On the one hand, Thomson Reuters’ lawsuit against Zotero has been dismissed. Details are scant at this point. We don’t yet know the grounds for dismissal or whether Thomson Reuters will pursue other legal action. On the other hand, the U.S. International Trade Commission has agreed to investigate whether Desire2Learn is violating trade laws with patent infringement on some of the claims in Blackboard’s original ‘138 patent.
Tag: Desire2Learn
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Anti-trust: Curiouser and Curiouser
Here’s the chronology for the Blackboard anti-trust investigation as far as we know so far:
- May 14th: The U.S. Department of Justice contacts Desire2Learn and informs them that they are investigating the merger.
- May 22nd: According to their subsequent legal filing, Blackboard “received a voluntary request for information” from DoJ.
- May 26th: Desire2Learn goes public with what they know about the investigation.
- May 27th: Blackboard files an 8-K statement informing investors that they have received the request from the DoJ.
A couple of things are odd about this chronology. First, is it really plausible that DoJ didn’t contact Blackboard until eight days after they contacted D2L? Blackboard is careful in the language of their filing; they don’t indicate that the request for information on the 22nd was their first contact from the Department of Justice. Second, is it normal for Blackboard to wait until 5 days after the contact (granting that three of those days were a holiday weekend) to file the 8-K?
I’m certainly not an expert in this area of the law, so if any readers out there can provide insight into what could be going on here and to what degree it matters, please do share. For that matter, if anyone out there has anti-trust experience and can explain what DoJ’s options are going forward, that would be very helpful.
Meanwhile I have heard from a surprising number of LMS vendors that they have been contacted by DoJ. Clearly, the government is taking this seriously. In most cases, these appear to be just initial contacts. I haven’t heard yet from any schools, although Jeff Young’s reporting at The Chronicle indicates that schools are being contacted. Again, if you are at a school and have had some contact with the DoJ over this issue, please let me know.
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EduPatent Updates
photo credit: wandrerstefan As others have already noted, Desire2Learn has updated their patent info blog with a smorgasbord of new information. (Frustratingly, the posts on the blogs don’t seem to have permalinks. Except when they do. Ugh.) Anyway, you can go to their blog and look at the April 29th entry for the details, but here are the highlights from my perspective:
- With Blackboard’s new Canadian patent infringement suit, we’re going to get a view into whether other countries have less insane legal systems for dealing with intellectual property than we do. It should be interesting. D2L provides some early clues in this direction, explaining that the process, at least for the initial trial, is more streamlined and less expensive.
- Blackboard has filed for a 30-day extension to return its arguments to the USPTO regarding the non-final action invalidating their (original) patent. D2L alleges that this is a stalling tactic, which makes sense, given that the Federal Circuit court could rule any time now, and that a positive ruling there first could head off the anticipated negative ruling in the USPTO.
- D2L also alleges that Blackboard has a pattern of launching a new legal assault within days of having a ruling go against them. Again, this makes sense as a possible legal strategy. If Blackboard’s goal is to keep this thing alive in the courts until the bitter end, they they would have a new attack queued up and ready to go as soon as the old one runs out of gas.
- D2L mentions that they are considering filing a new re-examination. It’s not clear if this would be against the original patent or the continuation patent. If the former, it means that they have uncovered new prior art. Under the rules of an inter partes challenge (which is the kind of patent challenge that D2L filed), they were legally required to disclose all prior art they were aware of at the time of filing. However, if it’s against the continuation patent, things get murkier. Blackboard would have been legally required to put all the prior art being asserted against the old patent in their filing for the new one. You would think that would innoculate them against the old prior art, but that’s not necessarily true. It depends on how much written analysis the patent examiner gave to the prior art. If it was essentially rubber stamped, then D2L (or some other party) could go back to the USPTO and assert that the patent examiner failed to consider the prior art in certain combinations. At any rate, it will be interesting to see if D2L does, in fact, have newly discovered prior art.
- D2L reminds us that Blackboard is spending a ton of money on patent litigation and points to a proxy statement from the company showing that Blackboard froze salaries and cut 401K matching for its employees in 2008 (the implication being that employees are being squeezed to pay the litigation costs). Interestingly, Blackboard was recently ranked 17th out of over 2,000 publicly traded companies in terms of revenues per employee. Maybe they cut 401K benefits because the employees are so productive management never wants them to retire.
