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Blackboard Vows To Press On
An interview with Blackboard Chief Legal Officer Matthew Small
4/2/2008
In fact, if you submit a patent and it gets through right away, the very first time in initial application, without having anything rejected, you probably underclaimed your invention. A good patent drafters will draft broader claims, and they'll get narrower and narrower. And you know you did a good drafting job when you get your patent back and the broadest ones are rejected and the narrowest ones haven't been rejected because then you know you hit the right balance between what you've been claiming for your invention.
Once [the patent is] issued, anyone can do what's called an ex parte reexamination, which means you find a piece of art--it can be anything from anywhere--and you can send it to the Patent Office, and they will look at it, and they can decide whether they'll want to consider it.
Likewise, anyone can file what's called an inter partes reexam, which is a new process that wasn't available until 1999. It's a higher-stakes process. The party seeking the inter partes reexam has to submit all of the art that they're aware of--all of the material art that they're aware of--and then once the process is over, that party is statutorily barred from ever trying to use that same art to claim invalidity in court.
So Blackboard brought a patent suit against a single commercial competitor--Desire2Learn. Desire2Learn filed this inter partes reexamination, and the Software Freedom Law Center filed three references as an ex parte reexamination, and the Patent Office combined the two together and last week issued what's called a rejection of the claims.
It's similar to what happens before the original patent is issued. It means the Patent Office said, "Well, there's a question here; there's an issue. We'd like to talk about it. Here's our rationale."
In the inter partes context, unlike the ex parte context, the filing is a third party, and they can participate in the discussion. They can debate with the applicant or with the patent holder their side. And the Patent Office will make a decision.
When you go through this process, it doesn't mean the patent's invalidated or overturned or anything like that. It has no effect on prior judicial decisions. It just means that we will answer the questions raised by the Patent Office. Will they ask us to change any language or accept some comments or strike a claim? [They] could. With ex parte reexaminations that happens about 75 percent of the time. But does it mean the patent goes away? The answer's no. The patents, 90 percent of the time, get through in some way.
Nagel: Even at this point, when the Patent Office has sent its first response, and all of the patent claims were rejected?
Small: Yes. That's not an uncommon thing where there's a reexamination. That's what they do. It's very similar to the original process you go through when you get a patent. They're saying, "Okay, explain to me why your patent is different from this art." Sometimes they just need to understand what we meant by the wording. Sometimes they'll agree with the wording; sometimes they'll say, "Well, I think it would be clearer if you changed this wording and you clarify it." And then they kind of reinstate the claims. Or they remove their rejection. And the patent goes through.
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