Ex Parte 7584216 et al

Patent Trial and Appeal Board

Aug 17, 2015

95001918 (P.T.A.B. Aug. 17, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,918 03/02/2012 7584216 022987-0000006 5429
118845 7590 08/17/2015
Pillsbury Winthrop Shaw Pittman LLP - MotionPoint
(MotionPoint)
P.O. Box 10500
McLean, VA 22102
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/17/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TRANSPERFECT GLOBAL INC.
Requester and Respondent

v.

MOTIONPOINT CORP.
Patent Owner and Appellant

____________

Appeal 2015-004511
Inter partes Reexamination Control 95/001,918
United States Patent 7,584,216
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 1–35 and 37–40. App. Br. 1.1 Claims 36 and 41
were cancelled. Id. We have jurisdiction under 35 U.S.C. §§ 134 and 315
(pre-AIA), and we heard the appeal on August 5, 2015. We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed on behalf of Requester, on March 2, 2012, of United States Patent
7,584,216 (“the ’216 patent”), issued to Travieso et al. on September 1,
2009.
The ’216 patent describes translating website content to another
language dynamically. Upon a user request, first web content is divided into
translatable components, and those components lacking corresponding
translations in a database are scheduled for human translation, and the
resulting translations stored in the database. After a second user request for
the translated content, each component is replaced with a corresponding
translated component, and the translated content is sent to the user. See
generally ’216 patent, col. 7:43–9:56; Figs. 4–6. Claim 1 is illustrative of
the invention and reproduced below:

1 Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
December 24, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed April
21, 2014 (“App. Br.”); (3) Requester’s Respondent Brief filed August 21,
2014 (“PO Resp. Br.”); (4) the Examiner’s Answer mailed September 17,
2014 (“Ans.”) (incorporating the RAN by reference); and (5) Patent Owner’s
Rebuttal Brief filed October 17, 2014 (“Reb. Br.”).
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1. A machine implemented method for providing translated web
content, comprising the steps of:
receiving a first request from a user for content in a second
language translated from content in a first language from a first
Internet source;
retrieving the content in the first language from the first Internet
source;
dividing the content in the first language into a plurality of
translatable components, wherein a translatable component includes a
segment of text;
determining whether there are translatable components for
which no corresponding translation is found in a database that stores
translations for translatable components generated previously;
scheduling for translation of translatable components that do
not have corresponding translations in the database and using a human
translator to translate each translatable component into the second
language, wherein each segment of text is translated as a unit;
storing into the database the translations of the translatable
components as translated components;
receiving a second request from a user for translated content in
the second language corresponding to the content in the first language
from the first Internet source;
retrieving the content in the first language from the first Internet
source;
dividing the received content in the first language into a
plurality of translatable components;
generating the translated content in the second language by
modifying the received content in the first language so that each
translatable component is replaced with a corresponding translated
component stored in the database; and
sending the translated content to the user as a response to the
second request.

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RELATED PROCEEDINGS
This appeal is said to be related to various pending proceedings. First,
the ’216 patent is said to have been the subject of concurrent litigation
between the parties in TransPerfect v. MotionPoint, No. 4:10-cv-02590
(N.D. Cal. June 11, 2010). App. Br. 1; Resp. Br. 4.
Requester also cites five other pending inter partes reexaminations
involving other asserted MotionPoint patents, namely Control Numbers
95/001,916; 95/001,917; 95/001,919; 95/002,120; and 95/002,122. Resp.
Br. 4. Appeals have been filed in these proceedings except for the ’917
proceeding. The Board has jurisdiction over two of the appealed
proceedings, namely 95/001,919 and 95/002,120, which are assigned Appeal
Numbers 2015-006047 and 2015-006500, respectively. No decisions have
been rendered in those appeals.

THE APPEALED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims under 35
U.S.C. § 103(a) as follows:
Claims 1–8, 10–12, 15, 16, 23, 27, 28, 30, and 37–392 as obvious over
WizTom3 and Knyphausen.4 RAN 12.

2 Although the Examiner’s rejections include claims 36 and 41, these claims
were cancelled. See App. Br. 1. Accord Resp. Br. 4 (accepting this status).
Accordingly, we omit those claims here for clarity, and deem the Examiner’s
error in this regard harmless.
3 WizArt, WizTom 3.0 Documentation, WizTom Build 3.20.1246 (Dec. 20,
2001).
4 US 2002/0111787 A1; Aug. 15, 2002.
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Claims 2–7, 26, and 40 as obvious over WizTom, Knyphausen, and
WizTom Web Archive.5 Id.
Claims 9 and 29 as obvious over WizTom, Knyphausen, and
Savourel.6 Id.
Claims 13 and 14 as obvious over WizTom, Knyphausen, and
Skarpness.7 RAN 12–13.
Claims 17–20, 23, 24, and 31–34 as obvious over WizTom,
Knyphausen, and Sheng.8 RAN 13.
Claims 21 and 35 as obvious over WizTom, Knyphausen, Sheng, and
Chan.9 Id.
Claims 22 and 26 as obvious over WizTom, Knyphausen, and
Translator’s Workbench.10 Id.
Claim 25 as obvious over WizTom, Knyphausen, Sheng, and
Freivald.11 RAN 14.
Claims 1–8, 10–12, 15–20, 23–25, 27, 28, 30–34, and 37–40 as
obvious over Sheng and Cadieux.12 Id.

