The Blackboard Patent: Where's Waldo? [LWN.net]

August 30, 2006

By Pamela Jones, Editor of Groklaw

I'm sure you have heard about the intense outrage over Blackboard, Inc.'s patent on a method of e-learning and about its initiating a patent infringement lawsuit against Canadian-based competitor Desire2Learn in the U.S. District Court for the Eastern District of Texas in July. But there is a part of the story you may not know.

Blackboard has already been called "the SCO of the educational software market". Here's the complaint [PDF], if you'd like to read it. Like most patent infringement legal filings, it's dry as dust, but if you look at paragraph 10, you will see that Blackboard's litigation appears to target Desire2Learn's entire product line:

Upon information and belief, in violation of 35 U.S.C. Section 271, D2L uses, offers to sell, and sells within the United States, and/or imports into the United States, products and services that infringe the '138 patent, including, but not limited to all D2L products based on the D2L learning system or platform, such as the D2L eLearning Technology Suite, which includes the D2L Learning Environment, Learning Repository and LiveRoom, and all services supporting these D2L products, such as hosting services, training services, help desk support services, implementation and customization professional services, and content services.

According to an open letter by the CEO of Desire2Learn, John Baker, Blackboard didn't even contact Desire2Learn prior to filing in July. Yet Blackboard is asking the court to award it treble damages for "willful" infringement.

There's already a Boycott Blackboard site, a No EDU Patents site, with a History of Internet-based learning page where you can contribute prior art, and many in higher education are blogging intensely -- studiously one might even say -- to chronicle every detail of this patent story. There is also now a Wikipedia page as mentioned by Tim O'Reilly in mid August.

Indeed, it's mighty hard not to feel outrage, or at least keep your lip from curling, when you read the patent, or better yet a plain English version of it. Here's a diagram mocking what Blackboard "invented".

The British Educational Communications and Technology Agency (BECTA), reportedly took a look and issued guidance on the patent to all companies involved in e-learning in the UK. This report, while noting that the patent has no force in the UK, reveals that Blackboard has applied for four patents at the European Patent Office (EPO). Here's a list of other patents it has applied for in the US too, including one ominously titled "Method and system for conducting online transactions." Is there some kind of a contest going on to see who can get the most obvious patent on planet earth? By the way, the US Supreme Court will be reviewing a case that speaks to the issue of what the standard should be for obviousness. Better late than never, as they say. Michael Geist reports that Blackboard "expects similar patents to be granted in nearly a dozen countries around the world including Canada, Australia, and the European Union."

Initial review by the EPO found the claims not to be novel. Alfred Essa on "The NOSE: Information Technology in Higher Education," prefers the word "trivial" to describe the issued US patent:

By now I have read the Blackboard patent carefully, including the notorious "44 claims". Despite what Blackboard has said in public, the claims taken together describe a generic system for e-learning and potentially covers every learning tool, present or future....

Once you strip the "44 Claims" from its stylistic dross one can immediately see that Blackboard's "Idea", or innovation as they would claim, is laughably trivial and obvious. The core ideas in the system part of the claim originated with those individuals who developed the idea of network computing and using the Internet for collaboration. If there is one individual who deserves prior art for that Idea it's Tim Berners-Lee. But Berners-Lee himself would claim that hundreds, if not thousands of people worldwide, have contributed to developing and establishing the Idea of network and collaborative computing.

The FOSS community is naturally very concerned that, after Blackboard finishes suing Desire2Learn, it will come after Open Source e-learning projects like Moodle. In response, the Sakai Foundation, which helps colleges and universities run open source e-learning systems, has hired the Software Freedom Law Center to advise these projects. I think they are right to be worried despite assurances from Matthew Small, Blackboard's general counsel, that the company has no plans to challenge Open Source projects. For one thing, not having current plans doesn't prevent Blackboard from changing its mind at any time if this patent stands. Then there is the SCO comparison. It started me researching.

The SCO Comparison Gets Me Looking for Waldo

Ever since SCO sued over allegedly infringing code in Linux and we found Microsoft a shadowy figure in the background, I have formed the habit of looking for a Microsoft connection whenever I see a story about FOSS being threatened. It's my personal "Where's Waldo" game. I remember Bill Gates saying in 2003, shortly after SCO began its campaign, that Linux would be hounded by IP legal troubles for 4 or 5 years. At the time, I took that as a 5-year plan. So when I heard about the Blackboard litigation, I went to Google and just searched by the keywords "blackboard microsoft."

