Transperfect Global, Inc. v. Matal
703 F. App'x 953
| Fed. Cir. | 2017Background
- Patent: U.S. Patent No. 6,857,022 (’022) claims a one‑click system to order translations of an electronic communication (e.g., a webpage) that may include hyperlinks to further electronic communications.
- Representative claim (claim 1) requires displaying the page and a single‑action translation component, sending the page to a translation manager, and having the translation manager provide translations of hyperlinked targets either pretranslated or when a hyperlink is activated.
- Board instituted CBM review and concluded the challenged claims (1–28) are unpatentable for lack of written description under 35 U.S.C. § 112 ¶ 1; Board construed “said hyperlink” to mean the original (untranslated) hyperlink that points to the original target.
- TransPerfect argued “said hyperlink” can remain the same after translating its label and/or changing its target to a translated URL (including redirecting to a translation manager), and that the specification discloses embodiments supporting that view (e.g., browser plug‑ins or replacement links pointing to a translation manager).
- PTO Director (intervenor) and the Board relied on claim language, specification, and prosecution history (including TransPerfect’s statements in a reexamination) to hold that “said hyperlink” includes at least unmodified hyperlinks pointing to original targets, and that the specification lacks written description support for claims covering untranslated hyperlinks redirected in the asserted manner.
Issues
| Issue | TransPerfect's Argument | Director/Board's Argument | Held |
|---|---|---|---|
| Construction of “said hyperlink” | “Said hyperlink” can be the same link after translating label and/or changing target to a translated URL (including redirect to translation manager) | “Said hyperlink” refers back to the original hyperlink in the original (untranslated) document; changing the target yields a different hyperlink | Affirmed: “said hyperlink” includes unmodified hyperlinks pointing to original targets; changing connection makes a different hyperlink |
| Whether claims require translation of hyperlinked targets along with page | Claims contemplate translating links and their targets together as part of the single action | Claims expressly allow obtaining translation of further electronic communications when hyperlink is activated (i.e., separate, on‑demand translation); do not require pretranslation of targets | Held for Director: claims do not require pretranslation; separate translation on activation is what claims recite |
| Written description support for claims covering untranslated hyperlinks redirected at activation | Spec discloses plug‑in/interop that can redirect browser on click to translation manager or translated target, supporting claim scope | Spec discloses replacement of original hyperlinks with new links (pointing to translation manager) as the mechanism; no disclosure of a plug‑in that, upon clicking an untranslated original link, performs redirection/real‑time translation without replacement links | Affirmed: Board found insufficient written description for the claimed scope (no disclosure that inventors possessed the asserted intermediary plug‑in behavior) |
| Effect of prosecution history and expert/extrinsic evidence | Expert says POSITA would understand “said hyperlink” can be modified; prosecution history statements about replacement links are consistent with claim scope | Prosecution history contains admissions (in reexamination) that “said hyperlink” points to same target in original and translated docs; extrinsic testimony cannot overcome intrinsic record | Held: intrinsic evidence (claims, spec, prosecution history) controls; expert testimony rejected as inconsistent; prosecution admissions support Board construction |
Key Cases Cited
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (Sup. Ct.) (claim construction standard for PTO: broadest reasonable interpretation consistent with the specification)
- Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283 (Fed. Cir.) (anaphoric “said” refers to antecedent)
- Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir.) (usage of anaphoric phrases in claims)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.) (written description standard: disclosure must show possession of claimed invention)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (review standards for Board fact findings and claim support)
- Creative Internet Advertising Corp. v. Yahoo!, Inc., [citation="476 F. App'x 724"] (Fed. Cir.) (distinguishing cases where claims expressly recite modification of antecedent)
- Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir.) (claims that expressly recite modification of antecedent signal)
- Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir.) (where claim language is unambiguous, claims may exclude disclosed embodiments)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (prosecution history from later PTO proceedings can inform claim construction)