Update: Sakai, Blackboard Comment on Patent Pledge

2/2/2007—Yesterday, we reported that Blackboard had released a legally binding pledge stating that the company would not assert its patent rights against open-source developers in the CMS space or against developers of "home-grown" systems. The non-assertion pledge also covers those who service such systems, including hosting, maintenance, support and customization. And it includes the current patent, as well as patents pending. We spoke with Blackboard representative Matthew Small, who provided some insight and clarification on the pledge. Since then, we've also had a chance to speak with Chuck Severence, executive director of the Sakai Foundation--a central player in the patent discussion--for additional comments.

As was clear from the joint statement issued yesterday by Sakai, an open-source course management system developer, and trade group EDUCAUSE, not all of the concerns of the open-source community were addressed in Blackboard's pledge. The two groups released a statement supporting the patent pledge, but with certain reservations.

We have responses from both Sakai and Blackboard on these latest developments.

Background on the patent
For those of you who are unfamiliar with the Blackboard patent saga to date (AKA "Bläkbørdssagarauða," for the Icelandic saga scholars in the audience), it began essentially in early 2006 when Blackboard obtained a patent for "technology used for Internet-based education support systems and methods" and then filed a patent-infringement suit against rival Desire2Learn in July 2006. Individuals and organizations, including EDUCAUSE, opposed the moves by Blackboard. In October 2006, EDUCAUSE President Brian L. Hawkins wrote a letter to Blackboard CEO Michael Chasen requesting that Blackboard "disclaim the rights established under [Blackboard's] recently-awarded patent, placing the patent in the public domain and withdrawing the claim of infringement against Desire2Learn." That letter was approved unanimously by EDUCAUSE's board of directors Oct. 8 and 9 and became public in late October. (See link at the end of this article.)

Then, in November of 2006, an organization called the Software Freedom Law Center (SFLC) filed a request with the United States Patent and Trademark Office (USPTO) to reexamine the patent on the basis of its assertion that Blackboard's patent was invalid owing to the existence of "prior art," or examples of the technologies Blackboard had patented that existed prior to Blackboard's patent application. That request was filed on behalf of the SFLC's clients Sakai, Moodle and ATutor, all organizations that develop open-source course management systems.

The request was granted by the USPTO last month, and so the reexamination process on the validity of the patent is underway, though results may not be forthcoming for years.

A little bit later, Desire2Learn filed its own, more complex request for a reexamination with the Patent Office, and that request has been assigned to the the same examiner in the USPTO who is handling the SFLC request. Further information on that particular aspect of the reexamination is not available as of this writing, but Blackboard's patent-infringement suit against Desire2Learn continues in court.

Blackboard, all along, has stated and maintained that it would not focus on schools or open-source developers in terms of enforcing its patent. However, members of the open-source community and the education community both expressed fears that the patent and the lawsuit against Desire2Learn would have a chilling effect on development of CMSes and generally impact these communities negatively.

The patent pledge
So Blackboard answered some of those fears Feb. 1 by releasing a formal, legally binding pledge that it would not enforce its patent against open-source developers, naming all of the developers who work in the CMS space, or against those who support those products, either commercially or otherwise. That includes those who host, customize, maintain or otherwise support those open-source products. The pledge also covers those who develop "home-grown" CMS systems for schools, colleges and universities.

Sakai and EDUCAUSE, two vocal opponents of Blackboard's patent, released a joint statement generally supporting the Blackboard patent pledge, the complete text of which can be found below. But there were some reservations in that statement, particularly about the portion of Blackboard's pledge excepting "bundled" software from protection.

"I think Blackboard put their best effort into capturing what they thought they wanted to give to open source and at the same time not give everything away that they didn't want to give," Sakai's Severence told us. "I think this is a step in a direction that should assure most people at universities that they can use open-source software and not worry about the patent. I think that's quite clear. People can feel more comfortable with this document than they did before."

He said that Sakai did provide input on the wording of the pledge, which had been in development at least since December. "We iterated on the pledge words with Blackboard since before Christmas," Severence said. "They would propose text, and we would review the text and send back comments. We tried to represent what we thought was open source's position in our conversations with Blackboard."

