CALIopolis

Inside HigherEd has recently posted an article about the BlackBoard patent issue and in it BlackBoard's General Counsel Matthew Small opines...

"...Blackboard has no plans to challenge open source projects on patent issues, and he said that such challenges “wouldn’t make good business sense” for the company..."

That's great to hear, but it seems that BlackBoard is struggling to get people to believe them when they say this. There is a simple solution.

Put it in writing.

What I mean is that now that BlackBoard has the patent, they can license it to the Sakai Project or Martin Dougimas (aka "Mr. Moodle") or others. We know they have lawyers, so it should be a simple matter to draft up a license agreement that gives sufficient rights to Sakai and others so that they can stop worrying.

It would go a long way towards assuaging the communities fears.

I am delighted to post that CALI now has 201 US Law School Members.

This past week, the University of Virginia School of Law joined CALI and the recently launched, Drexel University College of Law also joined.

This brings the number of US Law School CALI Members to over 200 for the first time in our 26 years of existence and represents almost every law school in the US.

For a complete list of CALI's members and affiliates, click here.

I went in search of information that would help me understand how the BlackBoard v. Desire2Learn case might play out and want to share the results of my research with you.

It is important to point out that I am not a lawyer and that none of what I write or say should be interpreted as legal advice or the creation of a lawyer/client releationship.

I found an excellent article at The Minerals, Metals & Materials Society's website in JOM: The Member Journal of TMS written by A.B. Silverman at Eckert Seamans Cherin & Mellott, LLC. The title of the article is "I'll See You In Court" and it describes the general steps that take place in a patent infringement litigation. I highly recommend all of the articles written by Silverman. They are short and easy to understand and provide a great summary of the issues surrounding patent litigation.

Silverman writes...

"...Because patent litigation can be very time consuming, expensive, and uncertain as to the result, it is generally initiated only after a thorough evaluation of the case and reasonable efforts to resolve the matter amicably have failed..."

Emphasis mine.

As we already know, BlackBoard seems to have skipped this step. From the August 2, 2006 Chronicle of Higher Education article...

"... John Baker, president and chief executive of Desire2Learn, said it was unfortunate Blackboard had decided to go to court before trying to negotiate the dispute..."

Silverman then explains that once the suit is filed, it will usually include an injunction from the patentee (i.e. BlackBoard) to require the infringer (i.e. Desire2Learn) to stop the infringing activity. BlackBoard has done just that (here's the complaint in PDF from Desire2Learn's website)

Silverman tells us that the infringer can file a suit against the patentee to have the patent declared invalid. This is a likely strategy for Desire2Learn and will probably be the next step in the case. They have 20 days to respond to the 7/26/06 complaint filed by BlackBoard (that's this coming Tuesday, August 15).

Silverman goes on to explain what happens in the trial, but we are very far from that step.

The case will likely start out with a war of motions to limit claims and stipulate points of agreement (if any exist) between the two parties. This is expensive litigation for both sides.

The Burdick Law Firm has a article describing the costs of Discovery and Trial at $100,000 and $300,000 respectively with the caveat that discovery will be ...

"... typically much higher if large monetary value involved..."

...which seems to be the case here. Desire2Learn is a private company, so it's financials are not generally available, but I would assume that this patent threatens their core business and that this represents millions of dollars for them.

This is an incentive for Desire2Learn to settle the case before discovery gets too expensive and before the trial actually starts. BlackBoard's General Counsel, Matthew Small is quoted in the same Chronicle article...

"...We are seeking a reasonable royalty..."

I don't know whether Desire2Learn will settle, but that has to be the math they are doing right now. The cost of settling and paying a royalty to license the patent versus the cost of litigating the patent.

The ed-tech community would like to see the patent invalidated because it might threaten open source projects like Moodle, Sakai and others, but Desire2Learn doesn't have to serve this community. After all, they are competing with open source as much as BlackBoard.

Lawsuits can be expensive distractions for growing companies, but there is another angle for both BlackBoard and Desire2Learn to consider here and I covered it in my first post this topic.

The response from the ed-tech community has been to cast BlackBoard as the "black hat" (pun intended) in this dispute and so that naturally assumes that Desire2Learn can be the "white hat". I call this litigation as marketing. By championing this cause, Desire2Learn can gain goodwill from the community. This has to be part of the math they are doing regarding this case.

I have been following the reaction to the BlackBoard patent closely and I am struck by the fact that I can't find anyone defending BlackBoard's actions.

I have seen some people explain why they understand that patents are important and why they think BlackBoard feels compelled to patent their work, but I haven't seen a single instance of someone saying...

"...BlackBoard did the right thing by getting this patent and suing Desire2Learn..."

... except BlackBoard, of course.

Now, they're a big company and they don't need anyone to stick up for them, but when you own 80% of a marketplace and have over 3000 customers, you would think that someone would stand up and say something nice about you.

I did some Google searches for "defending BlackBoard" and such and most of the hits were along the line of "I'm not defending BlackBoard...".

This is very telling. Even SCO and Microsoft have their defenders, shills, syncophants and lobbyists.

Is BlackBoard's customer base that tepid?

I'm stunned.

Austin Groothuis works for CALI (as do I), but he is also a 2L at Chicago-Kent College of Law.

His blog has been attracting some positive attention (follow link and see the above graphic) and I realized that I was remiss in mot mentioning this myself after the appropriate disclosures.

The blog is loosely aimed at folks considering law school, but Austin can't help but write from his own experiences in law school. This is all to the good and he has been doing a great job of posting insightful and honest advice.

He has also put out an open call to any law students or pre-law students for any questions or advice that they want. Brave man.

