As a more general matter, moreover, we cannot accept Promega’s suggestion that the Court adopt a different analytical framework entirely—one that accounts for both the quantitative and qualitative aspects of the components. Promega reads §271(f)(1) to mean that the answer to whether a given portion of the components is “substantial” depends not only on the number of components involved but also on their qualitative importance to the invention overall. At first blush, there is some appeal to the idea that, in close cases, a subjective analysis of the qualitative importance of a component may help determine whether it is a “substantial portion” of the components of a patent. But, for the reasons discussed above, the statute’s structure provides little support for a qualitative interpretation of the term.
Nor would considering the qualitative importance of a component necessarily help resolve close cases. To the contrary, it might just as easily complicate the factfinder’s review. Surely a great many components of an invention (if not every component) are important. Few inventions, including the one at issue here, would function at all without any one of their components. Indeed, Promega has not identified any component covered by the Tautz patent that would not satisfy Promega’s “importance” litmus test. How are courts—or, for that matter, market participants attempting to avoid liability—to determine the relative importance of the components of an invention? Neither Promega nor the Federal Circuit offers an easy way to make this decision. Accordingly, we conclude that a quantitative interpretation hews most closely to the text of the statute and provides an administrable construction.
LIFE TECHNOLOGIES CORPORATION v. PROMEGA CORPORATION, No. 14-1538 (U.S. Feb. 22, 2017)(emphasis added).
Isn’t it interesting how outside of the context of §101, all claim limitations take on a renewed sense of importance. Indeed, the Court states that “a great many components of an invention (if not every component) are important. Few inventions . . . would function at all without any one of their components.” There is no wave of the hand to dismiss mere pre-solution activity or post-solution activity. Rather, as it should be, every component of a claim is once again deemed important. How refreshing.
Moreover, the Court noted how difficult it could be for a factfinder to assess the qualitative importance of a particular claim element. This “qualitative importance” language sounds a little bit like the “significantly more” language of Mayo. Interesting that the Court had a problem with “qualitative importance” being too difficult for a factfinder to apply, yet left the patent bar twisting in the wind with its “significantly more” test.
It will be interesting to see if this quote from Life Technologies makes its way into any §101 opinions of the Federal Circuit. After all, it is the most recent pronouncement from the Supreme Court that all claim limitations are important.