He said that Sakai had suggested early on that Blackboard issue a statement of non-assertion using wording similar to that found in the famous IBM non-assertion pledge. (The text of that statement can be found here.) But, he said, "with Blackboard, there was a feeling that [the IBM non-assertion statement] just didn't have enough detail in it. And so they needed more assurance ... that the non-assert was going to accomplish what they wanted to do--and that is protect universities and others using and participating in open source--[but that it wouldn't make them] wind up in court the next day fighting with the judge on the words they had just written. You can tell from the Sakai and EDUCAUSE statement that [the Blackboard pledge] would have been received better if it had been a simple, unequivocal statement, like the IBM statement."

Severence continued: "[We] had to find a middle ground between conflicting legal needs, and I think we did about as well as we could. The press release from EDUCAUSE and Sakai reflects that: that this was a step forward but certainly left something to be desired."

In an effort to clarify some of the final language in this pledge, we spoke with Matthew Small, senior vice president and general counsel for Blackboard.

Clarifications on the pledge
Small indicated to us that, in essence, all open-source developers and developers of home-grown systems are covered by the pledge of non-assertion.

"There's a lot of unfounded fear and misunderstanding out there," Small said. "So we listened to the community, and we are making this legally binding commitment in writing so that people can have home-grown systems and open source and can provide commercial services around them and not have to think about the Blackboard patent. We were never going to sue open-source [developers] or home-grown systems [developers] anyway, which we tried to communicate as much as we could up to this stage. And by putting it in writing, not only do people trust it more, but they also have all of the necessary detail they need to get to the level of comfort that they need."

Specifically, he said, "The patent pledge covers open-source and home-grown systems and commercial providers of support, hosting, customization and maintenance around them. It doesn't cover competitive, proprietary software companies."

But the "bundling" exception in the pledge still seems to be a concern to some. So Small explained it further: "In order to ensure that proprietary software companies who infringe don't get around our patent by making a portion of their applications open source, we had to include this concept of bundling so that a proprietary software company that has some open source in it still does not fall within the pledge. But we were very sensitive to the fact that some open-source initiatives bundle proprietary components within their applications. So we specifically named every open-source initiative in the CMS space we could think of and said, 'Whether or not you combine your open source with proprietary components, you're covered by this pledge.' And we've gone even further to specifically point out that the commercial hosting, support, and customization of those applications are also covered and made it worldwide and added our pending patents on CMS to the pledge as well."

But, more to the point, he also defined the circumstances in which bundling would be considered unacceptable, as well as the loopholes for developers, both commercial and open-source: "The way we mean 'bundled' is if a software company is taking its proprietary code and open source and putting those together and delivering them together, either via download or on a disc or what have you, or if their proprietary software doesn't work without the open-source piece, that would be 'bundled.' However, schools can take their proprietary applications and their open-source applications, and they can mix and match as they please, and they can put them all together. Likewise, a proprietary company can sell the non-infringing proprietary product and then separately [take] an otherwise infringing open-source product and provide them separately, and the schools can put them together. The schools can even hire that company to come on campus and put them together. So there's a lot of flexibility. And I think this strikes the right balance between allowing Blackboard to protect the investments that it makes in its technology, while ensuring that it does not have a chilling effect on the community."

Development of the pledge
According to Small, Blackboard did, in fact, work with Sakai and EDUCAUSE on the wording. There was clearly no absolute consensus on the final wording of the pledge, but the organizations did work together on it.

"I would not view this pledge as Blackboard versus Sakai and EDUCAUSE," Small told us. "The three organizations worked together in a collaborative manner to come out with the pledge. It's Blackboard's pledge, and it's a better document because we worked with those organizations...."

So why the caveats in the Sakai/EDUCAUSE joint statement? Small said, "... Those organizations have a very diverse, large membership. The opinions on the Blackboard patent in general vary. And it was important for them that they include the appropriate caveats covering the range of opinion of their organizations so as not to offend their members, which is why they gave a joint statement of qualified support."

He continued, "The fact that we were able to work through a policy and get to a point where those two entities, given prior statements that they made, felt comfortable giving a statement of qualified support, I think is quite wonderful for the industry. And it's just the very first step in moving forward to focus on the most important things, which are those tenets core to the e-learning community of teaching, learning, collaboration, the free exchange of ideas. And our pledge goes a long way to put that in writing to give people the assurance that they need not worry about our patent portfolio."

