November 30, 2006

Software Freedom Law Center to challenge Blackboard patent

Author: Joe 'Zonker' Brockmeier

The Software Freedom Law Center (SFLC) announced today that it is asking the US Patent and Trademark Office (USPTO) to re-examine Blackboard's patent on a technology used for Internet-based education support systems, in an attempt to invalidate the patent. SFLC's action comes on behalf of the Sakai Foundation, Moodle, and ATutor.

Blackboard announced the patent award on June 26, and immediately sued competitor Desire2Learn for infringement of the patent.

While Desire2Learn's application is not free software, several free software and open source providers of Internet-based education systems have expressed concerns about the effect of the patent on open source e-learning applications, and asked the SFLC to file the request.

Joseph Hardin, the Sakai Foundation board chairman, says that the Foundation hadn't considered software patents previous to Blackboard's move against Desire2Learn, but that the Foundation "knows that this is a bad patent, and it's hurting our community and we're taking steps to remedy that."

Hardin says that the Sakai Foundation is acting now because Blackboard has shown its willingness to take competitors to court over its patents. "To hold a patent is one thing; people all over the country hold patents that they probably shouldn't have been issued. If they just hold patents and don't threaten ... it's not a problem, but if they use those patents in an offensive manner, then they become problems for the entire community, a problem compounded if it's a bad patent in the first place."

The SFLC, Sakai, and other groups have had talks previously regarding the patent and Blackboard's intentions regarding open source projects, but failed to reach any agreement. Blackboard has not directly threatened any open source providers of e-learning software, but SLFC counsel Richard Fontana says that Blackboard "has made it very clear that it reserves the option to sue at least commercial open source users and distributors. Many patent-holding companies have pledged not to assert patents against those who make, use, and sell open source software. Blackboard has refused to follow their lead."

Matthew Small, senior vice president and general counsel for Blackboard, says that the company "has always been very supportive of open source" and that he believes that Sakai "is using the suit [against Desire2Learn] ... for its own marketing purposes." He also says that Sakai has turned down a free license to the patent "despite the fact that so many of our mutual constituents are for it."

Small also says that the invitation is still open for a free license, and that the suit is "not the first step in a multi-step campaign [of lawsuits]." He also says that Blackboard is aware that the suit has caused concern in the e-learning industry, and that the company hopes to alleviate the concerns "not just through words but also actions."

Odds of success

Fontana says that the re-examination attempt has a high probability of success. "The vast majority of requests for re-examination are initially successful, in the sense that they result in an order by the USPTO to have the patent re-examined. For ordered re-examinations where a party other than the patent owner makes the request (as in this case), 70% result in at least some of the patent claims being narrowed.

"Of those, almost 20% result in all the claims being canceled. So while the Blackboard patent may survive in some form, chances are it won't survive unscathed. It will most likely be substantially weakened to the point where it can't really harm anyone."

Even if some of the claims survive the re-examination, Fontana says that "the ones that survive will necessarily be the weakest, narrowest, least dangerous claims, so that will be a victory for us. Moreover, everything that Blackboard does or says during the re-examination to salvage its claims operates to weaken those claims.

"We expect that Blackboard will cancel its claims or amend them to make them narrower (and therefore weaker) in their literal scope. But at the very least, Blackboard will be forced to argue to the patent examiner that its claims are actually narrower than they seem to be. Blackboard will then be stuck forever with its own narrowing interpretation of its claims. No matter what happens, Blackboard loses."

Small disagrees, and says that the company welcomes the re-examination, and that it will "only serve to strengthen" the patent.

Not surprisingly, Small and Hardin summarize the patent differently. Hardin says that Blackboard's patent would cover "any system that assigns roles to users, students, and admins, and uses roles to determine access" and says that the patent is "extremely broad" and "covers anything up to and potentially including database systems."

Small says that the patent is very narrow in its claims and described a system where a user could maintain a calendar when logged on in different roles and from different machines. Small says that the filing by the SFLC is "a gross overstatement of what the patent is, and I think that's reflected in the art they've sent the patent office."

Of course, no matter how narrow or broad the scope of the patents, most open source proponents hold that software patents should not be issued, period. The SLFC has come out against software patents, but the Sakai Foundation has not yet taken that step.

Hardin says that the Sakai Foundation has not devised a comprehensive position on all software patents as of yet, as this is the first time the Foundation has had occasion to deal with a software patent issue directly. "We're busy fighting this fight, and we'll figure out how to move forward at our conference next week."

Small says that Blackboard is in favor of software patents, though he says "there's a very healthy discussion to be had about software patents and patents in general." He also suggests that "much of the debate around Blackboard in particular is around software patents generally."

Ultimately, Hardin says that he'd "much rather be talking about interesting pedagogy and research applications in higher learning" than software patents. "Software is exciting, the [open source] community is exciting ... in the end, it's an unnecessary sideshow."

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