  United States Court of Appeals
      for the Federal Circuit
               __________________________

    SIEMENS MEDICAL SOLUTIONS USA, INC.,
            Plaintiff-Cross Appellant,
                            v.
  SAINT-GOBAIN CERAMICS & PLASTICS, INC.,
             Defendant-Appellant.
               __________________________

                    2010-1145, -1177
               __________________________

    Appeals from the United States District Court for the
District of Delaware in case no. 07-CV-0190, Judge Sue L.
Robinson.

   ON PETITION FOR REHEARING EN BANC
           __________________________

    CARTER G. PHILLIPS, Sidley Austin LLP, of Washing-
ton, DC, filed a petition for rehearing en banc for defen-
dant-appellant. With him on the petition were VIRGINIA
A. SEITZ and JAMES C. OWENS. Of counsel on the petition
was ARTHUR I. NEUSTADT, Oblon Spivak, McClelland,
Maier & Neustadt, L.L.P., of Alexandria, Virginia.


    GREGG F. LOCASCIO, Kirkland & Ellis, LLP, of Wash-
ington, DC, filed a response to the petition for plaintiff-
cross appellant. With him on the response were JOHN C.
SIEMENS MEDICAL   v. SAINT GOBAIN                         2


O’QUINN, WILLIAM H. BURGESS, MICHAEL A. PEARSON, JR.;
and ROBERT G. KRUPKA, of Los Angeles, California.
               __________________________

 Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON,
  GAJARSA, LINN, DYK, PROST, MOORE, O’MALLEY, and
                REYNA, Circuit Judges.
PER CURIAM.
   LOURIE, Circuit Judge, with whom RADER, Chief
Judge, NEWMAN, LINN, MOORE, and O’MALLEY, Circuit
Judges, join, concurs in the denial of the petition for
rehearing en banc.
    RADER, Chief Judge, with whom NEWMAN, LOURIE,
and LINN, Circuit Judges, join, concurs in the denial of the
petition for rehearing en banc.
   NEWMAN, Circuit Judge, with whom RADER, Chief
Judge, and LOURIE, Circuit Judge, join, concurs in the
denial of the petition for rehearing en banc.
    DYK, Circuit Judge, with whom GAJARSA and PROST,
Circuit Judges, join, dissents from the denial of the peti-
tion for rehearing en banc.
                        ORDER
    A petition for rehearing en banc was filed by Defen-
dant-Appellant, and a response thereto was invited by the
court and filed by Plaintiff-Cross Appellant. The petition
for rehearing was referred to the panel that heard the
appeals, and thereafter the petition for rehearing en banc
and response were referred to the circuit judges who are
authorized to request a poll of whether to rehear the
appeals en banc. A poll was requested and failed.
   Upon consideration thereof,
3                         SIEMENS MEDICAL   v. SAINT GOBAIN


    IT IS ORDERED THAT:
   (1) The petition of Defendant-Appellant for panel re-
hearing is denied.
    (2) The petition of Defendant-Appellant for rehearing
en banc is denied.
   (3) The mandate of the court will issue on June 14,
2011.

                                  FOR THE COURT


     June 7, 2011                 /s/ Jan Horbaly
        Date                      Jan Horbaly
                                  Clerk
  United States Court of Appeals
      for the Federal Circuit
                __________________________

    SIEMENS MEDICAL SOLUTIONS USA, INC.,
            Plaintiff-Cross Appellant,
                             v.
  SAINT-GOBAIN CERAMICS & PLASTICS, INC.,
             Defendant-Appellant.
                __________________________

                     2010-1145, -1177
                __________________________

    Appeals from the United States District Court for the
District of Delaware in Case No. 07-CV-0190, Judge Sue
L. Robinson.
   LOURIE, Circuit Judge, with whom RADER, Chief
Judge, NEWMAN, LINN, MOORE, and O’MALLEY, Circuit
Judges, join, concurring in the denial of the petition for
rehearing en banc.
                __________________________

    I concur in the court’s denial of the petition for rehear-
ing en banc. Respectfully, this case is not, as the dissent
states, about whether a patent’s claim scope can encom-
pass under the doctrine of equivalents a new and sepa-
rately patented invention. It is about whether the burden
of proving infringement, when the accused subject matter
is separately patented, should be raised to the higher
clear and convincing standard rather than the well-
established preponderance of the evidence standard.
SIEMENS MEDICAL   v. SAINT GOBAIN                           2