Bingo.

I found a number of articles from 2001, which is when Blackboard and Microsoft first teamed up as partners. Yes, Blackboard and Microsoft. Here's one from June of 2001 on the deal and its purpose, "Internet Strategies for Education Markets: The Heller Report:"

Microsoft's .NET technologies (www.microsoft.com/net) will be more common in higher education through a significant agreement with Blackboard, Inc. (Washington, DC, www.blackboard.com). The co-marketing partnership calls for Blackboard to develop the next version of its e learning platform using the technologies, and for Microsoft to recognize Blackboard as its preferred e-education partner.

The goal? In this article in The Chronicle of Higher Education, dated November 23, 2001, an analyst from Directions on Microsoft said the purpose of the deal was for Microsoft to "own the educational-software market." Blackboard, according to Essa, now has a 75% share of the e-learning market.

The article quotes from a Mark V. East, worldwide general manager for the education-solutions group at Microsoft as saying, "Learning could take over from e-commerce as the number-one use of the Internet." To be able to take over a market, it probably helps if your product works better than your competition, and that was the stated plan:

Despite its emphasis on Microsoft products, Blackboard will still write versions for Unix and Linux, says Matthew S. Pittinsky, chairman of Blackboard. All versions will have the same set of basic features, although Blackboard for Microsoft will eventually have more features than Blackboard for Unix or Linux, he says.

"It will be more feature-rich to run Blackboard out of the box on Microsoft" than on other platforms, Mr. Pittinsky says. System administrators will have more options for configuring the Microsoft version of Blackboard than the non-Microsoft versions. End users will notice a difference between systems run on Microsoft and those run on other platforms, he says. It will be easier for users to incorporate documents from any Microsoft applications in Blackboard's online courses. They will have just one log-on for all Blackboard and Microsoft software through Microsoft's Passport technology.

There are other articles too, like this one in the Daily Princetonian, where academics worried out loud about Microsoft inducing Blackboard to create its software in such a way that they would be forced to switch to Microsoft or give up Blackboard. They were thinking way too simply. The goal, judging from the litigation against Desire2Learn is not just market share; it's about money, honey. Patents are all about money, and when you have a broad patent -- and this one is nothing if not broad -- you can make all your competitors pay you licensing fees or if they refuse, you can shut them down. Think RIM and the Blackberry story. If there is any connection between patents and innovation, it seems to be to snuff it out wherever it happens to pop up in a competitor.

When you look into who has funded Blackboard, what do we discover? Microsoft invested in Blackboard back in 2001, according to a BusinessWire press release, "Oak Hill Capital Leads Investors in $48 Million Financing of Blackboard Inc." And then in February of 2005, Business Week reported that Bill Gates himself had invested in Oak Hill Capital Partners to the tune of $55 million in the past and was ponying up $70 million for a second fund, Oak Hill Capital II. Business Week says the II fund was promising investors a 25% return. While it doesn't specify that the personal investment went to Blackboard, the Microsoft investment did. Bingo. There's Waldo. Geist puts his finger on the central point, I think:

Shock quickly gave way to fear, since the community worried that Blackboard would leverage the patent to force competitors into expensive licensing agreements, thereby increasing costs and reducing innovation.

Moreover, educators have expressed concern that the patent will create confusion within the academic community, leading some institutions to drop better learning management systems alternatives due to the legal uncertainties.

Of course, some might say that's not a bug; it's a feature.

(Log in to post comments)

The Blackboard Patent: Where's Waldo?

Posted Aug 31, 2006 5:49 UTC (Thu) by twiens (guest, #12274) [Link]

According to http://en.wikipedia.org/wiki/History_of_virtual_learning_...

June 30, 2000: Blackboard Inc. application for patent is filed.

The Blackboard Patent: Where's Waldo?

Posted Aug 31, 2006 6:58 UTC (Thu) by ncm (subscriber, #165) [Link]

It's only usable to invalidate the patent if they published it. That's the original purpose of the patent system, to ensure that useful inventions become public knowledge, and to provide a monetary incentive to the people who can make that happen. Of course allowing patents on trivial "inventions" undermines the whole purpose, because the patentholder can force real inventions that depend on them off the market.

Does anybody remember Wilkinson Sword? They once had the patent on stainless-steel razor blades. They didn't sell them, they just kept anybody else from selling them, for seventeen years.