5 WizArt WizTom description archived by web.archive.org on or before Feb.
19, 2003.
6 Yves Savourel, Programming a Basic Translation Database, 11
MultiLingual Comp. & Tech. (Feb. 2000).
7 US 6,662,233 B1; Dec. 9, 2003.
8 WO 01/93089 A1; Dec. 6, 2001.
9 US 6,604,101 B1; Aug. 5, 2003.
10 TRADOS Translator’s Workbench 2.2 User’s Guide (1999), archived by
web.archive.org on or before Mar. 12, 1999.
11 US 6,219,818 B1; Apr. 17, 2001.
12 Pierre Cadieux, Evaluating Technologies for Web Site Globalization, 11
MultiLingual Comp. & Tech. (Oct.–Nov. 2000).
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Claims 9 and 29 as obvious over Sheng, Cadieux, Sheng, and
Savourel. Id.
Claims 13 and 14 as obvious over Sheng, Cadieux, and Skarpness.
RAN 14–15.
Claims 15 and 30 as obvious over Sheng, Cadieux, and Esselink.13
RAN 15.
Claims 21 and 35 as obvious over Sheng, Cadieux, and Chan. Id.
Claims 22 and 26 as obvious over Sheng, Cadieux, and Translator’s
Workbench. Id.
Claim 25 as obvious over Sheng, Cadieux, and Freivald. RAN 15–16.
Claims 1–3, 8, 10–12, 15, 16, 23, 24, 26–28, 30, and 37-40 as obvious
over LogoVista14 and Cadieux. RAN 16.
Claims 4–7 as obvious over LogoVista, Cadieux, and Luotonen.15 Id.
Claims 9 and 29 as obvious over LogoVista, Cadieux, and Savourel.
Id.
Claims 13 and 14 as obvious over LogoVista, Cadieux, and
Skarpness. RAN 17.
Claims 17–20 and 31–34 as obvious over LogoVista, Cadieux, and
Sheng. Id.
Claims 21 and 35 as obvious over LogoVista, Cadieux, and Chan. Id.
Claim 22 as obvious over LogoVista, Cadieux, and Déjà Vu.16 Id.

13 Bart Esselink, A Practical Guide to Localization (2000).
14 Troubleshooting: On-Line Help for LogoVista Components, archived by
web.archive.org on or before Feb. 19, 2002.
15 Art Luotonen, Web Proxy Servers (1998).
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Claim 25 as obvious over LogoVista, Cadieux, and Freivald. RAN
18.
Claims 1–3, 8, 10, 11, 15, 22–28, 30, and 37–40 as obvious over
Beurket,17 Translator’s Workbench, and Cadieux. Id.
Claims 4–7, 12, 16–20, and 31–34 as obvious over Beurket,
Translator’s Workbench, Cadieux, and Sheng. Id.
Claims 9 and 29 as obvious over Beurket, Translator’s Workbench,
Cadieux, and Savourel. RAN 18–19.
Claims 13 and 14 as obvious over Beurket, Translator’s Workbench,
Cadieux, and Skarpness. RAN 19.
Claims 21 and 35 as obvious over Beurket, Translator’s Workbench,
Cadieux, and Chan. Id.
Claim 25 as obvious over Beurket, Translator’s Workbench, Cadieux,
and Freivald. Id.

THE REJECTION OVER SHENG AND CADIEUX
In rejecting claim 1 over Sheng and Cadieux, the Examiner
incorporates pages 26, 27, 56, and 57 of the Reexamination Request filed
Mar. 2, 2012 (“Request”), and accompanying Claim Chart Exhibit CC-S1 by
reference. RAN 14. The Examiner also refers to pages 44 to 53 of
Requester’s Comments filed September 26, 2012 in connection with this
rejection.

16 DéjàVu: Productivity Systems for Translators (2000), archived by
web.archive.org on or before June 30, 2001.
17 US 6,122,666; Sept. 19, 2000.
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Based on this incorporated material, the Examiner finds that Sheng
discloses every recited element of claim 1 except for scheduling translatable
components for translation, but cites Cadieux as teaching this feature in
concluding that the claim would have been obvious. See RAN 14, 86–88.
Requester concurs with these findings and conclusions. Resp. Br. 14–16.
Patent Owner argues, among other things, that Sheng does not teach
human translation of previously-untranslated content, but rather that a
human “post-edits” content that is already translated. App. Br. 22–24; Reb.
Br. 8–10. Patent Owner adds that Cadieux’s creating jobs for data requiring
translation does not cure Sheng’s deficiencies regarding the recited
scheduling that is said to require placing onto a list for translation without
human intervention. App. Br. 22, 24–25; Reb. Br. 10–11. Lastly, Patent
Owner contends that the Examiner’s rejection is erroneous in light of the
submitted evidence pertaining to secondary considerations of non-
obviousness. App. Br. 34–37; Reb. Br. 13–16.

ISSUES
1. Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Sheng and Cadieux collectively would have taught or suggested
scheduling for translation of translatable components that do not have
corresponding translations in a database and using a human translator to
translate each translatable component into a second language, where each
segment of text is translated as a unit?
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2. Did the Examiner err in concluding that claim 1 would have been
obvious in light of the proffered evidence of secondary considerations of
non-obviousness?

