In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough and well supported, but the treatment of the challenged patent as CBM-eligible appears to be inconsistent with Federal Circuit precedent.
TransPerfect’s challenged patent claims methods of ordering translations over the Internet of electronic communications containing “one or more hyperlinks” to further electronic communications, and recite a step of providing a translation of the further electronic communications when “said hyperlink” is activated.
The parties and the PTAB agreed that a “hyperlink” is the connection between an element in a hypertext document (the label) and a different element (the target), but the parties disputed the meaning of “said” hyperlink. The PTAB determined that “said hyperlink” refers to the same hyperlink contained in the original, untranslated webpage, although TransPerfect argued that a hyperlink can be translated (by modifying or replacing its URL), and still be the same hyperlink. The PTAB determined that the claims lack written description support, because the claims recite preserving hyperlinks, but the specification describes replacing hyperlinks, inconsistent with the “said hyperlink” language.
On appeal, the court agreed with the PTAB’s construction of “said hyperlink,” based on the claim language, patent specification, and arguments made by TransPerfect in a separate reexamination proceeding of the challenged patent. The court noted that the ordinary meaning of “said” refers to the earlier-recited, untranslated hyperlink, and that the claims recite obtaining a translation of the further electronic communications when said link is activated, which would be inconsistent with construing “said hyperlink” to refer to a communication that has already been translated. The court determined that the PTAB’s construction was consistent with the specification, which states that hyperlinks are replaced with different hyperlinks after translation. The court also determined that its construction was consistent with what TransPerfect argued in the reexamination, that “said hyperlink” must “point to the same” target, not a modified (translated) target.
The court’s opinion, and the PTAB’s final written decision do not address why the challenged patent was eligible for CBM review, although the representative claim addressed by the court and the PTAB does not appear to be directed to a financial product or service, as required for CBM eligibility. The PTAB’s institution decision determined that the patent was CBM-eligible because some of the dependent claims recite paying a fee for the translation. The Patent Owner’s preliminary response did not dispute that these dependent claims are directed to a financial product or service, but argued that the “technological invention” exception applied; after institution the Patent Owner did not challenge CBM eligibility. The PTAB’s broad approach to CBM eligibility applied in this case appears to be inconsistent with Unwired Planet, LLC v. Google Inc. (discussed here), which was decided after the PTAB’s final written decision. As the court stated in Unwired Planet, “it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service.” The court may take the position that including a claim that recites a transfer of money is sufficient for CBM eligibility, but Unwired Planet and this case did not specifically address that issue.