Blackboard, SFLC Respond to Patent Reexam

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Blackboard, SFLC Respond to Patent Reexam

1/26/2007

By David Nagel

"That may change the game a little bit," the SFLC's Fontana said.

Likely outcomes and consequences
Both the SFLC and Blackboard agree to a certain extent on the likely outcomes of this patent reexamination, but they disagree on the consequences.

"Although ... 70 percent [of the patents that undergo reexamination] are modified in some way, 90 percent of them get through the process," said Backboard's Small. "If art comes to light that Blackboard did not know of when we filed this patent, and the Patent Office decides that our claims need to be modified in some way to address that prior art, and then the patent goes through the process having considered that art, it comes through a stronger document. It will not only have been reviewed once but twice by the Patent Office, and defendants will be stopped from arguing those references that were already considered by the Patent Office."

The SFLC's Fontana said that Small is wrong about the patent coming through stronger. "There's something like a 20 percent chance that the outcome will be that all of the claims of the patent will be revoked, cancelled, in which case Blackboard will lose the entire patent," Fontana said. "There's a ... 30 percent chance that the claims will survive completely unscathed. Blackboard will essentially win in that case. What's most likely to happen though is something in between those two extremes. Blackboard will be essentially forced to amend or revise its claims in trying to argue to the Patent Office that it is entitled to a patent. In amending its claims, it's only allowed to make them narrower in scope. So everything it does is necessarily gong to make the patent claims weaker than they are now."

He continued, "We hope that all the claims will be ultimately cancelled, but, at the very least, it's highly likely that Blackboard will be forced to revise the claims in such a way that they present less of a danger to our clients and others in the e-learning community."

Blackboard's Small has said numerous times that he doesn't see his company as a threat to open-source developers. He reiterated this to us today when we spoke with him: "We fully support what they're doing. We think it's healthy competition. I don't think it makes sense within the course management system community or e-learning community for proprietary and open-source providers to not get along. That's not in the best interest of teaching and learning or the universities, who are our clients. And it's not consistent with our mission. We've said numerous times that we're not focused on open source. We support open source. We're not focused on colleges or home-grown systems. It wouldn't make any sense to bring patent actions in those areas for a number of reasons. And I think people generally understand that and know that."

The SFLC's Fontana said that is organization will be ready to file additional patent reexamination requests with the USPTO should the present reexamination go in Blackboard's favor.