The Blackboard Patent and Its Implications

1. The Blackboard Patent and Its Implications Michael Feldstein Assistant Director, SUNY Learning Network

2. The Basics • Patent in question (#6,988,138): Internet-based education support system and methods • 44 claims • 2 independent claims

3. Patent Claim #1 1. A course-based system for providing to an educational community of users access to a plurality of online courses, comprising a) a plurality of user computers, with each user computer being associated with a user of the system and with each user being capable of having predefined characteristics indicative of multiple predetermined roles in the system, each role providing a level of access to a plurality of data files associated with a particular course and a level of control over the data files associated with the course with the multiple predetermined user roles comprising at least two user's predetermined roles selected from the group consisting of a student role in one or more course associated with a student user, an instructor role in one or more courses associated with an instructor user and an administrator role associated with an administrator user, and b) a server computer in communication with each of the user computers over a network, the server computer comprising: means for storing a plurality of data files associated :with a course, means for assigning a level of access to and control of each data file based on a user of the system's predetermined role in a course; means for determining whether access to a data file associated with the course is authorized; means for allowing access to and control of the data file associated with the course if authorization is granted based on the access level of the user of the system.

4. Claim #36 36. An method for providing online education method for a community of users in a network based system comprising the steps of • establishing that each user is capable of having redefined characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files; b. establishing a course to be offered online, comprising i. generating a set of course files for use with teaching a course; ii. transferring the course files to a server computer for storage; and iii. allowing access to and control of the course files according to the established roles for the users according to step (a); c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course.

5. What It Means Al Essa, 8/6/2006: http://tatler.typepad.com/nose/2006/08/how_to_think_ab_3.html

6. (Allegedly) Before the Patent Al Essa, 9/19/2006: http://tatler.typepad.com/nose/2006/09/blackboards_pat.html

7. The Innovation Blackboard Claims Al Essa, 9/19/2006: http://tatler.typepad.com/nose/2006/09/blackboards_pat.html

8. Legal Opinions Professor Vince Chiapetta, Willamette University College1 • “The system and method claims are very broadly written. I was pretty amazed at first blush at what ended up in there.” EDUCAUSE2 • “EDUCAUSE engaged the services of a highly reputable, independent law firm to review the patent. The preliminary conclusion is that the patent was very broadly defined and was inappropriately approved by the U.S. Patent and Trademark Office.” Professor Mary LaFrance, Willam S. Boyd Professor of Law, UNLV3 • Blackboard can sue a user for patent infringement. Blackboard's strategy "probably is to discourage universities from developing their own system...because the threat of litigation could cause some universities to terminate those efforts." • John P. Mayer, 10/12/06, http://caliopolis.classcaster.org/blog/blackboard/2006/10/12/chiapetta • Letter to Michael Chasen, 10/08/06, http://www.educause.edu/October82006/12077 • John P. Mayer, 10/01/06, http://caliopolis.classcaster.org/blog/blackboard/2006/10/01/lafrance

9. Selected Events in the History of LMS Innovation • 1960: Researchers at University of Illinois invent the Programmed Logic for Automatic Teaching Operations system (PLATO) • 1996-1997: A Cornell University student partnered with a TA to create a system called CourseInfo. (Blackboard) • 1996-1997: At Indiana University’s Advanced Information Technology Laboratory, a team of researchers created a system called OnCourse. (ANGEL) • 1997: A University of British Columbia computer science professor formed a company based on software he had been developing as part of his research at the university. (WebCT) • 1998: A graduate student and staff member at Curtin University in Australia who had been dissatisfied with WebCT began experimenting with creating his on Learning Management System. (Moodle) • 1999: A recent software systems design graduate from University of Waterloo formed a company to sell e-learning systems that were based on his studies. (Desire2Learn) • 1999: Blackboard filed for its patent.

