Just when we thought it was safe to shred our voluminous hardcopy listings of patent applications, we found ourselves reviewing the text of US patent 6857022 for one-click website translation. Why? Last week the U.S. Patent Trial and Appeal Board (PTAB) determined that the patent is invalid because it lacks a proper written description.That follows the contrary November 2014 decision by the U.S. District Court ruling that the 022 patent, owned by TransPerfect, stands and that MotionPoint infringed it.
What did CSA Research's review of the filing determine? Once again, we found that this particular patent – and the several others that accompanied it on its legal journey – should never have been granted. It gives inventor's credit to TransPerfect for what is actually prior art from software implementations that predate the awarding of the patent. Similarly, the MotionPoint patents that the court dismissed owed much to previously implemented technology.
Why does this case continue through the U.S. Patent and Trademark Office (USPTO), the federal court, and inter partes reexamination under the America Invents Act? While ego and hubris drove the initial patents and the court fight, two other factors come into play:
The principle with a dollop of revenge. TransPerfect won the 2013 case and 2014 judgment, but then chose only to enforce its intellectual property rights against MotionPoint. TransPerfect was adamant in its stand that it didn't start this fight but wouldn't step aside. Thus, it didn't object when the court found MotionPoint had infringed, fined it, and assessed royalties on its use of the technology. Not unexpectedly, TransPerfect is confident that its intellectual property will be vindicated on appeal.
Protection for core technology. MotionPoint's product offering depends on the 6857022 patent, so there was no way that it could cede ownership or pay the fine or royalties. Instead, it chose to appeal both the court's decision (still pending) and the USPTO's earlier finding in favor of TransPerfect. MotionPoint CEO Will Fleming celebrated the PTAB decision, stating that, "Through the twists and turns of the legal process, [we have] remained focused on what matters to our clients." What matters is voiding TransPerfect's patent and thus clearing the way for unfettered use of its core technology.
What's the impact? Unfortunately, the PTAB decision doesn't end this once and for all. The U.S. District Court still has to rule on the appeal and the USPTO re-examination will take another look at the 022 patent. On the other hand, it's a step that allows MotionPoint – and other software developers using the technology – to breathe easier. While TransPerfect chose not to enforce its patent against companies other than MotionPoint, it could always decide in the future to exercise its rights. To date, it's given no indication that it's interested in doing that. And with each such determination that the technology in question is not patentable, it moves the market that much closer to acknowledging that anyone can freely use this late 1990s' era technology.
In the aftermath of the PTAB decision and looking forward to more time in court, we can't help but wonder what the executives at TransPerfect's headquarters in New York and MotionPoint's in Miami think about this multi-year legal saga. Had they simply acknowledged the fact that the technologies in question were in use for years prior to receiving their patents, they would have saved millions of dollars in legal fees, countless hours of executive and technical experts' time, unnecessary visibility in the press, and reading yet another blog post about how pointless the whole exercise was. Knowing where this would end up, cooler heads would have prevailed and the two companies wouldn't have sued each other.