Last week the U.S. Patent and Trademark Office issued a preliminary ruling rejecting all 57 claims in a software patent that Blackboard Inc. used to successfully sue rival Desire2Learn for infringement. But the long-running patent battle between the two providers of course-management software is far from over, and the re-examination process could drag on for years because of the many chances that Blackboard has to appeal.
Blackboard was granted the patent in question—No. 6,988,138, described as an "Internet-based-education support system and methods"—in January 2006, but the patent office agreed to review it a year later after critics of the company argued that the patent was overly broad and covered software practices that had been in use by colleges and other companies for years at the time it was filed. In the latest ruling, the patent examiner essentially agreed with those arguments.
"We are encouraged and await the USPTO’s final judgment," said Valerie J. Beyer, a spokeswoman for Desire2Learn, which is based in Canada. The company issued a statement on its blog on Friday trumpeting the preliminary ruling as a victory and linking to a copy of the document.
Matthew Small, Blackboard's general counsel, stressed that the American software company's patent remains valid while the re-examination process continues. "This is another step in a long process," he said. "We expect the re-examination to proceed for at least another three years."
Bruce T. Wieder, a partner in the Washington law firm Dow Lohnes who is watching the case, agreed that the process will most likely continue for several years. Both companies now have a chance to make additional arguments before the patent office issues a final decision, he said. If the patent is rejected, Blackboard can appeal, and even that decision can be challenged in federal courts.
Still, the decision last week is significant, Mr. Wieder said, because it keeps the review process alive. A ruling the other way probably would have ended the process and given Blackboard a clear victory, he added.
The overall battle between the two companies is being fought on many fronts. This year Blackboard filed, and was granted, a revised version of the patent, and that new patent is not affected by the re-examination of the old patent. Based on the new patent, Blackboard has already filed another lawsuit against Desire2Learn alleging infringement.
Meanwhile, a federal appeals court is considering Blackboard's earlier victory against Desire2Learn. Blackboard won the patent-infringement decision last year after a trial in a federal court in Texas. The jury awarded Blackboard $3.1-million in damages, saying that Desire2Learn had infringed its patent on software for delivering course materials online. Desire2Learn appealed that decision.
Some observers say that even if Blackboard ultimately loses the patent battle, it will have succeeded in distracting and weakening its rival through the lengthy court proceedings.
But Desire2Learn has recently turned aggressive in trying to turn the case to its advantage in the court of public opinion. Last month the company said it would give $1-million to an education-related charity if Blackboard agreed to drop the lawsuits, and the move has won fans who have been expressing their support for the Canadian company on Facebook groups and in messages on Twitter.
