Whether a court must evaluate the differences between prior art and the alleged inventive concept to fully appreciate the claim language

QUESTIONS PRESENTED Section 101 of the Patent Act allows inventors to obtain patents on “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” To determine whether claimed subject matter is patent eligible under Section 101, courts apply the two-step framework enumerated in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 218 (2014) (the “Alice/Mayo” Test). Retired Judge Michel stated, regarding the need for 101 reform, “If 1, as a judge with 22 years of experience deciding patent cases on the Federal Circuit's bench, cannot predict outcomes based on case law, how can we expect patent examiners, trial judges, inventors and investors to do so?” Testimony of Hon. Paul R. Michel, The State of Patent Eligibility in America, Part I: Hearing Before the Subcommittee on Intellectual Property of the S. Comm. on the Judiciary, 116th Cong. 2 (June 4, 2019). Although the Petitioner’s invention satisfies both steps of the Alice/Mayo Test, a new test is proposed herein. The questions presented are: 1. When analyzing patent claims for subject matter eligibility “as a whole,” does a court need to evaluate the differences between prior art allegations and the alleged inventive concept in order to fully appreciate the claim language selected by the patent drafter? li QUESTIONS PRESENTED — Continued 2. When the plaintiff alleges either that the claims are “directed to” an “improvement” or that the “inventive concept” is found in an “ordered combination” of claim elements, do the relevant steps of the Alice/Mayo Test become questions of fact because a technical analysis of prior art is required, thus precluding a 12(b)(6) dismissal? 3. Whether it is appropriate for a court to dismiss a complaint (and thus invalidate all asserted patents) using Rule 12(b)(6) without amendment to the complaint or oral argument by making factual findings and rejecting the plaintiff’s detailed factual assertions inconsistent with Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).