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The Blackboard Patent Pledge - Novell II?
Friday, February 02 2007 @ 12:18 PM EST

You probably noticed the press release about Blackboard's nonassertion patent pledge I just posted in News Picks. The press release announces a patent nonassertion pledge with respects to "Open Source Software" -- sorta:
In summary, the Blackboard Patent Pledge is a promise by the company to never assert its issued or pending course management system software patents against open source software or home-grown course management systems. The Blackboard Pledge is legally binding, irrevocable and worldwide in scope....

As part of the Pledge, Blackboard promises never to pursue patent actions against anyone using such systems including professors contributing to open source projects, open source initiatives, commercially developed open source add-on applications to proprietary products and vendors hosting and supporting open source applications. Blackboard is also extending its pledge to many specifically identified open source initiatives within the course management system space whether or not they may include proprietary elements within their applications, such as Sakai, Moodle, ATutor, Elgg and Bodington.

That seems to me to indicate that "proprietary elements within" Open Source applications and "commercially developed open source add-on applications to proprietary products" are covered by the pledge. But let's look at the pledge itself and see if it matches:

Blackboard hereby commits not to assert any of the U.S. patents listed below, as well as all counterparts of these patents issued in other countries, against the development, use or distribution of Open Source Software or Home-Grown Systems to the extent that such Open Source Software and Home-Grown Systems are not Bundled with proprietary software.

When have you crossed the line from permitted "proprietary elements" into verboten "bundled with proprietary software" territory? I find the language confusing.

Not to be a cynic, but the pledge shows up right after the Software Freedom Law Center successfully petitioned the USPTO to review all of Blackboard's patents.

There's an Open Letter to the Community from Blackboard too, addressing "the open source and home-grown course management community" and it says this:

This pledge symbolizes our continued commitment to that [leadership] role by agreeing not to assert U.S. Patent No. 6,988,138 and many other pending patent applications as well as their international counterparts against the development, use or distribution of open source software or home-grown course management systems anywhere in the world, to the extent that such systems are not bundled with proprietary software. This pledge also extends to the commercial support, hosting, customization and maintenance of such applications.

So those using home-grown or open source systems, professors and teachers contributing to open source projects, open source initiatives, commercially developed open source add-on applications to proprietary products and vendors hosting and supporting open source applications all are covered by this pledge. In addition, we have extended the pledge to many specifically named open source initiatives within the course and learning management system space whether or not they may include proprietary elements within their applications, including Sakai, Moodle, ATutor, Bodington and Elgg.

What is the definition of "add-on applications to proprietary products"? Where is the line where it becomes bundled with proprietary software? We have to get the language to agree, or at least Blackboard does, because it says this in the Open letter:

The text of the Pledge which incorporates by reference a list of frequently asked questions, as well as the announcement press release may be found on our website at www.blackboard.com/patent.

Here's Blackboard's FAQ, that explains what isn't covered by the pledge and what bundled means to Blackboard:

What does "Bundled" mean?
For purposes of this pledge, Open Source Software will be considered to be Bundled with proprietary software if any of the following are true:
1. the Open Source Software and proprietary software are licensed or provided via a single agreement;
2. the Open Source Software and proprietary software are sold together;
3. the Open Source Software and proprietary software are provided together via a media (e.g., on the same CD(s));
4. the proprietary software cannot operate without the Open Source Software; or
5. the Open Source Software and proprietary software can both be downloaded from the same location.

Can you give me a few examples of Bundled software?
If you license a product for a fee incorporating the Moodle Course Management System and other proprietary software, the Moodle application would be considered to be Bundled with the proprietary software.

If you sell proprietary software that will not operate without the Sakai Course Management System, the Sakai application would be considered to be Bundled with the proprietary software.

If you sell a CD to a user that has both proprietary software and an Open Source Software Course Management System on it, the Open Source Software Course Management System would be considered to be Bundled with the proprietary software.

How do you reconcile that language? Exactly what can you do? I honestly don't know, but by my reading, not much. But I'm not a programmer, so maybe someone can explain it.

There's another issue some are raising: Moodle is licensed under the GPL. Blackboard, then, appears to be attempting to place restrictions on GPL'd code by means of its nonassertion pledge, particularly as explained in the FAQ, which is incorporated by reference.