ANALYSIS
The Examiner’s Rejection
We begin by construing the key disputed term “scheduling.”
According to Patent Owner, the recited “scheduling” requires placing onto a
list for translation without human intervention when the term is interpreted
in light of the Specification. App. Br. 22, 24–25; Reb. Br. 2–3, 10–11. To
support this proposed construction, Patent Owner refers to the automatic
scheduling capability of translation server in the ’216 patent that places web
pages for translation in a translation queue. App. Br. 15–16 (citing ’216
patent, col. 7, ll. 37–41). Patent Owner also refers to the District Court’s
construction of “scheduling” to mean “placing onto a list for translation in a
specified sequence.” App. Br. 15 (citing Exh. 10).
We agree with the Examiner and Requester, however, that the term
“scheduling” is not so limited under its broadest reasonable interpretation.
RAN 86–87; Resp. Br. 8. Accord Supplemental Declaration of Dr. Paul C.
Clark Under 37 C.F.R. § 1.132 (Resp. Br. Exh. 9) (“Supp. Clark Decl.”)
¶ 12. Although the court’s construction informs our understanding of
scheduling in the context of the claimed invention, we are not bound by this
interpretation. Like the Examiner, we apply a different standard to interpret
claims, namely the broadest reasonable interpretation. Accord In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“[I]t is error
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for the Board to ‘appl[y] the mode of claim interpretation that is used by
courts in litigation, when interpreting the claims of issued patents in
connection with determination of infringement and validity.”’ (quoting In re
Zletz, 893 F.2d 319, 321 (Fed. Cir.1989))). Accord App. Br. 18
(acknowledging the different claim construction standards).
Patent Owner has not identified a definition of the term “scheduling”
in the ’216 patent to so limit its interpretation. This omission is notable, for
the ’216 patent clearly defines other terms throughout the disclosure, leaving
no doubt as to their meaning. See, e.g., ’216 patent, col. 6, ll. 62–67
(defining “translatable component”); col. 26, ll. 26–28 (defining “spider”);
col. 32, ll. 9–29 (defining “computer program medium,” “computer usable
medium,” and “computer readable medium”). Yet no such definition for
“scheduling” was provided in the ‘216 patent.
Accordingly, we construe “scheduling” with its plain meaning. The
term “schedule” is defined, in pertinent part, as “list or plan of intended
events, times, etc.” or “a plan of work.” The Oxford American Desk
Dictionary 536 (Frank Abate ed. 1998) (emphases added). Under the term’s
broadest reasonable interpretation, then, the recited “scheduling” for
translation means listing or planning for translation of translatable
components that do not have corresponding translations in the database.
Based on this interpretation, we see no error in the Examiner’s position that
the recited “scheduling” encompasses both manual and automatic processes.
RAN 67–68, 86–87.
Turning to the rejection, we see no error in the Examiner’s reliance on
Sheng for teaching using a human translator for translating translatable
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components, and Cadieux for at least suggesting scheduling those
components for translation as claimed. See RAN 14, 86–88. First, as Dr.
Clark indicates (Supp. Clark Decl. ¶¶ 13, 15–16), human translation is a key
aspect of Sheng’s translation process. As shown in Figure 6, Sheng
translates text using translation memory and machine techniques in steps
604 and 606, and then can use a manual post-editing process in steps 608
and 610. Sheng 31:3–27. Notably, Sheng acknowledges that, although cost-
effective, machine language translation itself is “not highly accurate.” Id.
31:17–19. But when this machine translation combined with post-editing,18
the resulting translation is “highly accurate.” Id. 31:19–22.
Patent Owner, however, contends that because the editing step 610
follows the translation steps 604 and 606, Sheng does not teach human
translation of untranslated content, but rather that humans edit previously-
translated content. App. Br. 22–24; Reb. Br. 9–10.
This argument is unavailing. Despite Sheng’s nomenclature, skilled
artisans would understand that the manual “post-editing” process includes
human translation. Accord Supp. Clark Decl. ¶¶ 13, 15. Although post-
editing follows machine translation in Sheng’s Figure 6, post-editing
effectively translates inaccurate translations so that they are accurate. In
that sense, then, the post-editing process translates those components lacking
corresponding accurate translations. Claim 1 does not preclude this

18 Because machine translations can be combined with one or more of three
different processes to improve accuracy, namely (1) memory translation, (2)
user-defined lexicon translation, and (3) post-editing (Sheng 17:1–7; 31:19–
22), we confine our discussion to combining machine translations with only
post-editing.
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distinction, nor is it inconsequential: an inaccurate translation may be
difficult to understand, be misinterpreted, or even be incomprehensible.
That Sheng refers to the resulting translation after post-editing on line 21 of
page 31 is notable in this regard, for skilled artisans would understand that
post-editing uses humans to translate components lacking accurate
translations to provide accurate resulting translations.
To the extent that Patent Owner contends that Sheng’s post-editing
involves no translation, but is limited to solely editing, such a position
ignores Sheng references to “post-editing translation” that at least suggests
that post-editing not only involves translation, but that post-editing can itself
be used to that end. See Sheng 17:1–3 (noting that post-editing translation
can be used alone to translate information); see also id. 16:18–19 (noting
that the translation process may be provided through a manual post-editing
process). As such, Patent Owner does not persuasively rebut the Examiner’s
position that Sheng uses human translation not only in the first instance, but
also to provide accurate translations, where the machine translations are used
as a “head start” to achieve that end. RAN 87–88; Resp. Br. 14–15. Accord
Sheng 16:23–17:1 (noting that information that is initially translated using
post-editing may be further refined by using machine language translation in
a later translation process, and vice-versa).
Nor are we persuaded of error in the Examiner’s reliance on Cadieux
for teaching scheduling translatable components for translation. See RAN
14, 88. As noted above, we broadly, but reasonably, interpret the recited
“scheduling” for translation as listing or planning for translation of
translatable components that do not have corresponding translations in the
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database. Based on this interpretation, we agree with the Examiner that
“scheduling” is not limited to (1) any particular data structure (e.g., a list or
ordered list), or (2) automatic processes. RAN 88.
Notably, Cadieux’s workflow engines not only allow deadlines to be
associated with jobs or single job steps, but also escalation and rerouting
procedures when a job step exceeds a certain time limit (Cadieux p. 38, col.
1, ll. 4–9). Given this teaching, along with Cadieux’s teachings of receiving
content that needs to be translated, and automatically creating, scheduling,
assigning, and performing discrete jobs in a project based on size, language,
deadlines, and priority as Requester indicates (Resp. Br. 15–16), we find this
disclosure at least suggests scheduling translatable components for
translation, namely at least planning for translation of translatable
components that do not have corresponding translations. Therefore,
enhancing Sheng with Cadieux’s scheduling functionality uses prior art
elements predictably according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Accord Declaration of Dr. Paul C. Clark Under 37 C.F.R. § 1.132 (Resp. Br.
Exh. 8) (“Clark Decl.”) ¶ 47 (“Incorporating [Cadieux’s] scheduling into
Sheng would be no more than combining prior art elements (i.e. translation
and scheduling of translation) according to known methods (i.e. Cadieux’s
creating of translation jobs) to yield predictable results (e.g. translating
according to a schedule) . . . .”).
Patent Owner’s contentions based on scheduling allegedly requiring
placing onto a list for translation without human intervention (App. Br. 22,
24–25; Reb. Br. 10–11) are unavailing and are not commensurate with the
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scope of the claim. Nor do we find that combining Cadieux with Sheng as
proposed would somehow destroy Sheng’s real-time, “on-the-fly”
translation system as Patent Owner suggests. See Reb. Br. 8–9. Rather, the
proposed enhancement would not only provide Sheng’s system with
accurate human translations, but also schedule workflow and associated
components to achieve that end effectively under certain time and resource
constraints. Even assuming, without deciding, that this scheduling would
somehow slow Sheng’s “on-the-fly” translations as Patent Owner asserts,
skilled artisans would nonetheless understand that the benefits provided by
scheduling translatable components for translation could offset any speed
reductions caused by such scheduling, particularly when resources are
limited. Such considerations amount to an engineering trade-off well within
the level of ordinarily skilled artisans.

