The Software IP Report

Lack of Written Description Support Leads CAFC to Invalidate

In TransPerfect Global, Inc. v. Joseph Matal, the CAFC affirmed the Board’s PGR rejection of the claims of US6,857,022 as invalid for lack of written description support.  The ‘022 patent discloses a method of obtaining a translation of a website that includes both text and at least one hyperlink.  The detailed description discloses that, after the text and hyperlink of the website are translated, if one clicks on the translated hyperlink, they will be directed to a translation of the target of the translated hyperlink.  However, based on the language of claim 1, the CAFC affirmed the Board’s interpretation that claim 1 requires, after obtaining a translation of the website, clicking an untranslated hyperlink.  Since the detailed description does not disclose this, but instead discloses clicking a translated hyperlink to get to the translation of the hyperlink target, the CAFC affirmed the Board’s rejection of the claims as invalid for lack of written description support.

Claim 1 (presented below) is directed toward a method of ordering a translation of a webpage that includes text and “one or more hyperlinks.”  As can be seen in claim 1 below, the term “one or more hyperlinks” refers to the webpage before translation.  Claim 1 also claims providing a translation of the target webpage of “said hyperlink” when “said hyperlink” is clicked.  The CAFC held that the use of the word “said” in “said hyperlink” required an interpretation that “said hyperlink” is the same as the previously introduced “one or more hyperlinks,” which are not translated.  Accordingly, “said hyperlink” must be untranslated.    After this interpretation, the CAFC looked to the specification and determined that support did not exist for such an interpretation.  In contrast, support only existed for the interpretation that, after the webpage is translated, a translated hyperlink is clicked to get to the translation of the target of the hyperlink.

For reference, claim 1 reads as follows:

1. A method of ordering a translation of an electronic communication, the electronic communication comprising at least text of more than one word and one or more hyperlinks to further electronic communications, including the steps of:

displaying simultaneously to a user:

at least part of said electronic communication; and

a single action translation component, said single action translation component comprising an object identified as effecting a translation of said electronic communication in a single action;

said user clicking said single action translation component to request translation of at least said text of said electronic communication by transmitting said electronic communication, or an indicator of said electronic communication, to a translation manager; and said translation manager:

obtaining a translation of said electronic communication;

directing transmission of said translation of said electronic communication to said user; and

providing translation of said further electronic communications when said hyperlink is activated:

by delivering a translation of said further electronic communications that was translated when said electronic communication was translated; or

by obtaining a translation of said further electronic communications when said hyperlink is activated.

It appears that a pivotal factor in this decision is the prosecution history based on a previous reexamination of the ‘022 patent.  In the CAFC’s words, “TransPerfect’s argument before the PTO in a separate reexamination proceeding…is particularly damaging to TransPerfect’s current position.” In that reexamination, the TransPerfect argued the completely opposite argument for “said hyperlink” that they advanced in this proceeding, namely, the claimed “hyperlink” always points to the same target, in order to define around prior art.  It appears that this prosecution history was too much to convince the CAFC that ambiguity in the claim should be read consistently with the specification.

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