Software patent ignites firestorm in higher education

A firestorm of controversy is spreading in the education community over attempts by key software vendor Blackboard to enforce its patent claims.

It’s a case in which the level of vitriol and vilification is making the long-running and now-settled patent battle between Research in Motion and NTP look like high tea at the Ritz. There are claims, counterclaims, a civil suit, an extraordinary demand from a higher education IT group and a mounting torrent of blog postings.

The spark ignited in late July when Blackboard, by far the dominant vendor of learning management software, announced it had been awarded a U.S. patent earlier this year for some elements of its software, the Blackboard Learning System.

The spark was fanned when Canadian rival Desire2Learn (D2L) revealed publicly that on the same day that Blackboard issued the press release, it also filed suit in U.S. District Court charging D2L with infringing that patent.

The latest legal move occurred Monday when federal District Court Judge Ron Clark, in the Eastern District of Texas, ruled that a Desire2Learn counterclaim could stand. D2L claims “intentional misconduct” by Blackboard officials for failing to notify the Patent Office of prior art” — of ideas and inventions by others that could undermine the patent claims.

The next move is scheduled for early December when the two sides meet for a pretrial scheduling conference. A tentative trail date of February 2008 has been set.

Fueling passions

Passions on both sides were fueled in October, when the board of directors of EDUCAUSE, perhaps the leading nonprofit group promoting IT in higher education, voted unanimously to weigh in. “Our community feels these actions [the patent and the lawsuit] go beyond competition to challenging the core values and interests of higher education,” wrote EDUCAUSE President Brian Hawkins, in a letter hand-delivered to Blackboard CEO Michael Chasen at last month’s annual EDUCAUSE conference.

Hawkins was not available for comment and no one else at EDUCAUSE is authorized to speak on the matter, according to an EDUCAUSE spokesman.

In the letter, Hawkins urged the company to forgo its rights under the patent, put the patent in the public domain and drop the suit against its rival.

“We’re not going to disclaim our rights under the patent,” says Mathew Small, Blackboard’s senior vice president and general counsel. “That would be an unprecedented and extraordinary step to take.”

Some university IT officials agree.

“If I was the CEO of Blackboard and I didn’t protect the company’s intellectual property, the shareholders should ask me to step down,” says Mitch Davis, CIO of Bowdoin College, Brunswick, Maine, and a Blackboard customer. “I don’t understand what EDUCAUSE is doing or why Brian and the board decided to get involved.”

Although Blackboard has not made an official response to the letter, Chasen says the company is “working with them to address those concerns.”

Dueling interpretations

Many Blackboard critics interpret the wording in the patent and in Blackboard’s lawsuit as evidence that the company is claiming in effect to have invented learning management systems.

“It’s simply not fair competition,” says Frank Lowney, director of Web-enabled resources, at the Georgia College & State University Library, in Milledgeville, Ga., a user of WebCT, a product now owned by Blackboard through an acquisition.

“Much of what Blackboard claims to have invented really came from and was freely given by the education community. Now the community is being punished through a gross lessening of competition in this market.”

A flock of Web sites have sprung up in an effort by higher-education IT staff to document such prior art.

But Blackboard executives repeatedly insist that there are only two key claims in the patent (the other 38 or so depend on one or the other of these two “independent claims”). Both of those claims, Blackboard says, involve assigning multiple roles to the system’s users, so that a student in one class could be a teacher in another, and then managing permissions and privileges differently for different courses as those roles change.

“In order for a patent to be granted, the idea must be 'non-obvious to the skilled practitioner’ at the time of the patent filing,” says Alfred Essa, deputy CIO for Minnesota State Colleges and Universities, St. Paul, Minn., and a strong Blackboard critic. “I consider myself to be a skilled practitioner. Not only was the patent idea obvious at the time of the filing, but there were scores of people who were implementing or working out the implications of the same idea at the time of the filing.”

Essa cites as one example the work of Massachusetts Institute of Technology researcher Philip Greenspun, who developed a generalized Web tool kit for supporting collaboration and communities. The idea of roles was a key part of that and Greenspun published a book on his work in 1997, Essa says.

The open source ethos

Course or learning management systems have been the focus of a wide range of in-house development activity at schools, much of it in cooperative ventures, since the latter half of the 1990s. At the same time, a range of vendors developed commercial software products.

More recently, this activity has been organized around open source software principles, most notably by the Sakai [pronounced sah-KI, as in sky] Foundation, whose learning management software is in production with about a half-dozen institutions and is in the process of being adopted at 30 to 40 more, says Joseph Hardin, chairman of Sakai board.

The foundation is working with the Software Freedom Law Center on issues related to Blackboard’s patent actions.

“This [patent] took a lot of people by surprise,” he says. “Their legal counsel, Small, has said that Blackboard will not pursue the patent against open source groups like the Sakai Foundation. But commercial users of open source code would be targets. That shows a fundamental misunderstanding of the open source community.”

Small denies saying commercial users would be targets. “I never said that,” he says. “I’ve repeatedly reiterated our support for the open source community….We have open source code in our own products.”

Facts yielding to perceptions?

But the facts, however they may be interpreted, are being overtaken by perceptions molded by deep convictions that may deepen the divide between the two camps.

“Blackboard is going to get a very rude wake-up call when they realize that while they are a commercial vendor, with all the attendant rights, they also have obligations to the higher education community, which are unlike [those of] a faceless, corporate, software platform company,” says Lev Gonick, CIO at Case Western Reserve University in Cleveland.

“Many people in education…feel like Blackboard cheated and is not being a good academic colleague,” says Bowdoin’s Davis. “I agree with them. But Blackboard never sold itself as anything but a for-profit business.”

Learn more about this topic

Blackboard's Web site

Blackboard Patent update page

The Blackboard patent, from the U.S. Patent Office

Desire2Learn's very complete online record of relevant legal documents in the Blackboard lawsuit

EDUCAUSE board minutes and letter to Blackboard

[scroll down to "Attachment A"]

Alfred Essa's blog entry: How to think about the Blackboard patent, Part III: What did Blackboard invent?

[includes numerous links to other blogs and Websites on the controversy]

Sakai Foundation Blackboard patent update page

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