Filed on January 16, 2006, the Blackboard patent is for "a system and methods for implementing education online" by providing courses that "include assignments, announcements, course materials, chat and whiteboard facilities, and the like." In particular, the patent includes what amounts to group permissions for access to course materials. The patent was granted on July 26, 2006, and, on the same day, Blackboard filed a suit for patent violation against Desire2Learn, one of its leading competitors.
As reported earlier on NewsForge, on November 30, the SFLC filed its request on behalf of ATutor, Moodle, and the Sakai Foundation, three free software elearning projects whose members were concerned about the implications of the patent on their work. On December 4, Desire2Learn made its request for re-examination.
Fontana says that, by suing Desire2Learn, Blackboard "was trying to signal, particularly to the open source community, that it had better watch out. It's a signal to Blackboard's customers, saying, 'You better stick with us and not switch to Sakai or Moodle, because maybe we won't sue you -- although we could -- but we will sue Sakai or Moodle, and you don't want to adopt new software that might be in litigation.' Even beyond open source, this patent is a major patent threat to the larger educational software community."
John Baker, president and CEO of Desire2Learn agrees. "We look at this patenting much more broadly than a fight between us and Blackboard," he says. He also suggests that Desire2Learn has taken some of Blackboard's market share and "perhaps they're using it as an excuse to slow us down."
However, Mathew Small, senior vice president and general counsel and corporate secretary at Blackboard, denies any such motivations. Small characterizes the situation as "the clash of ideals" between the openness of the elearning community and the patent system. "There really hasn't been an honest acknowledgement of the fact that if you are trying to protect your intellectual property, all you can do is rely on the law that is available to you," he says. He suggests that people misunderstand the scope of the patent, and that, far from being hostile, "we support the open source community in many ways." Small also expressed hope that continued talks with the open source community would disarm its fears, although when asked what forms any safeguards might take, he said, "It's premature to say definitively. I wouldn't want to presuppose the way we handle this."
Fontana admits that Blackboard has expressed similar sentiments many times, but doubts remain. "It's been months since we first had contact with Blackboard," Fontana says, "and they still haven't provided in writing any commitment not to sue the open source community. So far, we see no sign that they're serious. I'm still hopeful that Blackboard will do the right thing and provide an enforceable commitment."
What the requests mean
Meanwhile, Fontana sees the granting of the SFLC request and Desire2Learn's pending request as hopeful signs. "Both requests are made stronger by the fact that there are two requests," he says, since the two claims will present different sets of argument and evidence. By contrast, Small characterizes the granting of the request as "an automatic thing. It's not a statement of the merits of the case." As for the Desire2Learn request, Small characterizes it as a delaying tactic in Blackboard's case against the company.
Both requests are based on the submission of what is known as prior art: documents that prove that the concepts in the original patent claim existed prior to the claim. In the SFLC, the prior art consists largely of excerpts from a manual written by TopClass, an elearning company based in Ireland. In the Desire2Learn case, it also includes scholarly journals and articles. Fontana explains that, since Blackboard's provisional patent claim was granted in 1999, all prior art must have been published more than one year before that.
The main difference between the two requests is the SFLC's is an ex parte request, a one-time submission by a single party. Fontana explains that the SFLC chose this route because it costs less than a court proceeding and takes less time. He also suggests a possible advantage in having the merits of the SFLC's arguments evaluated by a expert patent examiner rather than a judge, who might be less well-versed in the technicalities.
By contrast, Desire2Learn has filed an inter partes request, a more recent form of application under US law in which both parties present evidence in much the same way as a standard court case.
So far, the two requests are being processed separately. "We have tried to contact [the SFLC] to coordinate," Baker says, "but unfortunately we're acting independently in this matter and we are not coordinating our efforts." The separation may be due to the fact that, as the representative of free software projects, the SFLC is reluctant to ally itself too closely with a proprietary company.
What happens next
Should the SFLC request proceed by itself, it will be examined by a patent examiner in the US Patent and Trade Office. Blackboard will have two months to respond. Should the SFLC choose to add additional arguments and evidence, it will have to file a new request.
However, Blackboard, Desire2Learn, and the SFLC all anticipate that the requests will be combined. The differences between an ex parte and inter parte request "may make the whole thing slower than it otherwise would have been," Fontana says, "but not too much."
Diane Lank, Desire2Learn's legal counsel, expects a decision on her company's request by the end of February.
In either case, the re-examination process may take up to two years. If the patent is denied on the basis of the requests -- a possibility that all parties have predictable views about -- then Blackboard may file an amended patent claim, narrower in scope than the original. Even if a narrower patent is upheld, Fontana hopes that "it will be in a much weaker form, and it won't be as dangerous to our clients."
As well as defending its clients and the elearning community, Fontana says, "We think that we're playing an important part in filing this application by making the patent system work better. We're trying to help the patent office do its best job in issuing patents that only meet the legal requirements for a patent."
Bruce Byfield is a computer journalist who writes regularly for NewsForge, Linux.com, and IT Manager's Journal.