An Analysis of the Latest Blackboard Patent FAQ

This week, Blackboard issued another FAQ which “is the result of numerous discussions with those interested in better understanding the Blackboard patent.” Do their answers make the topic clearer? Let’s do a question-by-question analysis and see.Starting with question 1:

Why has Blackboard obtained patents on its technology?
Blackboard has invested well over $100 million in the development of its educational products and relies on intellectual property laws to protect its technology investments. Patents help to ensure that companies that do not make comparable investments cannot simply misappropriate the technology of others to develop their own products.

It is true that the intent of patent law is to provide an inventor with a temporary monopoly in order to make the creation of new and useful inventions worth the investment. There is, of course, no necessary correlation between the dollar amount invested in product development and degree of novelty worthy of a patent. Makers of generic drugs invest many times more in their product development than Blackboard has but nobody would argue that they deserve patents for their investment. “Misappropriating the technology of others” is wrong regardless of the dollar amount invested in developing them. For example, it is wrong for a company to patent and charge royalties for technologies that already existed at the time of the patent filing.

How do you read a patent?
Patents are comprised of several sections, including the abstract, drawings, written specification, and the claims at the end of the patent. The claims are considered the most important part of the patent because they define the scope of what the patent covers. The abstract, drawings, and specification are used to help provide the context to understand what is in the claims.

A common misunderstanding is that the description in the abstract or specification governs what the patent covers. Focusing on the wrong section of the patent can be misleading and has caused some people to think that the Blackboard patent covers all of e-learning. To properly understand any patent, you must do a careful phrase-by-phrase reading of the claims.

Correct. This is why the community started with an analysis of the claims rather than the abstract or specification.

What is the difference between dependent and independent claims?
Each claim in a patent is either an independent or dependent claim. Independent claims stand alone while dependent claims are used to narrow the scope of the independent claims. A product that does not infringe on the independent claims by definition does not infringe on the dependent claims. Because the dependent claims rely on the independent claims, it is important to focus on the independent claims because if they are not infringed then the patent is not infringed. Blackboard’s patent has 44 claims, two of which are independent (#1 and #36).

Correct again–with one important caveat. According to section 2200 of the Manual of Patent Examining Procedure, the patent holder has a right to amend the claims during a re-examination procedure. In other words, if the two independent claims were successfully challenged, Blackboard would have the opportunity to rewrite the dependent claims to stand alone. This is, I am told, a common strategy in patent defense.

Is Blackboard suggesting that all course management systems are covered by the Blackboard patent?
Absolutely not. Blackboard is not claiming to have invented or to have received a patent on all e-Learning or on all course management systems ever created. Blackboard didn’t invent just any course management system, but the system claimed in the patent, which has achieved great commercial success. Another common misperception is that Blackboard is claiming to have invented or has claims over a broad range of standard e-learning tools standing alone, like discussion boards and chat rooms, which is also not the case.

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The critical question that Blackboard does not answer is this: Does the patent cover every course management system in production today? If you read Al Essa’s post examining the two independent claims, it appears overwhelmingly likely that the patent does cover all current course management systems.

What functionality is covered by the patent?
The key to understanding what a patent covers is to consider its claims, which is where the inventions covered by the patent are described. In Blackboard’s patent, claim 1, a system claim, is independent. Claim 36, a method claim, is also independent. The other claims are dependent claims because they depend on either claim 1 or claim 36. They cannot be infringed if claim 1 and 36 are not infringed.

In order for a claim (whether independent or dependent) to be infringed, each and every element of the claim in question (or an equivalent) must be present in a product.

For example, claim 1 in the Blackboard patent describes a course based-system with user computers where each user is “capable of having predefined characteristics indicative of multiple predetermined roles in the system.” Consequently, a system must provide for “multiple predetermined roles” for each user according to the claim and, likewise, every other element (or its equivalent) of claim 1 must be embodied in the system in question for claim 1 to be infringed. This detailed element-by-element analysis is necessary to evaluate the scope of the patent. Be wary of any analysis of this or any other patent which does not involve an element-by-element discussion of the claims as each element is a limitation on the scope of a patent.

