Transperfect Global, Inc. v. Matal , 703 F. App'x 953 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
TRANSPERFECT GLOBAL, INC.,
Appellant
v.
JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2016-1121
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00060.
______________________
Decided: July 12, 2017
______________________
DOUGLAS ETHAN LUMISH, Latham & Watkins LLP,
Menlo Park, CA, argued for appellant. Also represented
by JEFFREY G. HOMRIG, GABRIEL GROSS; JOSEPH HYUK
LEE, Costa Mesa, CA; GABRIEL BELL, JONATHAN M.
STRANG, Washington, DC; MICHELLE KINGHAM
2 TRANSPERFECT GLOBAL, INC. V. MATAL
HOLOUBEK, Sterne Kessler Goldstein & Fox, PLLC, Wash-
ington, DC.
PHILIP J. WARRICK, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for intervenor. Also represented by THOMAS W.
KRAUSE, SCOTT WEIDENFELLER, JEREMIAH HELM.
______________________
Before REYNA, WALLACH, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
This case arises from MotionPoint’s petition for cov-
ered business method (CBM) review of claims 1–28 of U.S.
Patent No. 6,857,022 (’022 patent), which is directed to
ordering a translation of an electronic document that
includes hyperlinks, and is owned by TransPerfect Global,
Inc. (TransPerfect). The U.S. Patent & Trademark Office
(PTO), Patent Trial & Appeal Board (Board) instituted
the review and issued a final decision finding the chal-
lenged claims unpatentable for lack of written description
support under 35 U.S.C. § 112 ¶ 1. 1 TransPerfect and
MotionPoint subsequently settled, and the Director of the
PTO intervened in this appeal pursuant to 35 U.S.C. §
143.
TransPerfect appeals the Board’s construction of the
claim term, “said hyperlink,” arguing that the Board’s
construction excludes a translated hyperlink on a trans-
lated webpage that links to a different target than the
1 Because the ’022 patent was filed before the effec-
tive date of revisions to 35 U.S.C. § 112 made by The
Leahy-Smith America Invents Act, Pub. L. No. 112-29,
§§ 4(c) & 4(e), 125 Stat. 284, 296–97 (2011), the prior
version of § 112 controls, see MobileMedia Ideas LLC v.
Apple Inc., 780 F.3d 1159, 1168 n.3 (Fed. Cir. 2015).
TRANSPERFECT GLOBAL, INC. V. MATAL 3
target to which the original, untranslated hyperlink links.
TransPerfect also appeals the Board’s lack of written
description finding, arguing that even if the claimed “said
hyperlink” must refer to the same hyperlink that is pre-
sent in the original, untranslated webpage, the ’022
specification describes an embodiment that can redirect a
user to a translated version of the hyperlink’s target
instead of the original untranslated target, upon clicking
the original, untranslated hyperlink. Because the Board’s
construction of “said hyperlink” is correct and all the
challenged claims are unpatentable for lack of written
description support, we affirm.
BACKGROUND
The ’022 patent describes a method of ordering a
translation of an electronic document on the Internet,
such as a webpage, using a “one-click” translation compo-
nent. ’022 patent abstract. Figure 1 of the ’022 patent
contains a flowchart illustrating this process:
4 TRANSPERFECT GLOBAL, INC. V. MATAL
’022 patent fig.1. Figure 1 shows a user 1 who requests a
webpage 2 from web server 3. Id. col. 3 ll. 3–6. The user
can request a translation from one language (e.g., Eng-
lish) to another (e.g., German) by clicking on the one-click
translation component. Id. col. 3 ll. 47–57. When the
translation is requested, webpage 2 is transferred from
user 1 to a “translation manager” 4. Id. col. 3 ll. 14–17.
The translation manager translates the original webpage
2 into the requested language as translated webpage 7,
which is then displayed to the user. Id. col. 3 ll. 28–36.
The translation manager can also retrieve the original
webpage 2 from web server 3 if the user provides the
translation manager with just the address of the webpage
rather than the webpage itself. Id. col. 3 ll. 28–31.
If webpage 2 contains hyperlinks to further webpages,
translation manager 4 may replace links in the translated
webpage 7 with hyperlinks pointing to the translation
manager. Id. col. 3 ll. 36–38. The translation manager
may automatically translate these hyperlinked webpages,
either at the time the user clicks on the replacement links
or in advance, such that the user need not request sepa-
rate translations of hyperlinked webpages. Id. col. 3 ll.