That is the issue argued to this court, and that is the
issue decided by this court. Siemens Med. Solutions USA,
Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d
1269, 1283 (Fed. Cir. 2011).
     The dissent seeks to challenge well-established law,
viz., that a patent can cover, or dominate, separately
patented subject matter. As we have long recognized,
however, each patent grants only a right to exclude:
    A patent is not the grant of a right to make or use
    or sell. It does not, directly or indirectly, imply
    any such right. It grants only the right to exclude
    others. The supposition that a right to make is
    created by the patent grant is obviously inconsis-
    tent with the established distinctions between ge-
    neric and specific patents, and with the well-
    known fact that a very considerable portion of the
    patents granted are in a field covered by a former
    relatively generic or basic patent, are tributary to
    such earlier patent, and cannot be practiced
    unless by license thereunder.
 Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750
F.2d 1569, 1580-81 (Fed. Cir. 1984) (quoting Herman v.
Youngstown Car Mfg. Co., 191 F. 579, 584-85 (6th Cir.
1911)); see also 35 U.S.C. § 154(a)(1) (2006); Sanitary
Refrigerator Co. v. Winters, 280 U.S. 30, 43 (1929).
    In this case, the district court explicitly instructed the
jury in accordance with this basic tenet, Siemens, 637
F.3d at 1276-77, and the jury found by a preponderance of
the evidence that Siemens’ asserted patent covering PET
scanners containing LSO crystals was infringed under the
doctrine of equivalents by PET scanners containing Saint-
Gobain’s 10% Y LYSO crystals. Significantly, the district
court’s instructions expressly permitted the jury to con-
sider in its infringement analysis the fact that Saint-
3                          SIEMENS MEDICAL   v. SAINT GOBAIN


Gobain obtained a license to a separate, later-issued
patent covering, inter alia, 10% Y LYSO. Id. The jury
was aware of the later-issued patent, id., as well as its
presumption of validity, id. at 1284.
    Thus, under the proper burden of proof, and in view of
the separate patent licensed by Saint-Gobain, the jury
found that Siemens’ patent, in effect a dominant patent,
was infringed by the accused products. Contrary to the
dissent’s assertion that our decision “will deter innovation
and hamper legitimate competition,” this case exemplifies
the patent system working as it should to enforce a pat-
entee’s right to exclude—the only right embodied in the
grant of a patent.
    Saint-Gobain sensibly acquiesced in the fundamental
principle that a patent does not grant a right to practice
free from infringement liability. Instead, this case is
about Saint-Gobain’s disagreement with a jury instruc-
tion that infringement under the doctrine of equivalents
may be proved by a preponderance of the evidence when
the accused product is covered by a later patent. Id. at
1278. Whatever the merits of the significantly broader
issue that the dissent may wish to confront, this case does
not present that issue.
    The court was therefore correct in declining to take
this case en banc.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

    SIEMENS MEDICAL SOLUTIONS USA, INC.,
            Plaintiff-Cross Appellant,
                             v.
  SAINT-GOBAIN CERAMICS & PLASTICS, INC.
             Defendant-Appellant.
               __________________________

                    2010-1145, -1177
               __________________________

    Appeals from the United States District Court for the
District of Delaware in Case No. 07-CV-0190, Judge Sue
L. Robinson.
    RADER, Chief Judge, with whom NEWMAN, LOURIE,
and LINN, Circuit Judges, join, concurring in the denial of
the petition for rehearing en banc.
               __________________________

    The jury properly reached, and the district judge
properly upheld, the doctrine of equivalents verdict in this
case. A major, if not the primary, purpose of the doctrine
of equivalents is to protect inventions from infringement
by after-arising technology.
    At its heart, the patent system incentivizes improve-
ments to patented technology. Indeed the Patent Act
itself provides patent protection to inventions and discov-
eries, then specifically extends that protection to “im-
provement[s] thereof.” 35 U.S.C. § 101. Inventing an
SIEMENS MEDICAL   v. SAINT GOBAIN                        2


improvement to patented inventions, however, does not
entitle such an inventor to infringe the underlying pat-
ented technology. The doctrine of equivalents ensures
that both the basic inventor and the inventive improver
obtain their deserved protection.
    Without the doctrine of equivalents, improving tech-
nology could deprive basic inventors of their rights under
the patent system. This court examined those principles
in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd.:
   A primary justification for the doctrine of equiva-
   lents 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 ad-
   vance in technology. A claim using the terms “an-
   ode” 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 pat-
   ented technology using the out-dated terms “cath-
   ode” and “anode”. Fortunately, the doctrine of
   equivalents accommodates that unforeseeable di-
   lemma 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 doc-
   trine's role in accommodating after-arising tech-
   nology.