Secondary Considerations
In determining obviousness of the claimed invention, objective
evidence of secondary considerations pertaining to nonobviousness must be
considered, including long-felt but unsolved needs, failure of others,
commercial success, etc. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). “If rebuttal
evidence of adequate weight is produced, the holding of prima facie
obviousness . . . is dissipated. Regardless of whether the prima facie case
could have been characterized as strong or weak, the examiner must
consider all of the evidence anew.” In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984).
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While evidence of secondary considerations must be considered and
“may often be the most probative and cogent evidence in the record,”
Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985),
it does not, however, control the obviousness conclusion. Newell Cos., Inc.,
v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Indeed, a strong
case of obviousness cannot be overcome by a far weaker showing of
objective indicia of nonobviousness. Tokai Corp. v. Easton Enter., Inc., 632
F.3d 1358, 1371 (Fed. Cir. 2011).
Nevertheless, “[o]bjective indicia of nonobviousness play a critical
role in the obviousness analysis.” Leo Pharm. Products, Ltd. v. Rea, 726
F.3d 1346, 1358 (Fed. Cir. 2013). These indicia are not just a cumulative or
confirmatory part of the obviousness analysis, but rather constitute
independent evidence of nonobviousness that can be the most probative
evidence in that regard “in avoiding the trap of hindsight when reviewing,
what otherwise seems like, a combination of known elements.” Id.
Here, Patent Owner presents evidence pertaining to secondary
considerations of non-obviousness, namely (1) long-felt need and failure of
others; (2) commercial success; (3) skepticism/disbelief; (4) professional
approval; and (5) laudatory statements by the accused infringer. App. Br.
37–41. The Examiner, however, did not find this evidence sufficient to
establish that the claimed invention would not have been obvious in light of
other evidence to the contrary. See RAN 154–160.

