Blackboard, SFLC Respond to Patent Reexam

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01.26.2007—Responding to a request from the Software Freedom Law Center (SFLC), the United States Patent and Trademark Office (USPTO) decided Jan. 25 that it would indeed reexamine Blackboard's disputed and controversial patent on technologies used in course management systems. Both Blackboard Inc. and the SFLC, which represents open-source CMS developers, responded to the decision.

The decision by the USPTO was not an unexpected one. Some 95 percent of all reexamination requests filed with the USPTO are granted. But the SFLC said it sees this decision as something of an initial victory.

"We were pretty hopeful that this would be the outcome when we filed our request," said Richard Fontana, counsel for the SFLC. "We do see it as a victory, but it's just the first step."

The SFLC is the organization that represents open-source developers Sakai, Moodle and ATutor, all of which claim that Blackboard's patent will impact their ability to develop CMS software. The SFLC filed the request for a patent reexamination with the USPTO on their behalf. SFLC's Fontana was personally responsible for preparing and filing that request.

Blackboard, for its part, said it sees the decision as a non-issue. Matthew Small, senior vice president and general counsel for Blackboard, said that the company expected the USPTO to follow through with the reexamination. "The decision of the Patent Office to hear our reexamination is almost an automatic procedure," he said. "We always assumed it would be granted, but it had nothing to do with the merits of the reexam."

The merits of Blackboard's patent
At issue is Blackboard's patent covering certain technologies that the company said it has invested money in to develop. The specific claims in the patent can be found in Blackboard's patent filing, a link to which appears at the end of this article.

Blackboard is a developer of software and services for the education market. The company became the focus of contention within education technology circles when, last year, it obtained a patent for "technology used for Internet-based education support systems and methods" and then filed a patent-infringement suit against rival Desire2Learn in July 2006. Individuals and organizations, including EDUCAUSE, opposed the moves by Blackboard. In October 2006, EDUCAUSE President Brian L. Hawkins wrote a letter to Blackboard CEO Michael Chasen requesting that Blackboard "disclaim the rights established under [Blackboard's] recently-awarded patent, placing the patent in the public domain and withdrawing the claim of infringement against Desire2Learn." That letter was approved unanimously by EDUCAUSE's board of directors Oct. 8 and 9 and became public in late October 2006.

The claims in Blackboard's patent have been interpreted by some as being overly broad and as covering technologies that existed prior to Blackboard's implementation of them. However, Blackboard's Small told us that he thinks these interpretations are incorrect. He said that some even go as far as to claim that Blackboard is trying to patent CMS in general.

"They were offended by that [idea]," he said. "Rightly so. If we were claiming that, that would be offensive. But it's not. We are talking about very specific functionality."

How specific?

Small declined to provide his interpretation of all of the claims in the patent. But he did say, "If you have a system of course-based instruction, a course-management system, and it enables a single user to have multiple roles across multiple courses, and that's done in conjunction with a whole bunch of other types of functionality: If you have an application that does that, you might want to see if you fall within [the patent's claims]."

As to the validity of the patent itself, he said, "The idea was we had to take the technology available at the time and make it truly enterprise-scale and scalable for schools so that every course wasn't an island unto itself and that someone could log on and see all their courses and see all the roles they play in those courses and move from one to another so you're student in one, instructor in another, a teacher assistant or grader or course builder, and not have to recreate your central space again and not have to log in under a different login name. And it allowed the administration to be able to look at one user and see what all those privileges were in each course. That type of role-based access control had not been previously applied in this manner in the course management system world."

He continued, "[We] ... put a lot of dollars and innovation into it and came up with a product that was revolutionary at the time. Fast-forward to now, and some people have said that's obvious and shouldn't be patentable, and we say the standard is what was obvious at the time."

In December, Small went head to head with the SFLC's chairman, Eben Moglen, at Sakai's developer conference in Atlanta. There, Moglen commented on Blackboard's claim that the patent is narrow: "A narrow patent is dangerous if it's used in a dangerous way, as a broad patent is. The problem with narrow patents is if you collect enough of them they become a clog for the feet of anybody who wants to do anything at all, just as one broad patent would be."

Proprietary software and software patents
SFLC Chairman Moglen has come out strongly against proprietary software, claiming that it has no role in higher education but "to slowly disappear, along with ownership of teaching materials and textbooks and the other forms of unfree culture, which have temporarily become important in the university built around the industrial reproduction of information." Those comments were made last month at the Sakai conference in Atlanta.

Said Small, "There are two different debates out there. One debate is around whether software should be patented generally. And then there's one around the merits of the Blackboard patent. And I think that the Software Freedom Law Center is dedicated to the termination of software patents. They don't believe software should be patentable. Those are two very different arguments."

SLFC's Fontana, however, takes a more measured approach. He said that while some patent holders in the software industry do behave responsibly with their patents, "we are deeply skeptical and concerned about software patents. Software patents present a unique kind of danger to the developers and distributors who make and share that software.

"I think it's fair to say that we believe at the very least that the policy of the courts in the United States and the U.S. Patent Office, which has resulted in an explosion of very broad and potentially very dangerous software patents, is very alive and is having very demonstrably bad effects on the software industry."

Said Blackboard's Small: "At the end of the day, innovation has not been hindered. Collaboration has continued. And our patent has not had a chilling effect. And we will continue [working with] Sakai and the open-source community to make sure that's the case.