Wait a sec. Is there a pattern here?

First Novell's patent peace agreement, and now this, both touted with public fanfare as a wonderful thing for Open Source. And both impact on GPL code and restrict what you can safely do without threat of patent litigation, with the flip side of the coin fairly obviously floating in the air. I did mention that Microsoft partners with Blackboard, didn't I? And here comes Blackboard, talking about "home grown code" (which brought to my mind Microsoft's hobbyist language in its patent promise) and restricting what GPL code can do in the marketplace, under a threat of getting sued if it sets one foot outside the reservation. You can still write GPL'd code for fun, but you can't fully compete against proprietary software companies in the marketplace, unless you are willing to risk a lawsuit. And who benefits? Not the community.

Reactions have been at best mixed:

Greg Gay, project manager and originator of the ATutor project.... point outs that the pledge's bundling restrictions are contrary to the GNU General Public License (GPL). Section 4 of the GPL prohibits any sub-licensing that restricts its terms, while Section 6 specifically states, "You may not impose any further restrictions on the recipients' exercise of the rights granted herein." In other words, compliance with both the GPL and Blackboard's definition of bundling looks to be impossible....

Richard Fontana, a counsel at the SFLC, condemned the pledge has having "little legal meaning or substance." He suggests that "Blackboard could have acted responsibly by making a clear and unqualified commitment not to assert its patents against open source software. Instead, Blackboard has produced a convoluted document." In particular, Fontana dismissed the description of bundling given in the FAQ for the pledge as "an ill-defined concept that could potentially cover most circumstances in which open source e-learning software is used....We maintain that Blackboard's patent is invalid and that Blackboard has no right to obtain it," Fontana says, and all of those contacted by NewsForge echoed his comment, even though the patent is only indirectly related to the pledge they were discussing.

Blackboard already sued Desire2Learn, which tells us this about its position on open standards:

Desire2Learn is leading the industry in support of significant open specifications, standards and support for accessibility. We believe teaching and learning should be the priority, and technology should be invisible to the end user. To accomplish this goal, we strive to continually improve support for open standards and ensure the Desire2Learn platform is accessible to all.

Contrast that with the goals Blackboard and Microsoft announced when they first entered into a partnership in 2001, which I've shown you before in a different context:

In what the two companies call a "preferred relationship," Microsoft will promote Blackboard to its education customers and Blackboard will suggest that its clients use the Microsoft Windows operating system to run Blackboard on their servers to take advantage of special features available only to Microsoft users....

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.

Blackboard will also work more seamlessly with .NET, Microsoft's new technology for making all of its products interact using XML, or extensible markup language, a more powerful and flexible successor to HTML, the ubiquitous Web-coding language....

Microsoft and Blackboard formally agreed to cooperate last April. The decision was "almost a no-brainer" because Microsoft has financed and worked closely with Blackboard since Blackboard's creation in 1995, says Mr. Pittinsky, the company's chairman. The companies agreed that Blackboard will write all future versions of its software to operate best on servers running Microsoft's Windows operating system. Microsoft has given Blackboard $10-million in venture capital and has stationed Microsoft employees within Blackboard to help with product development...."Learning could take over from e-commerce as the number-one use of the Internet," says Mr. East, of Microsoft. That is enticing to Microsoft, says Mr. DeGroot of Directions on Microsoft. "What Microsoft wants is to own the educational-software market," he says.

Well. XML. Own the educational market. Hmm.

I think I get it: Microsoft customers get to ride in first class, and the rest of us can squeeze into coach, if we don't wish to use Microsoft products. All enforced by software patents. Oh, and commercial players in this field are being discouraged from using GPL software.

Software and patents need to get a divorce. And is anyone out there still thinking XML standards don't matter?

Update: A reader contributes another piece, from the Desire2Learn litigation: Desire2Learn's Response to Blackboard's Motion to Dismiss Desire2Learn's Counterclaim of Inequitable Conduct and to Strike Desire2Learn's Second Affirmative Defense [PDF].