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Nexus and Commercial Success
In weighing the submitted secondary-considerations evidence, the
Examiner found, among other things, that Patent Owner did not establish a
sufficient nexus between the evidence and the claims. RAN 154. Patent
Owner, however, contends that the Examiner erred by requiring that the
product sold be completely coextensive with the claimed invention to
establish the requisite nexus. App. Br. 34–35; Reb. Br. 13–16. This “new”
requirement is said to run counter to legal precedent where nexus can be
established despite the product containing features in addition to those
recited in the claims that, according to Patent Owner, has been done here.
Id. Because Patent Owner maintains that prima facie nexus has been
established, Patent Owner contends that it is the Requester—not the Patent
Owner—who must prove that elements of the product other than those
claimed resulted in the secondary indicia of non-obviousness. App. Br. 34;
Reb. Br. 13–15. According to Patent Owner, Requester failed to meet that
burden. Id.
“A prima facie case of nexus is generally made out when the patentee
shows both that there is commercial success, and that the thing (product or
method) that is commercially successful is the invention disclosed and
claimed in the patent.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392 (Fed. Cir. 1988). But “[w]hen the thing that is
commercially successful is not coextensive with the patented invention—for
example, if the patented invention is only a component of a commercially
successful machine or process—the patentee must show prima facie a
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legally sufficient relationship between that which is patented and that which
is sold.” Id.
It is undisputed that the claimed invention is a component of the
product sold and, therefore, not coextensive with the claimed invention. See
Resp. Br. 22 (noting that the claimed invention is only one component of
Patent Owner’s product); see also App. Br. 34 (acknowledging that “the
product sold by Patent Owner is nearly coextensive with the claimed
features”) (emphasis added); Resp. Br. 20 (“It is undisputed that
MotionPoint’s product is not coextensive with the claimed invention.”).
The question, then, is whether Patent Owner has shown a legally
sufficient relationship between the product sold and the claimed invention.
See Demaco, 851 F.2d at 1392. On pages 1 to 12 of Exhibit B of the Paul
Onnen declaration (App. Br. Exh. 6) (“Onnen Decl.”), a chart maps the
limitations of claim 1 to the corresponding features of MotionPoint’s
product side by side. Accord Onnen Decl. ¶ 167 (noting this
correspondence). Although uncorroborated, this correspondence
nonetheless tends to show at least some relationship between MotionPoint’s
commercial product and the claimed invention, at least in Mr. Onnen’s
opinion. That does not mean, however, that this product was successful
commercially in the context of the relevant market, let alone that the claimed
features resulted in that commercial success to constitute a legally sufficient
relationship between the alleged commercially-successful product and the
particular elements claimed to establish prima facie nexus. Accord RAN
158 (“Exhibit B merely provides Declarant’s opinion as to the benefits to a
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customer and needs satisfied[,] but fails to explain how commercial success
flows from these features.”).
It is well settled that “success is relevant in the obviousness context
only if there is proof that the sales were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Had Patent Owner
established a prima facie case of nexus by establishing the requisite legally-
sufficient relationship, the burden would have then shifted to Requester to
show that the product’s alleged commercial success was due to factors other
than the claimed invention, such as advertising, superior workmanship, etc.
See Demaco, 851 F.2d at 1393; see also Brown & Williamson Tobacco
Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).
Patent Owner, however, did not establish prima facie nexus in this
case to so shift the burden to Requester. Nevertheless, Requester provides at
least some rebuttal evidence to Patent Owner’s nexus position by noting that
Mr. Fleming, MotionPoint’s chief executive officer, admitted that much of
MotionPoint’s success is because “he astutely picked the right business at
the right time,” citing several factors for the company’s growth, including
(1) a steady increase in the importance of companies’ websites, and (2) the
continuing trend of companies seeking growth in new markets. Resp. Br. 21
(citing MotionPoint Press Release (Resp. Br. Exh. 5), at 1). Although this
evidence, standing alone, has somewhat reduced probative value regarding
the nature of the sales of the product at issue, the evidence nonetheless tends
to suggest that factors other than the features of the claimed invention may
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have contributed to the product’s alleged commercial success, including
prevailing industry, economic, and technological trends at the time.
In any event, we find no error in the Examiner’s position that Patent
Owner’s evidence is insufficient to establish commercial success of the
product in the context of the overall market. RAN 158. It is well settled that
gross sales figures, such as annual sales revenue in paragraph 16 of the
Fleming Declaration,19 do not show commercial success absent evidence of
market share. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1026-27 (Fed. Cir. 1985), overruled on other grounds by Midwest
Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir.
1999) (en banc).
As the Examiner indicates, Patent Owner has not evidenced the state
of the market during the relevant period (e.g., market share, price, market
demand, state of the competition, etc.) to assess whether the product
embodying the invention was successful due to the claimed features rather
than price advantage, expanding market size, lack of competition, or other
factors. RAN 158. We also see no error in the Examiner’s position that the
record lacks facts showing (1) total sales for competing products in the
market; (2) indicated differences between these products and those of Patent
Owner; (3) the total sales for products embodying the invention; and (4)
pricing of the various products. RAN 159.
Patent Owner’s reliance on the average annual revenue growth rate of
56%, and 114% from 2007 to 2010 from the Fleming declaration (App. Br.
39–40) falls short in this regard. First, the two websites on page 40 of the

19 Declaration of William S. Fleming (App. Br. Exh. 5) (“Fleming Decl.”).
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Brief cited to establish the average annual growth rate in the translation
services industry in the relevant period constitute evidence introduced
improperly for the first time in the Appeal Brief and, therefore, violate 37
C.F.R. § 41.67 as Requester indicates. Resp. Br. 24. Accordingly, we do
not consider this new evidence here in the first instance on appeal. Second,
Requester’s analysis of Mr. Fleming’s growth data undermines Patent
Owner assertions in this regard, for Requester shows, among other things,
that MotionPoint grew by approximately 20.3% and 34.6% from 2008–09
and 2009–10, respectively, lagging behind its peers in those years. Resp. Br.
24–26 (citing Nataly Kelly & Vijayalaxmi Hegde, Language Service
Provider Growth Factors (2010), at 11 (Resp. Br. Exh. 7)).
So if there was any error in the Examiner’s nexus analysis, it was
harmless, for Patent Owner fails to establish that its sales were a commercial
success in the web content translation industry, particularly in light the lack
of evidence pertaining to, among other things, the overall size and extent of
the web content translation market during the relevant period, relative
market share, and sales performance of competing products as the Examiner
indicates. RAN 158–59. Cf. Gator Tail, LLC, v. Mud Buddy LLC, Nos.
2014–1747, –1748, 2015 WL 3833465, at *6 (Fed. Cir. 2014) (unpublished)
(district court’s error in not presuming that commercial success was due to
claimed invention held harmless in view of lack of market-based evidence
showing that sales were a commercial success in the relevant industry).
Moreover, the features that allegedly create the commercial success
are already present in the prior art as Requester indicates. See Resp. Br. 21
(noting that the specific features MotionPoint identified as driving its
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success, namely its proxy server approach and crawling feature, were very
well known in the art, and in the case of the crawling feature, not even
claimed in this particular MotionPoint patent); see also id. (noting
MotionPoint’s admission that both the proxy server and crawling features
were known in the art (citing Trial Tr. 860, 862–64 (Resp. Br. Exh. 2)).
Notably, only the proxy server feature that is said to have driven
Patent Owner’s commercial success is claimed—not the crawling feature.
See App. Br. 38 (noting that the proxy server feature is recited in all claims
of the ’216 patent, but omitting such a mapping for the crawling feature).
But even if crawling were claimed (which it is not), there is still no nexus
because the evidence of secondary considerations stems from what was
known in the prior art. See Tokai Corp. v. Easton Enters., Inc., 632 F.3d
1358, 1369 (Fed. Cir. 2011) (“If [secondary considerations are] due to an
element in the prior art, no nexus exists.”). Although Patent Owner contends
that it is not these individual features, but rather the combination of elements
claimed that was not known in the prior art (Reb. Br. 13–14), we see no
error in the Examiner’s and Requester’s position to the contrary. See RAN
155; Resp. Br. 21.
On this record, then, we find no error in the Examiner’s position that
the evidence pertaining to commercial success considered with the other
evidence of secondary considerations of non-obviousness is insufficient to
outweigh the countervailing evidence of obviousness.

