A while back, IMS CEO Rob Abel was kind enough to comment on my post regarding the potential impact of patents on educational technology standards. As part of his summary at the end of the comment, he wrote,
It’s difficult for Blackboard or any other vendor to “game” the standards process in IMS due to our IP policies. So, in fact the standards organizations are a great way to bring issues like this out so they can be known – and, in the case of standards, potentially go in a different direction if one organization’s IP is encumbering. The standards become the known ground that vendors must share without claims.
While I appreciate Mr. Abel’s effort in sharing his thoughts, and while I am glad to hear his optimism, I’m afraid that recent history with technology patents shows that it is not so easy for standards bodies to protect themselves from abuse by aggressive patent holders.Consider the case of Rambus. The FTC recently concluded the following:
We find that Rambus engaged in exclusionary conduct that significantly contributed to its acquisition of monopoly power in four related markets. By hiding the potential that Rambus would be able to impose royalty obligations of its own choosing, and by silently using JEDEC to assemble a patent portfolio to cover the SDRAM and DDR SDRAM standards, Rambus’s conduct significantly contributed to JEDEC’s choice of Rambus’s technologies for incorporation in the JEDEC DRAM standards and to JEDEC’s failure to secure assurances regarding future royalty rates � which, in turn, significantly contributed to Rambus’s acquisition of monopoly power.
Rambus claims that the superiority of its patented technologies was responsible for their inclusion in JEDEC’s DRAM standards. These claims are not established by the record. Nor does the record support Rambus’s argument that, even after two JEDEC standards were adopted and substantial switching costs had accrued, JEDEC and its participants were not locked into the standards. Rambus now claims that we can and should blind ourselves to the link between its conduct and JEDEC’s adoption of the SDRAM and DDR SDRAM standards, as well as to the link between JEDEC’s standard-setting process and Rambus’s acquisition of monopoly power. These claims fail, both as a matter of fact and as a matter of law. To hold otherwise would be to allow Rambus to exercise monopoly power gained through exclusionary conduct. We cannot abide that result, given the substantial competitive harm that Rambus’s course of deceptive conduct has inflicted.
In other words, Rambus tricked its competitors into ratifying standards that, if implemented, would infringe on Rambus’ patents. Now, like the IMS, JEDEC has a patent disclosure policy. In fact, violation of that policy is exactly the issue behind the FTC charges. So in the end, it appears that Rambus will get what they have coming to them. (The ruling was this month.) However, it took years of litigation to reach that point. In the meantime, JEDEC’s reputation as a standards body was shredded Norwood, vice president of research for Gartner Dataquest, has commented,
“Look at what a sorry state those DRAM vendors have got themselves into. Consequently, what the industry has lost is its faith in the standardization process, such as DRAM standards-setting activities at Jedec. Memory companies are now so weary of Jedec. That’s a real detriment to the whole industry.”
Now let’s jump back to online learning. This month the IMS will be having a meeting about the forthcoming Common Cartridge standard. How confident can we be that Rob Abel is right and that the IMS isn’t being “gamed” to encourage vendors to adopt technologies that will infringe on somebody’s patent? We’ve been (justifiably) picking on Blackboard a lot, so let’s choose another target for our example. Consider the following Pearson Education patents:
- #6,449,627: Volume Management Method and System for a Compilation of Content
- #6,661,840: Method and System for Removing Content Entity Object in a Hierarchically Structured Content Object Stored in a Database
- #7,007,034: File Structure for Storing Content Objects in a Data Repository
- #7,043,488: Method and System for Storing Hierarchical Content Objects in a Data Repository
- #7,089,239: Method and System for Preventing Mutually Exclusive Content Entities Stored in a Data Repository to be Included in the Same Compilation of Content
Questions:
- Did Pearson ever file a patent disclosure statement to the IMS for Common Cartridge?
- If not, should they have?
- Did Blackboard ever file a disclosure statement for Common Cartridge or any other standard?
- Has anyone ever filed patent disclosure statements with the IMS and, if so, are these available to the public?
I sincerely hope that the IMS really does have this situation well in-hand. Because if it doesn’t, the potential damage to the progress of learning technologies could be very significant.
Hi Michael, you’ve probably seen this discussion between ALT and Blackboard:
http://www.alt.ac.uk/docs/ALT_Blackboard_20060823.pdf
Small’s emphasis of claims 1 and 36 were interesting, as 36 seem concerned with controlling user’s access to files. I wonder how these claims would affect systems that use a Content Management System (Afresco, for instance) as the underlying file management system?
A second question it raises for me: is a system where user roles are set externally, say via LDAP, infringing?
I’m not a lawyer of course:-).
Hi Michael,
The short answer to your posting is this:
1. The Intellectual Property Rights policies that IMS and other major standards organizations now have in place are a direct response to the Rambus case and are designed to thwart that exact occurrance. In fact, IMS filed a “friend of the court” brief to support the actions against Rambus 🙂 So, yes, we believe IMS is covered against that possiblity. [Another nuance is that in the case of Rambus you are talking about semiconductors – in which the investment in plants and equipment is huge – making it very difficult for a standards organization to change course on the standard once threatened. This is not as difficult in standards for data interoperability which is what organizations like IMS focus on.]
