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Blackboard, Desire2Learn End Dispute

Blackboard and Desire2Learn have formally ended their three-and-a-half-year legal dispute, a conflict that was triggered when Blackboard received a hotly disputed patent for electronic learning technologies and proceeded to enforce it through litigation against D2L.

Now, according to information released by the two companies Dec. 15, Blackboard and Desire2Learn have settled the matter amicably, each licensing the other's technologies and dismissing all pending lawsuits.

"We are pleased to have resolved our differences with Desire2Learn," said Michael Chasen, president and CEO of Blackboard, in a statement released today. "Bringing this matter to resolution is in the best interests of both of our organizations, our respective clients and the broader education community."

"We're pleased to enter this agreement, and believe it is in the best interests of the educational community," said John Baker, president and CEO of Desire2Learn, also in a prepared statement. "We will continue to focus our attention on our clients, as well as the development of our products and services."

Neither company would disclose additional details.

Origins of the Dispute
Blackboard, of course, is a major commercial education technology developer, numbering among its products the most widely adopted commercial learning management system among educational institutions in the United States. Over the years it has also bought out major rivals, including WebCT and Angel Learning, and acquired other software developers to beef up the range of features offered in its products, including developers of mobile technologies and security software.

The company became the focus of contention within education technology circles when, in 2006, it obtained a patent (the "Alcorn 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. The move immediately raised the ire of educators, IT professionals in education, and other observers.

It also raised the ire of free and open source software (FOSS) advocates and developers. In November 2006, the Software Freedom Law Center (SFLC), a FOSS legal advocacy group, filed an ex parte request with the United States Patent and Trademark Office to reexamine the patent on the basis of its assertion that Blackboard's patent was invalid owing to the existence of "prior art," or examples of the technologies Blackboard had patented that existed prior to Blackboard's patent application. The move was made on behalf of open source developers Sakai and Moodle, among others, whose leaders worried that the Alcorn patent would stifle their development efforts or even potentially force their learning management systems off the market.

Blackboard, however, made concessions to the open source community, releasing a legally binding pledge that it would never assert its patent claims against an open source developer. The pledge fell short of the SFLC's demand for Blackboard to renounce the patent, however, and the move was greeted with a mixture of relief and continued outrage at Blackboard's unwillingness to drop its suit against Desire2learn and unwillingness to renounce the patent claims.

Blackboard on the March, the Patent Under Assault
In January 2007, the USPTO agreed to the SFLC's request and decided that it would reexamine Blackboard's patent. Desire2Learn, which had also filed a request with the USPTO to reexamine the validity of Blackboard's patent in December 2006, was granted its request in February 2007.

Meanwhile, in February 2008, a jury in the U.S. District Court for the Eastern District of Texas awarded Blackboard $3.1 million from Desire2Learn for patent infringement (considerably less than what was sought) and refused to invalidate Blackboard's patent. In March 2008, the court enjoined Desire2Learn from selling its Desire2Learn Learning Environment 8.2.2 or earlier in the United States, giving the company 60 days to comply. Soon after, Desire2Learn released a new version of its LMS as a workaround.

Also in March, the USPTO announced its initial decision to reject all of the claims of the Alcorn patent. (It was not a final decision, however.) In making its determination, the USPTO said that it had found "a substantial new question of patentability" from the objections raised on both the inter partes reexamination request filed by Desire2Learn and the ex parte reexam request filed by the SFLC.

Despite this rejection, in June, Blackboard continued its action against Desire2Learn, filing a contempt motion against the company with the U.S. District Court for the Eastern District of Texas, Lufkin Division, claiming that Learning Environment 8.3 did not sufficiently address the intellectual property issues. In July, the court ruled in Desire2Learn's favor. But Blackboard continued to press on.

Then, in July 2009, the final blow seemed to have been dealt to the patent when it was overturned by the United States Court of Appeals for the Federal Circuit. Blackboard had said at the time it would seek to overturn the decision, although that has not happened. Nevertheless, Blackboard has, in the meantime, been granted other patents relating to education technologies and has several more pending.

Blackboard has not released word yet as to whether it will pursue legal action against other developers of learning management systems or whether it intends to enforce its other patents against its rivals. We will bring you further information if and when it becomes available.

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