Blackboard Patents Challenged

December 1, 2006

A patent dispute pitting open source advocates for online learning technologies against Blackboard, the industry giant, became more bitter Thursday with the announcement that a formal request had been filed with the U.S. Patent and Trademark Office to revoke 44 of Blackboard's patent claims.

The request followed an attempt at compromise in which the open source group sought to have Blackboard pledge not to use its patents to sue open source entities involved in online education, in return for which the group would have agreed not to challenge Blackboard's patents. Both Blackboard and the open source groups say that the other side sabotaged an attempt at resolving the issue. Both sides also predicted success in the patent proceedings that were requested -- and vowed to continue pressing their positions.

The patent rights at issue were awarded to Blackboard in January, and their breadth is a key part of the dispute. Critics say that the patents are so broad that they would appear to cover just about any online learning technology, and could be used to squelch innovation at a time that Blackboard -- following its absorption of WebCT -- is already a dominant player in the course management business. Blackboard has insisted that it is not out to hurt open source, that the fears about its patent claims are exaggerated, and that higher education benefits from the company's ability to invest in new products -- something it says it couldn't do without protecting its intellectual property.

But Blackboard has taken a beating in higher education because of the issue -- and not just with open source groups. Educause, higher education's main technology association and a group that has worked with many technology companies, has weighed in against the patent, urging Blackboard to relinquish the rights it gained. The letter sent by Educause's board to Blackboard said of the dispute: “The expressions we hear range from the vilification of Blackboard, to stories about the cold reception Blackboard is receiving at presentations, to the embarrassment of your employees who are asked to explain this corporate action.”

Throughout the dispute, certain Blackboard actions have led open source advocates and others in higher education to mistrust the company, and that trend may continue with the collapse of the compromise negotiations. Concern about the Blackboard patents has grown in the last year, especially after Blackboard cited the patent to sue another company in the course management business, Desire2Learn. If Blackboard was willing to go after a competitor, what would prevent it from going after educators trying to do course management themselves? some academics wondered.

Richard Fontana, a patent lawyer for the Software Freedom Law Center, said that Blackboard's intentions became clear when the company rejected the compromise the center offered. "A lot of companies that make software have recognized the value of the open source community and have made formal pledges not to ever sue those who use or sell open source software, so we said, 'why don't you do the same thing?' " Fontana said. Such a pledge, Fontana said, would not have precluded Blackboard's suit against Desire2Learn, which that company is fighting.

"They rejected the idea completely," said Fontana. The Software Freedom Law Center, which filed the complaint with the patent office, managed the negotiations on behalf of Sakai, Moodle and ATutor, three open source entities in education.

Fontana said that it thus became clear that Blackboard couldn't be relied on to respect the open source movement. "They made it pretty clear that they wanted to hold on to the option of suing open source providers," he said.

Matthew Small, Blackboard's general counsel, characterized the compromise negotiations differently. He said that the Software Freedom Law Center's request was so broad that it was "unprecedented and completely unreasonable" to expect the company to agree to it. He also said that the center gave a very tight deadline and refused to negotiate, giving Blackboard no choice but to reject the proposal. "This was a PR move for them," he said.

Fontana in turn contested what Small said, arguing that Blackboard had been given plenty of time and that open source groups had been quite willing to look for middle ground.

Some adjustments in Blackboard's policies may still be forthcoming. Small said that Blackboard's rejection of Fontana's proposal did not foreclose the possibility that the company might  develop policies that could give more protection to open source providers. "We are considering what policies make sense," he said. "We haven't made a decision, but we're looking for the correct balance" between the company's interests and those of open source providers. The proposal that was rejected was "too simplistic for any company," Small said. But just because Blackboard won't agree to "a complete release of our intellectual property" doesn't mean that no compromise is possible.

Asked if Educause has been talking to Blackboard about a possible compromise, Brian L. Hawkins, the association's president, declined to comment. He said that "if this is going to proceed legally," the patent office review was "probably the next logical step."

On the merits of the challenge to Blackboard's patents, the two sides, not surprisingly, disagreed. Fontana said that the open source coalition presented "clear evidence" of "prior art," meaning previously patented or published ideas that predate Blackboard's claims. Fontana predicted that this evidence would lead to Blackboard's patents being either revoked or narrowed significantly. Small said that the issues being presented had all been considered previously by patent officials. "We believe this re-examination will only strengthen our patent," he said.

The challenge to the patent is a multi-stage process. First, the patent office decides whether to hear the challenge (most such challenges are heard). If the challenge is heard, the patent office then seeks more information from the patent holder and examines the various claims. Small noted that most patents survive such a review. Fontana noted that the majority of such patents are narrowed and that many are thrown out.

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