Just when you thought the patent fight over course-management software couldn’t get any more confusing, Blackboard Inc. went to federal court to sue the United States Patent and Trademark Office, seeking to overturn a recent decision concerning Blackboard’s controversial patent on course-management software.

The issue at stake is who decides whether or not Blackboard’s patent is valid. Right now the patent is being challenged on two fronts:

Front one is the courts. Blackboard sued its biggest competitor, Desire2Learn, arguing that the Canada-based company violated Blackboard’s patent with its course-management software. On that front Blackboard is winning. In march a federal jury in Texas awarded Blackboard $3.1-million, finding that Desire2Learn did infringe the company’s patent. Desire2Learn has appealed the decision, and it modified its software in response to the court decision.

Front two is the patent office’s own review process. Desire2Learn has challenged the validity of Blackboard’s patent, and the office is working through a formal reexamination of it. On this front Desire2Learn is winning big. In an initial ruling issued this year, the patent office struck down all 44 claims in the Blackboard patent.

Blackboard clearly wants the final decision to rest with the courts, where it has received the most favorable verdicts. Its new lawsuit, filed late last month against the patent office and Jon W. Dudas, the office’s director, seeks to overturn the patent office’s recent decision to continue its review of the patent’s validity while the court challenge goes on. Blackboard argues that once a court ruling about a patent is issued, the patent office should end any reexamination of that patent. The patent office has ruled that its reexamination will only end once a final verdict in court is issued, meaning only after all possible appeals are pursued.

Michael Feldstein, a blogger who has been tracking the Blackboard patent battle, argues that Blackboard’s latest action muddies the company’s efforts to display a greater willingness to make its software work with that of competitors. For instance, Blackboard has announced that future releases of its course-management software will allow colleges to synchronize with Sakai and with Moodle, two open-source alternatives.

“Regardless of the legal merits, the fact that Blackboard continues to assert the patent heavily undermines their new marketing message of openness,” wrote Mr. Feldstein. “I don’t understand why they still think this strategy is a winner.”

But Bruce Wieder, a partner with the Washington law firm Dow Lohnes who is watching the case, said that Blackboard’s latest move was not that unusual. “It’s not typical, but it’s not outrageous,” he said.

Blackboard issued a statement today saying that its latest action is “not an effort to stop the overall re-examination,” and that the company “remains confident in the re-examination process.” Company officials could not be reached for further comment.

Diane M. Lank, Desire2Learn’s in-house lawyer, said in an interview Tuesday that “it is rather clear that Blackboard doesn’t like the patent office since the reexamination started.” —Jeffrey R. Young

Categories: Legal-Troubles, Company-Watch