Friday, March 12, 2010

Blackboard's Patent is Down to its Last 30 Days

Last week, Ray Mosteller revived the discussion of the Blackboard-Desire2Learn saga by articulating a number of questions pertaining to the settlement between Blackboard and D2L. One of Ray's questions caught my attention. He wrote, "What ever happened to the USPTO rejection of all claims in the Blackboard ‘138 (Alcorn) patent? Or the USPTO re-examination of the ‘138 patent. Is this still ongoing? Is there a chance that the USPTO could revive the ‘138 patent?"

Last we heard, the US Patent and Trademark Office was re-examining the patent and had issued a series of "non-final" decisions that invalidated all 44 (then later all 57) of Blackboard's claims related to the '138 (aka Alcorn) patent. I assumed that Blackboard had appealed that decision, but I cannot find evidence of that.

My attempt to uncover the current status of the patent re-examination led me to the attorney, Michael Spiegel, representing the Software Freedom Law Center and its ex parte re-examination request with the USPTO. Spiegel graciously informed me that a final Right of Appeal Notice has been sent to Blackboard regarding their last opportunity to appeal the USPTOs decision to overturn all claims in the '138 Alcorn patent. Blackboard has 30 days from March 12 2010 to file their appeal. If they do not, then the re-examination is complete and the USPTO decision is mercifully declared final.

In reviewing the publicly available Right of Appeal Notice, this statement by the USPTO nicely summarizes the nature of this infamous patent:

"The claimed invention is merely a combination of old elements...The combination is an adaptation of an old idea using newer technology that is commonly available and understood in the art and thus obvious."

Note: I've posted the USPTO's Right of Appeal Notice here (PDF, 1.3 MB). The document contains a record of all the arguments made regarding the existence of prior art to invalidate Blackboard's claims.

Many thanks are also owed to SFLC's former patent attorney Richard Fontana who "did all the heavy lifting in this case", according to Spiegel.


Anonymous said...

How did SFLC do anything here other than slow things down. Desire2Learn was the group that spent the millions fighting this patent.

jeff said...

The SFLC was responsible for getting the US Patent and Trademark Office to review the patent. I believe SFLC coordinated and submitted all the prior art that went into the process that eventually invalidated Blackboard's patent.