1. “For the purposes of determining whether an amendment to a claim creates prosecution history estoppel, is ‘a substantial reason related to patentability,’ Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), limited to those amendments made to overcome prior art under § 102 and § 103, or does ‘patentability’ mean any reason affecting the issuance of a patent?” 2. “Under Warner-Jenkinson, should a ‘voluntary’ claim amendment–one not required by the examiner or made in response to a rejection by an examiner for a stated reason–create prosecution history estoppel?” 3. “If a claim amendment creates prosecution history estoppel, under Warner-Jenkinson what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?” 4. “When ‘no explanation [for a claim amendment] is established,’ Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040, thus invoking the presumption of prosecution history estoppel under Warner-Jenkinson, what range of equivalents, if any, is available under the doctrine of equivalents for the claim element so amended?” 5. “Would a judgment of infringement in this case violate Warner-Jenkinson’s requirement that the application of the doctrine of equivalents ‘is not allowed such broad play as to eliminate [an] element in its entirety,’ 520 U.S. at 29, 117 S.Ct. 1040. In other words, would such a judgment of infringement, post Warner-Jenkinson, violate the ‘all elements’ rule?”
1. “In response to En Banc Question 1, we hold that ‘a substantial reason related to patentability’ is not limited to overcoming prior art, but includes other reasons related to the statutory requirements for a patent. Therefore, 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.” 2. “In response to En Banc Question 2, we hold that ‘voluntary’ claim amendments are treated the same as other claim amendments; therefore, any voluntary amendment that narrows the scope of a claim for a reason related to the statutory requirements for a patent will give rise to prosecution history estoppel with respect to the amended claim element.” 3. “In response to En Banc Question 3, we hold that when a claim amendment creates prosecution history estoppel, no range of equivalents is available for the amended claim element.” 4. “In response to En Banc Question 4, we hold that ‘unexplained’ amendments are not entitled to any range of equivalents.” 5. “We do not reach En Banc Question 5, for reasons which will become clear in our discussion of the specific case before us.”
