Solving the Ed Tech Patent Problem

You may have heard that Khan Academy has filed for several patents. Audrey Watters has written a really strong piece providing the details of the filings in the context of the history of ed tech patents and showing why some academics feel that the patent system clashes with the values upon which academia was built. In the process, she excavates some of my personal history in the Blackboard patent war. While I am sympathetic to arguments against ed tech or software patents on principle, my own personal reasons for getting involved with that fight were more utilitarian. I believed then, as I do now, that patents threaten to kill innovation in educational technology due to the specific characteristics of the market. The outcome of Blackboard v. Desire2Learn did not end that threat, although it did temporarily reduce it. The conversation being provoked by Khan Academy’s filings offers a new opportunity to come up with a more permanent solution.

Understanding the Threat

The Blackboard patent fight provides us with a good case study to understand the nature of the problem. Blackboard was granted a patent related to roles and permissions in an LMS. Specifically, they patented the ability of a system to have a single user set up simultaneously as a teacher in one course and a student in another. When academics hear the patent boiled down this simply, several objections usually come up. The first is obviousness. It doesn’t seem like such a simple function should be patentable. The second is prior art. It seems like other, earlier systems probably went down this path. This latter argument took on particular resonance, since many of these systems were developed by and for academics. There was a sense at the time that Blackboard effectively stole a basic concept behind the LMS from its customers and was using it to limit their alternatives. But neither of these problems were at the heart of what made the Blackboard patent so dangerous. Rather, it was the patent’s breadth of applicability. If it stood, there probably wasn’t a mainstream LMS in existence at the time that wouldn’t infringe. When Blackboard sued Desire2Learn for infringement (or “asserted” their patent, in legal parlance), they were attempting to affirm the validity of the patent. Had they won in court, or had Desire2Learn settled out of court, then Blackboard could have sued any LMS developer and, in principle, any LMS adopter.

But it was worse than that. Blackboard had other patent filings, some of which were also quite broad. It was reasonable to worry that the company was preparing to pursue a strategy known as “royalty stacking,” in which they could charge competitors multiple royalties for multiple patents. What would this do to the LMS market? In a big enough industry like, say, mobile phones, companies like Apple and Samsung can sue the pants off each other for patent infringement and still stay happily in business. The LMS business is nothing like that. Instructure, the only new entrant that has gained substantial traction in North American higher ed in the last decade, did so by spending twice as much money as they made, with most of that going to sales and marketing. If Instructure had to pay multiple royalties to Blackboard, there probably would be no Instructure today, and there almost certainly would be no publicly traded company. A successful royalty stacking strategy would have killed the possibility of new competition and given Blackboard a permanent choke hold on the market. I didn’t care to fight about which LMS company should gain or lose market share or whether software patents are good or bad in principle, but I sure did care about whether there would be long-term competition and innovation in educational technology.

Fighting Back

Once the danger became apparent, different parties took different strategies to fight the threat, depending on their resources and legal standing. Desire2Learn fought back both in court and by challenging the validity of the patent through US Patent and Trademark Office (USPTO). The Sakai, Moodle, and ATutor open source communities enlisted the help of the Software Freedom Law Center (SFLC) to file separate patent challenges on their behalf. Having no lawyers and no legal standing myself, I took a different tack. I sought to make the patent strategy a loser economically. I believed that Blackboard’s customers and prospects would reject the company if only they fully understood the patent, the strategy, and the broader implications. So I did my best to provide the necessary education. I wrote a plain English translation of the patent claim. I started a Wikipedia page to document the history of LMS development, to identify potential prior art for the legal case but also, and perhaps more importantly, to place Blackboard’s assertions of innovation in an historic context. I interviewed legal experts and explained court proceedings. Ultimately, it was up to the university decision-makers, and not me, to decide how Blackboard’s actions should affect their purchasing decisions. But I did everything I could to make sure that they had the knowledge that they needed to make informed decisions. As did other bloggers at the time.

