Update: The Patently-O blog has a short post on this issue. There’s not a lot of new information here, but at least the reporting is done by actual patent lawyers.
According to Desire2Learn’s patent blog, Blackboard has now filed suit against the USPTO (technically against the Director of the USPTO) to stop the inter partes re-exam from proceeding. Their argument is that the law states the USPTO cannot order a re-exam after a final judgment has been rendered by the courts upholding the patent. The point of the law is to prevent defendants from going to daddy (the USPTO) after mommy (the courts) say “no.” In the complaint, Blackboard argues that the USPTO is applying the law incorrectly by allowing a re-exam to go forward until all appeals are exhausted in the courts. Instead, Blackboard argues that the cutoff should be the judgment from the first court. Blackboard doesn’t cite any precedent for their argument, which strikes me as odd. I know that inter partes is relatively new, but I find it hard to believe that this has never been tested before.
In their blog post, D2L raises two points in response to the suit. (D2L is not a party to this particular suit so, unless they file an amicus brief, they won’t have any say in court on this one.) First, they point out that Blackboard has previously said they welcomed the re-exam and expected it to strengthen their patent. While this point doesn’t have any legal implications, it does raise the question of how sincere Blackboard’s statements were in this regard. Clearly, they prefer their chances in the courts to their chances in the USPTO. The second point that D2L raises may have legal implications, although I don’t have the ability to properly assess that question as a non-lawyer. They note that Blackboard doesn’t mention in their filing that the USPTO had preliminarily invalidated all claims of the patent. Timing here may be important. If I recall correctly, the USPTO issued this ruling before the final judgment from the court. If so, that could complicate Blackboard’s argument significantly.
Regardless of the legal merits, the fact that Blackboard continues to assert the patent heavily undermines their new marketing message of openness. I don’t understand why they still think this strategy is a winner.