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Blackboard: two separate re-examination requests to the US Patent and Trade Mark Office; and an unsuccessful application to the Court from Desire2Learn for a stay in proceedings

Originally written 2/12/2006. Updated 5/12/2006, 7/12/2006, 9/12/2006, 11/12/2006.

Two separate and almost simultaneous requests to the US Patent and Trade Mark Office have been issued in the US against Blackboard's US Patent 6,988,138. The first, on 17/11/2006 was issued by the New York based Software Freedom Law Center (SFLC), acting in support of the makers of 3 Open Source VLE systems: Moodle, Sakai, and ATutor.  The second, on 1/12/2006, was issued by the Canadian VLE company Desire2Learn, against whom Blackboard issued patent infringement proceedings earlier in the year.   On the same day Desire2Learn also issued an application to the court [64 kB PDF] for a stay in the patent infringement proceedings pending re-examination of Patent 6,988,138 by the US Patent and Trademark Office. 5/12/2006. Within 3 days, Blackboard had filed a rapidly produced, and extremely forcefully written 16 page opposition to Desire2Learn's application to the court for a stay, plus 5 exhibits, one of which is described as "a highly confidential submission to the U.S. Department of Justice during the approval process for Blackboard's merger with WebCT, in which Blackboard sets forth in detail the competitive threat posed by Desire2Learn", and is not in the public domain. The tone and content of Blackboard's 16 page opposition shows that both companies are playing for very high stakes. There is an extract below. 7/12/2006. Desire2Learn has filed its from Al Essa, picking up on three key features of Blackboard's opposition to the stay: "We have a company that has seized community property - your property and mine - and now in broad daylight is wielding our knife to cut its competitor's throat". 11/12/2006. From the Desire2Learn patent information page: "On Friday, December 8, during a routine scheduling conference held at the courthouse in Beaumont, Texas, U.S. District Judge Clark of the Eastern District of Texas denied Desire2Learn's Motion to Stay Proceedings. We had requested that the Court stay - or put the litigation "on hold" - while the U.S. Patent & Trademark Office reexamined the Blackboard patent. Judge Clark's actions do not affect the reexamination request that we filed with the U.S. Patent & Trademark Office on December 1."

SFLC's ex partes re-examination request is short and to the point, with the main VLE-based prior art cited being the Irish VLE Top Class, which the then Aberdeen University staff member Jim Kerslake  investigated during the 1990s, and whose signed declaration is included in the SFLC re-examination request.  Jim has posted a useful summary page relating to VLEs at that time, which is a model of clarity, and is an indication of how important the careful documentation of prior art can potentially be. SFLC's other two citings are publications: Information sharing: collaborating across the networks, by MIT's Phyllis Galt and Susan Jones; and Enhancing teaching using the Internet, by Stephen Hartley, Jill Gerhardt-Powals, Richard Stockton, Colin McCormack, Dee Medley, Blaine Price, Margaret Reek, and Marguerite Summers.

Desire2Learn's inter partes re-examination request is much more complicated and includes a mass of papers (SFLC's re-examination request is at the same URL). The Desire2Learn request references: details of systems available at the time (including Ceilidh, jointly developed by at Nottingham University, and Ngee Ann Polytechnic in Singapore); evidence relating to "role-based access control"; the previously featured EDUCOM/NLII Instructional Management Systems Specifications Document; and at least one sworn declaration. On a personal note it also includes documents relating to the 1996 Renaissance Project, an EU ACTS Project in which several Sheffield organisations, including The Sheffield College, where I then worked, had a role.

What happens next? If the court  - and it is quite a big if - grants the postponment requested by Desire2Learn (and see the extract below for part of Desire2Learn's rationale for the postponment)  then attention will switch to the 2 re-examination requests, which could possibly result in Patent 6,988,138 being deleted, or modified, or consolidated. The process will not be quick. Blackboard will already surely be aware of most if not all of the material assembled by SFLC and Desire2Learn, and you'd expect, from its apparently unfazed reaction to SFLC's re-examination request, that it will have detailed responses (which might well up the ante) to both re-examination requests, just as the company was quick to oppose Desire2Learn's application to the court for a stay.

Extract from Desire2Learn's application for a stay in the patent infringement proceedings.

The patent on which the plaintiff, Blackboard, Inc. (“Blackboard”) has asserted patent infringement is currently the subject of both an ex parte [i.e. the Software Freedom Law Center's] and an inter partes [i.e. Desire2Learn's]  reexamination request filed with the United States Patent and Trademark Office (“PTO”). The currently pending ex parte request seeks to invalidate the patent-in-suit based on prior art that was never submitted to or considered by the PTO during the six years that the patent was in prosecution. Likewise, the inter partes reexamination request, filed by Desire2Learn Inc. (“Desire2Learn”), seeks to invalidate the patent-in-suit not only based on prior art that was not submitted to or considered by the PTO during the prosecution of the patent-in-suit, but also based on prior art that is not part of the pending ex parte request.

