Open source lawyers take on e-learning patent

The Software Freedom Law Center has filed a request with the US Patent and Trademark Office (USPTO) that is seeking to invalidate an "Internet-Based Education Support System" patent that is owned by e-learning provider Blackboard.

Blackboard develops course management system applications that allow teachers in educational institutions and corporations to develop and support online courses including instructions, assignments and reading materials.

The SFLC filed its request on behalf of the Sakai, Moodle and ATutor open source e-learning projects.

"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. "We are confident that that there is enough prior art for the Patent Office to open, re-examine, and ultimately revoke all of the patent's claims.

Matthew Small, general counsel for Blackboard, responded that he is confident about the re-examination procedure.

"The re-examination will only serve to strengthen our patent. We are confident of the strength and validity of our patent," Small told vnunet.com.

Under US law, anybody can request the USPTO to re-examine a patent. The patent organization will make a decision within three months.

The application for the disputed patent was first filed in June 2000 and was awarded last January. After the patent was awarded, Blackboard in July filed a lawsuit against competing e-learning provider Desire2learn.

In its legal complaint, Blackboard demanded that its competitor stop selling products and services that infringe on the patent as well as payment of unspecified damages.

Desire2Learn in September filed a counter claim, alleging that the patent is invalid and that Blackboard knowingly withheld information about prior art, a legal term indicating that somebody else invented the technology before Blackboard did.

The lawsuit sparked a debate within e-learning and educational communities prompting fears that Blackboard would assert its patent against other vendors and the Sakai, Moodle and ATutor open source projects.

Blackboard's general counsel Small however stressed that the company has no intention to go after the three open source projects that filed the re-examination request. The company doesn't know if the projects violate its intellectual proterty, becasue it hasn't looked at the software.

The company has had conversations about the patent with representatives for the projects, he said, but those abruptly ended when they demanded that Blackboard provide a non assertion pledge for its current and future patents to all open source projects.

Small said that the company could consider some kind of patent pledge to appease the projects, but he typified the proposed covenant as "unprecedented".

"They weren't willing to come up with a reasonable solution," said Small.

The Software Freedom Law Center is known as an institution that closely follows the ideals of free software and strongly opposes the idea of software patents.

Despite repeated assurances that it won't target the open source projects, Blackboard is now wrongly portrayed as an enemy of open source, Small complained, because the company won't denounce patents as a way to support its intellectual property investments.

"This is more of an emotional and religious issue for some people than that it is really a practical concern."