Finnegan scores complete victory in PTAB ruling for firm clients Google and Yahoo!
In response to litigations brought by CreateAds for a computerized “visual design” solutions patent, Google and Yahoo! asked Finnegan to file an inter partes review (IPR) petition to challenge the claims of the asserted patent. The petition addressed all 20 claims of the patent, based on seven different grounds of prior art, and included a declaration from the author of a prior art Master’s Thesis Paper deposited in the MIT library. The IPR was coordinated with the underlying CreateAds consolidated litigations, in which Finnegan also played a significant role in briefing a summary judgment motion to dispose of the patent under 35 U.S.C. 101. After limited discovery and twice rejecting CreateAds’ claim construction proposals, the Patent Trial and Appeal Board (PTAB) issued a final written decision finding all 20 claims unpatentable in view of the prior art and maintaining all seven instituted grounds advanced by the Finnegan team.