2. In the IMS policy, any licensing claims of any kinds are included in the publically available versions of a specification. So, if Pearson wants to ask for a royalty on common cartridge it could, but it would have to be acknowledged by the work group and would then be published in the publically available specification for all to see. Once the specification is publically available all participants lose the opportunity to make a claim.
Caveat: there is no absolute guarantee that IMS or any organization can protect against patent claims – that’s because patent claims can come from anywhere – including organizations that have not participated. But, at least in IMS, and standards groups like it, there is an explicit attempt to uncover and protect the participants.
Honestly, I think you’re barking up the wrong tree trying to tie the Blackboard patents to Common Cartridge for two reasons:
1. The use of interoperability in content formats for online learning goes way back – the metadata, content packaging, and question/test work of IMS rolled up into Common Cartridge represents the earliest work of the interoperability standards, many already established in 1998-9. Therefore, if Blackboard thinks that their patent applies to Common Cartidge it would apply to SCORM, IEEE and other long established content interoperability standards – a very long shot.
2. The critical claims referenced above by Michael Penny and Blackboard themselves don’t have this as its topic. The primary topic seems to be role-based access to courses, etc.
In summary, as mentioned in my first post, Common Cartridge is a standard of tremendous value to the higher education community which explains why we have major publishers, open source projects, and CMS vendors behind it. In particular, it can play a critical role in preventing lock-in to a particular CMS platform. I don’t foresee any issues in it being ratified and becoming very successful. However, it is really important for the end-user institutions that will benefit from it to begin asking for it in procurements so that the community will reap the benefits as rapidly as possible. I will be giving some briefings at the Educause conference on this for those that are interested. Just sign up on the IMS mailing list and you will get the details when we have them
Enjoy your writings!
Very best,
Rob
http://www.imsglobal.org/
First of all, Rob, thanks for commenting again. I appreciate your participation.
It is a relief to hear that the IMS is aware of the challenges and was even involved with the Rambus case. I also agree that Blackboard’s current patent almost certainly wouldn’t directly impact Common Cartridge (although I’m not sure how excited the target and potential future targets of infringement litigation are going to be to cooperate with Blackboard on any topic). This is why I pointed to the Pearson patents, which are much more likely to infringe than Blackboard’s current patent. I brought up Blackboard’s name only because they have other patents pending. I have no idea if any of these are likely to infringe, but I’m hoping that you do. Given that a number of IMS members are also patent holders, it would be valuable to know whether anyone has ever filed a patent disclosure–on any standard.
Regarding SCORM, AICC, etc., I’m afraid that I don’t buy that argument. If those standards had covered everything that needs to be done in the area of course content portability then there would be no Common Cartridge initiative. And if there are novel inventions required for Common Cartridge, then there is the possibility of a patent.
Hi Michael 🙂
Certainly agree that Common Cartridge is charting new territory. My point was that the basic concepts and prototypes for content LMS interoperability were done back in 1997-8 and that a patent claim on Common Cartridge would most likely be along those lines and have some relationship to all this long standing work.
There is tremendous overlap with Common Cartridge and SCORM – even down to the actual specifications underlying them. Common cartridge is a profile that combines four sets of work from IMS. Content packaging is one and it is part of SCORM. Metadata is another and it is also part of SCORM through the IEEE LOM work. Both of those pieces of work had versions in 1998 or so. Common cartridge also adds in a long standing widely implemented IMS standard for question-test interoperability (QTI) and something called tools interoperability that launches separate learning environments. So, the Common Cartridge concepts are not new – they have just been improved with time and practice and packaged specifically for the needs of higher education.
Its important for you and your readers to understand that standards organizations like IMS involve standards for interchange of data between applications. The standards process does not prevent or even discourage organizations from patenting or otherwise protecting their specific applications that use the data. But, it does provide a community in which the organizations agree on those interchange formats. When Pearson, Sakai, and Angel get together on a project like Common Cartridge they are agreeing on standards for data exchange that will be openly published and exchanged. It is very difficult to patent those data interchanges – especially when we are talking bits and bytes. Rambus involved a hardware specification for interoperability. A very different situation. That said, folks in the standards world have taken the Rambus situation very seriously and have put into place IPR policies like ours to add an extra level of protection. The good news is that has been the only major case I am aware of in terms of patent cases coming out of a standards organization – a good record indeed.
As far as Common Cartridge goes, there have been no claims made so far by any of a very large number of participants. While it is not impossible for this to occur between now and the public release of the spec (probably in the Spring 2007 – not firm yet) I would be totally shocked if it happened at this point. If it does you will be one of the first to know.
Now, a question for you. When is SUNY Learning Network going to either begin to participate as a member of IMS (like many of your other colleagues do) and, more importantly, implement open standards in your system? Common cartridge would be a good start! 🙂
Best, Rob
If I were Emperor of SUNY, we’d be members today. As it is, I’m just a guy with a $15/month web hosting account.