The Second Anniversary: Blackboard v. Desire2Learn

This is a guest post by Jim Farmer

Two years ago while speaking at the Desire2Learn Users Conference, CEO John Baker learned that Blackboard Inc. accused Desire2Learn of infringing a Blackboard patent. Following a jury’s decision and failed attempts to reach a settlement, the dispute is now headed for appeal at the U.S. Court of Appeals for the Federal District, the Patent Office has yet to rule on the two challenges to parent validity by the Software Freedom Law Center and Desire2Learn, and, according to The Chronicle’s Jeff Young, a new trial looms over the latest version of Desire2Learn’s software.

Community Response

Initially Blackboard’s complaint was met with community concern, disappointment, anger, and outrage. The Blackboard patent was interpreted as a broad threat to collaborative work style of those engaged in teaching and learning at colleges and universities.

The Sakai Foundation provided context when Columbia University law history professor Eben Moglen keynoted their December 2006 conference in Atlanta—a master teacher. At a later panel, Blackboard General Counsel Matt Small said: “You are an eloquent speaker. I learned something from that. I am sure everyone here did.” At the lunch discussion Moglen ranted about software patents and Blackboard’s enforcement. He pronounced: “Sakai and Blackboard are at war.”

Following the trial in Lufkin, Texas Barry Dahl provided another opportunity when he interviewed Michael C. Smith of Siebman, Reynolds, Burg, Phillips & Smith LLP in Marshall, Texas. “[Smith] has appeared as counsel in over 250 cases in federal court in the Eastern District of Texas.” Barry made audio of the telephone interview available on his Weblog—a “must listen.”

After the jury decision and perhaps because of community views, Blackboard was careful to restrain Desire2Learn without ever threatening U.S. users. A patent troll would not have hesitated seeking an injunction against use, forcing the court to consider “public interest.”

Universities and Patents

Representing higher education at a 2007 House of Representatives hearing on patent reform, Arundeep S. Pradhan, Board of Trustees of the Association of University Technology Managers, acknowledged: “The biggest, most time-consuming issue [for technology transfer managers] involves faculty researchers’ right to publish their research findings and share the research data with their colleagues. This is a core issue for universities.” He also testified: “I, the AUTM Board of Trustees, as well as other organizations, believe that Bayh-Dole [patenting federally funded research] works well as intended and we anticipate that Bayh-Dole will continue to accelerate technology transfer and foster university-industry partnerships far into the future.” He made no suggestions for patent reform.

At the same hearing, Stanford law professor Mark Lemley observed; “Particularly in the information technology (IT) industries, there is a sense that university patents are interfering with rather than promoting the dissemination of technical knowledge to the world at large. The growing number of university-filed and university-sponsored patent lawsuits in the IT industries, many in association with non-practicing entities (or so-called “patent trolls”), has added to the sense in those industries that universities are often adversaries, not partners, in the deployment of
technology.” In the 2006-2007 academic year universities filed more than 15,000 and spent more than US$200 million in litigation.

Some examples of university enforcement of their patents illustrate some unresolved policy issues. The University of West Virginia filed patent applications for a student who refused to sign as inventor citing the university’s patent policy (University of West Virginia v. Kurt L. Vanvoorhies). CollegeNet Inc defended its online forms patent against competitor XAP Corporation and ApplyYourself. Using the Lanham antitrust act, CollegeNet was awarded damages for the XAP practice of selling student information from their online services (CollegeNet Inc. v. XAP Corporation and CollegeNet v. ApplyYourself). The University of Washington via the Washington Research Foundation patented “Bluetooth” digital radio and is seeking to enforce their patent based on the research of an undergraduate engineering student (Washington Research Foundation v. Matsushita, Panasonic, Samsung, and Nokia). These are actions that could raise questions about the public purpose of these universities.

In 2004 Harvard University President Derek Bok warned of commercialization in universities. Perhaps a more coordinated effort to make college and universities executives aware of the potential changes to the collaborative environment would cause an update of intellectual property policies and practices. In 2006 Indiana University hosted the “Licensing and Policy Framework Summit for Open Source Collaboration in Higher Education.” This effort could be extended to higher education associations so the danger to the community becomes a national issue.

Other Patents

Red Hat settled with Firestar over the widely used (uPortal and Sakai are examples) Hibernate code for those who are broadly defined Red Hat “Community Members.” Settled likely because the dispute would have delayed or prevented Red Hat’s acquisition of JBoss.

But there is a threatening development. Digital-Vending has sued the University of Phoenix,
Apollo Group Inc., Capella Education Company, Laureate Education, Inc. and Walden University, Inc. Digital-Vending asserts infringement of three related patents “Computer Architecture for Managing Courseware in a Shared Use Operating Environment.” The technology appears to have been developed by the non-profit Community Learning and Information Network that had contracts for training Army National Guard. Names of the principals are listed in IRS documents of other non-profits.

Because of public reporting, registered firms prefer to resolve legal issues quickly rather than list them as financial risks. A typical sequence for a patent troll would be to settle with the for-profit firms, then small private colleges that do not have the resources to litigate, and then private universities before threatening any colleges or universities with access to large and experience litigation staff.

More than 100 patents have been identified that, if enforced, could change or limit instructional practices.

Developing a Defense?

One of the best defenses for patent infringement claims is the financial resources and expertise to litigate a patent. At least one insurance firm provides this protection primarily for technology companies. Having the financial resources to litigate often deters enforcing a patent of questionable validity. Colleges and universities have the experience to create a similar insurance pool.

Companies in the electronics industry have developed “patent pools”—a large number of related patents—that both facilitate licensing a group of patents—DVD was the first—and are a tool for counter-suing any related patent infringement. Unfortunately this does not provide disincentives for patent trolls that manufacture, distribute, and sell nothing and therefore are not dependent upon patent rights. Higher education could consider a similar patent pool providing a license to any user provided they do not attempt to enforce other patents.

There have been industry efforts to collect “prior art” to defend against patents. The collection of historical documents and reports referenced or included in “No Education Patents” could be extended more closely following the legal definition of “prior art.”

The Software Freedom Law Center’s Daniel B. Ravicher successfully used re-examination as a way of defeating patents. The community could begin to file for re-examination of all related patents as a way of discouraging patent suits before any litigation begins.

None of the defensive strategies are yet underway.

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Early this year Michael Feldstein wrote : “I have argued from the very beginning of the edupatent mess that the problem is much bigger than one patent. Nor will this next one be the last.” Unfortunately as the Blackboard patent sequel begins he was right.