Appeared in the Toronto Star on August 14, 2006 as Shades of Another Battle of Waterloo

Appeared in the BBC on August 14, 2006 as Patent Battle over Teaching Tools

 

A Waterloo, Ontario company spends years developing new technologies that leverage the power of the Internet.  It develops a global following.  Then, seemingly out of the blue, it is hit with a patent infringement suit by a U.S. company, instantly facing the prospect of years of costly litigation in U.S. courts.  With limited resources, it must defend itself by arguing that the patents are invalid.

This tale sounds like the well-known patent battle experienced by Research in Motion, the company behind the popular Blackberry device.  In a case of legal déjà vu, however, it now also describes the likely road ahead for Desire2Learn, a Waterloo-based company specializing in online education tools known as learning management systems (these systems are also referred to as Course Management Systems or Virtual Learning Environments).

Blackboard, a U.S.-based LMS company that recently merged with Canadian-based WebCT to become the largest company in the market, took the academic community by surprise late last month when it announced that it had been granted a broad patent in the United States covering 44 claims related to learning management systems.  It added that it expects similar patents to be granted in nearly a dozen countries around the world including Canada, Australia, and the European Union.

On the same day that it publicly disclosed its patent, Blackboard initiated a patent infringement suit in a Texas court against Desire2Learn.

Both the patent and the lawsuit have generated enormous anger within the academic and open source software communities.  For universities and colleges, learning management systems are an essential part of the education experience as they provide access to group discussion lists, interactive teaching lessons, and collaborative online work spaces that take the learning experience outside the traditional classroom.

Many educators have been working on these technologies for years, so the claim that one single company now holds exclusive patent rights on widely known applications that have been implemented into hundreds of learning systems worldwide came as a shock (Blackboard claims that the patents only cover narrow company-created innovations). 

Shock quickly gave way to fear, since the community worried that Blackboard would leverage the patent to force competitors into expensive licensing agreements, thereby increasing costs and reducing innovation. 

Moreover, educators have expressed concern that the patent will create confusion within the academic community, leading some institutions to drop better LMS alternatives due to the legal uncertainties.  Educators in the developing world are particularly uneasy, given that many rely on distance education and the delivery of electronic course materials as a primary, more cost-effective method of education.

The open source software community has also reacted with alarm, since there are several ongoing open-source LMS projects that have gained increasing popularity in recent months.  These projects, which include Moodle and Sakai, are freely available and therefore represent a significant competitive threat to the proprietary LMS vendors such as Blackboard and Desire2Learn. Noting that Desire2Learn was the first legal target, open source developers have wondered aloud whether they might be next.

Interestingly, open source and Internet tools are emerging as the first line of defence against the Blackboard patent and lawsuit.  Angry educators have launched an online petition calling on Blackboard to drop the lawsuit and to agree to forego any future patent suits.

Several online collaborative work spaces known as wikis have also sprung up to pool knowledge about the history of online learning environments.  That information could prove crucial in defending the case, since evidence that the patent is not original (known as prior art) can be used to counter its validity.

The No Education Patents wiki (noedupatents.org) is of particular interest since it provides a plain-language explanation of all 44 claims contained in the Blackboard patent and it invites the community to submit specific examples of prior art.  The wiki is revealing as it illustrates how beneath the complexity of the language used in patents, many of the claims relate to simple functionality such as online chat rooms and exam submissions.

The patent system is designed to foster innovation by providing patent holders with exclusive rights over their inventions for a limited time.  However, the Blackboard patent and Desire2Learn lawsuit is the latest example of how a system that easily grants over-broad patents can be used to impede innovation and limit marketplace competition.  It is a tale that the technology community in Waterloo knows all too well.

Michael Geist holds the Canada Research Chair in Internet and E-commerce Law at the University of Ottawa, Faculty of Law.  He can reached at mgeist@uottawa.ca or online at www.michaelgeist.ca.