172 F.3d 817

SMITH, Senior Circuit Judge,
dissenting in part.
I agree with the majority’s analysis of the district court’s claim construction and I agree that the district court properly granted summary judgment that Analog’s device did not literally infringe the claims of either the Marcillat or Boura patents. I also agree with the majority that Sextant is estopped by the prosecution history of the Marcillat patent from asserting that Analog’s device infringes the claims of that patent under the doctrine of equivalents. I dissent, however, from the majority’s holding that the Wamer-Jenkinson presumption estops Sextant from relying on the doctrine of equivalents with respect to the Boura patent.
The Majority Opinion
The majority affirms the district court’s summary judgment that the Boura patent is not infringed under the doctrine of equivalents based on the following reasoning. (1) Boura did not disclose the reason for adding the “metallization” limitation and therefore, under Wamer-Jenkinson, we must presume that the limitation was added for reasons related to patentability. (2) Sextant has not rebutted this presumption. (3) Therefore, the Wamer-Jenkin-son presumption applies and the application of the doctrine of equivalents is barred, so no equivalents of “metalliza-tions” are covered by the Boura patent’s claims.
I disagree that the Wamer-Jenkinson presumption applies here. The Boura prosecution history clearly shows the reason the “metallization” limitation was added: Boura distinguished his invention from the Deval prior art patent by requiring that the metallizations be on the edge, not the side. In his response to the first •Office action, Boura replaced original, rejected claim 1 with new claim 10 containing the “metallization” limitation. Boura distinguished the newly claimed invention from that of the Deval reference as follows: “In contrast [ ] with the Applicant’s sensor, in this cited patent, the capacity electrodes of the test body are formed by a thin layer of metal which covers the two sides of this test body and does not consist in metallizations formed on edge portions of this body. ... This is quite different from the Applicant’s sensor in which these capacity electrodes are formed on edge portions of the flat fixed part” (emphasis added).
The quoted passage makes it clear that Boura added the “metallization” limitation in order to contrast his invention with, and distinguish it from, that disclosed by De-val, not by requiring metallizations per se but by requiring that the metallizations be on the edge of the test body and not on the side. Therefore, the record shows that the “metallization” limitation was added for reasons related to patentability and the Wamer-Jenkinson presumption should not apply.
The majority acknowledges that Boura added the “metallization-on-the-edge” limitation in response to a rejection over De-val, but splits the limitation into two parts: “metallization” and “on-the-edge.” Since Deval discloses capacitors formed from metallizations, the majority reasons, that part of the limitation could not have been added in order to distinguish the invention from the prior art. Since the record does not disclose any other reason for adding the “metallization” limitation, the majority applies the Wamer-Jenkinson presumption, finds it unrebutted, and bars application of the doctrine of equivalents.
Our cases applying the Wamer-Jenkin-son presumption do not support such a delicate parsing of claim limitations. For example, in the recent case of Bai v. L & L Wings, Inc., 160 F.3d 1350 (Fed.Cir. 1998), we held that the Wamer-Jenkinson presumption did not apply. In Bai, the applicant claimed a target game including a fabric-covered, dish-shaped glove. Original claims 1-3 were rejected over a combination of four prior art patents, including one (Hartel) that disclosed a dish-shaped structure. In response, Bai amended claim 1 to include all the limitations of original claims 1-3, along with two additional limitations: that the glove be “hemispherical” and that it include a “strap mounted on the rear side.” Id. at 1352 and n. 1. The amended claim was allowed.
The district court concluded that Bai had added the “hemispherical” limitation in response to the obviousness rejection, despite Bai’s argument that the limitation was added merely to clarify the claimed structure and not to distinguish over the prior art. Id. at 1353, 1354. On appeal, we agreed that the amendment “was clearly an attempt by Bai to differentiate his invention over the Hartel patent.” Id. at 1355.
We reached this conclusion despite the fact that Bai had added the “strap” limitation at the same time as the “hemispherical” limitation. The Bai court never considered whether the “hemispherical” limitation was necessary to distinguish the prior art in view of the simultaneous “strap” limitation, and in fact rejected Bai’s argument that “the amendment could not have been made to overcome prior art because it was not necessary to overcome the prior art rejection.” Id. at 1356. The Bai court held that Bai was estopped from raising the issue of the necessity of the “hemispherical” limitation. “Whether or not the ‘hemispherical’ limitation was superfluous, the prosecution record clearly reveals that Bai made this amendment to overcome prior art.” Id., citing American Permahedge v. Barcana, 105 F.3d 1441, 1446 (“[C]lear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance, may create an estop-pel.”).
The majority in this case, by contrast, reasons that because the “metallization” limitation was disclosed in the prior art, it could not have been necessary to distinguish Boura’s invention and therefore was not added for a reason related to patenta-bility. The Bai court rejected the very logic relied on by the majority in this case. Panel decisions are binding on future cases, unless overturned by the court en banc. See UMC Elees. Co. v. United States, 816 F.2d 647, 652 n. 6 (Fed.Cir.1987) (“A panel of this court is bound by prior precedential decisions unless and until overturned en banc.”). The majority’s approach today is foreclosed by Bai.
As a colleague so eloquently stated, “[w]e require practitioners who appear before this court to apply rigorous logic and consistency in their advocacy; we should require no less of ourselves whenever we are providing directions to the bar.” Litton Systems, Inc. v. Honeywell, Inc., 145 F.3d 1472, 1478 (Fed.Cir.1998) (Gajarsa, J., dissenting from denial of rehearing en banc). The inconsistency engendered by the majority’s approach in this case does a disservice to the development of our jurisprudence.
