At the request of the Software Freedom Law Center, the U.S. Patent and Trademark Office announced Thursday that it will re-examine a patent held by e-learning software company Blackboard.
The Software Freedom Law Center (SFLC), an open source software group, made its request in November on behalf of three open source educational software programs. It cited documents that predate the awarding of Blackboard’s patent last year and that the U.S. Patent and Trademark’s notification letter said raise “a substantial new question of patentability.”
“In a free society, there is no room for a monopoly on any part of the educational process,” said Eben Moglen, executive director of the SFLC and professor of law and legal history at Columbia University.
A Symptom of Growth
Washington-based Blackboard sells Web-based software that allows teachers and students to interact outside of the classroom, including WebCT, which it acquired in a merger last February. The company filed a lawsuit against Desire2Learn in July, and that suit is scheduled to go to trial in about 13 months.
“We feel strongly that we will win in court, and that our patent will not only survive the re-examination, but will come out stronger,” Matthew Small, Blackboard’s senior vice president and general counsel, told LinuxInsider. “Ninety-five percent of re-examination requests that get submitted are heard, so this isn’t really newsworthy.”
In the software industry, where developments change so quickly, re-examination requests are a common occurrence, noted Washington technology lawyer Raymond Van Dyke. “It’s nobody’s fault,” he said, “they’re just growing pains.”
In cases like this, the burden is on the challenger of the patent to prove that the technology is either obvious or not novel, explained patent lawyer Edward Weisz of Cohen, Pontani, Lieberman and Pavane. “Once it’s issued, a patent has a presumption of validity,” Weisz told LinuxInsider.
Odds of Survival
Blackboard’s Small added that 90 percent of the patents undergoing re-examination do survive, and Van Dyke agreed that the odds are good. Of course, Van Dyke remarked, “whether they survive in a commercially viable form is a completely different issue.”
Indeed, Michael Zastrocky, vice president and research director for education at Gartner, isn’t so sure about the patent’s fate. “My personal opinion is that it is not likely it will stand,” Zastrocky predicted. “There are challenges that have validity.”
Open source software is gaining ground in academic institutions while commercial software is starting to account for a smaller proportion of installations than it has, according to Gartner research. “Gains will be seen in open source and home-grown products,” Zastrocky declared.
Perhaps more important, though, is the harm being done to the educational software industry by the litigation, Zastrocky added. “It has caused a lot of hard feelings in the industry. At a time when we’re finally starting to understand what works pedagogically, a lot of energy is going into this, and that’s slowing progress.”
In this climate of animosity, Blackboard may find itself vulnerable, Zastrocky said. “Many users of WebCT don’t have the allegiance to Blackboard that they had to WebCT [before the merger]. That puts Blackboard in the difficult position of trying to retain those clients,” he concluded.