US Patent and Trademark Office merges re-examinations of Blackboard Inc.'s Patent Number 6988138

25/3/2008

Most of this post is over 12 months old, included as background to the fact that the US Patent and Trade Mark Office decided on 14 March 2008 to merge [284 kB PDF] the so far apparently dormant inter partes and ex parte re-examinations of Blackboard Inc.'s US Patent Number 6988138. It remains to be seen if this means that the re-examination is now imminent, or whether the merger itself will cause the Software Freedom Law Centre, which made the ex parte application, and Desire2Learn, which made the inter partes re-examination application, to work with each other in the process.

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Updated 26/2/2007; 27/2/2007

On 24 February 2007, the US Patent and Trade Mark Office agreed to Desire2Learn's  inter partes application for a re-examination of Blackboard's "Internet-based education support system and methods" patent. So US Patent Number 6988138 is to be re-examined from two directions: firstly as a result of the ex parte application by the Software Freedom Law Centre;  and secondly as a result of Desire2Learn's inter partes application. (26/2/2007 - Before you assume that this is necessarily a decision of major significance, remember that since 1999 over 90% of all inter partes re-examination requests have been granted, as this USP&TO document makes clear. For more on this read what US patent attorney David L McCombs has to say - and the report to which there is a link - in his comment on this Fortnightly Mailing posting from December 2006.) You would expect both Blackboard's and Desire2Learn's patent information sites to carry commentary on this in the next few days, and (27/2/2007 - Michael Feldstein now links to and comments on the Patent Office's published determination, which you can also access directly as a 1 MB ~ 40 page PDF), but from a common sense point of view

the refusal of the East Texas patent court last year to stay Blackboard's patent infringement claim against Desire2Learn, pending the results of the re-examination requests (if granted), makes for a particularly messy situation.

Note. Other posts about the Blackboard patent:

 

• 7 March 2008 - Follow-up links relating to Blackboard's successful patent infringment claim against Desire2Learn (updated 7 March);
• 27 February 2008 - Riina Vuorikari - Patents and e-learning do not make a good match - what’s “Blackboard Inc. vs. Desire2Learn” gotta do with the EU?;
• 9 February 2008 - Blackboard v Desire2Learn: Joint Final Pre-trial Order;
• 3 August 2007 - Blackboard Inc. v Desire2Learn - court issues order construing claim terms;
• 20 June 2007 - Blackboard v Desire2Learn - claim construction briefs filed;
• 1 February 2007 - Blackboard issues "Patent Pledge";
• 25 January 2007 - United States Patent & Trademark Office orders re-examination of Blackboard Patent;
• 9 December 2006 - Two contrasting views about software patents. A debate between Eben Moglen and Blackboard's Matt Small;
• 2 December 2006 - Blackboard: two separate re-examination
  requests to the US Patent and Trade Mark Office; and an application to the Court from Desire2Learn for a stay in proceedings;
• 27 October 2006 - EDUCAUSE on Blackboard: "patenting a community creation is anathema to our culture";
• 16 October 2006 -  John Mayer interviews various lawyers with patent knowhow;
• 10 September 2006 - The new "post-patent" environment for e-learning: a perspective. Guest contribution by Jim Farmer;
• 9 September 2006 - Blackboard's work for IMS;
• 8 August 2006 - Did the US Department of Justice know about the patent when it cleared Blackboard's acquisition of Web CT?;
• 26 July 2006 - Blackboard's US Patent 6988138.