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Present is Prologue

Tag: Desire2Learn

  • Court Re-affirms Invalidation of First 35 Blackboard Patent Claims

    This just in from the D2L patent blog:

    On August 4, we announced that Magistrate Judge Hines had issued his Memorandum Opinion Construing Claim Terms of the United States Patent No. 6,988,138 (the “Markman” decision). We noted that the decision was subject to procedural appeal. The decision rendered claims 1-35 invalid. On August 22, we posted the Objections that Blackboard filed to the Memorandum Opinion, as well as the Conditional Objections that we filed. Finally, on August 30, we posted the respective responses to the Objections and Conditional Objections.

    Today, we received notice that the Court issued its Order Denying Plaintiff’s Objections to Memorandum and Order Construing Claim Terms of the United States Patent No. 6,988,138. In the Order – as indicated by its title – the Court, by Judge Clark, denied Blackboard’s Objections. It denied as moot our Conditional Objections. We had requested that the Court consider our Objections only if it reversed the initial Memorandum Opinion.

    The bottom line: Two judges have now ruled Blackboard’s Patent Claims 1-35 are invalid because of indefiniteness of claim 1. Blackboard cannot claim infringement at trial of those claims.

    We mentioned before that we were pleased with Judge Hines’ decision. Suffice it to say we are now very pleased.

  • On Edupatents, Corporate Branding, and Putting Words in People's Mouths

    There’s a write-up of the edupatent flap in eSchool News. It provides a reasonably good summary of the basic history, as far as these types of stories tend to go, and also gives a high-level account of the current state of the legal battle. (Short version: It’s dragging on.) All in all, it’s a useful summary of what we already know. But it does include one statement by Blackboard’s General Counsel Matthew Small that’s a bit of a jaw dropper.

    (more…)

  • First 35 Claims of Blackboard's Patent Ruled Invalid

    According to D2L’s patent blog, the judge in the patent case just ruled the first 35 of the 44 claims in Blackboard’s current patent invalid:

    The more significant, immediate result is that the Court found the “Means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course,” a “means-plus-function” term, to be indefinite. See pages 16-17 of the Memorandum Opinion. Because that phrase is indefinite, all of Claim 1 is rendered invalid because of indefiniteness. Further, all dependent claims that rely on Claim 1 (in our case, Claims 2 through 35) are similarly invalid.

    There’s more to the ruling, too. The Court agreed with  D2L’s definitions of certain terms in the patent, which could impact the way the surviving pieces of the patent are litigated at trial.  If you’ve been following the legal maneuverings closely, you may want to check out the whole post.

    Note that this development is completely unrelated to either of the pending re-examinations or, apparently, to the Supreme Court’s ruling on the nature of “obviousness” in the patent law. It was something that came out of the Markman Hearing, which is the part of the trial in which the court determines literally what the patent means for the purposes of the trial. It sounds from this post as if the court may have found that the first claim doesn’t have a specific enough meaning to be patentable, and that the 34 claims that depend on that first claim therefore are also not patentable.
    This appears to be a pretty significant victory for D2L.

  • Desire2Learn and Blackboard Technology Tutorials for the Patent Case

    D2L has posted the Flash-based technology tutorials that both sides prepared for the court (for viewing by the Judge? The Jury?). The presentations are intended to give summaries of their arguments and evidence in relatively non-technical terms and with a minimum of legal jargon as well. Finally, we have clear statements on what each side thinks the patent means. I hope that decision-makers in universities will take the opportunity to review these arguments and make their own evaluations regarding the merits of the patent and its prosecution.
    D2L’s is here and Blackboard’s is here. However, D2L warns,

    Note that the Blackboard tutorial was not designed to run on the web, and lacks a preloader. Please be patient until the initial file is loaded (15-30 seconds or more, depending on your connection speed). For similar reasons, the audio file may be inconsistent. Although Desire2Learn obtained permission to post the file, we do not have the source files to correct the situation. Our apologies for any inconvenience.

    Thanks to Seb Schmoller and other friends for alerting me to this.

  • More on the Supreme Court Ruling

    Patently-O has up a PDF of the KSR v Teleflex ruling (which, by the way, was unanimous). Basically, the court says that, while the original precedents provide adequate guidance for obviousness, the Federal Circuit has interpreted that guidance too narrowly, arguing that “Rigid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court’s case law.”
    Probably the passage in the opinion that resonates the most with the kinds of issues that come up in Bb v. D2L and are likely to come up in any similar edupatent disputes is the following:

    When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

    In other words, if a problem is fairly well known in the market, and if there are a fairly small number of fairly well-known methods for solving similar problems, you can’t get a patent just by being the first to apply the known solution to the known problem.

  • Supreme Court Strikes a Major Blow for Patent Reform

    This is huge. Today the U.S. Supreme Court ruled in the case of KSR v. Teleflex, where the central issue was the meaning of “obviousness.” The reason that the word is important in patent law is because an innovation that is deemed “obvious” is not patentable. For example, Teleflex had combined two existing devices for truck gas petals and claimed that the combination was a new idea. KSR claimed that, even though nobody had combined the two devices in production at the time of Teleflex’s patent filing, it was fairly clear to “a practitioner with ordinary skill in the art” (i.e., Joe Truck Designer) that the two could be combined.

    This has direct bearing on Blackboard v. Desire2Learn. Before this ruling, the standard for proving obviousness was very high. As a result, finding, say, one pre-existing LMS that implemented half of the claims in Bb’s patent and another one that implemented the other half probably wouldn’t be enough. Unless you could find one system that implemented every one of the 44 claims, the case for invalidating the patent would be very difficult to make. This ruling should make D2L’s case easier.

    Just how much easier remains to be seen. I haven’t found any details on the ruling yet, so I don’t know what new guidance the court set.

    In related news, the court also ruled in favor of patent reform in Microsoft v. Alcatel-Lucent today. While this ruling is unlikely to have a direct impact on Bb v. D2L or on edupatents in general, we won’t know for sure until we see the written opinions. We should know more about both cases in the next couple of days.

  • Blackboard Inter Partes Determination Published

    You can find the documentation here. The USPTO found 13 of Desire2Learn’s 14 claims to raise substantial new questions of patentability. However, the government did not a preliminary finding, as is usual with an Inter Partes challenge, because they are considering whether this challenge should be merged with the Ex Parte challenge filed by the SFLC on behalf of the Sakai, Moodle, and ATutor communities. I assume that the finding will be issued once this decision has been made.

    If anybody has any further analysis of the document, please remember to tag it “edupatents” so that it will be picked up by the EduPatent Alerts system.