I agree with some if not most of the fundamental principles of Alice despite its somewhat ambiguous construction as of now.

Presumed is a patent issued pre-Alice, and post-Alice be found not meeting the standards per Alice. Many patents, including some describing generic computers, abstract ideas in the form of algorithms one theoretically is able to follow cognitively without any machines etc., were retrospectively invalidated.

I'm wondering if, at the PTAB, may invalidate a patent per an Appeal Brief, invalidate a patent in light of Alice, or does one have to go to a district court?


1 Answer 1


The process to invalidate a patent if the owner does not attempt to enforce it is an Inter Partes Review. They kill from 40%-70% of claims they encounter depending upon who’s method of analysis you look at. The other method, if enforcement is attempted, would be a suit for declaratory judgement by a threatened entity. You can’t go to a district court to invalidate a patent that has not been attempted to be enforced against you. There would be no standing under the “case or controversy” clause in the constitution. As an executive branch administrative court the PTAB does not have that constraint.

An appeal from either path leads to the Federal Circuit Court of Appeals (CAFC). Some people say the only valid computer implemented patents are ones CAFC hadn’t yet seen.

That said this is not a document indicating an issued patent. It is the publication of a patent application. Checking google patent I see it was abandoned. I didn’t look for any family member applications that might have been more successful.

  • The saying is absolutely hilarious! Thank you for the insights! Commented Sep 7, 2021 at 22:36
  • Isn’t there a time limit on Inter Partes reviews that would eliminate their use on pre-Alice patents?
    – Eric S
    Commented Sep 8, 2021 at 15:01
  • I’m probably confused with post grant reviews.
    – Eric S
    Commented Sep 8, 2021 at 16:19
  • For PGR it needs to be a post-AIA filing (not post Alice). As written, the AIA says IPRs apply to all patents. The constitutionality of IPR for Pre-AIA applications was challenged at the SCOTUS, just decided a few weeks ago and was found constitutional.
    – George White
    Commented Sep 8, 2021 at 17:19

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