     234 F.3d 558, 619 (Fed. Cir. 2000) (en banc) (Rader,
J., concurring).
3                          SIEMENS MEDICAL   v. SAINT GOBAIN


    Of course, if an equivalent was foreseeable as avail-
able technology at the time of filing, the applicant has an
obligation to claim that technology. If the applicant
discloses, but does not claim, foreseeable technology, that
subject matter enters the public domain. Johnson &
Johnston Assocs. Inc. v. R.E. Serv. Co., Inc., 285 F.3d 1046
(Fed. Cir. 2002) (en banc) (per curiam). “[A]n equivalent
is foreseeable if the equivalent was generally known to
those skilled in the art at the time of amendment as
available in the field of the invention as defined by the
pre-amendment claim scope.” Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., Ltd., 493 F.3d 1368, 1380
(Fed. Cir. 2007); Sage Prods. Inc. v. Devon Indus., Inc.,
126 F.3d 1420, 1424 (Fed. Cir. 1997); Johnson, 285 F.3d
at 1056-59. In other words, “[t]he applicant is charged
with surrender of foreseeable equivalents known before
the amendment, not equivalents known after the
amendment.” Festo, 493 F.3d at 1380 (emphasis added).
Thus, the doctrine of equivalents allows patent owners to
cover after-arising technology.
    In sum, this court in Siemens Med. Solutions USA,
Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d
1269 (Fed. Cir. 2011), correctly applied the doctrine of
equivalents to after-arising technology and correctly
maintained the proper evidentiary burden for the in-
fringement inquiry.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

    SIEMENS MEDICAL SOLUTIONS USA, INC.,
            Plaintiff-Cross Appellant,
                            v.
  SAINT-GOBAIN CERAMICS & PLASTICS, INC.,
             Defendant-Appellant.
               __________________________

                    2010-1145, -1177
               __________________________

    Appeals from the United States District Court for the
District of Delaware in Case No. 07-CV-0190, Judge Sue
L. Robinson.
   NEWMAN, Circuit Judge, with whom RADER, Chief
Judge, and LOURIE, Circuit Judges, join, concurring in
denial of the petition for rehearing en banc.
               __________________________

    I join Chief Judge Rader in his reminder, lest we for-
get, of the incentive purposes of the patent grant; and I
join Judge Lourie in pointing out that, contrary to the
dissenters’ theory, “dominating” patents can dominate
infringing equivalents. I write further in response to the
dissenters’ argument that this court should discard
United States precedent and readjust the balance be-
tween the inventor and copier. Such a shift, in the hope of
reducing the price of existing products through enhanced
competition, diminishes the economic incentive to create
SIEMENS MEDICAL   v. SAINT GOBAIN                         2


new products. This realignment of the economics of
innovation should not be done casually.
     The Supreme Court has observed that “the doctrine of
equivalents renders the scope of patents less certain,” and
that “this uncertainty [is] the price of ensuring the appro-
priate incentives for innovation.” Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 732 (2002).
It is evident that:
   A national economic policy that weighs on the side
   of fostering development and investment in new
   technology will have a different approach to the
   law of equivalency than an economic policy aimed
   at facilitating competition by minor change in ex-
   isting products. Any tightening or loosening of ac-
   cess to the doctrine of equivalents shifts the
   balance between inventor and copier.


Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344
F.3d 1359, 1379 (Fed. Cir. 2003) (en banc) (Newman, J.,
concurring in part, dissenting in part).
    The dissenters’ position is that if any modification or
substitution is made in any part of a patented product or
process, and that modification or substitution is sepa-
rately patented, this frees the entire product or process
from the reach of the doctrine of equivalents, whatever
the evidence of equivalency. According to the dissenters,
it is irrelevant whether the substitution performs sub-
stantially the same function in substantially the same
way to achieve the same result.
     The Siemens patent is for positron emission tomogra-
phy scanners that use cerium-doped lutetium oxyortho-
silicate scintillator crystals. The product charged with
infringement replaces 10% of the lutetium with yttrium,
3                          SIEMENS MEDICAL   v. SAINT GOBAIN


an element acknowledged to have similar properties.
After an eight-day trial, the jury found that the cerium-
doped oxyorthosilicate crystals with 90% lutetium and
10% yttrium were equivalent to the cerium-doped oxyor-
thosilicate crystals with 100% lutetium, on the jury
charge that:
    One way to decide whether any difference be-
    tween the 10% Y LYSO and LSO crystals are not
    substantial is to consider whether, as of the time
    of the alleged infringement, the 10% Y LYSO crys-
    tal performed substantially the same function, in
    substantially the same way, to achieve substan-
    tially the same result as the LSO crystal in the
    asserted claim.


J.A. 450. It is not disputed that there is substantial
evidence to support the jury’s finding of equivalency.
Instead, the dissenters propose that no infringement can
be found as a matter of law, because the crystals with
10% yttrium were the subject of a separate patent.
     The dissenters propose that the separate patenting of
an equivalent automatically liberates the subject matter
from infringement, whatever the facts of the substitution.
The consequences for the innovation incentive are not
addressed. The patent law seeks “a careful balance
between the need to promote innovation and the recogni-
tion that imitation and refinement through imitation are
both necessary to invention itself and the very lifeblood of
a competitive economy.” Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 146 (1989). The doctrine
of equivalents is part of that balance, and any change in
its application is a matter of national economic policy.
SIEMENS MEDICAL   v. SAINT GOBAIN                           4


    Precedent recognizes that an equivalent substitution
may or may not be an obvious variant. The court in this
case observed that the principles of obviousness and of
equivalency “require different analytical frameworks.”
Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ce-
ramics & Plastics, Inc., 637 F.3d 1269, 1282 (Fed. Cir.
2011). In Warner-Jenkinson Co. Inc. v. Hilton-Davis
Chemical Co., the Supreme Court explained that “Equiva-
lence, in patent law, is not the prisoner of a formula and
is not an absolute to be considered in a vacuum.” 520
U.S. 17, 24-25 (1997) (quoting Graver Tank & Mfg. Co. v.
Linde Air Products Co., 339 U.S. 605, 609 (1950)). In
Sanitary Refrigerator Co. v. Winters, 280 U.S. 30 (1929)
the Court held that infringement by an equivalent was
not precluded by the presence of a separate patent on the
equivalent. The fact of equivalency is found on the evi-
dence in the particular case, for “it is well established that
separate patentability does not avoid equivalency as a
matter of law.” Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d
1318, 1324 (Fed. Cir. 2000); see also Atlas Powder Co. v.
E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1580 (Fed.
Cir. 1984) (“Equivalence does not require that the claimed
invention and accused product have identical results; the
results can be substantially the same and the accused
product can be an improvement.”).
    The dissenters’ position is not the law. Nor has such
a change of law been proposed in the present “patent
reform” era. “The strength of entrepreneurship in the
U.S. continues to rest in the ability to maintain a culture
and infrastructure that is best suited to its development.”
Sang M. Lee & Suzanne J. Peterson, Culture, Entrepre-
neurial Orientation, and Global Competitiveness, 35 J.
World Bus. 401, 411 (2000). A policy change that shifts
the balance between the copier and the originator is a
matter of economic consequence.
  United States Court of Appeals
      for the Federal Circuit
               __________________________

    SIEMENS MEDICAL SOLUTIONS USA, INC.,
            Plaintiff-Cross Appellant,
                             v.
  SAINT-GOBAIN CERAMICS & PLASTICS, INC.,
             Defendant-Appellant.
               __________________________

                    2010-1145, -1177
               __________________________

    Appeals from the United States District Court for the
District of Delaware in case no. 07-CV-0190, Judge Sue L.
Robinson.

