I’ve been thinking lately about the fact that almost none of the prior art listed in the Wikipedia entry was in Blackboard’s patent filing. It’s remarkable, really, since they are legally obligated to list any potential prior art of which they are aware at the time of filing. Failing to do so would constitute fraud. This is just one of several ways in which the application appears to be very sloppy.
I was thinking about this again when I received an email from a colleague pointing out that Prometheus is not yet listed in our prior art documentation effort. And it looks like Prometheus could present a really big legal problem for Blackboard.For those of you who weren’t around at the time, Prometheus was a Cold Fusion-based LMS built by George Washington University, turned into a commercial product, and eventually bought by Blackboard. At the time it was purchased, there was a widespread understanding that Blackboard wanted to buy it and kill it because it was a more advanced system. (See, for example, this list of features from an archived version of their web site dated November 28, 1999.)
Prometheus very well could be a strong example of prior art. And the fact that Blackboard purchased them and now owns their intellectual property doesn’t matter in terms of whether the system can count against the Blackboard patent. (The same would be true for WebCT and Web Course in a Box.) On the other hand (as my colleague pointed out in his email), since Blackboard owns Prometheus, they can’t very well argue that they weren’t aware of it during the patent application process. One could argue that they knowingly omitted the reference to prior art in their application.
If anyone has information about Prometheus, please enter the basics into the Wikipedia page and add any details you have about functionality circa 1998 to the appropriate page on NoEduPatents.org.
I’m no lawyer, but isn’t it possible that by buying Prometheus that Blackboard in turn owns any prior art generated by Prometheus prior to the acquisition?
I ask because I know that Blackboard many years ago bought a tiny software product called Electric Blackboard and even integrated it into CourseInfo; it was my understanding that this was done so that Blackboard could protect themselves in the event someone else laid claim to the name Blackboard. Electric Blackboard dated to 1982, and I thik that buying this tiny product conveyed to Blackboard the history of owning the name Blackboard dating to 1982–thereby protecting it against anyone who might claim trademark infringement.
I’d like to hear a bonafide legal opinion on this. Does purchasing WebCT and Prometheus grant Blackboard ownership of any prior art generated by those two companies? Any IP lawyers out there?
Fitz, trademarks, copyright, and patents are three different cases. The use of the name “Blackboard” is a trademark issue. It’s about ownership of an icon related to brand recognition. Patents, on the other hand, are about whether you, in fact, invented an idea and therefore are entitled to a temporary monopoly on implementations of that idea. The best legal advice I have been able to get (from several sources) is that ownership of the software doesn’t change the fact of prior art.
A THOUGHT ON ONE POSSIBLE NEXT STEP
When a party files a patent application, part of the filing statement requires the identification of inventors.
We don’t know exctly what happened yet in the summer of 1999 when Blackboard filed its patent application but there does seem to be quite a bit of prior art.
If it turns out that Blackboard executives filed one or more patent applications in which they knowingly and falsely identified Blackboard staff as inventors of patentable products, processes or techniques, then the Blackboard executives arguably committed fraud.
If the Blackboard executives committed fraud in patent applications more than once (and they seem to have filed patent applications in various jurisdictions), then their actions may constitute a pattern of fraud.
If an enterprise engages in a pattern of fraud, meaning at least two fraudulent acts within a 10-year period, then the organization and its members — in this case Blackboard, its executives, board members and advisors — may be guilty of criminal activity under RICO (The Racketeer Influenced and Corrupt Organizations Act — see http://en.wikipedia.org/wiki/Racketeer_Influenced_and_Corrupt_Organizations_Act and http://www.ricoact.com/), a law whose penalties on conviction include damages, fines and prison sentences of up to 20 years.
RICO is a very broad tool used by both law enforcement officials and the general public. An aggrieved party, meaning an individual, a company, an association or even a group of parties in a class action, may file civil RICO charges against an enterprise.
This means for example that a party suffering damage could start a class action against Blackboard under RICO and invite any and all other parties — end-user clients such as schools and universities, service companies, open source organizations, etc., who may also suffer from Blackboard’s alleged criminal activities — to join the action.
Right now the Blackboard folks are looking at potential upside of hundreds of millions of dollars or more in licensing fees and no real downside aside from some bad press and time and effort costs.
RICO charges might refocus things a bit.
A real downside that includes financial ruin and a couple of decades in jail might motivate company executives, board members and advisors to think long and hard about what they really did invent themselves that summer.
Perhaps competent legal counsel should take a look.
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Damn. That is an interesting line of thought.
I’ll do what I can to bring it the attention of the appropriate folks.