When asked whether it was pressure from the open-source or education communities that led to the release of this pledge, Small said that external pressure was not a factor. And, furthermore, neither was financial pressure. Small would not get specific on the financials of the matter, as the company has its earnings call Feb. 6, but he did say, "... In many ways Blackboard has had a great year. We had the merger with WebCT and a very successful integration, and we continue to upsell and cross sell within our market. And although there's been a lot of discussion around the Blackboard patent, we have not seen it have any effect on sales."

He added, "We are a member of this community. We all come to work everyday at Blackboard because we want to improve teaching and learning worldwide using online technologies. That's what this is all about. And in that respect, our mission is the same as the rest of the community. This patent stuff is kind of side noise, and we hate to see it become a distraction. And with this pledge, we're confident we'll move beyond that and everyone will be better [off] for it."

The Sakai/EDUCAUSE joint statement
Sakai and EDUCAUSE, responding to Blackboard's announcement, released a formal statement Feb. 1 as well. "It was a joint statement, and there certainly are compromises within the statement because there are compromises in the situation," Sakai's Severence told us. However, he said, "I ... think it's really exciting that Sakai and the EDUCAUSE board came up with a joint statement. I think it's very impressive. It really shows ... how much people care about this issue. And the bringing together of the two boards to come up with a joint statement was actually straightforward because the boards had been thinking along similar lines."

The complete text of that response follows.

The boards of directors of the Sakai Foundation and of EDUCAUSE recognize the patent pledge announced on February 1, 2007, by Blackboard as a step in a more positive direction for the community, to the extent that it offers some comfort to a portion of the academic community that uses open source or homegrown systems. In the pledge, Blackboard states that it will not assert certain patents against open source or home grown systems bundled with no proprietary software. We particularly welcome the inclusion of pending patents, the clarification on the commercial support, customization, hosting or maintenance of open source systems, and the worldwide nature of Blackboard’s pledge. We also appreciate the willingness of Blackboard to continue with frank and direct dialogue with our two organizations and with other higher education representatives and groups to work toward addressing these problems of community concern.

Although Blackboard has included in the pledge many named open source initiatives, regardless of whether they incorporate proprietary elements in their applications, Blackboard has also reserved rights to assert its patents against other providers of such systems that are "bundled" with proprietary code. We remain concerned that this bundling language introduces legal and technical complexity and uncertainty which will be inhibitive in this arena of development.

As a result, the Sakai Foundation and EDUCAUSE find it difficult to give the wholehearted endorsement we had hoped might be possible. Some of Sakai's commercial partners and valued members of the open source community will not be protected under this pledge. Furthermore, EDUCAUSE and Sakai worked to gain a pledge that Blackboard would never take legal action for infringement against a college or university using another competing product. While Blackboard ultimately agrees that such actions are not in its best interest from a customer relations viewpoint, it could not agree for reasons related to its existing legal case. Our organizations will remain vigilant on this point as protecting our member institutions is of top priority.

While this pledge offers a formalization of Blackboard's past claims about the intent of its patents, it does not speak to the quality or validity of the patents themselves. Sakai and EDUCAUSE maintain the position that Blackboard’s U.S. patent number 6,988,138 is overly broad, and that the U.S. Patent and Trademark Office (USPTO) erred in granting it to Blackboard. Furthermore, we believe that this conclusion will ultimately be decided by the re-examination of this patent through the USPTO and in the current litigation.

We hope that all of the organizations and individuals interested in educational technology will continue to focus our collective energies on improving software, and system and data interoperability with the ultimate goal of delivering truly innovative solutions to all teachers and learners.

Source: EDUCAUSE/Sakai joint statement

We'll bring you more information as it becomes available. (If you would like to contact us with your own reactions, please e-mail the author at dnagel@1105media.com.) For more on the Blackboard patent, please see the links below.

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About the author: Dave Nagel is the executive editor for 1105 Media's educational technology online publications and electronic newsletters. He can be reached at dnagel@1105media.com.

Have any additional questions? Want to share your story? Want to pass along a news tip? Contact Dave Nagel, executive editor, at dnagel@1105media.com.

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