USPTO Rejects Blackboard Patent Claims

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USPTO Rejects Blackboard Patent Claims

3/28/2008

By David Nagel

He said that it wasn't just one piece of prior art that knocked down the patent claims, but multiple pieces, which makes the present decision stronger than it would be if there were less prior art involved.

"It's going to make it very difficult for Blackboard to overcome the recent office action from the Patent and Trademark Office."

He continued, "We do believe Blackboard has a significant hurdle to overcome here given the number of pieces of prior art that caused this to be rejected."

Diane Lank, general counsel for Desire2Learn, said that the company expected the USPTO to reject Blackboard's patent claims all along, despite the fact that a jury in Texas did not invalidate the patent last month when it had the opportunity to do so.

"We knew going into this thing that the patent had very, very serious, likely fatal, flaws," Lank said. "The one thing you have to remember is they go on different standards. The court case, to invalidate the patent, is a different standard of proof that we had to show there--a 'clear and convincing' standard. The Patent and Trademark Office isn't governed by that rule."

As for Desire2Learn's next steps in terms of the patent infringement case, "We're just digesting this now," Baker said.

The information is still very new. As of this writing, Desire2Learn had not yet received the letter from the Patent Office directly; the notice is posted on the USPTO's site, which is how Baker found out about it, doing a random search on the site.

"For us, it's a note coming from the U.S. Patent and Trademark Office ... that validates what we've been saying all along, that this patent should have never issued and that if the Patent and Trademark Office had this prior art in front of them that they would invalidate it," Baker said. "And that's what they have done here with this action: They've rejected all 44 claims. It's been a long [time], almost two years we've been saying that, and now finally we're seeing some great results from it. We just wish it would have happened a couple months prior to the trial."

Desire2Learn, of course, lost the patent infringement case Blackboard had brought against it and was ordered to pay $3.1 million in damages and remove "infringing" code from its learning management system.

Desire2Learn did, in fact, remove the code from its system and released version 8.3 as a final design workaround. However, Desire2Learn said the USPTO's action would not affect the latest release of its software. The reason? When the workaround was implemented, the software turned out to be an improvement over previous releases, incorporating not just the code changes but several new features as well.

"Regardless of what the final actions out of the U.S. Patent and Trademark Office are--and we're thrilled with the direction they're going in--we should be in a position where our clients and potential clients are going to be well separated from what Blackboard's trying to claim as an invention because we put the energy into addressing all the things they were trying to claim were infringing."