What the Sakai Announcement Means

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.

To begin with, remember that SFLC (on behalf of the Sakai, Moodle, and ATutor communities) filed an ex parte challenge with the USPTO while D2L filed an inter partes challenge. I described these two strategies in detail in a previous post, but the salient difference for our present purpose is the kind of follow-up that each requires legally. D2L’s inter partes challenge is like a laser-guided missile in the sense that the filer has to keep guiding it until it destroys the target. D2L will be asked to respond to Blackboard’s response to their filing, with a back-and-forth adversarial process that is somewhat like a court case. In contrast, the SFLC’s ex parte filing is fire-and-forget. After the initial filing, they don’t have to participate further. In fact, they can’t participate further. When the USPTO merged these two challenges, it preserved the roles that D2L and SFLC would have had in their separate filings. This means that D2L has a long legal road before it to defend the ruling while SFLC (and, by extension, the Sakai, Moodle, and ATutor communities) has no role in the process going forward–which could take years to play out completely. There really isn’t anything for Sakai, Moodle, or ATutor to do at the moment and there won’t be another opportunity for quite a while (if ever).

Second, the fact of the matter is that that the preliminary invalidation benefits D2L’s competitors, including Sakai, more than it benefits D2L. Because the USPTO ruling came after the court verdict, odds are that the judge will let the verdict stand. D2L still has a long and expensive legal battle still ahead of it in both the courts and the USPTO. In the meantime, Blackboard will probably not be able to sue anybody else while the cloud of the USPTO’s preliminary ruling hangs over the patent. And since every single claim in the patent has been invalidated by between 3 and 7 separate pieces of prior art, this is a particularly strong challenge. (Either of the two filings on its own would have been sufficient to invalidate every claim of the Blackboard patent, and they don’t overlap.) The Sakai Foundation apparently believes that the odds are against the Blackboard patent surviving the challenge process in any enforceable form. I tend to agree.

By the way, this is one of the ways in which D2L’s behavior has been more altruistic than many people realize. A business that fights to invalidate a patent gives its competitors a free ride at considerable expense. Had D2L been less concerned with what’s right for higher education in general, they almost certainly would have settled this out of court. Settling is almost always in the economic best interest of defendants in patent suits, especially if they are smaller companies. This is why only a very small percentage of infringement suits actually make it to court. At any rate, most of us, including the Sakai community, are now free to focus on the challenge of improving education rather than fighting a distracting legal battle.

And finally, there is always a danger of having too many cooks in the legal kitchen. While I applaud the Sakai, Moodle, and ATutor communities for recognizing that they have a direct stake in this fight, more lawyers working for more clients tends to complicate situations. It is appropriate to let D2L take the lead at this juncture.

So, for all of these reasons, I believe that the Sakai Foundation’s statement was both accurate and prudent.