Blackboard, SFLC Respond to Patent Reexam

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Blackboard, SFLC Respond to Patent Reexam

1/26/2007

By David Nagel

01.26.2007—Responding to a request from the Software Freedom Law Center (SFLC), the United States Patent and Trademark Office (USPTO) decided Jan. 25 that it would indeed reexamine Blackboard's disputed and controversial patent on technologies used in course management systems. Both Blackboard Inc. and the SFLC, which represents open-source CMS developers, responded to the decision.

The decision by the USPTO was not an unexpected one. Some 95 percent of all reexamination requests filed with the USPTO are granted. But the SFLC said it sees this decision as something of an initial victory.

"We were pretty hopeful that this would be the outcome when we filed our request," said Richard Fontana, counsel for the SFLC. "We do see it as a victory, but it's just the first step."

The SFLC is the organization that represents open-source developers Sakai, Moodle and ATutor, all of which claim that Blackboard's patent will impact their ability to develop CMS software. The SFLC filed the request for a patent reexamination with the USPTO on their behalf. SFLC's Fontana was personally responsible for preparing and filing that request.

Blackboard, for its part, said it sees the decision as a non-issue. Matthew Small, senior vice president and general counsel for Blackboard, said that the company expected the USPTO to follow through with the reexamination. "The decision of the Patent Office to hear our reexamination is almost an automatic procedure," he said. "We always assumed it would be granted, but it had nothing to do with the merits of the reexam."

The merits of Blackboard's patent
At issue is Blackboard's patent covering certain technologies that the company said it has invested money in to develop. The specific claims in the patent can be found in Blackboard's patent filing, a link to which appears at the end of this article.

Blackboard is a developer of software and services for the education market. The company became the focus of contention within education technology circles when, last year, it 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 2006.

The claims in Blackboard's patent have been interpreted by some as being overly broad and as covering technologies that existed prior to Blackboard's implementation of them. However, Blackboard's Small told us that he thinks these interpretations are incorrect. He said that some even go as far as to claim that Blackboard is trying to patent CMS in general.