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.

A short history of the Blackboard patent battle
1997
Blackboard founded.

1999

June: Blackboard files provisional patent.

2006

January: U.S. Patent Office awards Blackboard a patent for "technology used for Internet-based education support systems and methods."
February: Blackboard completes merger with former learning management system rival WebCT.
July: Blackboard announces the patent award. The same day, it files suit in federal district court charging Desire2Learn with infringement.
July-August: Online discussions flare; blogs form to track down "prior art" — ideas and inventions that could be used to show others developed the same technology that Blackboard claims to have invented.
August: The Sakai Foundation, an open source online learning software project, engages the Software Freedom Law Center to counter Blackboard's actions and to address problems in the current patent law system.
Diane Muir, owner of Atlanta-based online school Porta School, files civil suit against Blackboard, alleging the company "willfully and intentionally misrepresented themselves" in applying for the patent. She asks for a $5.3 million judgment against the company. Within weeks, the case is dismissed.
September: Desire2Learn files a counterclaim, alleging essentially the same thing as Muir Blackboard failed to tell the Patent Office of relevant prior art, legally called "inequitable conduct." Blackboard files a motion to dismiss the counterclaims.
October: In an extraordinary action, the board of EDUCAUSE, a leading nonprofit group promoting IT use in higher education, hands a letter to Blackboard CEO Michael Chasen, urging the company to disclaim its rights under the patent, put the patent in the public domain and withdraw the suit against Desire2Learn. Both companies are EDUCAUSE corporate members.
Blackboard says it has made no formal reply but is in conversations with EDUCAUSE.

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

The latest legal move occurred last week, when a federal District Court judge in Texas ruled that a Desire2Learn counterclaim could stand. D2L alleges "intentional misconduct" by Blackboard officials in failing to notify the Patent Office of prior art" - or 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 trial 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.

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 in university IT 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 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. "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."

Essa cites 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.

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's 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've repeatedly reiterated our support for the open source community....We have open source code in our own products," he says.

But the facts, however they may be interpreted, are being overtaken by perceptions molded by deep convictions.

"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." n

Learn more about this topic

Higher education slowly embraces shared network services

03/27/06

EDUCAUSE: Education and IT

10/19/05

Server network card problem 01/03/05

Opinion

Insider Shootout: Best security tools for small business
Editors' Picks
Join the discussion
Be the first to comment on this article. Our Commenting Policies