March 2008 — News
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Desire2Learn CEO Makes Case Against Blackboard Patent, Court Ruling
Extra Credit The following links provide further background and perspectives on Blackboard's patent and the suit against Desire2Learn. More Information
--D. Nagel |
Desire2Learn recently became the first education technology provider to fall victim to litigation stemming from Blackboard's patent covering learning management systems. In February, the company lost a patent-infringement lawsuit filed by Blackboard and in March was enjoined by the court from selling any versions of its learning management system containing the "infringing" code. In this exclusive interview, John Baker, Desire2Learn's president and CEO, discusses the case with us, its impact on the company and its customers, and the implications for education technology as a whole.
While this discussion is one-sided, it should be noted that we have published extensive interviews with Blackboard representatives and others in the past. (See sidebar.) This is the first forum we've provided to Desire2Learn on this issue. It is unusual (to say the least) for commercial software developers to discuss ongoing litigation with the press, and both companies have proved open to sharing their perspectives with our readers, who stand to be impacted by the final outcome of these matters.
For this discussion, we were joined by Desire2Learn's general counsel, Diane Lank.
Background on the Patent
In a field in which intellectual property is contributed freely by so many, Blackboard's patent covering certain LMS technologies seemed to some to be out of place, and it was greeted with anger and distress by many in education and in the education development community.
Between June 1999 and March 2000, Blackboard filed applications for learning management system technologies with the United States Patent and Trademark Office (USPTO) and was finally awarded patent No. 6,988,138 in January 2006, with several items from previous application removed. The company announced its patent publicly July 26, 2006 and filed a patent-infringement suit against rival Desire2Learn the same day.
In December 2006, Desire2Learn filed a request with the USPTO to reexamine the validity of Blackboard's patent. It was granted that request in February 2007. A similar request was filed ex parte by an organization representing open-source LMS developers, the Software Freedom Law Center. That group's reexam request was also accepted in March 2007. Both reexaminations are still currently underway, and, as of this writing, the outcome (or even a timeline for the outcome) is entirely unknown. Many expect a decision from the USPTO before the end of 2008.
Blackboard has since pledged non-assertion of its patent against open-source developers but would not relinquish its patent and said it would target commercial developers.
Blackboard v. Desire2Learn
Meanwhile, Blackboard's case against Desire2Learn went on. In February, 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. Last week, 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 Learning Environment 8.3 as a "workaround candidate." The company also released a new version of its Learning Repository and also rolled out Desire2Learn ePortfolio on the same day.
Desire2Learn's next moves include seeking approval for the release candidate from Blackboard (voluntarily), filing motions in court, and, failing the success of those motions, filing for appeal.
The Blackboard patent saga is far from over.
David Nagel: Right after the injunction, your immediate response was to come out with a new version of the Learning Environment that isn't subject to the injunction. Is it required for all of your clients to upgrade?
John Baker: It's not a requirement for all of our clients to upgrade. The key here is that we never thought any of our technology was infringing. However, what we are asking our clients to do is make the transition to our 8.3 version as soon as they possibly can.
Nagel: What happens if they don't upgrade?