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Long-Felt Need and Failure of Others
We also see no error in the Examiner’s position that the evidence
pertaining to long-felt need and failure of others considered with the other
evidence of secondary considerations of non-obviousness is insufficient to
outweigh the countervailing evidence of obviousness.
To establish a long-felt need, three elements must be proven. First,
the need must have been a persistent one that was recognized by ordinarily
skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Second,
the long-felt need must not have been satisfied by another before the claimed
invention. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768
(Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no
long-felt need or, indeed, a problem to be solved . . . .”). Third, the
invention must, in fact, satisfy the long-felt need. In re Cavanaugh, 436
F.2d 491, 496 (CCPA 1971).
Here, Patent Owner cites declarations by Morris, Weness, and
Kimball that are said to evidence a persistent, yet unmet, need over time for
providing a solution for creating translated websites. App. Br. 37 (citing
Declaration of Jacob J. Morris (App. Br. Exh. 3) (“Morris Decl.”) ¶¶ 5–7;
Declaration of Jeffrey D. Weness (App. Br. Exh. 2) (“Weness Decl.”) ¶¶ 4–
10; Declaration of Matthew J. Kimball (App. Br. Exh. 4) (“Kimball Decl.”)).
Patent Owner also cites the Onnen declaration for showing the art-
recognized need for providing a solution for multilingual websites in light of
the drawbacks and deficiencies of technologies available before the claimed
invention. Id. The Fleming declaration is also cited to account the ongoing
needs expressed by those skilled in the art based on failures of other then-
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available technical solutions to create and maintain multilingual websites
before the claimed invention. Id.
We find this evidence unavailing to establish a persistent need that
was recognized by ordinarily skilled artisans before the claimed invention,
namely before the February 23, 2003 filing date of the ’216 patent’s
provisional application. Leaving aside the fact that Mr. Morris was
unemployed on the day he signed his declaration (August 14, 2012) and was
later hired by MotionPoint as Requester indicates,20 the relevant facts from
Morris’ declaration are during his employment with Delta Air Lines, and
specifically during his position as Senior Web Product Manager from
December 2005 to March 2008. Morris Decl. ¶ 4. Although Morris had
been employed with Delta from May 2002, it was not until at least
December 2005 that his work involved launching fully translated versions of
Delta’s website products in eight languages that ultimately resulted in hiring
MotionPoint to provide those products in early–mid 2006. See id. ¶¶ 2–4.
Morris states that, before 2006, Delta was unable to identify a vendor
offering a satisfactory solution or service for providing translated web
content until hearing about MotionPoint’s technology. Morris Decl. ¶ 6.
Morris further declares that all the other vendors of which he was aware
offered similar website translation technology that involved installing

