April 2008 — News

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Blackboard Vows To Press On

by Dave Nagel

The Impact of the Patent on the Case Against Desire2Learn
Nagel: Okay, now, I think you agree that this patent is going to come out in a modified form to some degree. I think everyone would disagree about what that degree would be. Let's just say it's just modified slightly as a result of this process....

Small: If there's any modification at all. We don't know. Twenty-five percent of these aren't modified at all.

Nagel: Even at this stage?

Small: The statistics published by the Patent Office don't break down the stages.

Nagel: Okay, well let's say it comes out with some sort of modification. How does that impact the patent infringement suit? Do you have to go back and retry the case based on the new description of the patent based on what items were patentable?

Small: No. If the patent were to be invalidated in a reexamination, I think the court ruling would stand. It is done. Those damages still have to be paid.

Nagel: Even if it were rejected entirely?

Small: That's right.

Nagel: But then Desire2Learn would have a pretty good case on appeal, right?

Small: In court? No, we have a great case on appeal.

Nagel: No, I mean if the patent were rejected.

Small: First of all, the court to which an appeal would go is the Federal Circuit Court, which is the same court above the Patent Office. So the inter partes reexam has built-in appeals that go all the way to the Federal Circuit. So we're going to be in the Federal Circuit in the D2L case before we before we would ever reach the Federal Circuit--if it ever came to that--in the reexam. The ruling of the Federal Circuit will be binding on both.

We will prevail on appeal. That will have a positive effect on both fronts.

Nagel: As a result of that case, Desire2Learn did come out with that 8.3 release as a design workaround. Have you guys had a chance to review that?

Small: No.

Nagel: Do you have any idea what the timeframe is that you'll review it? Are you in general satisfied with what they've said in terms of the changes they've made?

Small: I have no idea what changes they made. I will certainly look at it when they provide it, and I hope that it doesn't infringe. And if it doesn't infringe, then that'd be great; that would be the best result for everyone. However, if it is a half measure or something that does infringe, they would be in violation of a court order.

Nagel: Did you read the statements that Eben Moglen made in our coverage from Friday?

Small: I did.

Nagel: Do you have any comment on what he said?