February 2007 — News

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Patent Office Grants D2L Reexam Request

by Dave Nagel

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.

Patent background
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.

Lawsuit background
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.