Again, this is true, and again, I have yet to see an analysis of the patent’s independent claims that wouldn’t cover every single VLE/LMS/CMS/whatever in production today. Blackboard has made a point of refusing to say which other products do or do not infringe.

The second half of their statement, about the patent not coving stand-alone tools like discussion boards and chat rooms, is true as the patent is currently written. Furthermore, I would be surprised if Blackboard tried to make those particular particular claims stick during a re-examination process. Roles and permissions were incorporated into VLE’s within a couple of years of their patent filing, making the independent claims plausible to a person who doesn’t know the history of the industry very well (particularly a patent examiner, who is not likely to look at non-patented prior art). Discussion boards and chat rooms aren’t even close. That said, some of the claims relating to organization of the tools (e.g., claim 28) might be something they could try to hold onto during re-examination.

Is every e-learning application covered by the patent?
No. The patent covers only the specific systems and methods claimed in the patent (and their equivalents). As described above, the patent covers only those applications that contain every element (or the equivalent of the element) in the claims in the patent.

The ambiguity in the wording here is important. It really should read, “[T]he patent covers only those applications that contain every element (or the equivalent of the element) in any of the independent claims in the patent.” A system does not have to contain all the elements of all 44 claims in order to infringe; it just has to contain all the (ubiquitous) elements in either of the two independent claims.

Is the patent valid?
Yes. A patent issued by the U.S. Patent and Trademark Office is presumed valid by the courts. Just as not every course management system ever created would infringe the patent, not just any course management system would invalidate the patent. It is not enough to point to the fact that many course management systems existed prior to the filing date of Blackboard’s patent in order to invalidate the patent. To be invalidating prior art, it must describe each and every element of each and every claim of the Blackboard patent.

The first (complete) sentence is true; the USPTO presumes a patent is valid and sets a relatively high standard of proof for challenges. It is not easy to successfully challenge a patent in the U.S. legal system. However, the fact that the law gives them the presumption just because they filed the paperwork isn’t exactly something they should be bragging about, in my view.

That said, it is easier to challenge a patent than Blackboard makes it out to be in this answer. Their statement that prior art “must describe each and every element of each and every claim” only applies to an anticipation prior art argument. (By the way, there are several systems that may well meet the bar for anticipation.) There is a second type of argument, which says any elements that are not covered in your primary example of prior art must have been “obvious” to “a person with ordinary skill in the art.” What “obvious” means in the legal sense is…well…not obvious. In fact, the Supreme Court will be hearing a case next year in which the definition of “obviousness” for determining prior art is exactly what’s at stake. But, for example, if you could find several examples of prior art, each of which met all of the elements of the two independent claims and all of which together covered all of the dependent claims, you would be well on the road to making a reasonable case for meeting the obviousness test. If you think about the systems that pre-dated the Blackboard application–TopClass, Prometheus, OnCourse, the various Lotus Notes-based homegrown systems, etc.–you’d have to believe that this patent can be challenged.

How can I gain a better understanding about the Blackboard patent or other patents?
The inherent complexity of patent law is no doubt a leading cause of confusion about the Blackboard patent. A few organizations have recently announced that they will be consulting with patent advisors which we believe is a good development and certainly encourage others to consult with their professional advisors. We welcome the dialogue about the implications of intellectual property rights on the e-learning industry generally. We believe that an important first step is for all participants to have a common understanding of the Blackboard patent and patent law in general.

I couldn’t agree more. Which is why I will be publishing an article soon that gives a list of questions that your CIO/CFO/President can ask to your university’s legal counsel on the issue. In the meantime, it’s worth pondering the spin in this FAQ. Would you buy a used car from these guys?