10. The Cost of Patent Litigation • Estimated costs to Desire2Learn: $1.5 million - $3 million • Desire2Learn’s annual revenues: $10 million • Desire2Learn’s annual profits: 5%, or $500,000 Conclusion:The patent litigation will cost Desire2Learn 100% of their profits for 3-6 years.

11. And What If They Lose? • They pay all litigation costs • Plus the royalty • Plus treble damages for willful infringement (some calculate `$800K/new customer from suit to settlement)

12. How Long Will It Take to Litigate? • Jury selection begins February 11, 2008 • If Desire2Learn or a third party files a challenge with the USPTO, add several years • Bottom line: 2-5 years • 70% of patent cases are found in favor of the plaintiff in the East Texas jurisdiction

13. Desire2Learns Other Options • Settle • Redesign

14. Other EduPatents • Blackboard’s pending patents • eCollege • SAP • Accenture • ???

15. EDUCAUSE Letter to Blackboard “I am writing you on behalf of the higher education IT community, the EDUCAUSE Board of Directors, and our executive team to express in writing what we have conveyed in prior conversations. Our community is deeply concerned by Blackboard's patent and its recent law suit claiming patent infringement against Desire2Learn. Our community feels these actions go beyond competition to challenging the core values and interests of higher education….”

16. EDUCAUSE Letter to Blackboard (Cont.) “…EDUCAUSE is a non-profit association dedicated to serving its 2000 college and university members, as well as its 200 corporate members. We do not endorse products or take the side of one company over another. Our corporate guidelines, established in 1998, are very clear that EDUCAUSE is primarily accountable to its institutional members. In the event of a conflict between corporate and institutional member objectives, we must support our institutional members. Let me clearly state that we are not siding with Desire2Learn at the expense of Blackboard. Our discussions and actions are based solely on the collective interests of our institutional members….”

17. EDUCAUSE Letter to Blackboard (Cont.) “…There are two core tenets behind the community concern. One deals with co-creation and ownership; the other deals with innovation. Course management systems were developed by the higher education community, which includes academics, organizations, and corporations. Ideas were freely exchanged, prototypes developed, and refinements continue to be made.… Our community has participated in the creation of course management systems. A claim that implies this community creation can be patented by one organization is anathema to our culture….”

18. EDUCAUSE Letter to Blackboard (Cont.) “…We realize that what one believes is not necessarily legally binding. As a result, EDUCAUSE engaged the services of a highly reputable, independent law firm to review the patent. The preliminary conclusion is that the patent was very broadly defined and was inappropriately approved by the U.S. Patent and Trademark Office. That is certainly the view of the higher education community, many of whom are contributing evidence of prior art….”

19. EDUCAUSE Letter to Blackboard (Cont.) “…The other core tenet is to promote innovation. The free exchange of ideas fosters innovation. The open sharing of ideas does not preclude commercialization or profiting from ideas. Innovation is critical to the higher education community and it is critical to corporations. Blackboard has espoused the importance of listening to customers as its source of innovation. This law suit will certainly have a chilling effect on the open sharing of ideas in our community….”

20. EDUCAUSE Letter to Blackboard (Cont.) “…We believe that Blackboard should disclaim the rights established under your recently-awarded patent, placing the patent in the public domain and withdrawing the claim of infringement against Desire2Learn. We believe this action would be in the best business interests of Blackboard and in the best interests of higher education. We do not make this request lightly or underestimate the courage it will take to implement. However, we believe it is the right action for your corporation and our community….”

21. The Key Questions • If somebody else had been issued Blackboard’s patent in 1996 instead of 2006, would any of the LMS’s on the market (or even the SUNY Learning Network) exist today? • What can/should universities do in response to the Blackboard patent? • What can we do to protect ourselves and our institutions in this changing legal climate?

22. What You Can Do (Short Term) • If you are a Blackboard customer, complain • Work with your professional and industry associations • Support the Digital Opportunity Investment Trust Act (http://www.digitalpromise.org/)