USPTO reject Blackboard patents

The US Patent and Trademark Office has reportedly issued a preliminary ruling rejecting Blackboard's patent on delivering courses via the Net. The Chronicle says:

"The U.S. Patent and Trademark Office has issued a preliminary decision that rejects all 44 claims Blackboard Inc. made regarding the controversial patent it was granted for an online-learning system. If upheld, the decision could have sweeping ramifications for Blackboard's competitors and universities that use course-management software."

The ruling itself is available at Desire2Learn who are pleased:

"On March 25, the U.S. Patent & Trademark Office issued its Non-Final Action on the re-examination of the Blackboard Patent. We are studying the document, found here, but in short, the PTO has rejected all 44 of Blackboard's claims. We caution that this is a NON-final action; both Blackboard and Desire2Learn will have an opportunity to comment before a final action will issue, and after that, the decision will be subject to appeals.

However, we're still pleased."

Blackboard have responded to the ruling and are not so pleased but suggest it doesn't change anything:

"Today, the United States Patent and Trademark Office issued a first Office Action in the reexamination proceeding regarding Blackboard’s U.S. Patent 6,988,138 ("the'138 Patent"). This Office Action was expected and is the first step in a reexamination process that often takes years to complete. It has no effect on the validity of the patent, the lawsuit between Blackboard and Desire2Learn or the pending injunction against Desire2Learn that will go into effect on May 10th, 2008, precluding ongoing sale or use of their Learning Environment products and services...

Blackboard will now have two months to respond to each of the Patent Office’s questions, all of which were unsuccessfully raised by Desire2Learn in the recent litigation.

With that in mind, and given that more than 90% of patents that undergo reexamination of this kind ultimately are upheld, we remain very confident in the validity of our patent and that the Patent Office will agree with the ruling in Federal Court last month. While the reexamination process moves forward, the issued patent will remain both valid and enforceable."

The USPTO's decision and the reactions were relatively predictable and Desite2Learn are right to urge caution, as are Blackboard to point out it is only one step in a long process. So it is a case of keep watching on this one I'm afraid. Ultimately, though, the patent is unlikely to withstand detailed, robust, prolonged and rational scrutiny. Unfortunately, in the meantime, the damaging adjective in that list is "prolonged".