38–46. This allows a user to surf many linked webpages
without needing to request separate translations. Id.Claim 1 is representative and reproduced below:
1. A method of ordering a translation of an elec-
tronic communication, the electronic communica-
tion comprising at least text of more than one
word and one or more hyperlinks to further elec-
tronic communications, including the steps of:
displaying simultaneously to a user:
at least part of said electronic communica-
tion; and
a single action translation component,
said single action translation component
TRANSPERFECT GLOBAL, INC. V. MATAL 5
comprising an object identified as effecting
a translation of said electronic communi-
cation in a single action;
said user clicking said single action transla-
tion component to request translation of at
least said text of said electronic communica-
tion by transmitting said electronic communi-
cation, 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 elec-
tronic communications when said hyper-
link is activated:
by delivering a translation of said fur-
ther electronic communications that
was translated when said electronic
communication was translated; or
by obtaining a translation of said fur-
ther electronic communications when
said hyperlink is activated.
’022 patent col. 8 l. 51–col. 9 l. 11 (emphases added).
The Board found that “the first use of the term ‘hyper-
link’ specifically identifies the hypertext document that
includes the ‘link or connection’ and the objects linked or
connected thereto.” J.A. 13. The hypertext document
that contains the link is the “electronic communication”
and the objects linked or connected thereto are the “fur-
ther electronic communications.” J.A. 13. The Board
6 TRANSPERFECT GLOBAL, INC. V. MATAL
construed “hyperlink” to mean “a connection between an
element in a hypertext document, such as a word, phrase,
symbol, or image, and a different element in the docu-
ment, another hypertext document, a file, or a script.”
J.A. 11. It construed “said hyperlink” to mean “referring
back to the ‘one or more hyperlinks,’ i.e., the original ‘one
or more hyperlinks’ in the original (untranslated) elec-
tronic communication that link or connect to the further
(untranslated) electronic communications.” J.A. 11, 21.
We have jurisdiction under 28 U.S.C. § 1295(a)(4).
DISCUSSION
I. Standard of Review
In construing claims, the Board applies the broadest
reasonable interpretation consistent with the specifica-
tion. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2142–45 (2016). “We review intrinsic evidence and the
ultimate construction of the claim de novo.” SightSound
Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir.
2015). “We review underlying factual determinations
concerning extrinsic evidence for substantial evidence.”
Id. “Whether a patent claim is supported by an adequate
written description is a question of fact.” AbbVie Deutsch-
land GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d
1285, 1297 (Fed. Cir. 2014). “We review the Board’s
conclusions of law de novo and its findings of fact for
substantial evidence.” Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1337 (Fed. Cir. 2016). Substantial
evidence “means such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Id. (internal quotation marks omitted).
II. Claim Construction
We begin with claim construction. The parties do not
dispute the meaning of “hyperlink,” but they do dispute
the meaning of “said hyperlink.” Appellant Br. 19.
TransPerfect argues that a hyperlink contains a “label”
TRANSPERFECT GLOBAL, INC. V. MATAL 7
(the visible text) and a “Uniform Resource Locator” (URL)
(the address of the target). TransPerfect contends that
the “one or more hyperlinks” can still be the same hyper-
link (“said hyperlink”), even after (1) the label is translat-
ed to a different language, and/or (2) the target is changed
to point to a different URL—the URL of a translated
version of the original target. TransPerfect maintains
that the claims contemplate a hyperlink that displays
with a translated label and points to a translated target,
and that this hyperlink can still be regarded as the same
“said hyperlink,” because the purpose of the invention is
to translate—not preserve—content.
The Director responds that the Board correctly found
a fundamental mismatch between the ’022 patent’s claim
language and specification because the claims, with their
usage of “said hyperlink,” recite “preserving hyperlinks,”
whereas the specification “describes replacing hyper-
links.” J.A. 20. The Board framed this issue as “whether
replacement or modification of the ‘one or more hyper-
links’ may occur and yet still constitute the same ‘one or
more hyperlinks.’” J.A. 12. We agree with the Board that
the “said hyperlink” claim language refers back to the
claimed one or more original untranslated hyperlinks in
the original document, after considering the claim lan-
guage, specification, prosecution history, and extrinsic
evidence.
A.