In one important way, the strategy was far more effective than I ever imagined it could be (or than I frankly intended it to be). Blackboard’s reputation was already shaky, for a variety of reasons ranging from product bugs to poor customer service to high-pressure sales tactics to a proclivity for buying up popular alternatives and then killing them off. The patent issue crystalized their brand image, in much the same way that we sometimes see a single gaffe or incident crystalize nascent opinions of a politician—like John Kerry’s “for it before I was against it” or George Bush’s “Heckuva job, Brownie.” There is no doubt in my mind—none—that Blackboard would have substantially better share today had they done nothing different other than refraining from filing that law suit. I always argued that the goal should be to incentivize better market behaviors, and that treatment of companies should change when their behaviors change. And yet to this day, there are institutions that will not even consider evaluating Blackboard because the stakeholders think it’s a bad company, even when they can’t fully articulate why they think that. Even a decade after the patent fight started, and five years and two CEOs after it ended.

And that’s the problem. Yes, we established the principle that a company that asserts an ed tech patent would be punished in the marketplace. Some ed tech leaders learned that lesson and will remember it. Others will not. Even inside Blackboard, even among employees who were there at the time, the institutional memory is fading. Meanwhile, none of the entrepreneurs who entered the space since 2010 have any reason to have even heard of the dispute. And customers don’t remember the details either. The deterrent lesson of Blackboard v. Desire2Learn is time-limited, it is poorly targeted, and it is fading.

We need a better, more permanent solution.

A Complex Problem

So that was Blackboard, circa 2006. What about Khan Academy now? What does it mean that they are filing for patents? What does it mean that they have signed a pledge not to assert their patents except against other parties that have asserted patents? What is the motivation here? What is the effect?

I believe that Khan Academy has good reason to file for patents even if their intentions are entirely noble. Perhaps especially then. Online learning in general and code academies in particular are large and growing markets. Typically, corporate entities only get targeted by patent suits when they are rich enough to produce a big payout. But Khan Academy is a potential target for the opposite reason; they have the ability to reduce the total size of the market by satisfying demand with free offerings. Why pay for a course at Acme Code Academy when you can get it for free from Khan Academy?

Are there actors out there who are morally bankrupt enough to sue a non-profit foundation for giving away free education? If there aren’t now, there will be. Sooner or later, ed tech will get its Martin Shkreli. As long as software patents are legal, Khan Academy is vulnerable to infringement suits. And while owning patents offers far from perfect protection against this danger, it is still better than no protection at all.

I don’t worry about what Khan Academy is likely to do with its software patents. But I do worry about whoever the next owner of the patents might be. I have heard Sal Khan muse that his tutorial videos might still be around and useful to somebody 100 years from now. Unfortunately, that same possibility exists for his software patents. Patent pledges are nice, but they only survive as long as the good will of the current patent owner lasts. Sal Khan may keep his guns locked up safely in a cabinet, but the fact remains that there are now a few more guns in the world that could get out onto the streets and in the wrong hands.

We need a better solution.

A Better Solution?

Needless to say, I have thought about this problem for a long time. There may be a way for good actors in educational technology to get the defensive protection that they need from patent ownership while still reducing the long-term risk to the people that they serve, but they will have to go further than a patent pledge. What I have in mind is a legal structure that combines characteristics of a patent pool and a land conservation easement.

It would work something like this:

• A legal trust would be formed by a third party with moral credibility, such as the Electronic Frontier Foundation or the Berkman Center.
• Patent holders would cede their right to assert their patents to the trust, except under specific conditions of self-defense, in perpetuity.
• In return, they would gain the right to assert other patents in the pool in specified self-defense circumstances, as overseen by the trust.
• The trust would also be empowered to assert the patents in the pool against third parties that are asserting educational technology patents, as a general deterrent against ed tech patent assertion.

I am not a lawyer and am not sure that this would work. But it seems plausible.

If there are any patent holders out there who are potentially interested in this approach, please know that I want to do anything I can to help. I may be able to help coax other patent holders to the table, and I certainly would be happy to promote the good efforts of any company willing to make such a commitment.