The Blackboard Patent: Where's Waldo?

Posted Aug 31, 2006 9:49 UTC (Thu) by dberkholz (subscriber, #23346) [Link]

Isn't it different in the US? First to invent rather than first to publish or apply can get the patent.

The Blackboard Patent: Where's Waldo?

Posted Aug 31, 2006 11:53 UTC (Thu) by kleptog (subscriber, #1183) [Link]

In first-to-invent systems you can only claim to have invented it up to a year before you filed it. Prior art still has to be published to count, so the whole discussion only comes up if you had filed for a patent about the same time. Then you'd argue about who was first, it's way to late for that now.

The only difference first-to-file would have made here is that their own product would have invalidated their own patent, given they released the product before filing the patent (I think, the article doesn't say when they released their product using this patented stuff). In first-to-file systems *any* publication, even your own, can be counted as prior art against your patent.

The Blackboard Patent: Where's Waldo?

Posted Aug 31, 2006 12:51 UTC (Thu) by wookey (subscriber, #5501) [Link]

In the UK 'publication' of a patentable idea can be as little as telling someone else outside your organisation about it. So depending on the relationship between the author and the company it could well already be deemed sufficiently 'in the public domain' to be valid prior art. The practical problem is that you need to be able to prove dates in court and that is very difficult without either a dated logbook or dated publication.

None of this is very relevant until the EPO gives the same or similar patent. US law applies on the existing patent and that is quite different in the details of what counts as prior art. But in general what counts in practice tends to be interpreted depressingly narrowly. It is no good being able to show two things that cover all the patent claims in different articles unless you can find another article which references them both. For it to be 'obvious' that combining the ideas in both articles might be a good idea, it has to actually be written down somewhere. This is a ridiculous view of the world, especially in software, but that's the way the law works. The validity of this concept is being challenged in the upcoming case Supreme court case KSR International Co. v. Teleflex.

This is a very useful (if a little dry) article explaining the current state of US law on what prior art makes something 'obvious'. This is the nub:
The Federal Circuit's very first task was to adopt the decisions of the predecessor courts as precedent, South Corp. v. United States, 690 F.2d 1368 (Fed. Cir. 1982) (en banc). Regarding the law of obviousness, the court of appeals discerned in its Court of Customs and Patent Appeals precedent a rule that the prior art, in order to render an invention obvious, must suggest an advantage to be derived from combining their teachings.

Now you get an ideal of the style, but it is well worth reading if you actually want to understand this stuff.

For me, the most interesting aspect of the blackboard case is all the Education people saying what a travesty this is and how this is the 'worst patent ever'. Take every opportunity to explain to them that nearly all the others are just as bad in their respective fields - they are merely becoming aware of the nightmare that software patents represent.

The Blackboard Patent: Where's Waldo?

Posted Sep 1, 2006 4:55 UTC (Fri) by roelofs (guest, #2599) [Link]

While no fan of Microsoft, isn't it a slightly paranoid to blame them, when Blackboard filed for the patent in 2000, and Microsoft apparently did not get involved until 2001?

Technically, I think PJ "merely" pointed out the money connection (perhaps a tad gleefully). And yes, maybe sometimes she's a little over the top when it comes to conspiracy theories in general and Microsoft in particular.

But the point is, we don't know for sure, one way or the other, and the facts are certainly suggestive. More to your point, she didn't say Microsoft prompted Blackboard to file the patent; instead, the (fairly obvious, I thought) implication was that they instigated/encouraged the lawsuit and are still in the process of bankrolling it. (Patent suits are, after all, hideously expensive; there was an article in the paper just today about somebody's loss widening significantly since last year, primarily due to patent-litigation costs.)

Whether Blackboard might move from commercial attacks to open-source is anybody's guess, but (1) it's certainly a good cover if that's the plan--i.e., let a third party do the dirty work, quite reasonably starting at the top moneywise and working their way on down, perhaps getting around to open-source targets in 3-4 years; and (2) remember Unisys? They also backpedaled on a verbal promise w.r.t. freeware.

In short, even without exerting any overt or covert pressure to target open-source software--which, after all, would be rather risky from the antitrust perspective, Bush administration or no--one could plausibly argue that Microsoft is simply rolling the dice and hoping for the best. Sure, it's a long shot, but they've got cash to burn and the potential payoff is pretty decent, so...why not?

That said, I remain fairly skeptical...but it's hard to dismiss the idea completely.

Greg