Because the currently pending ex parte reexamination, as well as Desire2Learn’s inter partes reexamination request, will likely narrow the issues or eliminate the need for trial and because doing so would conserve resources, Desire2Learn requests that this Court enter an order staying these proceedings pending the completion of the ex parte and inter partes reexaminations. EchoStar Technologies Corp. v. TiVo, Inc., 2006 WL 2501494, at *5 (E.D. Tex. July 14, 2006) (granting motion to stay proceedings pending an ex parte and inter partes reexamination).

Extract from Blackboard's opposition to Desire2Learn's request for a stay in the patent infringement proceedings.

Plaintiff Blackboard Inc. (“Blackboard”) filed this case in July. In the answer that Defendant Desire2Learn Inc. (“Desire2Learn”) filed in September, Desire2Learn identified alleged prior art that it asserts renders the patent-in-suit, U.S. Patent 6,988,138 B1 (the “’138 patent”), invalid. Now, in December, less than a week before the Case Management Conference, and more than six weeks after the parties agreed in their Rule 26(f) Joint Conference Report to a February 2008 trial date and a discovery schedule that has already required Blackboard to expend significant resources, Desire2Learn has filed an inter partes reexamination with the United States Patent and Trademark Office (the “PTO”) and simultaneously moved to stay this case. Desire2Learn’s motion is a stall tactic crafted to allow it to continue its infringement of Blackboard’s intellectual property for as long as possible. Staying the case would not create judicial efficiency. To the contrary, a stay would harm Blackboard by allowing Desire2Learn to avoid an injunction and continue to infringe Blackboard’s presumptively valid patent.

Note 1. On 2/12/2006 I gave this post a somewhat more cautious emphasis once a helpful reader had pointed out the lack of unequivocal data available on the successs rates of inter partes re-examination requests. On 3/12/2006 I added links below to two USPTO documents summarising data relating to the processing of patent re-examination requests. Reference is made to one of these documents in my response to Joseph Hardin's comment below. On 4/12/2006 I added a link to the archived Ceilidh site. On 5/12/2006 I added a note about Blackboard's opposition to the application for a stay, and an extract from that document.

Note 2. Links to USPTO documents summarising, to 30 June 2006, data concerning the processing of  ex partes re-examination requests [100 kB PDF] and inter partes re-examination requests [100 kB PDF].

Note 3. Other posts about the Blackboard patent:

Posted on 05/12/2006 in News and comment |

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Comments

From Joseph Hardin - 2.12.2006. Very nice article. What was the failure rate of the inter partes re-examinations that your friend pointed out to you? And, you say the emphasis shifts to the re-examinations only if the court stay is granted. But it seems to me the emphasis, in the sense of where the action is, has now shifted. The court date isn't till Feb. 2008. The USPTO will respond in 90 days, good chance less, and then start up the re-exam.

Response from Seb - 3.12.2006. Joseph, be warned that I am based in the UK, not a lawyer, and even less familiar with the US than with the UK patent system. However, since your comment yesterday, a helpful US Patent Attorney whom I emailed speculatively, sent me the latest data issued by the US Patent and Trademarks Office (USPTO). By June 2006 there had been in total 152 inter partes re-examination requests since 29 November 1999. 145 decisions on these requests had been taken, and in 136 cases (93%) the request had been granted, i.e. gone forward for re-examination. But only 3 had progressed as far as a decision by USPTO, in all three cases with USPTO issuing certificates canceling all the claims being re-examined. One way of viewing this is as a 100% success rate. But with so few cases so far dealt with that would seem to be unwise. The impression I get is that a lot must finish up being dropped or going dormant. Furthermore, according to the USPTO data the median "pendency" (filing date to certificate issue date) is 31.2 months. Maybe someone well-versed in these matters will clarify?

Posted by: Joseph Hardin | 02/12/2006 at 19:35

There is not yet meaningful data on the success rate of inter partes re-examinations because the data set is still small. Only 7 inter partes re-examinations have proceeded to completion, the result being 1 in which all claims were confirmed and the remainder all claims cancelled. According to the Patent Office statistics, out of the 180+ inter partes requests filed, 93% of them have resulted in a re-examination order. In the majority of cases in which an order to re-examine is granted, the claims are all initially rejected.

Note that the Patent Office recently (in July 2005) formed a new central re-examination unit that administers all re-examinations, which is streamlining the process. For an overview on how reexamination works and the interplay with litigation, see The use of inter partes and ex parte re-examination in patent litigation, by David M. O'Dell and David L. McCombs.

Posted by: David L. McCombs | 03/12/2006 at 14:48

As one of the original proponents of the use of the Internet for online learning, originator of the term "web-based training", and creator of the first website on the Internet devoted to WBT (1994), I find the issuance of patent protection on online learning systems disturbing and unwarranted. Let us hope that the courts and governing agencies come to reason in viewing such general concepts not as unique intellectual property of an individual, institution, or corporate entity, but the prior collective concept of a number of Internet and distance education pioneers. The parties to this litigation may hold legitimate rights to specific components or processes that make their systems unique, though these should not be applied more broadly. The world and its peoples own online learning. Those of us that gave freely and continue to give our intellectual efforts to advance online learning for the betterment of humankind call for reason to supplant greed.

Posted by: Tim Kilby | 11/12/2006 at 19:33

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