We first address the claim language. The parties
agree with the Board that a “hyperlink” is the “connection
between an element in a hypertext document [the la-
bel]. . . and a different element [the target].” J.A. 11.
They also agree that the “said hyperlink” limitation must
refer to the same hyperlink contained in the original
untranslated webpage, but TransPerfect contends that a
hyperlink can be translated (by modifying or replacing its
label or URL) and still be the “same” hyperlink. We agree
8 TRANSPERFECT GLOBAL, INC. V. MATAL
that the use of the term “said” in the claims indicates that
the “said hyperlink” limitation refers to the previously
claimed “one or more hyperlinks to further electronic
communications” limitation. See Summit 6, LLC v.
Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015);
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
1343 (Fed. Cir. 2008) (noting that the claim term “said” is
an “anaphoric phrase[], referring to the initial antecedent
phrase”).
The Board explained that a hyperlink requires only a
specific connection between the label (the element that is
visible to the user) and the target (the further electronic
communications, to which the user will be directed after
clicking on the label). The Board found that the perspec-
tive of a user is immaterial because the hyperlink is
defined electronically as the connection between the label
(e.g., element A) and the target (e.g., element B). J.A. 13.
If the connection between the label and target is changed
such that it connects to a translated version of the target
(e.g., element C), which necessarily exists at a different
location from that of element B, the hyperlink no longer
connects elements A and B, but it connects elements A
and C. J.A. 13. This new hyperlink connection between
elements A and C is different because it connects different
elements from that of the original hyperlink. J.A. 13.
TransPerfect argues that the “said hyperlink” limita-
tion must “refer[] to a link in the translated webpage that
necessarily would be altered as a result of the transla-
tion.” Appellant Br. 13. The Director responds that the
“said hyperlink” limitation, at a minimum, is broader and
“include[s] . . . embodiments in which the translated
document includes the original, unaltered hyperlinks
from the untranslated document.” Intervenor Br. 49.
TransPerfect disagrees, arguing that the claims require
TRANSPERFECT GLOBAL, INC. V. MATAL 9
that “the hyperlinks are necessarily translated along with
the rest of the document.” 2 Reply Br. 17.
We agree with the Director that the claims do not re-
quire a translation of the “further electronic communica-
tions,” along with the translation of the original
“electronic communication.” The claims recite that the
translation manager “provid[es] translation of said further
electronic communications when said hyperlink is activat-
ed . . . by obtaining a translation of said further electronic
communications when said hyperlink is activated.” ’022
patent col. 9 ll. 4–11 (emphasis added). The translation
manager can thus obtain a translation of the target of
said hyperlink (the further electronic communication)
when said hyperlink is activated. By contrast, the rest of
the webpage (the electronic communication) is translated
when the user clicks on the “single action translation
component”; when the user clicks on this component, the
translation manager “obtain[s] a translation of said
electronic communication” and “direct[s] transmission of
said translation of said electronic communication to said
user.” Id. col. 8 l. 51–col. 9 l. 11.
TransPerfect also argues that the Board erred be-
cause we have allowed claims to use the term “said” to
refer to the same antecedent object, even after the ante-
cedent object has been physically changed or altered.
TransPerfect cites Creative Internet Advertising Corp. v.
2 Although TransPerfect also argues waiver, we de-
cline to find waiver because the Director did not change
the scope of MotionPoint’s claim construction position. O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1359 (Fed. Cir. 2008) (“While a waiver may occur if
a party raises a new issue on appeal . . . . [a] waiver will
not necessarily occur . . . if a party simply presented new
or additional arguments in support of ‘the scope of its
claim construction.”) (internal quotation marks omitted).
10 TRANSPERFECT GLOBAL, INC. V. MATAL
Yahoo!, Inc., 476 F. App’x 724 (Fed. Cir. 2011), arguing
that we construed the claimed “said end user communica-
tion message” limitation to refer to the “same” message,
even though parts of that message had been altered or
replaced. Reply Br. 7. TransPerfect also cites Technology
Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1322
(Fed. Cir. 2008), arguing that the claims expressly recited
a signal and referred back to the signal as “said” signal,
even after the signal was “changed.” Reply Br. 8.
The Director responds that the claims in those cases
are different from TransPerfect’s case because the claim
language expressly recited modifying the antecedent
object, whereas in TransPerfect’s case, the claims do not
recite modifying the antecedent object. Intervenor Br.
