Posted by: rmostell | July 28, 2009

Federal Court of Appeals Overturns Blackboard ‘138 Patent in Bb v. D2L Case

Finally some good news to blog about in the Blackboard vs. Desire2Learn lawsuit.  The U.S. Court of Appeals has overturned claims #36-38 of the Alcorn patent (#6,988,138) as “anticipated as a matter of law” based on “prior art” and upheld the lower court’s decision that claims #1-35 were invalid because of “indefiniteness”.  That pretty much wraps it up for this patent.  Now we need the U.S. Patent and Trademark Office (USPTO) to make their final decision on the reexamination of the patent.  See complete details below.

Even a simple professor like myself who is not a legal expert of any kind (and certainly not a patent lawyer) and who followed this case for the past year and half in the news could see that the ‘138 patent was a bogus claim of an “invention” and that the lower court had misconstrued the obvious meaning the English word “user”. (C’mon, try that out at JC Penny or Taco Bell and see where you get with “single login”.)  I’m glad to see that the court of appeals agrees with me and D2L on this issue.

The bad news is that Blackboard plans to appeal this decision and is already pursuing another more recent patent (#7,558,853) against Desire2Learn.

Don’t misinterpret me.  I appreciate the importance of copyrights and patents to stimulate the development and deployment of new technologies.  They help mankind improve our living environment (education, health, commerce, etc.).  However, when a large company like Blackboard who is very successful abuses the system to try to “search and destroy” all viable competition that they can’t buy  or outsell through superior technology and leadership, they do all of us (mankind) a disfavor.

For the record, I thought both WebCT and Angel Learning had superior technology over Blackboard – better thought out systems for learners and teachers.  I keep hoping that Blackboard with all this newly acquired technical expertise from WebCT and Angel Learning will produce a product that “blows the competition out of the water”.  We’ll have to wait and see about that.  We don’t know yet how well Blackboard 9 and Community and Content are going to fare in the academic setting.  There’s a lot of sales hype out there but the truth comes when the “rubber hits the road”!


Related blog: Blackboard buys Angel Learning

Related: And where’s the $3 + million (plus interest) that Blackboard extorted from Desire2Learn in the East Texas Federal Court?  Does Blackboard plan to hold on these ill-gotten gains just to punish Desire2Learn even though their patent doesn’t hold water?

Copied verbatim from the Desire2Learn website: and

Jul 27, 2009 2:03 PM
Federal Circuit Rules in Favor of Desire2Learn Across the Board

We are pleased to announce that the United States Court of Appeals for the Federal Circuit has ruled on the appeals that resulted from the trial in Texas. The Federal Circuit has ruled in favor of Desire2Learn across the board and confirmed that all 38 patent claims asserted by Blackboard are invalid.

Those who have followed this blog may recall that claims 36-38 of the patent were the subject of the jury trial and that we had asserted that those claims were invalid because the “invention” they claimed was present in prior art. To decide that issue, the Appellate Court first had to define the word “user” in the ‘138 Patent. Blackboard argued that the term “user” refers to an electronic user account, and that a user account is defined by a single user name and password combination.

Desire2Learn asserted that a user is a person who uses the learning system. As the Appellate Court said, “The [patent] makes clear that the word ‘user’ refers to a flesh-and-blood person and not an electronic representation of that person.”

Having decided that Desire2Learn’s interpretation of the word “user” was correct, the Court turned its attention to whether the prior art on which Desire2Learn relied at trial contained all of the elements of those claims. As the Court put it, “On the merits, we agree with Desire2Learn that claims 36-38, as properly construed, are invalid for anticipation as a matter of law by CourseInfo 1.5 and Serf.”

The second issue addressed by the Court was whether the Texas Court was correct in ruling that claims 1-35 of the ‘138 Patent were invalid. In short, the Texas Court had ruled that the “Means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course,” a “means-plus-function” term, was indefinite. The Federal Circuit has agreed that in the ‘138 Patent Blackboard tried to claim too broadly which invalidates those claims:

“By failing to describe the means by which the access control manager will create an access control list, Blackboard has attempted to capture any possible means for achieving that end. Section 112, paragraph 6, is intended to prevent such pure functional claiming.”

Despite the challenges along the way, we have all of you to thank for supporting us through this lengthy process. We have always been, and will continue to be, about meeting the needs of our clients in their pursuit of advancing teaching and learning. Thank you for believing in us!



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