    DYK, Circuit Judge, with whom GAJARSA and PROST,
Circuit Judges, join, dissenting from the denial of the
petition for rehearing en banc.
                __________________________

    I respectfully dissent from the court’s denial of rehear-
ing en banc. As pointed out in Judge Prost’s panel dis-
sent, this case presents an important question: whether,
under the doctrine of equivalents, a patent claim’s scope
can encompass a new and separately patented (or pat-
entable) invention.
                              I
   Siemens Medical Solutions USA, Inc. (“Siemens”)
owns U.S. Patent No. 4,958,080 (“’080 patent”), which
SIEMENS MEDICAL   v. SAINT GOBAIN                        2


claims positron emission tomography (“PET”) scanners
comprising cerium-doped lutetium oxyorthosilicate
(“LSO”) scintillator crystals. See Siemens Med. Solutions
USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637
F.3d 1269, 1275 (Fed. Cir. 2011). Siemens brought suit
against Saint-Gobain Ceramics & Plastics, Inc. (“Saint-
Gobain”) for patent infringement, claiming induced and
contributory infringement based on Saint-Gobain’s sale of
scintillator crystals to its customers who use the crystals
in PET scanners. Id. at 1276. The question was whether
the customers’ PET scanners directly infringed the ’080
patent. The customers’ PET scanners did not fall within
the literal terms of the ’080 patent because Saint-Gobain’s
crystals were composed of cerium-doped lutetium-yttrium
orthosilicate (“LYSO”), which differs chemically from the
LSO crystals in the ’080 patent. Id. Siemens asserted
infringement under the doctrine of equivalents, alleging
that the 10% Y LYSO crystals in the accused product
were equivalent to the ’080 patent’s LSO crystals. Both
the alleged equivalent crystals and a PET scanner con-
taining those crystals, however, were separately claimed
in U.S. Patent No. 6,624,420 (“’420 patent”), a subsequent
patent licensed to Saint-Gobain. See ’420 patent, col.7
ll.39–43, col.7 ll.47–col.8 ll.2.
    Saint-Gobain requested jury instructions aimed at
preventing Siemens from capturing, under the doctrine of
equivalents, the new invention covered by the ’420 patent.
Siemens, 637 F.3d at 1278, 1283. The question was
whether Siemens was required to establish that the
alleged equivalent crystals and PET scanners were
merely obvious variants of the ’080 patent’s crystal and
PET scanner. The requested jury instructions were
refused, and the jury found infringement of the ’080
patent under the doctrine of equivalents. A divided panel
of this court affirmed. Id. at 1283–84. The panel major-
3                          SIEMENS MEDICAL   v. SAINT GOBAIN


ity explicitly rejected the premise that equivalents must
be confined to obvious alternatives. While the majority
recognized that finding an identity between insubstantial-
ity and nonobviousness is “not illogical,” id. at 1279, it
ultimately concluded that, “with regard to Saint-Gobain’s
contention that equivalence is tantamount to obviousness,
we disagree,” id. at 1281.
                             II
    The theory of the doctrine of equivalents is that an in-
ventor should receive protection for the full scope of his
invention, even if the claim language does not literally
cover it. The doctrine of equivalents is not designed to
enable the patent holder to secure the rights to a new
invention that the inventor did not create. In other
words, the doctrine of equivalents allows the patent
holder to secure only the rights to products or processes
that reflect minor differences from the patent’s claims. To
prove that an element of an accused product is an equiva-
lent for the purposes of infringement, the patentee must
prove that the feature is insubstantially different. See
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 39–40 (1997); Graver Tank & Mfg. Co. v. Linde
Air Prods. Co., 339 U.S. 605, 610 (1950). In my view, a
product cannot be insubstantially different if it is nonob-
vious and separately patentable.
     As this court stated in Festo Corp. v. Shoketsu Kin-
zoku Kogyo Kabushiki Co., 493 F.3d 1368 (Fed. Cir. 2007),
“[t]he theory of the doctrine of equivalents is that an
applicant through the doctrine of equivalents should only
be able to protect the scope of his invention, not to expand
the protectable scope of the claimed invention to cover a
new and unclaimed invention.” Id. at 1379 (internal
citation omitted). A similar view was expressed by Judge
Nies in Roton, who noted that “[a] substitution in a pat-
SIEMENS MEDICAL   v. SAINT GOBAIN                         4


