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Update: Blackboard Defends Patent, Files More Claims

As we reported last week, Blackboard has responded to the United States Patent and Trademark Office, urging it to rescind its rejection of the company's electronic learning patent. Blackboard has also appended new claims to the patent. Rival Desire2Learn accused Blackboard of reversing its position on the reexamination.

The USPTO in March rejected all of the claims in Blackboard's patent following a reexamination prompted by requests from open source advocate the Software Freedom Law Center and commercial rival Desire2Learn. But the patent rejection was not final, allowing Blackboard a window of time to respond to the decision.

The original awarding of Blackboard's patent No. 6,988,138 (also known as the "Alcorn" patent) was followed soon after by a patent-infringement suit brought by Blackboard against Desire2Learn, the developer of a competing learning management system. This was followed by outrage on the part of the education community and the developer community, which characterized the patent as unfounded, broad, overreaching, and stifling. Blackboard, however, maintained that the patent was narrow, focusing the concept of "multiple roles" for users in specific circumstances. (You can read an account of this here.)

The Patent Office initially agreed, but, on reexamination, determined that the claims were dubious and announced 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 SFLC. Both reexam requests were filed in late 2006 and accepted in early 2007.

The result was that all 44 of Blackboard's Alcorn patent claims were rejected. But again, this action was not final.

Meanwhile, Blackboard did persevere in its infringement suit against Desire2Learn. Furthermore, even after the Patent Office rejected Blackboard's claims, the court did not overturn the ruling. So the issue has not gone away.

Blackboard maintains that its patent is still valid, even while admitting that the question of what is patentable is still open to healthy debate. Blackboard has also pledged not to assert its patent against open source developers. (See comments on this pledge here.)

Blackboard's Response
In its latest defense, filed May 27, 2008 and made public May 28, Blackboard told the Patent Office that it was not withdrawing any of the 44 original patent claims. In fact, the company added several more: 57 in total now. In comments to the Patent Office, Blackboard also took the opportunity to define the differences between the technologies they've patented and those used by other learning management systems.

Specifically, the patent is limited in the following way, according to Blackboard's comments:

"Once a person is logged into the system as a user with a user name and password, that user must be capable of having multiple predetermined roles in the system to satisfy the claims of the Alcorn patent. A system which does not provide the capability of a user to have multiple roles once that person is logged in using the single user name and password, but instead requires a person to perform a separate login procedure using a different user name and password in order to assume a different role, does not meet the clear limitations of the independent claims 1 and 36 of the Alcorn patent."

Furthermore, the claims only apply to learning management systems in educational settings. Blackboard does not claim to have invented multiple roles for users; it claims to have been the first to use the concept in the education space in specific circumstances, i.e., allowing a single user with a single logon and single user account to hold multiple roles across multiple courses. In the USPTO's reexamination, it found that this was an "obvious" application of a technology and was therefore not patentable. Blackboard, in its response to the USPTO this week, objected to this and sought to have the claims of obviousness withdrawn. The reasons Blackboard cited were numerous and can all be found in Blackboard's response, which is available in PDF form from Desire2Learn's site here.

New Patent Claims
In addition to defending its patent, Blackboard also took the opportunity to try to expand it, adding 13 new claims. All of these new claims relate to systems and methods involved in the claims that the Patent Office has tentatively rejected. They are all, in other words, dependent claims. Blackboard also wrote in its filing that the new claims do not broaden the Alcorn patent.

"These claims do not broaden the scope of the claims, as they merely add further limitations to claims already issued," according to Blackboard's May 27 filing.

The new claims include matters relating to the means for storing data, the means for assigning access, various subsystems, permissions, access (or lack thereof) to features based on user roles, and enabling and disabling pre-defined characteristics based on user roles.

Again, the complete response to the USPTO can be found in PDF format here.

Desire2Learn Criticizes Move
Desire2Learn has not yet filed a formal response with the USPTO to Blackboard's response. However, the company has commented on Blackboard's defense of its patent, saying in a blog post Friday, "... [D]espite Blackboard's prior assertions (including on its own website) about welcoming the re-examination of their patent, Blackboard has now requested that the Patent and Trademark Office stop its re-examination of the patent. We will leave it to others to speculate about the reasons for Blackboard's change of heart.

Desire2Learn also announced that it's filed an "Emergency Motion To Stay Proceedings Pending Reexamination Or Alternatively, Motion To Stay Judgment Pending Appeal" with the United States Court of Appeals for the Federal Circuit in an effort to delay enforcement of the patent infringement suit it lost to Blackboard until the reexamination iof the patent s sorted out.

Further information about Desire2Learn's latest move can be found here.

Now that Blackboard has responded to the decision, Desire2Learn will also have an opportunity to respond. Once that happens, there is no fixed timeframe for a final decision from the Patent Office. We will, of course, keep you posted.
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