20 See Resp. Br. 23 (citing Morris Testimony from Exhibit 3 of the
Respondent Brief confirming Morris’ unemployment and later employment
by MotionPoint); see also LinkedIn resume of Jacob J. Morris (Resp. Br.
Exh. 4) (noting that Mr. Morris was a “Sojourner, Adventurer, & Student”
and on “Sabbatical” from July to October 2012).
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software into Delta’s backend system that required significant time, effort,
and expense to implement. Id. ¶¶ 6–7.
Although Morris’ statements are probative at least to the extent that
they reflect the challenges he experienced when creating a translated website
for Delta in 2005 and 2006 based on his knowledge of the then-existing
technology, these uncorroborated statements, even when considered with the
other evidence of non-obviousness, fall short of establishing a long-felt need
that was recognized by ordinarily skilled artisans, let alone that such a need
persisted before the claimed invention. Accord RAN 156 (noting that the
statements in the various declarations are not accompanied by any
corroborating factual evidence that can be dated before the invention).
The Weness declaration has similar shortcomings. Although Weness
was employed by Best Buy from 2001 to 2009, it was not until 2006 that he
was involved in launching a Spanish-language version of Best Buy’s website
and became familiar with the challenges associated with that effort. Weness
Decl. ¶¶ 1–3. After 20 hours of investigation, Weness determined that there
were a number of different solutions that were available commercially in
2006, including those involving machine translation, content management
systems (CMS), and human translation. Id. ¶¶ 6–10. But due to the various
perceived drawbacks of these solutions at least with respect to Best Buy’s
system, MotionPoint was deemed to provide the solution that satisfied Best
Buy’s needs in terms of, among other things, price, transparency, the ability
to translate different types of content, rapid deployment, scheduling, reusing
human translations, and not needing integration with backend architecture.
Id. ¶¶ 7–12.
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Weness’ statements are probative at least to the extent that they reflect
the challenges he experienced when creating a translated website for Best
Buy in 2006 based on his knowledge of the then-existing technology before
hiring MotionPoint. But Weness has no background in computer science
and, notably, his investigation lasted only 20 hours. Accord Resp. Br. 23
(noting this point and citing Trial Tr. (Resp. Br. Exh. 2), at 1258–65). These
facts reduce the probative value of the Weness declaration, at least with
respect to establishing a long-felt, but unsolved need before the invention.
In short, Weness’ uncorroborated statements, even when considered with the
other evidence of non-obviousness, fall short of establishing a long-felt need
that was recognized by ordinarily skilled artisans, let alone that such a need
persisted before the claimed invention. Accord RAN 156 (noting that the
statements in the various declarations are not accompanied by any
corroborating factual evidence that can be dated before the invention).
The Kimball declaration, however, is more probative in this regard.
Kimball not only has a computer science degree, but also avers that he has
expertise in website translation products and services dating from
“approximately 1999” to the January 2003 to January 2005 timeframe when
he led the effort to produce a translated version of a website portal for the
state of Florida, specifically in the spring of 2004. Kimball Decl. ¶¶ 1–2, 6,
8. Based on his experience dating back to 1999, Kimball notes that there
were three typical approaches for producing translated websites, namely
those involving machine-generated translations, human translators, and
multilingual CMS (MCMS), but none of these solutions satisfied Florida’s
needs other than MotionPoint’s solution. Id. ¶¶ 10–16.
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Although Requester contends that there is no evidence indicating that
Kimball had personal knowledge of the translation industry during the
relevant period (Resp. Br. 23), Kimball nonetheless avers in paragraphs 6
and 10 of his declaration that he has expertise in website translation products
and services dating from 1999—albeit uncorroborated. Nevertheless, to be
an expert in this area from 1999 to 2005, including the time in which
Kimball was involved in developing a translated website portal, one could
infer that he would have at least some personal knowledge of the translation
industry in the relevant time period. But because this fact is uncorroborated,
the extent of this knowledge and expertise is unclear from this record, which
reduces its probative value. As such, we see no error in the Examiner’s
finding that the Kimball’s statements are not corroborated by factual
evidence dated before the invention, and are, therefore, unpersuasive in
establishing long-felt need, even when the statements are considered with
the other evidence of non-obviousness. See RAN 156 (noting that the
statements in the various declarations are not accompanied by any
corroborating factual evidence that can be dated before the invention).
The Onnen declaration fares no better in this regard. Onnen declares
that, in his opinion as an “experienced veteran” in the art, the technology of
the ’216 patent solves a longstanding need in providing an efficient and
effective solution to developing multilingual websites—a need that is said to
have existed since the emergence of websites and the common desire in
industries to grow business by selling products in international markets.
Onnen Decl. ¶¶ 52, 163. As the Chief Technology Officer (CTO) for
Expedia from May 2005 to October 2007, Onnen was responsible for
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localization of Expedia websites which involved manual translation methods
and integration of the translated content into Expedia’s CMS. Onnen Decl.
¶ 7, Exh. A. Onnen avers that in the early 2000s, machine-translation
quality was worse that it was in 2012 which was “far from perfect.” Id.
¶ 28. While serving as CTO for WebMD in 2003, Onnen was responsible
for WebMD.com website that used a CMS server that provided multi-
language capability by switching templates dynamically to ensure that
content was served in the appropriate language. Id. ¶ 30. Onnen explains
that having a MCMS integrated tightly with the website infrastructure
resulted in drawbacks including (1) significant time and money expenditure;
(2) risk that integration can affect the website adversely; and (3) limitations
in upgrading the website to newer technologies because the toolkit has to be
re-integrated with the newer technology. Id. ¶ 33. Onnen describes various
other drawbacks of MCMS-based approaches, as well as approaches using
translation memory tools. Id. ¶¶ 35–42. Onnen also provides a detailed
summary of the purported benefits to the customer and needs satisfied by the
claimed invention in Exhibit B of his declaration.
Although Requester contends that Onnen was not involved in website
translation until 2005 at the earliest (Resp. Br. 23), Onnen was nevertheless
responsible for WebMD’s website that provided multi-language capability in
2003 that employed a CMS as noted above. Onnen Decl. ¶ 30. This
experience would have at least some bearing on Onnen’s qualification to
determine the state of the art of website translation in 2003. Still, although
Onnen’s declaration has probative value regarding what, in his opinion, the
state of the art was when he was involved in web translation activities, we
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cannot say that the Examiner erred in finding that Onnen’s statements are
uncorroborated factually. As such, we see no error in the Examiner’s
position that Onnen’s uncorroborated statements, even when considered with
the other evidence of non-obviousness, fall short of establishing a long-felt
need that was recognized by ordinarily skilled artisans, let alone that such a
need persisted before the claimed invention. Accord RAN 156 (noting that
the statements in the various declarations are not accompanied by any
corroborating factual evidence that can be dated before the invention).
The Fleming declaration, too, is unpersuasive in this regard.
Although Fleming describes the drawbacks associated with two technologies
available in the early 2000s, namely machine translation and MCMS,
Requester notes that Fleming had no prior experience in the translation
industry, and did not know what others were doing in that industry. Resp.
Br. 23. In any event, Fleming’s statements are uncorroborated factually,
and, as such, we see no error in the Examiner’s position that these
statements, even when considered with the other evidence of non-
obviousness, fall short of establishing a long-felt need that was recognized
by ordinarily skilled artisans, let alone that such a need persisted before the
claimed invention. Accord RAN 156.
Nevertheless, even if this evidence somehow shows that such a
persistent need existed before the claimed invention that was recognized by
ordinarily skilled artisans (which it does not), we are still unpersuaded of
error in the Examiner’s finding that such a need was solved by another
before the claimed invention, such as the solutions from WizTom,
SYSTRAN, and common web-crawlers as Requesters indicate. Resp. Br.
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22–24; RAN 157. Even the Idiom document, which Patent Owner cites as
showing one company’s problems associated with using a proxy server and
crawling approaches for website translation (App. Br. 38 (citing App. Br.
Exh. 8–9)),21 nonetheless implemented WorldServer 1.0 at three customer
sites, albeit with some difficulty as Requester indicates. Resp. Br. 24.
In any event, to the extent that Patent Owner contends that an
implementation requiring both the proxy server and crawling features of the
MotionPoint product solved the purported long-felt need, only the proxy
server feature is claimed—not the crawling feature. See App. Br. 38 (noting
that the proxy server feature is recited in all claims of the ’216 patent, but
omitting such a mapping for the crawling feature). Nevertheless, Patent
Owner has not persuasively rebutted the Examiner’s and Requester’s
position that these features were known in the art and, as such, the purported
long-felt need was satisfied by another before the claimed invention. Resp.
Br. 21-23; RAN 157. See Newell, 864 F.2d at 768.
On this record, then, we find no error in the Examiner’s position that
the evidence pertaining to long-felt need and failure of others considered
with the other evidence of secondary considerations of non-obviousness is
insufficient to outweigh the countervailing evidence of obviousness.

