Monopoly, 72 Am. Econ. Rev. 514, 519, 522 (1982) (industry-specific conditions such as the existence of patentable substitutes and cross-licensing, as well as costs of litigation, affect strategic behavior).
The field of innovation study has evolved to include such complexities as “sequential” innovation, wherein one invention follows from the disclosure of another, e.g., Jerry R. Green and Suzanne Scotchmer, On the Division of Profit in Sequential Innovation, 26 RAND J. Econs. 20 (1995) (pointing out that patent length and breadth play a different role when innovation is sequential); G.M. Grossman and E. Helpman, Quality Ladders in the Theory of Groiuth, 58 Rev. Econ. Stud. 43 (1991) (discussing how investment in sequential innovation drives economic growth).
It is well recognized that all of these aspects have varying weights, and that the circumstances surrounding the development and utilization of intellectual property are extremely diverse. Indeed, commentators complain that a single patent policy and patent law are unsuited to the range of scientific and commercial activity in today’s economy.
Thus scholarship is providing rigor to understanding the role of intellectual property in innovation/competition policy, even as the limitations of economic models *640of invention, risk, and investment are recognized. Scholars writing in this field tend to introduce their analyses with a salute to complexity and an apology for their simplifications. However, within the growing body of scholarship, studies of the relationship between industrial innovation and optimal patent policy weigh against the majority’s policy decision here. A paper entitled Optimal Patent Design and the Diffusion of Innovations, Carmen Ma-tutes, Pierre Regibeau & Katherine Rock-ett, 27 RAND J. Econs. 60, 78 (1996), concludes that “the optimal scope policy implies that inventors of basic innovations obtain protection on applications that they have not yet fully worked out. This would probably require a more lenient review of claims than is the current practice.” Edmund W. Kitch in The Nature and Function of the Patent System, 20 J.L. & Econ. 265 (1977) proposes that optimum patent policy should provide sufficiently broad scope to the inventor who opens a new field, to provide adequate economic incentives while avoiding duplication of effort and discouraging recourse to secrecy. D.G. McFetridge and M. Rafiquzzaman in The Scope and Duration of the Patent Right and the Nature of Research Rivalry, 8 Research in Law & Economics: The Economics of Patents and Copyrights 91, 104 (1986) discuss how the existence of non-infringing substitutes alters the benefit gained by an inventor, necessarily skewing incentives to invest.
It is generally agreed that long-term economic growth requires a policy framework that encourages the creation and commercialization of new technologies, as contrasted with a policy that facilitates appropriation of the creative product, lest the creative product dry up in the face of too-easy appropriation. “Knowledge capital,” secured by intellectual property rights, now rivals the traditional economic components of labor productivity, capital formation, and natural resources, as the foundation of economic growth.
The inventor and the imitator are affected by quite different economic considerations. The innovator takes the risk of commercial success or failure of new things in new markets — the risk of unfulfilled expectations, obsolescence, regulation, technologic failure. The imitator bears none of these risks; he is interested only in the successful products, not in the failures; he is interested only in the profitable products, not the marginal ones; he moves in only after the invention has been made and tested and the market developed, and can operate at lower margins. The patent system provides weight on the side of the innovator, aided by the doctrine of equivalents and its inhibition of close copying, establishing an incentive whose value has been tested by time. However, it is also well recognized that competition is essential to a healthy economy. Achieving the optimum balance of these factors is of vital national importance. A major policy change in the foundational law affecting innovation and competition should not be made without adequate study of its consequences.
Although there is burgeoning literature on technologic intellectual property rights, the doctrine of equivalents has not, of itself, been a major focus of legal and economic scholarship. I suspect this is due to the complexity of the issue, the variety of factual applications, the diversity of technologies, the breadth of interacting influences on patentees’ and competitors’ activities, and the complex nuances of competition at the edge of the products of others. A few authors, however, have critically considered the doctrine of equivalents. For example, Robert P. Merges & Richard R. Nelson, in On the Complex Economics of Claim Scope, 90 Colum. L. Rev. 839 (1990), observe that the doctrine of equivalents tends to diminish incentives for competitors, but point out that the doctrine also encourages competitors to make “leapfrogging” advances instead of simply copying at the edge of the claims. The questions raised by the doctrine of equivalents are not quite the same as *641those of patent “scope.” The issue of “scope” is directed to aspects of literal claim breadth, as discussed by Kitch, supra. The question of equivalency is quite different. Infringement under the doctrine of equivalents is available only against what is indeed the same invention with only insubstantial change, as contrasted with issues of broad claims for broad but undeveloped concepts. Equivalency is a judge-made response to the pernicious literalism of the system of claiming, not an enlargement of the scope of the invention.
