[ICPL 2008] Software Patents for Higher Ed – Bruce Wieder


Bruce is an attorney at DowLohnes.

Copyrights are intended to protect the expression of an idea, while patents are meant to protect the idea itself.

Patent covers process, machine, manufature, or composition of matter. What you invent has to be new, useful, and nonobvious.

Supreme Court said “phenomena of nature…mental processes, and abstract intellectual concepts are not patentable”

In 1998 and 1999 the Federal Circuit ruled that business processes are patentable.

Typically patent examiners look at previously issued patents to establish prior art – but if new things are patentable, there won’t be previous patents.

In September, the court ruled (Nuijten) that a signal was not a process or machine – court said that articles of manufacture are “tangible articles or commodities. A transient eletrical or electircal transmission does not fit within that definition.” Appeal to Supreme Court is pending.

In re Comiskey the court rule that patent “does not allow patents on … systems that depend for thei r operation on human intelligence alone…”

Blackboard patent was issued in 2006. Claim 36 of that patent claim has the relevant issues. Blackboard sued Desire2Learn for infringement. In general, it’s easier to prove infringement than invalidity. In Feb 2008 the jury in Lufkin Texas found that claims 36-38 had not been proven invalid and had been proven infringed. Both parties are appealing. Desire2Learn says it migrated all users to a new version that doesn’t infringe (a “design-around”). Blackboard asked to have Desire2Learn in contempt, which the court denied (which is not the same as a finding of no infringement).

Meanwhile, the Software Freedom Law Center and Desire2Learn filed requests for reexamination of the patent claims. The PTO ordered reexamination. With reexamination there is no assumption of validity. On March 25 the PTO rejected all of the claims, and blackboard filed its response in May, adding new claims. BB petitioned the PTO to suspend reexamination pending final decision from the COurt of Appeals on the suit,, which the Software Freedom Law Center and Desire2Learn opposed – hasn’t been ruled on yet.

Looking at at least a year before we get a ruling on the suit, and two years before we get a ruling on the reexamination.

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