21 Although not previously made of record before the Appeal Brief, Patent
Owner’s Exhibit 8 (“Problems With Localization Proxy Server Approach to
Web Globalization”) was nonetheless treated as a Notice of Concurrent
Proceedings under 37 C.F.R. § 1.985(b) and entered into the record. See
Petition Decisions mailed August 13, 2014 and Sept. 12, 2014. Although
these petition decisions did not involve the accompanying trial transcript in
Patent Owner’s Exhibit 9, we nonetheless treat that document as a Notice of
Concurrent Proceedings similar to its counterpart Exhibit 8.
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Skepticism/Disbelief
We are also unpersuaded of error in the Examiner’s finding that
Patent Owner’s submitted evidence of skepticism, even when considered
with the other evidence of non-obviousness, is insufficient to outweigh the
countervailing evidence of obviousness.
To be sure, initial skepticism of experts is relevant to non-
obviousness. See Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549,
1556 (Fed. Cir. 1987). Although Patent Owner contends that such
skepticism is “clearly set out in the previously submitted declarations” (App.
Br. 40), Patent Owner does not cite or identify the relevant passages dealing
with such purported skepticism with particularity. Nevertheless, to the
extent that these declarations are relevant to determining whether others
were skeptical of the invention, the Examiner nonetheless did not find that
evidence persuasive, at least with respect to the claimed invention. See
RAN 159. Nor does Patent Owner’s reliance on the Idiom failure document
and accompanying trial transcript persuasively rebut the Examiner’s position
that the evidence not only fails to express doubt that the claimed method
would work as intended, but is also not accompanied by corroborating
factual evidence that can be dated before the invention. Id.
On this record, then, we find no error in the Examiner’s position that
the evidence pertaining to skepticism of others and disbelief considered with
the other evidence of secondary considerations of non-obviousness is
insufficient to outweigh the countervailing evidence of obviousness.

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Professional Approval
We likewise are unpersuaded of error in the Examiner’s finding that
Patent Owner’s evidence of professional approval, namely the awards cited
on page 14 of the Fleming declaration and accompanying exhibits (App. Br.
41), is insufficient to show non-obviousness. As the Examiner and
Requesters indicate, there is insufficient evidence to show that this approval
was due to the steps recited in the claims versus other unclaimed factors or
business strategy. RAN 159–160; Resp. Br. 27.
On this record, then, we find no error in the Examiner’s position that
the evidence pertaining to professional approval considered with the other
evidence of secondary considerations of non-obviousness is insufficient to
outweigh the countervailing evidence of obviousness.

Accused Infringer’s Laudatory Statements
Nor has Patent Owner (App. Br. 41) persuaded us of error in the
Examiner’s position that the purported laudatory statements of the accused
infringer were made because of the steps recited in the claims. RAN 160.
As Requester indicates, Patent Owner fails to provide evidence specifically
linking such praise with the elements of the claimed invention. Resp. Br. 27.
On this record, then, we find no error in the Examiner’s position that
the evidence pertaining to the accused infringer’s laudatory statements
considered with the other evidence of secondary considerations of non-
obviousness is insufficient to outweigh the countervailing evidence of
obviousness.

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Summary
Based on the totality of this record, we see no error in the Examiner’s
finding that the secondary considerations evidence, when considered
collectively, is insufficient to outweigh the countervailing evidence of
obviousness. Therefore, we are not persuaded that the Examiner erred in
rejecting claim 1, and claims 2–8, 10–12, 15–20, 23–25, 27, 28, 30–34 over
Sheng and Cadieux, and 37–40 not argued separately with particularity.

THE OTHER REJECTIONS BASED ON SHENG AND CADIEUX
We also sustain the Examiner’s obviousness rejections of claims 9,
13–15, 21, 22, 25, 26, 29, 30, and 35 over Sheng, Cadieux, and other
references. RAN 14–16. Patent Owner reiterates similar arguments made in
connection with the independent claims, and alleges that the additional cited
references fail to cure the purported deficiencies of Sheng and Cadieux.
App. Br. 25. We are not persuaded by these arguments, however, for the
reasons previously discussed.

THE REMAINING REJECTIONS
Because our decision is dispositive regarding unpatentability of all
appealed claims based on Sheng and Cadieux, we need not reach the merits
of the Examiner’s decision to also reject the appealed claims as obvious over
other cited prior art references (RAN 12–14, 16–19). See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s
determination based on a single dispositive issue, and not reaching other
issues not decided by the lower tribunal).
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CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1–35 and
37–40.

DECISION
The Examiner’s decision rejecting 1–35 and 37–40 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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PATENT OWNER:

PILLSBURY WINTHROP SHAW
PITTMAN LLP - MOTIONPOINT
(MOTIONPOINT)
P.O. BOX 10500
MCCLEAN, VA 22102

THIRD PARTY REQUESTER:

STERNE, KESSLER, GOLDSTEIN & FOX PLLC
1100 NEW YORK AVENUE, NW
WASHINGTON, DC 20005