Checking Pacer, I note that Desire2Learn asked for and was denied a stay until the patent reexamination could finish. Then Blackboard filed a motion to dismiss. Blackboard's Motion to Dismiss was denied. Here's the Order. And here's a snip from it:

Inequitable conduct occurs when a patentee breaches his or her duty to the U.S. Patent and Trademark Office (“PTO”) of candor, good faith, and honesty. See Bruno Independent Living Aids, Inc. v. Acorn Mobility Servs., Ltd, 394 F.3d 1348, 1351 (Fed. Cir. 2005). Inequitable conduct requires misrepresentation or omission of a material fact, together with an intent to deceive the PTO. Id. “[I]n the absence of a credible explanation, intent to deceive is generally inferred from the facts and circumstances surrounding a knowing failure to disclose material information.” Id. at 1354. At trial, both of these distinct elements must be shown by clear and convincing evidence, “and then weighed to determine whether the equities warrant a conclusion that inequitable conduct occurred.” Id. at 1351. (citations and quotations omitted).

Here, both parties agree that Rule 9(b) applies to D2L’s allegation of inequitable conduct. Blackboard argues that D2L failed to properly plead the “who” and “what” of its inequitable conduct claim. D2L states that it properly pled the individuals who owed a duty on behalf of Blackboard to disclose information to the PTO, and alleged the material prior art that was not disclosed.

D2L devotes 30 paragraphs and 5 pages to describing the defense of inequitable conduct. D2L alleges that Blackboard had a continuing duty to disclose all material prior art that Blackboard was aware of and that was not before the PTO. D2L specifically lists the names of the inventors (Robert Alcorn, Daniel Cane, Michael Chasen, Timothy Chi, Stephen Gilfus, Scott Perian, and Matthew Pittinsky), the prosecuting attorneys (Wayne Kennard, Wilmer Cutler Pickering, Marc Kaufman, and Anthony Barkume), and three other individuals (Matthew Small, Lisa Sotir, and Deborah Everhard) who allegedly owed this duty of disclosure to the PTO on behalf of Blackboard. D2L claims that Blackboard, including each of these individuals,2 breached this duty by failing to disclose material prior art to the PTO.

D2L has also alleged specific facts which, if true, support an inference of intent to deceive by Blackboard and its employees. D2L cites a letter by Chasen, a co-inventor and President and CEO of Blackboard, a speech given by Small, the General Counsel for Blackboard, and publications involving Chasen, Pittinsky, a co-inventor and Chairman of the Board of Blackboard, and Alcorn, a co-inventor, as evidence that Blackboard knew of the alleged material prior art during the prosecution of the ` 138 patent and failed to disclose it. Viewing the pleading in the light most favorable to D2L, the court concludes that D2L properly pled who breached the duty of candor to the PTO and alleged specific facts to support its claim for intentional misconduct.

Additionally, D2L describes two types of material prior art that allegedly were not disclosed to the PTO: (1) Prior Art of Acquired Entities, and (2) Prior Art relating to the Instructional Management System Project within the National Learning Infrastructure Initiative (the “IMS project”). Blackboard does not challenge the sufficiency of D2L’s pleading relating to the IMS project.

In regard to the failure to disclose prior art of acquired entities, D2L lists the alleged acquired entities involved, and states that the e-learning products developed, marketed and sold by these companies were material prior art that was not disclosed. At this stage, the court must accept these allegations as true. Given that D2L specifically lists the companies, describes the type of products developed, and argues that all of the e-learning products were material, the court finds the pleading meets the requirements of Rule 9(b). Blackboard will be able to challenge the merits of D2L’s inequitable conduct claim at a later stage in the proceedings. 3

IT IS THEREFORE ORDERED that Plaintiff’s Motion to Dismiss Desire2Learn’s Inequitable Conduct Counterclaim and to Strike Desire2Learn’s Second Affirmative Defense is DENIED.


2 In its response, D2L states that each of the alleged individuals were employed, or were2 retained, by Blackboard at the time of the prosecution of the ` 183 patent. Blackboard did not dispute this claim in its reply.

3 Because the court finds that D2L’s pleading is sufficient under Rule 9(b), the court doesnot reach the issue of whether Blackboard’s motion was timely filed.

Here's the scheduling order [PDF].


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