Federal Circuit Holds Blackboard Patent Claims Invalid for Indefiniteness and Failure to Disclose Sufficient Structure
By Dmitriy Tishyevich – Edited by Amanda Rice
Blackboard, Inc. v. Desire2Learn, Inc., No. 2008-1368, -1396 (Fed. Cir. July 27, 2009)
On July 27, 2009, the Court of Appeals for the Federal Circuit affirmed the United States District Court for the Eastern District of Texas’s partial summary judgment, holding that claims 1 through 35 of the patent were invalid for indefiniteness. However, the court reversed the jury’s finding that Desire2Learn had infringed claims 36 through 38, holding that, under proper construction, these claims were anticipated and rendered obvious by prior art.
Patent law blogs PatentlyO and The Patent Prospector summarize the opinion. Inside Higher Ed provides commentary about the decision. Sakai Blog speculates about Blackboard’s motives and the future of Blackboard’s numerous patent disputes.
Blackboard and Desire2Learn are the primary competitors in providing educational institutions with course management software that allows online interaction between students and teachers. After receiving a patent for its Internet-based educational support systems and related methods, Blackboard filed an infringement action against Desire2Learn’s competing software.
After holding a pre-trial claim construction hearing, the district court entered partial summary judgment for Desire2Learn, holding that claims 1 through 35 of the patent were invalid for indefiniteness. The court then conducted a jury trial on the alleged infringement of claims 36 through 38. At trial, Blackboard took the position that claims 36 through 38 required that the software user have the capacity to access multiple courses and multiple roles through a single login ¾ for example, a graduate student who was a student in one class and a teacher of another class could use a single login to obtain varying degrees of access to each course. Desire2Learn argued that the claims did not require this single login access, and that the claims were thus invalid in light of prior art. The jury found that claims 36 through 38 were neither anticipated nor obvious, and that Desire2Learn had infringed those claims. The district court denied Desire2Learn’s subsequent motion for judgment as a matter of law, agreeing with Blackboard that claims 36 through 38 required single login access.
On appeal, the Federal Circuit held that claims 36 through 38 do not contain a single login limitation. It rejected Blackboard’s claim that the definition of the word “user” requires that access to multiple roles in multiple courses be achievable through a single login, noting that the claim specification repeatedly employed the term “user” in its ordinary sense to refer to an individual who uses the system, rather than an electronic representation of that person. The court also noted that the limitation argued for by Blackboard is not inherently contained in the language of the claim specification, as other subsequent claims explicitly outline the requirements that the user enter a login sequence to obtain access to course files and that, after a single login, the user be provided with access to all of the courses with which that user is associated. A contrary interpretation, the court reasoned, would render the subsequent dependent claims superfluous. The court also interpreted the permissive language of the specification ¾ such that a user “may” be required to enter a login sequence to be provided with access to all courses he is associated with ¾ to further show that the “single login” was only an optional feature of the software. It dismissed Blackboard’s argument that the prosecution history of the patent indicated that the claims contained a single login limitation, concluding that the patent examiner’s statements referred to enabling users to have multiple roles rather than a single one, that they did not refer to the ability to access these multiple roles after a single login, and that the remarks did not even address the single login issue.
At trial, Blackboard’s trial expert had identified the “single login” as the only difference between the system and methods of the Blackboard patent and the prior art systems. Having determined that claims 36 through 38 did not contain a single login limitation, the Court of Appeals went on to hold that without it, the claims were invalid for anticipation as a matter of law by prior art such as CourseInfo 1.5 and Serf, earlier online educational support systems.
The court affirmed the district court’s ruling that claims 1 through 35 were invalid for indefiniteness. The district court held that claim 1, which included a broad means-plus-function clause for assigning a level of access and control through an Access Control Manager, had insufficient structure to support the limitation. Because claims 2 through 35 were dependent on claim, 1, the district court concluded that those clams were likewise invalid. The Court of Appeals noted that the specification did not provide a description of the structure, but rather contained only an abstraction that described the function of controlling access to course materials, which itself was performed by some undefined and undisclosed component of the system. The court said that such a general reference is insufficient, and that a means-plus-function claim must be supported by specific disclosures and an explanation of how the claimed function is performed. The court rejected Blackboard’s argument that a specific description of how the function is performed is unnecessary because a person skilled in the art could readily fashion a computer-based means for performing the function, noting that the argument confused the definiteness requirement with the enablement requirement.