Michael Feldstein is quick to note Desire2Learn's 4/8/2007 announcement of the 3/8/2007 outcome of the "Markman Hearing" in the Blackboard v. Desire2Learn patent infringement case. (The purpose of the Markman Hearing is for the trial judge to determine the meaning of the claims at issue, and to instruct the jury accordingly, with the judge's ruling subsequently open to being appealed by either party.)
According to Desire2Learn the effect of the judge's determination, if not successfully appealed, is to render invalid independent claim 1 and dependent claims 2 to 35 in Blackboard's Patent 6,988,138. (There is one other independent claim in the patent - claim 36, upon which the remaining 9 claims 37 to 44 depend.)
For an overview of the process you may find it helpful to review pages 2 to 5 of the 23/8/2006 Notes of a teleconference between Blackboard Inc. and the Association for Learning Technology [135 kB PDF], in which I took part, from which I have excerpted two paragraphs in the continuation post below.
"Each of the other 44 claims (that is, the dependent claims) are dependent upon claims 1 and/or 36 and/or others of the dependent claims. The overall invention described in the patent draws upon a large number of elements, and it is only claims 1 and 36 that Blackboard asserts, through the patent, that it invented as stand alone inventions. The remaining claims relate to features that, as stand alone elements, might have already been invented elsewhere. Blackboard indicated that people who think the patent is a statement by Blackboard that it had itself invented what is described in each of the 44 claims as stand-alone elements are understandably offended. But the fact is that it is only claims 1 and 36 that Blackboard believes it invented as stand-alone inventions, and it is only infringement of these two independent claims that would result in Blackboard being able to obtain redress."
"The patent will be tested in front of a jury, after a pre-trial “Markman Hearing” during which the parties summarise their stance on the case to the judge, who then sets out the scope of the case and the issues to be tested. Until this stage in proceedings it is impossible for either side to predict what the actual shape of the trial will be, and which specific issues will in fact be tested. Notwithstanding this, a patent is presumed in US law to be valid when issued from the US Patent and Trademark Office, and the burden is upon the plaintiff to prove infringement (by preponderance of the evidence), and upon the respondent to show invalidity (by clear and convincing evidence). While falling outside a patent only involves falling outside of the independent claims, invalidating a patent is much more difficult. It involves a showing that the patent is invalid “by clear and convincing evidence” (a very high standard of proof), rather than merely “by the preponderance of the evidence” (a lower standard of proof). "
Comments