Software Patents for Higher Education ICPL August 12, 2008

The Wisconsin Experience Set Against a Little History

July 26, 2006 Blackboard files a patent infringement lawsuit against Desire2Learn (D2L) claiming that D2L was infringing its patents—all 44 claims of patent number 6,988,138. This is the opening day of the 2006 Desire2Learn annual users conference.

19 months later…February 22, 2008 A jury in the Eastern District of Texas handed down its verdict that Blackboard’s patents are valid and that Blackboard should be awarded damages of approximately $3 million from D2L. “There is no immediate threat to you our clients. We will work with you to ensure there are no future issues.” –John Baker

LISA-B D2L

March 10, 2008 Mar The Court issues a judgment and permanent injunction that prohibits D2L from using or selling version and earlier version in the US. Enforcement is stayed for 60 days, or until May 10, D2L announces it will release a redesigned product in the next few weeks that “leaves no doubt as to noninfringement.”

LISA-B General Counsel LISA-B General Counsel D2L EDUCAUSE LISA-B

BTW…March 25, 2008 The US Patent Office rejects all 44 claims associated with Blackboard’s patent (not a final ruling).

Back Home with Version 8.3 March 28 D2L announces official design- around March 31-April 4 Version 8.3 installed for testing April 11 Informed of need for new Holding Tank

April 24, 2008 Blackboard General Counsel calls D2L clients

April 25, 2008 LISA-B institutions send letters to Blackboard and D2L asking that the companies take immediate action to mitigate consequences for university customers. UW System General Counsel sends letter to D2L General Counsel asking for assurances from D2L.

May 6, 2008 The Judge granted an extension of the stay of the injunction through June 11. D2L was ordered to pay $194,769 into an escrow account for the benefit of Blackboard.

May UW System upgrades to version 8.3. UW System upgrades to version 8.3.

May 29, 2008

LISA-B General Counsel LISA-B General Counsel D2L LISA-B June 5, 2008

June 11, 2008 D2L wires $3,313, to Blackboard for full payment of the judgment.

June 19, 2008 Blackboard files Motion of Contempt claiming version 8.3 is in violation of the patent.

Almost 2 years from the beginning…July 21, 2008 The Court denies Blackboard’s Motion for Contempt. This is the opening day of the 2008 Desire2Learn annual users conference.