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Blackboard Files Patent Infringement Suit Against Desire2Learn in Canada
Once again, Jeff Bohrer gets the scoop. (Add this guy to your feed reader, for sure.) Blackboard has apparently been issued a Canadian patent comparable to its US patent and is suing D2L in Canada. As Jeff puts it,
To summarize, here are the active proceedings in this complicated story listed in chronological order:
– Blackboard vs. Desire2Learn (US Federal Court)
– US Patent Office review of Blackboard’s “‘138” patent
– Blackboard vs. US Patent Office (US Federal Court)
– Blackboard complaint aginst Desire2Learn to US International Trade Commission
– Blackboard vs. Desire2Learn (Canada Federal Court)Keep up if you can.
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Yet Another EduPatent Suit
Jeff Boerer has a good find on this. It looks like Blackboard has filed a complaint with the U.S. International Trade Commission aleging that Desire2Learn is illegally importing software into the United States that violates a U.S. patent. I don’t know anything more than what Jeff has posted, so I recommend you go to his blog and read his post.
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EduPatent Fight As Complicated As Ever
As you might imagine, Blackboard and Desire2Learn have somewhat different interpretations of what the recent USPTO ruling means in the bigger picture. And there certainly is plenty of room for interpretation, given the complexity of the situation. There are now no less than three separate, parallel, but not entirely unrelated fronts in the legal war between Blackboard and Desire2Learn. There are many possible permutations of outcomes based on how each is resolved and in which order.
Fasten your seatbelts, folks. This is getting even more complicated. I have spoken with a few experts over the past week to get some perspective. None of them wanted to be quoted on the record, and most preferred to remain anonymous. (I can at least acknowledge and thank Peter Zura for being very generous with his time and providing me with some great background information on patent law.) What follows here is my own, non-lawyer’s interpretation of the sometimes conflicting input I got from these experts. I don’t promise that I’ve gotten every nuance right here, but I’ll do my best to lay out the basics.
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Blackboard Patent Invalidated. Again.
Update: Turns out I was incorrect about the relationship between the old patent and the new one. The ruling may (or may not) have some influence on the suit over the new patent, but it is not determinative.
This is getting very complicated. I’ll try to get a post up about at least some of the many permutations of possible outcomes soon.
Some big news on the edupatent front:
Today, the U.S. Patent and Trademark Office posted its Action Closing Prosecution (nonfinal). We’re still studying the lengthy document, but all 57 claims of Blackboard’s 6,988,138 patent have been rejected – the original 44, plus the ones they attempted to add during the re-examination process.
Here’s the PTO document about Actions Closing Prosecution.
The USPTO has now ruled against the patent twice. They made a preliminary judgment of invalidity, they gave Blackboard a chance to rebut that judgment, and then they said again with today’s announcement that they still think the patent is invalid. Blackboard now has 30 days to make one final attempt at rebuttal. After that, Desire2Learn has 30 days to respond to Blackboard’s response, at which point the USPTO will issue a final judgment. Assuming that the third judgment goes the same way as the first two, then the patent will be officially, legally invalidated. Blackboard would be able to file for an appeal in the courts, but they would be fighting the USPTO, not Desire2Learn.
But there may be even more here. If I understand this announcement correctly, this invalidation applies not only to the original patent but also to the continuation patent that Blackboard was recently issued and over which they have initiated a new lawsuit against Desire2Learn. (I’m seeking confirmation on this point and will update this post when I find out more; it’s a bit hard for me to parse since I’m legally constrained from looking at the documents directly.) If so, then this ruling is very significant indeed. It could be the beginning of the end for this whole chapter in the history of educational technology—after Blackboard spent many millions of shareholder dollars pursuing the litigation while failing to put Desire2Learn out of business, failing to prevent Desire2Learn from acquiring new customers and developing new versions of their products, and creating a popular backlash that could have a lasting effect on the Blackboard brand. (The Facebook Million$Mission group has 347 members after just a couple of weeks of existence and appears to be growing daily.)
At this point, Blackboard might be wise to take up Desire2Learn on their Million$Mission quickly before D2L takes it off the table. It may be their last opportunity to extract money out of their rival and save some face in what appears to be turning into a financial fiasco for the company.