On July 27, 2009 the United States Court of Appeals for the Federal Circuit issued a resounding victory to Desire2Learn Inc. in its patent battle against Blackboard Inc. In the patent war the ruling is likely to be the beginning of the end for the Goliath Blackboard, which has waged an unrelenting, and some would say ruthless, campaign to crush its small and outgunned Canadian competitor based near Waterloo, Ontario.
This is the first in a series of posts which attempts to take stock of the litigation battle and its significance for IT in higher education. There are multiple strands in this story. Let's begin with the key facts surrounding the central litigation.
The Patent. On July 26, 2006, the USPTO granted Blackboard a patent (U.S. Patent No. 6,988,138, "the '138 patent") for invention of an "Internet-based educational support system and related methods." Immediately that day, Blackboard filed an infringement suit against Desire2Learn in the U.S. District Court for the Eastern District of Texas.
The Court Case in East Texas. The '138 patent consists of 38 "claims" of intellectual property. On October 2007 the district court invalidated claims 1-35 for reasons of "indefiniteness" but held that a jury trial was warranted and should proceed for claims 36-38. On February 22, 2008 a jury found Desire2Learn guilty of patent infringement on claims 36-38 and awarded damages of approximately $3 million.
The Appeal. On May 12, 2008 and May 13, 2008 D2L and Blackboard each filed their notice of appeal, respectively. Blackboard sought to reinstate the validity of claims 1-35, while D2L sought to reverse the trial ruling and to invalidate claims 36-38. On July 27, 2009 the U.S. Court of Appeals for the Federal Circuit granted D2L a decisive victory on both counts by a) affirming the district court's decision that claims 1-35 are invalid and b) reversing the district court's ruling on claims 36-38. In brief, the Appellate Court invalidated all 38 claims in the '138 patent. The ruling is subject to further appeal, including all the way up to the U.S. Supreme Court. But, according to at least one patent attorney, the likelihood of Blackboard succeeding now is very dim.
In the next installment I examine the patent itself from a technical and legal perspective, particularly in the light of the new appellate ruling.