39–40. For example, in Creative Internet Advertising
Corp., the claims recite “logic configured to receive an end
user communication message,” “to insert a background
reference . . . into said end user communication message,”
and “to transmit said end user communication message
with the background reference.” 476 F. App’x at 725–26;
see also Intervenor Br. 39–40. The Director makes the
same argument for Technology Licensing Corp. in that the
claims “expressly recited the modification.” Intervenor
Br. 40. The claims recited “selectively adding a current to
said level shifted signal wherein the amount and/or
polarity of said current is responsive to said compared
signal and the D.C. level of said level shifted signal is
changed in response to said current.” Tech. Licensing
Corp., 545 F.3d at 1322.
We agree with the Director. Unlike in Creative Inter-
net Advertising Corp. and Technology Licensing Corp., the
claims here do not recite obtaining a translation of the
target of “said hyperlink” (the further electronic commu-
nication) along with the translation of the original
webpage (the electronic communication). Nor do they
recite changing the target of “said hyperlink” from the
original address to a second address that corresponds to a
TRANSPERFECT GLOBAL, INC. V. MATAL 11
translated version of the “further electronic communica-
tion.” The claims instead expressly contemplate that the
translation of “said further electronic communication” is
obtained when “said hyperlink” is activated. 3 This sepa-
rate translation would not be necessary if “said further
electronic communication” was already translated along
with the translation of the original webpage.
The Board properly rejected TransPerfect’s argument
that the hypertext markup language (HTML) code is the
same for an original hyperlink and a translated one. J.A.
14–15. It correctly observed that the HTML code for a
translated hyperlink is different because a translated
hyperlink contains the URL address of a translated
version of the target, which is different from the URL
address of the original target. J.A. 14–16. It also rejected
TransPerfect’s position that a hyperlink can continue to
be the same hyperlink when a user, upon clicking the
link, sees the same content—just in a different lan-
guage—when the user is taken to a translated version of
the target. J.A. 14. It explained that “[w]hile the infor-
mation contained therein may have the same meaning,
what a user sees is clearly not the same.” J.A. 14 n.1. In
such a case, “the user would be able to tell that the second
hyperlink was not the same as the first because the
second hyperlink connected to an element different from
the element connected to the first hyperlink.” J.A. 14.
3 TransPerfect also cites Chef America, Inc. v.
Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004),
for the first time in its Reply Brief, but its argument is
the same. Reply Br. 8. We similarly reject TransPerfect’s
position because although the claims refer to “said” dough
and “said” batter, they also expressly recite modifying the
dough and batter, unlike the claims at issue here. Id.12 TRANSPERFECT GLOBAL, INC. V. MATAL
B.
TransPerfect turns next to the ’022 specification to
argue that the specification makes clear that the claimed
“said hyperlink” must mean a hyperlink modified from
the original hyperlink. The ’022 specification discloses an
embodiment in which the hyperlinks in a webpage are
translated along with the rest of the webpage, and each
hyperlink in the original webpage is replaced with a
hyperlink containing a translated label and a new target
pointing to a translated version of the original target.
’022 patent col. 3 ll. 37–44. In this embodiment, the “links
in the translated web page” are modified to “point to the
translation manager,” which provides translated versions
of the hyperlinked webpages. Id. col. 3 ll. 37–44.
TransPerfect argues that the Board’s failure to find
sufficient written description support for the claims
should have alerted the Board to a claim construction
error because the Board construed the claims to read out
the preferred embodiment.
Nothing in the ’022 specification, however, suggests
that “said hyperlink” refers to a replacement hyperlink
that points to the translation manager instead of to the
original target, to which the earlier recited “hyperlink”
points. To the contrary, the ’022 specification indicates
that the hyperlinks contained in the original webpage are
replaced with different hyperlinks in the translated
webpage. The specification explains that the translation
manager “may also replace all links in the translated web
page 7 with links that point to the translation manager
4.” ’022 patent col. 3 ll. 37–39. Replacing an original
hyperlink with a new link pointing to the translation
manager—rather than keeping the original link—strongly
suggests that the identity of the hyperlink is changed.
