Patent Office Grants D2L Reexam Request
2/26/2007—The United States Patent and Trademark Office (USPTO) this weekend granted Desire2Learn its request for a reexamination of Blackboard Inc.'s e-learning patent. Desire2Learn is, at present, the defendant in a patent-infringement lawsuit filed by Blackboard in July 2006.
The move to grant the inter partes reexamination request was not unexpected. The USPTO had previously granted an ex parte reexam request from the Software Freedom Law Center (SFLC) and had assigned Desire2Learn's request to the same examiner handling the SFLC's reexam. Taken as a whole, some 95 percent of patent reexamination requests are granted.
The specifics of this reexamination are, at present, unknown. Desire2Learn itself has not received any documents yet from the USPTO. The Patent Office simply posted on its site that fact that the reexamination request had been granted.
Desire2Learn filed its request with the USPTO Dec. 1. The company is maintaining a blog covering the patent issue, and documents included with the filing can be found on that site.
Desire2Learn and Blackboard are both developers of software and services for the education market, both higher ed and K-12. At issue are certain technologies for which Blackboard received a patent early last year covering "technology used for Internet-based education support systems and methods." Once it received the patent, Blackboard later filed its infringement suit against Desire2Learn in July 2006.
Reaction from the education and developer communities was swift. Trade group EDUCAUSE sent a letter to Blackboard denouncing the patent and the suit against Desire2Learn. Following that, the SFLC, representing open-source education software developers Sakai, Moodle, and ATutor, filed an ex parte reexamination request with the USPTO, which was granted Jan. 25. Desire2Learn filed its own more complex request in December 2006, which was granted this weekend.
The reexamination itself can take a number of years to complete. On the whole, some 70 percent of reexaminations result in a modification of the original patent, though about 90 percent come through in one form or another, according to Backboard Senior Vice President and General Counsel Matthew Small.
Meanwhile, Blackboard's patent-infringement suit against Desire2Learn continues. The suit was originally filed July 26, 2006 in U.S. District Court for the Eastern District of Texas. In September 2006, D2L filed a counterclaim in the case. Blackboard filed a motion to dismiss the counterclaim, but that motion was rejected in November 2006. In early December, on the same day the company filed its reexamination request with the USPTO, Desire2Learn also filed a motion to stay the proceedings in the patent-infringement suit until the USPTO had a chance to reexamine Blackboard's patent. That motion was denied Dec. 10, 2006.
The case continues and is expected to reach a stage called a Markman hearing at some point in July. It's during this stage that the court will issue interpretations of the meaning of specific language used in the patent claims.
Open source off the hook?
In the meantime, earlier this month, Blackboard issued a statement that it hoped would ameliorate tensions with the education and open-source development communities. The statement, which has come to be known as the "Blackboard patent pledge," grants the unrestricted use of Blackboard's patented technologies to open-source developers and allows the roundabout use of these technologies by commercial developers as well.
The pledge is a formal, legally binding document that states Blackboard will not enforce its patent against open-source developers, naming all of the developers who work in the CMS space, or against those who support those products, either commercially or otherwise. That includes those who host, customize, maintain or otherwise support those open-source products. The pledge also covers those who develop "home-grown" CMS systems for schools, colleges and universities.
It also, in some cases, protects commercial developers by allowing them to offer open-source components covered by Blackboard's patents, as long as those components are not bundled with the core product.
We have more extensive coverage, clarifications, and quotes on the pledge and the patent in general in the articles linked below. We will, of course, continue to update you on any new developments that arise.
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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 firstname.lastname@example.org.
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