When a federal jury came down on the side of the course management giant Blackboard February in its patent infringement dispute with the Canadian company Desire2Learn, few believed that would be the end of a long, complicated legal saga. They were proved correct Tuesday, when Blackboard filed a motion asserting that the company had failed to significantly alter its software in a way that would comply with the court's injunction against further infringements.
According to Blackboard, Desire2Learn failed to make several arguably easy changes that would have avoided infringement in future versions of the software, opting instead to rename features and keep functionality that was already seen as violating the company's patents. The jury's decision in February, which awarded Blackboard $2.5 million for lost profits plus $630,000 in royalties, opened the door for an injunction that barred Desire2Learn from marketing or selling course management software in the United States up to and including the latest version, as well as subsequent revisions deemed "not more than colorably different" from the existing versions.
Officials from Desire2Learn were not available to comment on Tuesday night, but an announcement on June 12, when a stay on the injunction expired, affirmed that all of the company's clients had switched to the latest version of its software -- "our official design-around product that was developed, in part, in response to the patent litigation" -- and that it had paid the full jury award plus interest.
The announcement continued: "We do anticipate that Blackboard will continue this litigation by moving for contempt with a claim that version 8.3 somehow infringes on their (now seriously undermined) patent. If Blackboard chooses this course, we are prepared to defend version 8.3 vigorously."
As predicted, Blackboard's motion asserts that the latest version "is not more than colorably different from Learning Environment version 8.2.2."
"In crafting version 8.3, Desire2Learn made only transparently cosmetic changes to the previous version of its software. For example, it renamed the 'student' role as 'user,' without any change in functionality. Likewise, it deleted the 'default roles' ... from the database associated with the product, while leaving the product’s source code essentially the same and keeping the product’s infringing functionality intact," the motion says.
In one case, according to the motion, the court suggested that Desire2Learn remove a feature that allows one user "to have multiple roles with a single login -- a feature Desire2Learn repeatedly told the court was tiny and insignificant. Desire2Learn said that it could make that change easily and inexpensively. Blackboard’s expert testified that such a design-around would be non-infringing. But Desire2Learn chose not to remove the infringing capability."
The company cites experts who obtained court-granted access to the software's source code. Blackboard’s chief legal officer, Matthew Small, said that if the judge doesn't find Desire2Learn in contempt of the injunction, litigation would still continue.
"We have all along said and continue to say, and mean, that we don’t want to do anything that will disrupt D2L’s clients, so if D2L should be held in contempt or sanctioned or if it should go bankrupt ... we would hate to see a D2L school inadvertently shut down unexpectedly because D2L does not survive, and we’re committed to working with the schools to help them find a non-infringing alternative that is on their budget and on their time frame and of their choice," he said.
Bloggers and others who support open-source software, preferring customizable alternatives to Blackboard's course management and e-learning packages, have long viewed the company with skepticism and feared that such lawsuits signal a willingness to pursue infringement claims against free solutions like Moodle and Sakai. But the company says that's not part of its legal strategy.
"No, in fact, we’ve published a legally binding, irrevocable pledge to never assert the patent against open-source or home-grown systems, so certainly we stand by that," Small said.
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