Changing the connection between the original label and
original target such that the label points to the transla-
tion manager instead of the original target “replac[es]”
the original hyperlink with a new one. J.A. 11; ’022
TRANSPERFECT GLOBAL, INC. V. MATAL 13
patent col. 3 l. 37. The replacement hyperlink is different
from the original hyperlink because the translation
manager “requires a new link.” J.A. 10–11. No such
replacement would be necessary if the ’022 specification
viewed a hyperlink that points to the translation manager
to be the same as the original hyperlink.
We agree with the Board that the ’022 specification
does not require the claimed “said hyperlink” limitation to
mean replacement hyperlinks that point to the transla-
tion manager rather than the original hyperlinks that
point to the original targets. It is true that claims typical-
ly cover embodiments disclosed in the specification, see,
e.g., Accent Packaging, Inc. v. Leggett & Platt, Inc., 707
F.3d 1318, 1326 (Fed. Cir. 2013), but here, nothing in the
specification requires a re-understanding of the claim
language to encompass the disclosed embodiment, see,
e.g., Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200,
1215–16 (Fed. Cir. 2008) (noting that “where we conclude
that the claim language is unambiguous, we have con-
strued the claims to exclude all disclosed embodiments”).
C.
Beyond the claim language and specification,
TransPerfect’s argument before the PTO in a separate
reexamination proceeding for the ’022 patent on the
meaning of its claimed “said hyperlink” limitation is
particularly damaging to TransPerfect’s current position.
See Microsoft Corp., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(explaining that the prosecution history of a patent which
has returned to the PTO for a second review is relevant to
the PTO’s construction of the claims for that patent). In
that reexamination, TransPerfect argued the exact oppo-
site of the position it presents to us here, to overcome
prior art that used modified hyperlinks pointing to trans-
lated versions of the targets of the original hyperlinks
rather than maintaining the original hyperlinks pointing
to the original targets. TransPerfect distinguished a prior
14 TRANSPERFECT GLOBAL, INC. V. MATAL
art reference (Lakritz) by arguing that the corresponding
hyperlink in Lakritz points to a new webpage—the Span-
ish-language page—instead of the original-language page.
Contrary to what TransPerfect advanced in the current
proceeding, TransPerfect in the reexamination told the
Examiner that its claimed “hyperlink” always points to
the same target. The Board recognized this conflict and
quoted the following prosecution history, which was
TransPerfect’s own statement in the reexamination:
In claim 1, regardless of the usage of a relative or
absolute hyperlink, the target of a hyperlink in the
original (e.g., English-language) document (“hy-
perlinks to further electronic communications”) is
the same as the target in a document (e.g., Span-
ish-language document) translated from the
source document (“said further electronic commu-
nications”; “said hyperlink[”]). That is, in claim 1,
the same “hyperlinks” point to the same “further
electronic communications” in both the “transla-
tion of said electronic communication” and the ini-
tial “electronic communication.” In contrast,
Lakritz’s translated documents do not link to the
same “further electronic communications” as the
original document. (Nakhimovsky Decl., ¶ 71).
This is understood by considering the alleged “hy-
perlinks to further electronic communications” in
Lakritz. The hyperlink consisting of “” in an English-language page
found at http://www.lai.com/joe/index.html in
Lakritz actually refers to the document http://
www.lai.com/joe/contact.html. To follow the lan-
guage of claim 1, the corresponding hyperlink in
the corresponding Spanish-language page should
also refer to http://www.lai.com/joe/
contact.html. But that is not the case in Lakritz.
In Lakritz, the corresponding hyperlink in the
corresponding Spanish-language page[,] http://
TRANSPERFECT GLOBAL, INC. V. MATAL 15
www.lai.com/joe/spanish/index.html, instead re-
fers to the document http://www.lai.com/joe/
spanish/contact.html. Said another way, no trans-
lation of this alleged “further electronic communi-
cation” is needed, as it is already in Spanish.
J.A. 17 (quoting J.A. 1449) (italics added by the Board).
TransPerfect argued during the reexamination that,
for its claims, “the target of the hyperlink in the original
document is the same as the target in a document trans-
lated from the source document.” J.A. 17 (emphasis in
original). Contrary to its argument to us that the ’022
specification requires “said hyperlink” to refer exclusively
to replacement hyperlinks that point to the translation
manager, TransPerfect argued during the reexamination
that “said hyperlink” must “point to the same [target],”
whether that link is in the original or translated docu-
ment. J.A. 17. The Board correctly recognized that
TransPerfect improperly attempted to advance a concep-
tion of the meaning of “said hyperlink” that was the
opposite of what TransPerfect argued in the separate
reexamination proceeding to overcome prior art. J.A. 18.