My colleagues in the majority make the error of the “simplified model,” which assumes a continuing supply of new products, and ignores the prior steps of invention and commercialization. The majority concludes that the elimination of liability for infringement based on equivalency will be of public benefit: “The public will be free to improve on the patented technology and design around it.... [Cjertainty will stimulate investment in improvements and design-arounds.” Maj. op. at 577. However, the assumption that placing new technology in the public domain is always the optimum path to industrial growth is not supported by experience. Empirical studies have added rigor to the common sense knowledge that reduced profit opportunity affects the supply of capital to launch a new technology, and often the creation of the technology itself. See, e.g., Joshua Lerner, The Importance of Patent Scope: an Empirical Analysis, 25 RAND J. of Econ. 319 (1994) (reviewing 173 venture-backed biotechnology firms and reported that an increase of one standard deviation in average patent scope produced a 21% increase in the firm’s value).
The present patent law has supported a blossoming of technology-based industry in a competitive environment that is conspicuous for its entrepreneurial vigor. The balance among inventor, investor, competitor, and consumer, and the effect of the doctrine of equivalents on that balance, is not explored in the parties’ briefs and had sparse amicus participation, for it was not at issue. Of course no patentee would choose to rely on the doctrine of equivalents to support commercial investment. The public and private interests served by the doctrine of equivalents derive from its deterrence of close imitation, thereby helping to assure to the patentee the benefit of the invention,4 while obliging would-be competitors to advance the technology instead of simply skirting the edge of the claims. Although its influence is not easy to quantify, it is generally accepted that the doctrine contributes to an industrial policy that seeks to support technologic innovation.
CONCLUSION
The policy underlying the doctrine of equivalents has been sustained by the absence of alternative remedy in meritorious cases, when the patentee’s invention has indeed been taken by trivial change from the letter of the claims. By enabling remedy when remedy is warranted, the doctrine adds strength to the system of patents. Today’s technological vitality arose on a patent system that included the doctrine of equivalents. A change in the balance between inventor and imitator requires careful understanding of the consequences; a preference for the neatness of precise “notice” does not justify major tinkering with the overall strength of the patent system, with unknown consequences. This court’s new recipe for risk-free copying of patented inventions presents policy considerations of national import.
The doctrine of equivalents has not been deemed superfluous as an instrument as justice, and not until today has it been *642deemed “unworkable” by this court. The Federal Circuit’s sua sponte change in this law is a change in industrial policy that requires public discussion in advance of, not after, the law has been changed.5 This court’s initiative flows uncomfortably as a ruling that affects myriad vested rights, on a novel legal theory, without briefing or argument.
. We do not require the alleged infringer to demonstrate actual personal reliance on the statements in the prosecution history. See 5 *600Donald S. Chisum, Chisum on Patents, § 18.05[l][a][i], at 18-416.
. These six cases are Warner-Jenkinson, 520 U.S. at 17, 117 S.Ct. at 1040; Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736 (1942); Smith v. Magic City Kennel Club, 282 U.S. 784, 51 S.Ct. 291, 75 L.Ed. 707 (1931); Weber Elec. Co. v. E.H. Freeman Elec. Co., 256 U.S. 668, 41 S.Ct. 600, 65 L.Ed. 1162 (1921); Hubbell v. United States, 179 U.S. 77, 21 S.Ct. 24, 45 L.Ed. 95 (1900); and Shepard v. Carrigan, 116 U.S. 593, 6 S.Ct. 493, 29 L.Ed. 723 (1886).
. The Patent Act of 1836 authorized a paten-tee to surrender the claims of his original patent and to obtain a reissue patent whenever the patent was “inoperative, or invalid, by-reason of a defective or insufficient description or specification, or by reason of the pat-entee claiming in his specification as his own invention, more than he had or shall have a right to claim as new.” Patent Act of 1836, Ch. 357, 5 Stat. 117, at § 13 (July 4, 1836); see also Gage v. Herring, 107 U.S. 640, 644—45, 2 S.Ct. 819, 823, 27 L.Ed. 601 (1883). The Patent Act of 1870, which governs many of the cases discussed below, made no change in this provision, except for the deletion of the words "description or.” Patent Act of 1870, Ch. 230, 16 Stat. 198-217, at § 53 (July 8, 1870); see also Gage, 107 U.S. at 644-45, 2 S.Ct. at 823.
