USPTO Rejects Blackboard Patent Claims

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USPTO Rejects Blackboard Patent Claims

3/28/2008

By David Nagel

[Editor's note: This article is no longer being updated. A follow-up interview with Blackboard Chief Legal Officer Matthew Small is available as of 12:15 a.m. PDT, April 2 at www.campustechnology.com/articles/60416/. --D.N.]

[Update 10, 6:22 p.m. PDT, March 28] Blackboard's e-learning patent looks to be going down. The United States Patent and Trademark Office this week sent out a "non-final" determination on the reexamination of Blackboard's patent in which all of the claims on the patent were rejected. Blackboard still has a period of two months to respond to the determination.

We spoke with representatives from the two parties that filed for the reexamination of the patent: Desire2Learn and the Software Freedom Law Center (SFLC). Their comments follow. Blackboard itself chose to release a statement (approximately 3:30 p.m. PDT) rather than speak directly with us today, although we might have additional comments next week.

While Desire2Learn and the SFLC celebrated the decision, Blackboard said that its patent still stands, that the company does not intend to back down, and that the decision has no effect on Blackboard's patent infringement suit victory over Desire2Learn.

The USPTO's Action
In making its determination, the USPTO said that it had found "a substantial new question of patentability" from the objections raised on both the inter partes reexamination request filed by Desire2Learn and the ex parte reexam request filed by the Software Freedom Law Center (SFLC). Both reexam requests were filed in late 2006 and accepted in early 2007.

There were 10 total issues raised in the reexamination request covering all 44 of the claims in the Blackboard patent (patent No. 6,988,138), also known as the "Alcorn" patent. According to the communication from the USPTO, seven out of 10 of the objections have been adopted either as proposed by the SFLC and Desire2Learn or with modification. The result is that all 44 of the claims by Blackboard have been rejected, according the the USPTO's summary of the action taken on the reexam.

Desire2Learn: Patent Had 'Fatal Flaws'
We spoke this afternoon with Desire2Learn CEO John Baker, who told us, "We're very pleased that the [USPTO] has rejected all 44 claims of Blackboard's patent. It was nice to see that the prior art that we submitted to the [USPTO] was used and reviewed thoroughly by the looks of it. Multiple pieces of prior art were enough to reject all claims of the ... patent."