TransPerfect argues to us that the Board failed to
consider the full context of the prosecution history be-
cause it ignored other statements in which TransPerfect
explained that hyperlinks can be modified to point to the
translation manager. The Director, however, correctly
responds that TransPerfect’s other statements occurred
only in a background paragraph of TransPerfect’s office
action response, and they referred to the ’022 specification
rather than the actual claims. Intervenor Br. 35; J.A.
1429, 1548. When read in context, those other statements
were immaterial to how TransPerfect portrayed the
meaning of its claims.
TransPerfect also argues that Lakritz differs from the
’022 patent because Lakritz uses separate documents for
each language, organized in “parallel document trees.”
16 TRANSPERFECT GLOBAL, INC. V. MATAL
Appellant Br. 30. Thus, in TransPerfect’s view, this
distinction makes its other statements about other dis-
tinctions between the claims and Lakritz beside the point.
TransPerfect contends that in Lakritz and in other prior
art, the user is confined to a pre-determined universe of
documents, whereas the ’022 patent enables dynamic web
browsing and the translation of any arbitrary hyperlinked
target. The possibility of these other distinctions between
the challenged claims and the prior art, however, does not
erase the conflict in TransPerfect’s reexamination state-
ments distinguishing the prior art based on the prior art’s
modification of the targets of hyperlinks.
We agree with the Board that TransPerfect during
reexamination distinguished Lakritz for using modified
hyperlinks that point to translated targets rather than
pointing to the original targets. These reexamination
statements to the PTO by TransPerfect support the
Board’s construction of “said hyperlink” to include unmod-
ified hyperlinks pointing to the original targets. J.A. 11.
D.
Lastly, TransPerfect relies on its expert testimony to
argue that a person of ordinary skill in the art “would
have understood that ‘said hyperlink’ is the same ‘one or
more hyperlinks,’ where the ‘one or more hyperlinks’ and
its label has been translated and its destination modified
to point to a translation of the ‘further electronic commu-
nications’ by the translation manager.” J.A. 1633–34
¶ 33. The Board rejected this testimony because it was
inconsistent with both the well-understood meaning of
hyperlink and the prosecution history. J.A. 10, 16–19.
We agree that TransPerfect’s expert testimony does
not overcome the intrinsic evidence contained in the claim
language, specification, and prosecution history. J.A. 10–
19. Because the intrinsic evidence supports the Board’s
construction of “said hyperlink,” we affirm the Board’s
construction. Microsoft Corp., 789 F.3d at 1297 (“To the
TRANSPERFECT GLOBAL, INC. V. MATAL 17
extent the Board considered extrinsic evidence when
construing the claims, we need not consider the Board’s
findings on that evidence because the intrinsic record is
clear.”). We agree that “said hyperlink” includes at least
unmodified hyperlinks that point to “further (untranslat-
ed) electronic communications.” J.A. 11, 21.
III. No Written Description Support
We next address the Board’s finding of unpatentabil-
ity. The Board found that a person of ordinary skill in the
art would not have understood from the written descrip-
tion of the ’022 patent that the inventors possessed and
described an embodiment in which “said hyperlink”
referred to one or more untranslated further electronic
communications. J.A. 30. The Board rejected TransPer-
fect’s argument that a disclosed browser plug-in could
perform, once an untranslated hyperlink is clicked, the
tasks of (1) translating an untranslated hyperlink; and/or
(2) redirecting a user to the translation manager to access
a translated version of the “further electronic communica-
tions.” The Board explained that claim 1 recites that the
translation manager performs the step of “providing
translation of said further electronic communications
when said hyperlink is activated,” and claim 1 does not
refer to a browser plug-in. J.A. 28–29. It also found that
there is no description of any plug-in that performs the
functions of the translation manager, that a plug-in would
still need to use the translation manager to perform the
actual translation, and that a translation would still
replace all the untranslated hyperlinks with new ones
pointing to the translation manager.