In addition, I am uneasy with application of the Wamer-Jenkinson presumption for the first time on appeal, because I do not believe that Sextant has had an adequate opportunity to rebut the presumption. This court should not lightly conclude that the record presents no reason for a claim amendment, long after the parties have exhausted their opportunities to present evidence and arguments. This is especially so when that conclusion requires the court to limit patent claims to their literal terms. Here, the district court concluded that the record did in fact establish the reason for the amendment in the Boura patent — “to secure quick allowance of the Boura application and to avoid the objections raised during Marcillat’s prosecution of his patent.” Thus, the court never applied the Wamer-Jenkin-son presumption to the Boura patent’s claims and never presented Sextant with an opportunity to rebut it. To apply the presumption first in this court, with the effect of completely barring the doctrine of equivalents, is unfair to litigants and adds to the unpredictability of patent litigation. From this point on, litigants will have to worry about the Wamer-Jenkinson presumption being applied for the first time on appeal, and their claims being limited to their literal terms, because this court disagrees with the trial court on the reason a claim was amended. This development cannot be welcomed by anyone.
Regardless of the propriety of applying the Wamer-Jenkinson presumption for the first time on appeal, the presumption should not even apply in this case, since the Boura prosecution history shows that the “metallization (on the edge, not the side)” limitation was added to distinguish the claimed accelerometer from the Deval reference. Since the presumption does not apply, there was no burden on Sextant to rebut it and no bar to application of the doctrine of equivalents.
The District Court’s Opinion
I also disagree with the district court’s treatment of the Boura patent. The district court held that the Marcillat patent’s prosecution history applied to the Boura patent’s claims, even though the Marcillat and Boura applications were not related by continuation or division and shared no common inventors, because the Boura claims were amended to correspond to the language, of the Marcillat claims after the Marcillat claims were indicated allowable. The court found that the timing of the amendment and the similarity of the claim language indicated that Boura added the terms “to secure quick allowance of the Boura application and to avoid the objections raised during Marcillat’s prosecution of his patent.” The court concluded that the Marcillat patent’s prosecution history created an estoppel with respect to the Boura patent’s claims.
We have recently confirmed that “[a]s a basic proposition, the standard for determining whether subject matter has been relinquished is whether one of ordinary skill in the art would objectively conclude from the prosecution history that an applicant surrendered it.” Litton Systems, Inc. v. Honeywell, Inc., 140 F.3d 1449, 1462 (Fed.Cir.1998) (citing Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co., 66 F.3d 285, 291 (Fed.Cir.1995)). See also Desper Products, Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1338 (Fed.Cir.1998) (“In determining the scope of what, if any, subject matter has been surrendered, the standard is an objective one: what would a reasonable competitor reading the prosecution history conclude has been surrendered.”); Wang Labs., Inc. v. Mitsubishi Elecs. America, Inc., 103 F.3d 1571, 1578 (Fed.Cir.1997) (“We examine the statements and actions of the patentee before the PTO during prosecution and ask what a competitor reasonably may conclude the patentee surrendered to gain issuance of the patent.” (citation omitted)).
We have found a basis for prosecution history estoppel in statements made by patent applicants in a variety of contexts during prosecution. See, e.g., Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1579 (Fed.Cir.1993) and cases cited therein. But we have never based a finding of prosecution history estoppel on a statement made by a different applicant during prosecution of an unrelated application, nor have we ever hinted that competitors should examine the file histories of applications other than the one in suit in order to determine the scope of equivalents that may be accorded the patentee. The district court’s importation of the Marcillat patent’s prosecution history into the Boura patent was erroneous and should be reversed.
Conclusion
The district court’s holding that the prosecution history of the Marcillat patent estops Sextant from asserting the doctrine of equivalents in the Boura patent is contrary to our precedent and should be reversed. In addition, the majority’s holding that the “metallization” part of Boura’s “metallization-on-the-edge” limitation is subject to the Wamer-Jenkinson presumption is contrary to our precedent and to the facts of this case. I would reverse the district court’s holding with respect to the Boura patent and remand for further proceedings to determine whether Analog’s device infringes the claims of the Boura patent under the doctrine of equivalents, as those equivalents are limited by the prosecution history of the Boura patent and our controlling precedents. I therefore dissent from that part of the panel’s disposition of this case.
. The record does-not make it clear precisely what distinguishes a "side” of the test body from an "edge.” Perhaps an "edge” is perpendicular to the plane of the flat accelerometer wafer while a "side” is parallel to that plane. Regardless, the record is clear that the limitation was added in order to distinguish the Deval reference.
. The majority's approach is also inconsistent with Insituform Techs., Inc. v. Cat Contracting, Inc., 161 F.3d 688 (Fed.Cir.1998) and Hughes Aircraft Co. v. United States, 140 F.3d 1470 (Fed.Cir.1998).
. The majority states that a remand, although necessary in some cases, is not called for here because Sextant has had a chance to explain the reason for the "metallization” limitation. However, if this record is sufficient for us to apply the Wamer-Jenkinson presumption for the first time on appeal, it is hard to envision a case in which it would not be sufficient. In order for this court to consider the doctrine of equivalents and prosecution history estoppel, the trial court must decide those issues. See Singleton v. Wulff, 428 U.S. 106, 120, 96 S.Ct. 2868, 49 L.Ed.2d 826 (1976). In order for the trial court to decide the issues of doctrine of equivalents and prosecution history estop-pel, it must consider the reasons that the claim limitations were added, see Warner-Jenkinson, 520 U.S. at 33, 117 S.Ct. 1040, and therefore must give the parties an opportunity to submit evidence and arguments explaining the reasons for the claim limitations. Thus, in every case in which this court applies the Warner-Jenkinson presumption, the patentee will have had at least the same opportunity that Sextant has had in this case to "rebut” the presumption. Future litigants should not be fooled by the majority’s implication that they will be treated differently than Sextant is today.

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