Barry Dahl read the Sakai Foundation’s recent announcement about the Blackboard patent pretty closely and is concerned that it sounds like they think the fight is over. I completely understand why he interpreted it that way, but I read it a little differently. If you look closely at the specifics of the legal situation, the Foundation’s position begins to make a lot more sense.
Tag: Software-Freedom-Law-Center
-
Blackboard Fails Statistics 101
Blackboard has posted their response to the USPTO ruling. They make some claims about how this will impact the trial, which I’m not in a position to evaluate just yet. They mention that all of the claims in the re-examination request “were unsuccessfully raised by Desire2Learn during recent litigation,” which is irrelevant since these are different forums operating under different rules with different burdens of proof. But what really gave me pause was their statistic. They claimed that “more than 90% of patents that undergo reexamination of this kind ultimately are upheld.” That didn’t seem consistent with the statistics that I remembered. Where did that number come from?
Funny story, that…
-
All 44 Blackboard Patent Claims Invalidated by USPTO
On March 25, the U.S. Patent & Trademark Office issued its Non-Final Action on the re-examination of the Blackboard Patent. We are studying the document, found here, but in short, the PTO has rejected all 44 of Blackboard’s claims. We caution that this is a NON-final action; both Blackboard and Desire2Learn will have an opportunity to comment before a final action will issue, and after that, the decision will be subject to appeals.
This decision actually should have come before the trial verdict but was held up because the USPTO had to decide what to do about the separate filings from D2L and SFLC. Now, in addition to the fact that Blackboard will be able to argue against the ruling with the USPTO, there are a number of questions regarding how this affects the court case. Will the damages finding still stand? Will the USPTO ruling render moot D2L’s post-trial motion before the judge regarding invalidity? If not, will it imact that ruling? What happens to the issues of royalties and injunction going forward? I think that I know the answers to some of these questions but don’t want to post anything until I have some more authoritative information.
Stay tuned.
-
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.
-
Ex Parte and Inter Partes Patent Re-Examination
As you know by now, the Blackboard patent has been challenged at the USPTO by separate requests filed by the SFLC and D2L respectively. SFLC filed what’s known as an ex parte request, while D2L filed what’s known as an inter partes request. I think it’s important for the community to become familiar with these two strategies because we’re likely to see them employed again in our future. Seb has some nice commentary up about the basics of the specific situation with the Blackboard patent. (Be sure to read the comments; there’s one by one of the leading researchers on patent re-examination.) What follows here is more of a high-level overview of the legal strategies in general.
(more…) -
What the Sakai/Moodle/ATutor Re-Examination Request Really Means
By now you’ve probably seen that the Software Freedom Law Center (SFLC) has filed a request to re-examine Blackboard’s patent with the USPTO on behalf of Sakai, Moodle, and ATutor. You may have also seen that D2L has filed a different kind of re-examination request with the USPTO. (SFLC’s request is what’s known as ex parte, while D2L’s is inter partes.) I’ll have more to say about the legal maneuvers in tomorrow’s post. For now, I’d like to address a larger context.
The Sakai/Moodle/ATutor request is generally being characterized as the “Open Source” response to Blackboard’s patent. This is unfortunate, as is the fact that SFLC is perceived to be leading the charge. Because to my mind, the most important message from this filing to Blackboard and the market has nothing to do with Open Source.
-
Eben Moglen Weighs in on Blackboard
Here’s a late-breaking item from the Sakai Foundation:
In the wake of recent efforts to limit the free and open sharing of innovation for online learning, the Sakai Foundation has retained the Software Freedom Law Center (SFLC), an organization directed by Eben Moglen and dedicated to providing advice and legal services to protect and advance free and open source software, to evaluate the recent Blackboard patent, its impact on the educational community, and to advise on legal matters regarding the patent….Sakai has engaged the SFLC to assess and respond to the patent, but the Foundation believes that the core issue is much broader than the current technology in question. Sakai is working with the SFLC and others of like mind to develop a long term common defense effort, and encourages everyone to contribute to the SFLC to support its efforts now and in the future to aggressively challenge bad patents in the area of educational and research software.
For those of you who don’t know, Eben Moglen is a pretty big deal. In addition to chairing the Software Freedom Law Center, he has affiliations with the Free Software Foundation and the Electronic Frontier Foundation.