[Updated 18, 21, 24 April 2009, and 7 May] - I suggest you read this in conjunction with the excellent 21 April piece from Michael Feldstein, and this piece by Jeff Bohrer.]
18/4/2009 update. Yesterday, the US Patent Office, which has been re-examining US Patent 6,988,138 since early last year in response to inter partes and ex parte applications from Desire2Learn and the Software Freedom Law Centre, issued a non-final "Action Closing Prosecution" rejecting the whole of that patent.
Blackboard now has one month in which to respond, and assuming (which I
don't) that any such representations have no effect on the results of the Patent
Office's re-examination of the patent, it would then be open to Blackboard to appeal against the
final results of the re-examination through the US courts.
Will Blackboard be exercised by this development? I'm happy to stand corrected on issues that are not in my area of expertise, but my instinct tells me that Blackboard may not be too fussed about the non-final action by the US Patent Office. This is because the company's new US Patent 7,493,396 [PDF] (see relevant section of 10 April round-up below):
- incorporates Patent 6,988,138 in its entirety;
- includes in its "Other References" section a comprehensive list of most if not all of the "prior art" cited in Desire2Learn and the Software Freedom Law Centre's re-examination requests on 6,988,138, and by Desire2Learn in its appeal against Blackboard Inc.'s successful infringement case, and in Desire2Learn's original defence (even the Sheffield-based EU Framework 4 Renaissance Project, in which I and several readers of Fortnightly Mailing were involved in 1996ish, gets referenced).
Provided the US Patent Office got its teeth into the the listed prior art (which I'm told Blackboard would have been required to cite in its application) and came to a proper judgement that it did not affect the validity of the claims in the patent, then the new patent will be tougher to challenge than if the Patent Office has only considered the prior art superficially, if at all.
Original 10/4/2009 round-up. My eye has not been much on the educational patents ball in recent months, and back from a two week holiday I've been catching up on developments between Desire2Learn and Blackboard. Thanks to Michael Feldstein, Stephen Downes, and the Chronicle of Higher Education, for their coverage of this.
I'd missed the fact that on 17 February 2009 Blackboard was awarded new US Patent 7,493,396 [PDF], covering rather the same ground as its January 2006 US Patent 6,988,138. The application for 7,493,396 was submitted in October 2005, and the patent looks like a "cleaner and clearer" version of 6,988,138, with perhaps a stronger focus on role-based access control. (The US Patent Office issued the patent during the same period in which it has re-examined and issued a preliminary rejection of the original 6,988,138 patent.)
Within a month of the award of the new patent, Blackboard had issued a new infringement claim against Desire2Learn (scroll down to the bottom of this report by Marilyn Tennissen in the South East Texas Record) in Lufkin, before the same judge - Ron Clarke - as heard the current claim, for which the Appeal hearing began on 31 March. (MP3 transcript of preliminary arguments in the US Court of Appeal.)
One of Desire2Learn's responses has been its "Million$Mission" (reportedly rejected by Blackboard), under which D2L proposes to Blackboard that each company donates $1M "to non-profit schools and other educational organizations" rather than spend money on prosecuting or defending litigation.
Meanwhile Blackboard has incorporated the new patent into its Patent Pledge, under which the company commits not to assert some of its patents (and applied for patents if granted) against the development, use or distribution of Open Source Software or Home-Grown Systems to the extent that such Open Source Software and Home-Grown Systems are not bundled with proprietary software.
[7 May 2009 - the text that follows is struck through because my assertion that the two patent applications described are Blackboard's is completely wrong. Apologies to readers who have been misled by this mistake, and thanks to John Fontaine (Blackboard's Senior Director for Technology Evangelism) for pointing out the error.]
Blackboard's pledge does not mention its patent applications 11/298,091 (for a 3D learning environment) or 11/145,531
(for a media database "which stores media of various types including
movies,
still images, and sounds, along with user comments about the media and
links to other media", with user comments and links collectively
forming "a composition about the media clip that others can view").
Both of these applications are dated 2005, and the latter one struck me
as very reminiscent of the Stanford University DIVER system, described by Roy Pea and Robb Lindgren in the October-December 2008 IEEE Transactions on Learning Technologies
[1.31 MB PDF]. DIVER has been under development with US Government and
charitable foundation funding since 2002, and to the extent that it
represents "prior art" one would hope that the US Patent Office takes
note of it.
Figure from US Patent Application 11/145,531
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