Blackboard Patent provisionally rejected in its entirety by the US Patent and Trademark Office - first stage in a long process

Source: The use of inter partes and ex parte re-examination in patent litigation, 2006, by David M. O'Dell and David L. McCombs

Updated 29 March 2008

I reported that on 14 March 2008 the US Patent and Trade Mark Office had decided to merge the till now apparently dormant inter partes and ex parte re-examinations of Blackboard Inc.'s US Patent Number 6988138. On 25 March 2008 USPTO issued a non-final decision [1.7 MB PDF]. The net result is that all 44 of the claims made in the Blackboard Patent have been provisionally rejected, with Blackboard given 2 months to respond. The rejection is on the basis of several examples of prior art cited by Desire2Learn and by the Software Freedom Law Centre in their respective re-examination requests. (Particularly relevant, it seems, were the 29 April 1998 EDUCOM/NLII Instructional Management Systems Specifications Document Version 0.5, University of Nottingham's Ceilidh system, and the Irish Top Class system.) 30/3/2008. The provisional rejections sits alongside the previous invalidation of parts of the 6988138 patent by the US courts in the course of Blackboard's current infringement case.

Does this mean that the Blackboard Patent is dead in the water? The short  "I am no lawyer" answer is "not yet", because:

• the decision may well not stand (today's Blackboard "community update" via Stephen Downes shows that Blackboard does not expect the decision to stand, though note the "PR" rather than "rigorous" tone of the statement; nor is Desire2Learn counting its chickens);
• the patent re-examination process is slow, as the flow-chart above shows (be aware that in this case it has taken 16 months to get from "File Request" to "Office Action" rather than the more normal three to five);
• Blackboard has just prevailed in its patent infringement claim against Desire2Learn, and, as Michael Feldstein indicates, the impact of this development on that case is uncertain.

And even if, as I personally believe it will, US Patent 6988138 is finally ruled to be invalid, the twin problems of the patentability (in some jurisdictions) of software (e-learning or otherwise)*, and of universities using the patent system privately to exploit student innovation and the outcome of publicly funded research, are untouched by this particular case.

* 30/3/2008

1. Blackboard holds an equivalent patent in Australia, New Zealand, and Singapore, which have neither been whittled down in the process of an infringement claim, nor has its validity been challenged (?), as in the US. Furthermore, a number of other e-learning patents exist - see for example the Pearson Education patents listed some way down this August 2006 post by Michael Feldstein (or have been applied for), some of which are probably rather stronger, and most of which are far less in the public eye, than 6988138.
2. For a long article, with informative quotes from key protagonists, including Software Freedom Law Centre's Eben Moglen, who does not mince his words, see this 28 March 2008 piece by Dave Nagel in THE Journal.

Note. Other posts about the Blackboard patent:

• 25 March 2008 - US Patent and Trademark Office merges re-examinations of Blackboard Inc.'s Patent Number 6988138
• 7 March 2008 - Follow-up links relating to Blackboard's successful patent infringment claim against Desire2Learn (updated 7 March);
• 27 February 2008 - Riina Vuorikari - Patents and e-learning do not make a good match - what’s “Blackboard Inc. vs. Desire2Learn” gotta do with the EU?;
• 9 February 2008 - Blackboard v Desire2Learn: Joint Final Pre-trial Order;
• 3 August 2007 - Blackboard Inc. v Desire2Learn - court issues order construing claim terms;
• 20 June 2007 - Blackboard v Desire2Learn - claim construction briefs filed;
• 1 February 2007 - Blackboard issues "Patent Pledge";
• 25 January 2007 - United States Patent & Trademark Office orders re-examination of Blackboard Patent;
• 9 December 2006 - Two contrasting views about software patents. A debate between Eben Moglen and Blackboard's Matt Small;
• 2 December 2006 - Blackboard: two separate re-examination
  requests to the US Patent and Trade Mark Office; and an application to the Court from Desire2Learn for a stay in proceedings;
• 27 October 2006 - EDUCAUSE on Blackboard: "patenting a community creation is anathema to our culture";
• 16 October 2006 -  John Mayer interviews various lawyers with patent knowhow;
• 10 September 2006 - The new "post-patent" environment for e-learning: a perspective. Guest contribution by Jim Farmer;
• 9 September 2006 - Blackboard's work for IMS;
• 8 August 2006 - Did the US Department of Justice know about the patent when it cleared Blackboard's acquisition of Web CT?;
• 26 July 2006 - Blackboard's US Patent 6988138.

Comments

[George Roberts]

What, exactly do you mean about, "...universities using the patent system privately to exploit student innovation..."?

How is this related to the Bb case?

==

George.
Thanks for the question. As I understand it, in the US there are instances of development work by students being seen by their university as owned by the university, with patents applied for and/or obtained on the back of such work by the university. This August 2007 post by Jim Farmer covers the more general issue. The point I am getting at is that it is not only private companies that seek to exploit, through the patent system, collegially (sp?) created and publicly funded intellectual property. Universities, and not only in the US, do so too. (The link is to a recent UK High Court decision that has led to the UK Intellectual Property Office having to revise its line somewhat on the patentability of software: in the wrong direction.)
Seb