Seriously, take him up on his offer. We have tons of contacts and the CALI staff has over 50 years of experience working in legal education ... or like the saying goes...

We're from CALI and we're here to help.

Back in 2000, I was reserching content management systems for a legal aid website project I was working on and did some pretty heavy digging into ArsDigita's ACS system. (that might be redundant as I believe the 'S' stands for system).

Anyhow, this system was developed by Phillip Greenspun of "Phil and Alex's Guide to Web Publishing" and was used at MIT for some of the courses that he taught. If you have not read this book, it is well worth the time. Even after all these years (published originally in 1998), it has great insights and is enjoyable reading for website developers. The link leads to the free online version of the book, but buy the full-color, paper version - it's full of beautiful photos taken by Greenspun.

I found a blurb from April of 1998 at the WayBack Machine on Archive.org that describes some functions of ACS and refers to version 1.4 (which would imply that it goes back further).

"...

example: participants in a class

If you have a bunch of people taking a high school or university course, the ACS can serve as the hub for distributing course materials, collecting questions, and fostering discussion. It has in fact been used this way at MIT, Harvard, and lots of schools that aren't in Cambridge!

Anyway, the lessons from our experience are that the ACS works as well as any other collaboration software for supporting folks in a class. Just be sure that they have a reason for using a Web service in the first place.

Architecturally you could set up everyone at a university in one big ACS. Then use the user-groups module to define various group types. The most important structures in a modern university are committees. So you'd have those sorts of groups to accrete administrators. Then you'd probably want to think about a group of type "course". Students and teachers in a particular course would be lumped together in a user group and could have a private discussion group...."

Emphasis mine.

Instead of "various group types" think "roles" which seemed to figure prominently in many of the claims in the BlackBoard patent.

I will get this into the Wikipedia History of VLE's later this week. That's where the community seems to be coalescing for a single location for this kind of stuff.

Phillip Greenspun blogs here. I'll bet he would make an excellent expert witness.

Need to get back into "law school mode"? Here are some podcasts that are up your alley.

Elmer pointed me to the NPR-sponsored website for Justice Talking where they post MP3s of shows that are law-related.

Recent programs posted include...

• Immigration Reform
  
• Collecting DNA from the Accused: Will it Help or Hurt Law Enforcement?
  
• The Roberts Court: What Can This Term Tell Us About the Future of the Court?
  
• Are Lawyers Necessary in all Cases?

... and others.

For you lawyers, you can get CLE credit for listening to the shows via a link on the site.

The Inquirer had a story today about Rambus' run-in with the Federal Trade Commission.

"...THE US FEDERAL TRADE COMMISSION (FTC) is to file an antitrust case against Rambus Inc, a company which licenses its intellectual property to others. The basis of the case, according to commissioners, is that Rambus allegedly persuaded the JEDEC standards group to take up technology that it was filing patents for without telling it..."

Emphasis mine.

What does this have to do with BlackBoard?

Probably nothing, but it made me think about the timing of BlackBoard's patent and the evaluation being done by the Department of Justice on the BlackBoard/WebCT merger.

From the patent, it looks like it was published on January 17, 2006.

From a press release on BlackBoard's website dated February 6, 2006 (three weeks later), they announced...

"...Blackboard Inc. (Nasdaq: BBBB), announced today that it has been given clearance by the U.S. Department of Justice to complete the merger of Blackboard and WebCT, Inc. The United States Department of Justice has terminated its review of Blackboard's proposed acquisition of WebCT, Inc. ..."

The merger between BlackBoard and WebCT deserved federal scrutiny because it was reported that it would result in a single company having up to 81% of the Course Management System market.

So my question is ... Did BlackBoard tell the DOJ about the patent that they got three weeks before the DOJ terminated its evaluation?

If not, then the story from the Inquirer which started this line of thought becomes rather relevant, I believe. The Feds don't like it when you forget to tell them something.

There is another aspect to this as well.

BlackBoard originally applied for their patent back in 1999, I assume the work they were doing before that went into the patent application.

On BlackBoard's website, under a description of the company's history, is this quote...

"...Blackboard was founded in 1997 with a vision to transform the Internet into a powerful environment for the education experience. Originally, the Company provided consulting services to the IMS Global Learning Consortium..."

Emphasis mine, again.

So, about the time they were consulting with IMS, they might also have been working on the software that they eventually came to patent.

Here's a description of IMS from their website...

"...IMS/GLC is a global, nonprofit, member organization that provides leadership in shaping and growing the learning industry through community development of standards, promotion of high impact innovation, and research into best practices.

... IMS includes more than 50 Contributing Members and affiliates..."

Emphasis mine, again.

According to the Inquirer story, Rambus was working with the JEDEC memory standard committees and applying for patents as the same time, but they never told the Federal Trade Commission about it.

BlackBoard was consulting with IMS, which "...provides leadership ... through community development of standards,..." at approximately the same time they were working on the software that they later patented.

Did they tell the DOJ?

I don't know.

The Inquirer has the PDF (no story yet) of the law suit filed by BlackBoard on July 26, 2006 (same day they got their patent) for patent infringement. So much for goodwill, it's going to be war and Desire2Learn is the front line.

This lawsuite has huge ramifications for the educational community - NOT just he ed-tech crowd either. On the front page of BlackBoard's website is this blurb...

"...The Blackboard Academic Suite™ enables institutions to embrace the full power of the Internet with access to any learning resource at any time from any place..."

They should probably add a qualifier now. How can you access the "full power of the Internet" if you are dealing with litigation fears and limitations of choice as a result?

This is just plain bad for everyone including BlackBoard and they really should re-think their strategy.