MotionPoint Corp v. TransPerfect Global Inc

1. Case Identification

• Case #: CBM2014-00060
• Patent #: 6,857,022
• Filed: January 23, 2014
• Petitioner(s): MotionPoint Corporation
• Patent Owner(s): Phillip Lee Scanlan
• Challenged Claims: 1-28

2. Patent Overview

• Title: Translation Ordering System
• Brief Description: The ’022 patent discloses a method and system for ordering the translation of an electronic communication, such as a web page. The system allows a user to request a translation via a single action, such as clicking a button, which then provides a translated version of the communication, including any linked content.

3. Grounds for Unpatentability

Ground 1: Claims 1-28 are Invalid Under 35 U.S.C. §112, first paragraph, for Lack of Written Description and Enablement

• Legal Basis: Petitioner argued that the claims, as amended during prosecution, recite an invention that is not described or enabled by the specification.
• Core Argument:
  • Prior Art Mapping: The central issue stems from the claim phrase "providing translation of said further electronic communications when said hyperlink is activated." Petitioner contended that because the claims first introduce an electronic communication having "one or more hyperlinks," the later recitation of "said hyperlink" must refer back to the original, untranslated hyperlink. Activating this original hyperlink would, by its nature, direct the user to the original, untranslated linked page. Therefore, the claim recites an impossible result: obtaining a translated page by activating a link that can only point to an untranslated page.
  • Motivation to Combine (N/A): This ground is not based on prior art.
  • Expectation of Success (N/A): This ground is not based on prior art.
  • Key Aspects: Petitioner argued that the only method disclosed in the specification for translating linked content involves the system replacing the original hyperlinks with new links pointing to the translation manager. However, this "replacement" step is not recited in the claims. Because the specification discloses only one way to achieve the result (replacing links) and the claims do not recite it—instead reciting an inoperable alternative (using the original link)—the claims lacked both written description and enabling support.

Ground 2: Claims 17-28 are Invalid Under §112, second paragraph, for Indefiniteness (Improper Hybrid Claiming)

• Legal Basis: Petitioner argued that apparatus claims 17-28 are indefinite because they impermissibly mix static apparatus limitations with active method steps.
• Core Argument:
  • Prior Art Mapping: Petitioner asserted that independent apparatus claim 17 recites a "single action translation ordering system" comprising various components, but then further recites what the "translation manager" does (e.g., "obtaining a translation," "directing transmission," "providing translation"). Similarly, claim 26 recites a "translation manager" that includes "one or more translation engines translating..." These are method steps within an apparatus claim.
  • Motivation to Combine (N/A): This ground is not based on prior art.
  • Expectation of Success (N/A): This ground is not based on prior art.
  • Key Aspects: The argument focused on the inability of a potential infringer to determine the point of infringement. It is unclear whether infringement occurs when one makes or sells a system capable of performing the recited steps, or only when the system is actually used to perform those steps. This ambiguity, Petitioner argued, renders the claims indefinite.

Ground 3: Claims 23-28 are Invalid Under §112, second paragraph, for Indefiniteness (Failure to Disclose Structure for Means-Plus-Function Limitations)

• Legal Basis: Petitioner argued that multiple means-plus-function limitations in claims 23-28 are indefinite because the specification fails to disclose any corresponding structure, material, or acts for performing the recited functions.
• Core Argument:
  • Prior Art Mapping: Petitioner identified several means-plus-function limitations, including "means for receiving an electronic communication" (claim 26), "means for returning a translation" (claim 26), and "means for compiling statistics" (claims 23, 27). For each, Petitioner argued the specification provides only functional language that restates the claimed function, rather than disclosing a specific algorithm or structure. For software-implemented functions, a general-purpose computer is insufficient structure; an algorithm must be disclosed.
  • Motivation to Combine (N/A): This ground is not based on prior art.
  • Expectation of Success (N/A): This ground is not based on prior art.
  • Key Aspects: Petitioner noted that the specification's descriptions are purely functional (e.g., "the web page... is transferred... to a translation manager") and that diagrams only show high-level boxes with arrows, failing to provide the necessary detail for a POSITA to identify a specific structure or algorithm for performing the claimed functions.

4. Key Claim Construction Positions

• "Hyperlink" vs. "Hypertext Link": Petitioner argued that "hyperlink," a term added to the claims during prosecution but absent from the specification, should be given its ordinary meaning: the underlying functional tag or code (e.g., in HTML) that connects to another object. This was distinguished from "hypertext link," used in the specification, which refers to the visible text associated with the hyperlink. This distinction is critical because the underlying hyperlink code remains the same even if the visible text is translated, supporting the argument that activating "said hyperlink" leads to the original, untranslated page.
• "Said Hyperlink": Petitioner contended that, under the principles of antecedent basis, the term "said hyperlink" in the latter part of the independent claims must refer to the "one or more hyperlinks" recited at the beginning of the claims as being part of the original electronic communication to be translated. This construction forms the basis of the invalidity argument under §112, first paragraph, as it allegedly creates a nonsensical and impossible claim limitation.

7. Relief Requested

• Petitioner requests institution of a Covered Business Method patent review and cancellation of claims 1-28 of the ’022 patent as unpatentable.