Several folks on the Sloan-C listserv have raised a strong second line of argument in the Blackboard prior art fight. In addition to identifying specific LMS precursors that had most or all of the functionality outlined in the claims, we should be building the case that LMS’s were directly and consciously copied from and evolved out of more generic groupware. In other words, once you you have a generic groupware system with groups, roles, permissions, and collaborative tools, it was obvious to the educational community that groups could be classes and that tool that education-specific tools such as a test engine, a grade book, and a homework drop box should be added.According to Successfully Preparing and Prosecuting a Business Method Patent Application [PDF], one criterion for showing that non-identical prior art is equivalent is that
a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification (Al-Site Corp. v. VSI Int?l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999); Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752, 1757 (Fed. Cir. 1998); Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 83, 193 USPQ 449, 461 (Ct. Cl. 1977)).
Now, Blackboard took great pains to use modifiers like “course-based” and “educational” in their patent claims. We want to show that these distinctions are not significant. There are a couple of steps to this argument:
- Demonstrate that people were already using generic groupware (such as Lotus Notes) for educational purposes and scoping the groups at the course level.
- Demonstrate that all the individual tools listed by Blackboard (a grade book with the ability to publish to students, a discussion board, a test engine with question pools, an announcements tool, a file sharing system, and homework drop box) were already being combined to teach online courses (e.g., some of the examples in the SCALE Efficiency Projects (pointed out to me by Lanny Arvan))
- Demonstrate that the notion of adding the tools documented in step 2 to the groupware systems documented in step 1 was already obvious to the community and underway.
This argument, particularly when combined with systems in item #3 that were approaching functional equivalence with the Blackboard claims, should carry some weight.
tags: blackboard, blackboard patent, prior art
This is exactly the right approach I believe for establishing prior art. What Blackboard patented is the application of existing groupware systems and methods to the learning environment. I don’t think it’s necessary strictly speaking — though I am not a lawyer — to show that groupware concepts were used in learning to establish prior art. All that’s necessary is that “a person of ordinary skill”, given the groupware concepts available at the time, could have applied them in a different context. The patent would then be obvious and, therefore, illegitimate.
It’s possible that a re-examination of the patent is impossible for the moment, if US Patent procedures are anything like those in Australia. In Australia, if there is legal action pending on a patent, the patent cannot be re-examined until proceedings are completed. See here for my blog entry extracting the relevant parts of the Australian Patent Examiners Manual:
http://blackfate.edublogs.org/2006/08/07/australian-patent-examiners-manual-online/
It would be good to check for similar provisions in the US Patents system, which may help us to focus on the actions which we can take immediately (such as filing prior art on Blackboard’s pending applications) to prevent their remaining applications reaching sealed status (where they are not only more difficult, but quite costly, to challenge).
Michael, I think this is a very fruitful line of enquiry. My own familiarity of this kind of product is mostly with FirstClass, where that is how we then at the Open University mapped a generic system into the teaching needs of the time. (See the entries for the early 1990s on JANUS and the OU at http://en.wikipedia.org/wiki/History_of_virtual_learning_environments). Even though FirstClass had origins in education its functionality was articulated in terms of very broad groupware principles, which was one of its attractive features when we selected it all those years ago – and indeed it was used at the OU and elsewhere outside educational parameters. (Anyone remember OneNet?)
What would be very useful would be if members of the Lotus Notes community could do the same. As Wikipedia and other sources document, Notes-based e-learning systems first became popular also in the early-mid 1990s. There are probably other systems too – WebBoard comes to mind in view of its connection with Ufi and other Sheffield-based activities – and CAUCUS…?
Paul Bacsich