The written description requirement provides that a
patentee’s application for a patent must “clearly allow
persons of ordinary skill in the art to recognize that [he]
invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
18 TRANSPERFECT GLOBAL, INC. V. MATAL
(Fed. Cir. 1991)). “[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.” Id. “[T]he level of detail required to satisfy the
written description requirement varies depending on the
nature and scope of the claims and on the complexity and
predictability of the relevant technology.” Id.Here, TransPerfect argues that the ’022 specification
“expressly (and broadly) states that a plug-in could per-
form the ‘described functions’ of the invention.” Appellant
Br. 36–37 (quoting ’022 patent col. 6 ll. 22–23). This
browser plug-in can “interact either actively or passively
with the viewed web pages . . . and communicate with the
translation manager via the Internet to request transla-
tion in response to a keystroke, mouse action, . . . or other
method by the customer,” including “request[ing] transla-
tion in response to a . . . mouse [click]” on a hyperlink.
’022 patent col. 6 ll. 23–30. An “explorer bar” can also
“communicate with the web browser to gain access to the
required details of the current web page” and “support[]
the translation of web pages.” Id. col. 4 l. 64–col. 5 l. 3.
According to TransPerfect, when a user activates an
untranslated hyperlink, the plug-in would recognize that
the user desires a translated version of “said hyperlink”
and redirect the user’s browser to the translation manag-
er.
We agree with the Board that the ’022 specification
lacks sufficient written description support for the chal-
lenged claims. The ’022 specification provides no disclo-
sure of how a browser plug-in would redirect a user to a
translated version of an untranslated hyperlinked
webpage, or to the translation manager, each time an
untranslated hyperlink is activated. J.A. 29. The only
disclosed mechanism for translating hyperlinked pages
uses the translation manager to replace the hyperlinks in
the original webpage with new hyperlinks in a translated
TRANSPERFECT GLOBAL, INC. V. MATAL 19
webpage that point to the translation manager. ’022
patent col. 3 ll. 37–39. TransPerfect even concedes that
the browser plug-in does not itself perform translations,
but only acts as an intermediary. Appellant Br. 36–37.
TransPerfect contends that the claims do not preclude
a plug-in from acting as an intermediary to coordinate
between the browser and the translation manager to
provide translated content because claim 1 is an open-
ended claim. We reject this argument because, even if the
claims do not foreclose the use of a plug-in, there is no
disclosure of a plug-in with the alleged intermediation
capability. The specification contains no disclosure of an
intermediary role for plug-ins to intervene whenever a
user activates an untranslated hyperlink.
Substantial evidence also supports the Board’s finding
that the “described functions” of the plug-ins refer to the
one-click translation component. J.A. 29. The function of
requesting a translation in response to a keystroke,
mouse action, voice command, or other command from a
user is for the translation of the original webpage (the
electronic communication), not the targets of the hyper-
links within that webpage (the further electronic commu-
nications). ’022 patent col. 6 ll. 20–30. The plug-in does
not itself perform any translations, but it requests a
translation of the original webpage from the translation
manager. Id. col. 6 ll. 28–30. Even if the plug-in were an
intermediary to the translation manager, the only dis-
closed mechanism of the translation manager for translat-
ing hyperlinked pages is the replacement of all the
hyperlinks in the original webpage with replacement
hyperlinks pointing to the translation manager. ’022
patent col. 3 ll. 37–39. The ’022 specification does not
disclose using plug-ins to translate linked pages without
using replacement hyperlinks. Because of this limited
disclosure, TransPerfect attempts to bootstrap real-time
translation into the disclosure of the plug-in. ’022 patent
col. 4 l. 61–col. 5 l. 3, col. 6 ll. 20–30. Yet the ’022 specifi-
20 TRANSPERFECT GLOBAL, INC. V. MATAL
cation provides no description of how the plug-in would
perform real-time translation of all hyperlinked webpages
without replacing the original hyperlinks with new hyper-
links pointing to the translation manager.
It is true that the specification need not use the same
words as used in the claims, Blue Calypso, 815 F.3d at
1345–47, but here, the Board correctly found that a
person of ordinary skill in the art would not have under-
stood that the inventors of the ’022 patent possessed and
described a plug-in that could perform a translation
without using replacement hyperlinks. Therefore, we find
that the Board properly rejected the challenged claims for
lack of written description support.
CONCLUSION
We have considered TransPerfect’s remaining argu-
ments and find them unpersuasive. We affirm the
Board’s construction of “said hyperlink,” and we affirm
the Board’s rejection of the challenged claims for lack of
written description support.
COSTS
No costs.
AFFIRMED