"Because of time restraints (not to mention the uninteresting nature of the filings), we've not posted the underlying documents, but Blackboard a few months ago renewed its efforts to suspend the reexamination of their Patent at the PTO. Of course, we opposed it, and on November 17, the PTO denied Blackboard's efforts. (We will post the documents, but it may take some time – as for now, they're available on the Patent & Trademark Office website). Remember, this is the 2nd time Blackboard tried to suspend the re-examination --- yes this is in fact the exact same one that Blackboard previously claimed that it welcomed. (Update: on the May 30 posting, we included a link to Blackboard's website. That link is now a "page not found" on Blackboard's site, but you can still find it on Inmagic's site (thanks, Jim Farmer). Blackboard's document stated, in part: "[W]e remain very confident in the validity of our patent and that the Patent Office will agree . . ." Guess they changed their mind.)
A new development: Blackboard has taken its attempts to stop the reexam to another level. It has now sued the Patent and Trademark Office, asking the Court for a ruling that the PTO's refusal to suspend or terminate the reexam was improper. Blackboard filed its case in the U.S. District Court for the Eastern District of Virginia, where the PTO is located. The Complaint makes for an interesting read, and has at least one surprising omission: Blackboard somehow forgot to mention that on March 25, in a non-final action, the PTO rejected each of the 44 claims of the patent.Desire2Learn isn't a party to Blackboard's latest litigation, but we'll continue to monitor it and keep you posted."
The basic argument in the suit is that once the court decided someone had breached the patent, the Patent Office no longer have any legitimate right to re-examine it:
"Cause of Action
The Director's Decision Is Contrary to Law.
21. Blackboard incorporates by reference all preceding paragraphs as if set forth
22. The Decision constitutes a final agency action within the meaning of 5 U.S.C
23. The Texas district court entered final judgment against Desire2Leam on its
counterclaims of invalidity of claims 36, 37, and 38 of the '138 patent. The final judgment
constitutes a "final decision ... in a civil action arising in whole or in part under section 1338 of.
title 28" under 35 U.S.C. ~ 317(b). Consequently, the final judgment prevents the PTO from
maintaining an inter partes reexamination requested by Desire2Learn of those claims.
22. The holding of the Decision that inter partes reexamination of claims 36, 37, and
38 of the '138 patent may be maintained notwithstanding the final judgment entered by the
Texas district court is contrary to law and is arbitrary and capricious and an abuse of discretion
under 5 U.S.C. § 706(2)(a)."
The natural conclusion of such an position is that if you can manage to keep prior art secret long enough to get a court judgment, then it doesn't matter that the patent was originally invalid, it will still stand. I can't imagine that's a sustainable legal argument. Desire2Learn are also technically correct that the Blackboard court brief fails to mention the Patent Office's preliminary invalidation of the patent on the 25th of March 2008. Given that the judge in the patent trial didn't enter the 'final judgment' in the case until the 7th of May 2008, there may be technical room for manoeuvre for patent office lawyers, even if the dodgy premises of Blackboard case did have some basis in law. After all the patent was declared invalid before the final judgment.
Blackboard want the court to declare the patent re-examination unlawful, an order terminating the re-examination of the patent and banning the Patent Office from re-examining it, and a declaration that the court case that went in their favour is the 'final decision' in the matter.
"Blackboard requests the following relief:
a. An order holding unlawful and setting aside the Director's Decision;
b. An order enjoining the PTO from maintaining an inter partes reexamination of
claims 36, 37, and 38 requested by Desire2Leam and directing the Director to terminate the
pending inter partes reexamination of claims 36, 37, and 38;
c. A declaratory judgment that the final judgment of the Texas district court is a
"final decision" for purposes of 35 U.S.C. § 317(b); and
d. All other such relief as this Court may deem necessary and just."