He added that while there is a "healthy debate" to be had on the issue of software patents in general, they are valuable in that they protect small companies that invest in development from being "gobbled up" by larger companies. "What's to keep large, multi-billion-dollar, multi-national companies--whose mission really isn't founded in education--from sweeping in (which we believe would be bad for everyone in education)? [A patent] is a way for a smaller company such as ours to make investments in technology and then publish and share those investments without having to fear getting gobbled up by a larger competitor who just picks up where you left off. The idea behind the patent system is sound in that respect."

The process moving forward
Regardless, the USPTO has agreed to reexamine Blackboard's patent. In addition to the SFLC's request for the reexamination, Desire2Learn, which is the defendant in Blackboard's patent-infringement suit, filed a separate request. This request has been assigned to the same patent examiner at the USPTO, and both Blackboard and SFLC agree that the two reexaminations will be merged. Owing to the different natures of the separate filings, this could lengthen the reexamination request, which, according to Fontana, takes on average 15 to 20 months to complete. He did not get specific about how long this particular reexamination would take except to say that it would be at the very least a year before the issue is resolved.

In the meantime, Blackboard's suit against Desire2Learn proceeds. And unless Desire2Learn files a successful stay until the outcome of the patent reexamination is resolved, a Markman hearing will be held some time in July. A Markman hearing in a patent case is used to determine what, specifically, is meant in a patent's claims--down to the language and individual words used in the claims. And if the court does rule on the meaning of the patent, that could have an impact on the USPTO's reexamination.

"That may change the game a little bit," the SFLC's Fontana said.

Likely outcomes and consequences
Both the SFLC and Blackboard agree to a certain extent on the likely outcomes of this patent reexamination, but they disagree on the consequences.

"Although ... 70 percent [of the patents that undergo reexamination] are modified in some way, 90 percent of them get through the process," said Backboard's Small. "If art comes to light that Blackboard did not know of when we filed this patent, and the Patent Office decides that our claims need to be modified in some way to address that prior art, and then the patent goes through the process having considered that art, it comes through a stronger document. It will not only have been reviewed once but twice by the Patent Office, and defendants will be stopped from arguing those references that were already considered by the Patent Office."

The SFLC's Fontana said that Small is wrong about the patent coming through stronger. "There's something like a 20 percent chance that the outcome will be that all of the claims of the patent will be revoked, cancelled, in which case Blackboard will lose the entire patent," Fontana said. "There's a ... 30 percent chance that the claims will survive completely unscathed. Blackboard will essentially win in that case. What's most likely to happen though is something in between those two extremes. Blackboard will be essentially forced to amend or revise its claims in trying to argue to the Patent Office that it is entitled to a patent. In amending its claims, it's only allowed to make them narrower in scope. So everything it does is necessarily gong to make the patent claims weaker than they are now."

He continued, "We hope that all the claims will be ultimately cancelled, but, at the very least, it's highly likely that Blackboard will be forced to revise the claims in such a way that they present less of a danger to our clients and others in the e-learning community."

Blackboard's Small has said numerous times that he doesn't see his company as a threat to open-source developers. He reiterated this to us today when we spoke with him: "We fully support what they're doing. We think it's healthy competition. I don't think it makes sense within the course management system community or e-learning community for proprietary and open-source providers to not get along. That's not in the best interest of teaching and learning or the universities, who are our clients. And it's not consistent with our mission. We've said numerous times that we're not focused on open source. We support open source. We're not focused on colleges or home-grown systems. It wouldn't make any sense to bring patent actions in those areas for a number of reasons. And I think people generally understand that and know that."

The SFLC's Fontana said that is organization will be ready to file additional patent reexamination requests with the USPTO should the present reexamination go in Blackboard's favor.

"This is just one step," he said. "We are going to continue to monitor this proceeding, even if we don't have further opportunities to reply. And we stand ready to file subsequent reexamination requests, if we find additional new issues of patentability that the Patent Office hasn't considered."

He added: "I see this as a way of helping the Patent Office. We believe that the Patent Office made a mistake the first time around in granting this patent. It's understandable in a way because their resources are stretched. And it's even possible, as Desire2Learn has alleged in their litigation, that Blackboard had prior art documents that it knew about and that it didn't provide to the Patent Office. So we're trying to correct a problem that existed.

"We hope that the larger outcome is that patent applicants will be more responsible when they try to apply for patents in the e-learning area and in other areas of software, and we hope that this has the ultimate long-term effect of making the patent system a better one and one that is administered in a better manner."

We'll keep you updated as the situation develops. For more information, see the links below.

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About the author: Dave Nagel is the executive editor for 1105 Media's educational technology online publications and electronic newsletters. He can be reached at dnagel@1105media.com.

Have any additional questions? Want to share your story? Want to pass along a news tip? Contact Dave Nagel, executive editor, at dnagel@1105media.com.

About the Author

David Nagel is the executive producer for 1105 Media's online K-12 and higher education publications and electronic newsletters. He can be reached at dnagel@1105media.com. He can now be followed on Twitter at http://twitter.com/THEJournalDave (K-12) or http://twitter.com/CampusTechDave (higher education). You can also connect with him on LinkedIn at http://www.linkedin.com/profile/view?id=10390192.

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