April 2008 — News

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Blackboard Vows To Press On

by Dave Nagel

It would be highly, highly unlikely for not one claim to get through. And in the end, for the patent to survive, you only need a single claim. We have 44. And we think it's a very, very healthy patent.

In our case, I think our patent is very, very strong because we just proved the validity of the patent over the exact same prior art references and the exact same arguments being made in this inter partes reexamination in federal court.

The Patent Office will look at these references and consider them, but Blackboard and Desire2Learn just spent a lot of time and effort going through these references in detail with witnesses and experts and looking at them, and we won every single count. We showed that it's valid--it's not invalid for obviousness; it's not invalid for anticipation--and that they infringe ... directly and contributorily and by inducement. We won every single claim that they had before the court. The jury found that [Desire2Learn] didn't meet their burden of proof. And quite frankly the judge indicated it was his opinion that they did not meet their burden of proof. And this was in a very sophisticated patent jurisdiction that hears a lot of patent cases with a very sophisticated judge.

Criticism of the Blackboard Patent
Since the announcement of the Blackboard Alcorn patent and the lawsuit against Desire2Learn, there has been considerable controversy over the quality of the patent--as in whether it should have been issued at all--and over the standards by which the USPTO grants software patents. The two questions are not the same, as Small discusses here.

Small: I think what's happening is there are some people in the e-learning community who quite frankly don't understand patent law, and, if they understood what is typically patentable, what a patent looks like, what a good patent looks like, they wouldn't read the Blackboard patent and say, "Oh, I don't think this should be a valid patent."

I think for many of the commentators, this is the first patent they've ever read, and many of the arguments that are coming up really are issues for Congress about what should be patentable or what shouldn't or whether there's need of reform or whether patents should apply to software at all. It's not really a critique of [the validity of the patent under current law]. When you look at the facts, at the end of 1998--a decade ago--when you look at course management systems and see how many of them allowed a single user with a single logon and a single user account to have multiple roles across multiple courses, none of them did.

All of the references ... were closely explained in trial, and they did not do those things. They're not [invalidating] prior art.

Nagel: How many times did you go back and forth with the Patent Office before the patent was issued?

Small: I don't know exactly.

Nagel: Three or four?