ented invention cannot be both nonobvious and insub-
stantial.” Roton Barrier, Inc. v. Stanley Works, 79 F.3d
1112, 1128 (Fed. Cir. 1996) (Nies, J., additional views).
Though we did “not directly decide[ ]” in Festo “whether a
device—novel and separately patentable because of the
incorporation of an equivalent feature—may be captured
by the doctrine of equivalents,” 493 F.3d at 1379, I think
the answer is clear. In my view, just as the doctrine of
equivalents cannot extend a patent’s scope to cover prior
art, see Wilson Sporting Goods Co. v. David Geoffrey &
Assocs., 904 F.2d 677, 684 (Fed. Cir. 1990), it should not
permit patents to be extended to cover new and nonobvi-
ous inventions. 1
    Moreover, where the purported equivalent is embod-
ied in a subsequent patent, the finder of fact should afford
a presumption of validity to the subsequent patent.
Contrary to the panel majority’s suggestion, the Supreme
Court did not hold to the contrary in Sanitary Refrigera-
tor Co. v. Winters, 280 U.S. 30 (1929). There, the Court
found a patent infringed under the doctrine of equivalents

   1    In his opinion concurring in the denial of the peti-
tion for rehearing en banc, Chief Judge Rader urges that
the doctrine of equivalents must include after-arising
technology. Op. at 1 (Rader, C.J., concurring in denial of
the petition for rehearing en banc). Our decisions have
recognized that the doctrine of equivalents may some-
times capture after-arising technology where the original
claims could have captured that technology by using more
general claim language. For example, if a claim were to
use the narrow term “clip” to describe an incidental aspect
of the invention, the claim might be extended under the
doctrine of equivalents to include all fasteners, including
those subsequently developed. But this is a far cry from
saying that a claim directed to a particular type of clip—
i.e., where the invention in whole or in part is the clip
itself—should cover after-arising and separately pat-
entable fastening means.
5                          SIEMENS MEDICAL   v. SAINT GOBAIN


even though the accused device was claimed in a subse-
quent patent. Id. at 43; see Siemens, 637 F.3d at 1280.
But the Court found that the equivalent was “merely a
colorable departure from the [claimed] structure” and was
a “close copy which [sought] to use the substance of the
invention . . . [to] perform precisely the same offices with
no change in principle.” Sanitary Refrigerator, 280 U.S.
at 41–42. The Court’s only reference to the subsequent
patent was a single sentence stating: “Nor is the in-
fringement avoided, under the controlling weight of the
undisputed facts, by any presumptive validity that may
attach to the [subsequent] patent by reason of its issuance
after the [asserted] patent.” Id. at 43 (emphasis added).
Evidently, the Court found that the “controlling weight of
the undisputed facts” overcame the subsequent patent’s
presumption of validity, not that the presumption of
validity was irrelevant.
    In short, a purported equivalent cannot be both in-
substantially different and nonobvious, and in no event
should the doctrine of equivalents permit a patent to
capture another’s subsequent invention that is novel and
nonobvious. 2 The majority’s contrary approach will deter
innovation and hamper legitimate competition. 3

    2   The panel majority agrees that, where an “alleged
equivalent is claimed in a separate patent,” that fact may
be “weighed by the fact-finder” when conducting the
doctrine of equivalents inquiry. Siemens, 637 F.3d at
1280. But this approach still does not adequately prevent
the doctrine of equivalents from being used to improperly
extend patent claims to capture subsequent inventions
that are novel and nonobvious.
    3   In his opinion concurring in the denial of the peti-
tion for rehearing en banc, Judge Lourie argues that the
’080 patent was “in effect a dominant patent” and that “a
patent does not grant a right to practice free from in-
fringement liability.” Op. at 2 (Lourie, J., concurring in
SIEMENS MEDICAL   v. SAINT GOBAIN                       6


   For the foregoing reasons, I respectfully dissent.




denial of the petition for rehearing en banc). Judge
Lourie is correct that a “dominant patent” which includes
an open-ended transition term such as “comprising” can
prevent the practice of subsequent inventions that em-
body all of the dominant patent’s elements plus addi-
tional elements. This case, however, does not involve a
dominant patent. Here, the ’420 patent’s point of novelty
over the ’080 patent is not that it claims an additional
element, but rather that it claims a substitute element
(LYSO) that is different in kind from an element claimed
in the ’080 patent (LSO). The doctrine of equivalents
should not permit a patent to cover subsequent inventions
which have replaced one or more of the patent’s claimed
features with nonobvious substitute elements, thereby
creating a new invention not covered by the original
patent’s claims.
