March 2008 — News
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Desire2Learn CEO Makes Case Against Blackboard Patent, Court Ruling
Baker: I think the two main things that we're doing right now is, one, we're going to be filing some motions in terms of dealing some judgments as a matter of law with the current judge. And secondly we're going to be putting this in for appeal to take it to a higher court.... We'll have a much better chance of pleading our case there in that forum than necessarily what we had in the jury verdict.
[Baker then went on to praise the efforts of the jury, the judge, clerks, and others involved in the trial at some length. This kind of information can be read at D2L's Patent Information Blog.]
Everyone keeps referring to Blackboard as winning here. But really they only got about 20 percent of what went to the jury and less than 10 percent of what they originally wanted, which was over $50 million, by the way, not the $17 [million] that's been reported so far to date. The judge threw out their willful case before it went to jury verdict....
It was shocking to me listening to our case being presented because there was certain evidence I had never seen until it went into an open trial, and it was incredibly frustrating at the same time to understand what this competitor was doing to get one win against us.
Nagel: Can you give me a timeframe for the motions you want to file and also filing for appeal? You can ballpark it.
Baker: The motions should be probably in within the next week or two. And the appeal, if it's heard, probably within the next year or so.
Lank: Well, back up a little bit: Only if we don't prevail on our post-trial motions will it go to appeal. So if we don't get the remedies we seek through the post-trial motions, then it will go to appeal. Now, I think it's likely it will go to appeal because I expect that the judge won't give us everything we want.
Baker: But we never know.
Lank: But you don't know.
Baker: This judge seems to ... really understand the case a lot better now after ... hearing us talk about it for probably two or three weeks. We have high expectations of this judge.
Nagel: I'd like to talk about the patent a little bit. What's going on with the reexamination? Correct my Latin if I'm wrong, but you filed an inter partes reexam in February 2007?
Lank: No, we filed our inter partes reexam application in December of 2006. It was in February of 2007 that our petition for reexam was granted.
Nagel: And now are you just completely outside the process at this point?
Lank: No. That's the benefit of an inter partes reexam as opposed to an ex parte reexam. As you may recall, the Software Freedom Law Center did an ex parte reexam, and that's basically you put some prior art at the doorstep of the PTO, and they grant it or don't grant it, and then you're out of the picture.
With the inter partes reexam, you bring forward the prior art, and it's an interactive process. So once the initial Office action takes place, both parties will have an opportunity to respond, and there's back and forth.
Since our petition was granted in February of 2007, we have not yet received an Office action from the USPTO. So right now we don't know what is going on there.
Nagel: And you've received no updates whatsoever.
Lank: We have received no updates whatsoever.
Baker: We really hope an examiner does pick it up at some point.
Lank: Yeah, well, we know it's been assigned to an examiner. We also think that it's in a bit of a peculiar procedural situation because an ex parte and an inter partes reexamination was filed at approximately the same time.
Nagel: They were month apart, right?
Lank: Actually I think they were about two weeks apart. And nobody really knows ... see the whole inter partes procedure is fairly new, and there haven't been a lot of them yet. So I'm sure the Patent and Trademark Office is a bit challenged with how to work this.
But I was reading their annual report--I believe it was for 2006--that stated that the typical length for an inter partes reexam is about 15 months. Now, I think we're not going to make that average, but it did give me some hope that the Patent and Trademark Office will be doing some [work on it].
Nagel: Do you believe something will be coming down in 2008, or do you just have no clear idea?