. The Underline name refers to the opinion’s author.
This patent law version of "estoppel” varies from classical estoppel because an accused infringer need not have relied at all on the prior admission.
. While it is trae that footnote 7 was directed to a claim change made relative to avoiding *625the prior art, presumably the same methodology was meant to apply to claims amended for other reasons, since the Court set forth the methodology just after stating in the body of the opinion: "[w]here the reason for the [claim] change was not related to avoiding the prior art, ... [the change] does not necessarily preclude infringement by equivalents of that element.” Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040.
. This conclusion is further buttressed by the fact that in thinking about prosecution history estoppel, the Court in Wamer-Jenkinson had in mind the doctrine as set forth in Bayer Aktiengesellschaft v. Duphar Int’l Research B.V., 738 F.2d 1237, 222 U.S.P.Q. 649 (Fed.Cir.1984). See id. at 30 (citing Bayer as a case that sets forth the "well-established limit on non-literal infringement, known variously as 'prosecution history estoppel' and ‘file wrapper estoppel.' "). In Bayer, our court stated: "whenever the doctrine of file history estoppel is invoked, a close examination must be made as to, not only what was surrendered, but also the reason for such a surrender. The fact that claims were narrowed does not always mean that the doctrine of file history estoppel completely prohibits a paten-tee from recapturing some of what was originally claimed.” Bayer, 738 F.2d at 1238, 222 U.S.P.Q. at 653.
. "The patentee is obliged, by law, to ... particularly 'specify and point' out what he claims as his invention. Fullness [sic], clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfill [sic] the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious [sic] demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress.” Winans, 56 U.S. at 347 (Campbell, J., dissenting).
. "The Court's ruling today sets the stage for more patent ‘fraud’ and 'piracy' against business than could be expected from faithful observance of the congressionally enacted plan lo protect business against judicial expansion of precise patent claims. Hereafter a manufacturer cannot rely on what the language of a patent claims. He must be able, at the peril of heavy infringement damages, to forecast how far a court relatively unversed in a particular technological field will expand the claim's language after considering the testimony of technical experts in that field. To burden business enterprise on the assumption that men possess such a prescience bodes ill for the kind of competitive economy that is our professed goal” Graver Tank, 339 U.S. at 617, 70 S.Ct. 854 (Black, J., dissenting).
. Shoketsu Kinzoku K. K., Ltd. v. Festo Corp., 520 U.S. 1111, 117 S.Ct. 1240, 137 L.Ed.2d 323 (1997). The sequence of events called "GVR” (grant, vacate, and remand) occurs when “intervening developments ... reveal a reasonable probability that the decision below rests on a premise that the lower court would reject if given the opportunity for further consideration.” Lawrence v. Chater, 516 U.S. 163, 167, 116 S.Ct. 604, 133 L.Ed.2d 545 (1996). It is a mandate to the lower courts to apply the intervening developments to the case on appeal, "to ensure the fairness and accuracy of judicial outcomes.” Id.
. In the district court the issue of equivalency of the sealing rings was based on the all-elements rule, a question that is mooted by the majority's ruling that equivalency can not be asserted at all.
. Patent examination practice requires the examiner to cite the closest references found in a search of the prior art. See Manual of Patent Examining Procedure § 706. The applicant then must respond and explain why the invention is patentable over the references, and may amend, add, cancel, and rewrite claims. MPEP § 714.02. Informal inquiry reports that for simple inventions, at most 10-15% of patents are granted without claim amendment, although very rarely without argument. For complex inventions the percentage of unamended applications is vanishingly small.
. The majority exhibits either hubris or humor in explaining that the patentee who is denied access to equivalency is also benefitted because he is spared the cost of enforcing his patent against the equivalent product that has undercut his prices and taken his market. Maj. op. at 577.
. My colleagues' complaint about the frequency of issues of equivalency in litigation must be viewed in context. Less than a hundred patent cases are fully tried each year, and most of the few hundred appeals to the Federal Circuit reach us on summaiy disposition. Infringement cases often raise issues of equivalency, usually offered as an alternative theory to literal infringement. These are very small numbers in light of over 1,700,000 unexpired patents, of which 1,200,000 are maintained and in force. Cases in litigation do not provide courts with a balanced picture of the workings of commerce. Litigants rarely explore national policy, as committed parties battle for high stakes. Such cases do not present an objective exposition of the overriding national interest.