Keep Your Own Counsel on the Blackboard Controversy

• 09/12/06

By Michael Feldstein, SUNY Learning Network (NY)

As you may know, Blackboard Inc. was recently granted a patent on aspects of Learning Management Systems and filed an infringement lawsuit against competitor Desire2Learn.

There are a lot of claims and counter-claims flying back and forth about what these developments may or may not mean for higher education and online learning. (Full disclosure: I am opposed to Blackboard’s litigation.) However, all sides agree that universities will benefit from educating themselves about the fundamentals of the issue. To that end, this article provides a series of questions that you can take to your college’s legal counsel in order to better understand how patents on educational software in general and Blackboard’s patent in particular may affect your institution.

Your Current Risk Exposure

Your first goal should be to determine which systems within your university may be at risk of infringing on Blackboard’s patents and what the consequences of infringement might be. Keep in mind that the patent could potentially cover software that you don’t necessarily think of as a Learning Management System (LMS). Also, be aware that individual schools, departments, or faculty members could be using software systems other than your officially supported LMS. With that in mind, here are some questions for your legal counsel:

• Can you give me a plain-English test that I can use to determine whether a given software system may infringe on Blackboard’s patent? (Since an understanding of the patent claims requires both technical and legal expertise, your counsel may find this document [interpretations by Michael Feldstein] to be a helpful starting point.)

• For each system that may infringe on the patent, who is potentially liable? The software manufacturer? The support vendor? The university?

• If the patent is upheld or if Desire2Learn settles out of court, what is likely to happen with other potentially infringing products?

• In their patent FAQ, Blackboard asserts that claims 1 and 36 [view the patent and scroll to see claims 1 and 36] are the ones that matter most (since they are the only “independent” claims). If these claims were invalidated in the court case, what would happen to the other 42 claims in the patent?

Broader Implications

Once you understand your current risk profile, it will be important to get a better grasp of how the trend of patenting educational software could change the landscape of academic computing, as well as how your institution can prepare for those changes. Here are some questions that could help in that regard:

• Blackboard has also filed for a patent on content management and portal systems [U.S. patent application #20060026213]. Can you give me a plain-English test that I can use to determine whether a given software system may infringe on this patent should it be approved?

• eCollege holds a patent on an online grading system [U.S. Patent #6,678,500]. Can you give me a plain-English test that I can use to determine whether a given software system may infringe on this patent?

• What typically happens in industries in which multiple parties hold multiple patents on aspects of a single product? How are the legal issues worked out? What happens to companies that do not hold patents?

• Nearly all of today’s commercially available Learning Management Systems started off as homegrown university systems that were later commercialized. For example, Blackboard started at Cornell University, WebCT [now merged with Blackboard] at University of British Columbia, and Desire2Learn at University of Waterloo. If a group on your campus wished to develop an LMS today, what would be your legal advice on the matter?

• Many of the features in commercial Learning Management Systems are the direct result of either customer requests for features or customers actually paying for features to be implemented. Given an environment in which such features are potentially patentable, how would you advise the institution to handle feature requests to the vendors?

The answers to these questions should help your institution to understand the legal risks and begin crafting a policy that will protect you in the changing environment.

Michael Feldstein is an Assistant Director at the State University of New York’s SUNY Learning Network. His blog, e-Literate, which focuses on online learning, has numerous current entries about the Blackboard patent including references, resources, analysis, and various points of view.

[Editor’s note: Desire2Learn’s Patent-Information Blog is another source of basic information about the patent lawsuit, along with Blackboard’s patent FAQ, About Blackboard Patents, mentioned above.]