Blackboard Vows To Press On

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Blackboard Vows To Press On

An interview with Blackboard Chief Legal Officer Matthew Small

4/2/2008

By David Nagel

There have been some shockers in the electronic learning world in the last month or so. First, Blackboard won its patent infringement suit against rival Desire2Learn. Then, soon after, the patent itself was rejected by the United States Patent and Trademark Office on reexamination (though that action is not final). But despite the setback in the Patent Office, Blackboard is vowing not to go down without a fight even as Desire2Learn and the Software Freedom Law Center--the two groups that sought to have the patent revoked--celebrate victory.

Blackboard Chief Legal Officer Matthew Small spoke to Campus Technology about the lawsuit and the latest developments in the USPTO action. In this first interview since the action, he said that Blackboard's "Alcorn" patent is still as strong as it ever was; that the patent is justified and will likely emerge from this reexamination at least largely in tact; and that the company is not in any way backing down from its patent infringement case against Desire2Learn.

We present a fairly unabridged transcript of our interview with Blackboard here for two reasons: We've already presented, in detail, the arguments from Blackboard's opponents in this case; and there are subtleties involved here that simply can't be summarized--subtleties in the patent law, in the history of software patents, in the arguments involved for and against Blackboard's patent, and in the claims in Blackboard's patent itself.

The Reexamination and the Patent's Validity
Blackboard's point of view is that no other course management system in the education space allowed a single user with a single logon and single user account to hold multiple roles across multiple courses during the relevant timeframe, and therefore the patent is valid. We have presented the arguments of others on this topic. Here Small expands on this and provides background on the patent process.

David Nagel: Just to get this out of the way right off the bat, Blackboard isn't planning to abandon the Alcorn patent at this point, right?

Matthew Small: No.

Nagel: Can you explain how you see the current situation as far as the reexam is concerned?

Small: Sure. Please allow me to provide some context. I think that there's been some misunderstanding about what exactly it means to have a patent reexam. Let me say it does not affect the validity of the patent, the judgment that we won in federal court, [or] the injunction pending against Desire2Learn.

Certainly we believe the reexamination process is a healthy process. It serves to generally strengthen patents, and this case is no different.

When you apply for a patent to begin with, you submit claims to the Patent Office and prior art, and they look for prior art and look at the claims in light of prior art, and there's a discussion around the claims. Typically they will reject those claims, and then they'll send them back to you, and you will look at their rationale, and you may modify the claims or strike the claim. It's an iterative process with the Patent Office until you have something that is patentable and it is issued. And when it's issued, it's presumed valid.