Patently Insane, Part 3: Anatomy of a Patent Troll and Some Conclusions

Today in Part 3 of my patent series, I’m going to tell you a story about a “patent troll”.

On July 26, 2006, Blackboard Inc. filed lawsuit against a small Canadian competitor, Desire2Learn, for infringing on its patent for “Internet-based education support and methods”. Patent number 6,988,138 had been granted to Blackboard Inc. in January of the same year; communities of educators were up in arms, claiming that Blackboard had no right to the patent.

Blackboard is a Washington, D.C.-based software company which produces a course and content management platform for educational institutions. Blackboard’s 2006 annual report claims over $183 million in revenue. Desire2Learn is a self-funded, organically grown company, so financial data couldn’t be obtained. Desire2Learn was a significantly smaller company than Blackboard back in 2006.

I believe that the Blackboard-Desire2Learn case illustrates the problems of software patents clearly. To review, these problems include the tendency toward vagary, the relationship between incremental progress and novelty as a requirement of patentability, and the problem of patenting the obvious. But, it also raises a new issue: whether a company can patent “innovations” if by innovation one means applying extant technologies to industries where they previously weren’t applied.

For example: Company X builds a server which distributes photos in some neat way. Company X’s patent will be for a “digital media” server, which allows Company X to sue companies who use similar methods to distribute, say, music or videos. Company X can do this even if it in only uses its server for photos. Vague software patents prevent the application of patent-protected methods in novel situations, like using Company X’s photo server to distribute movies.

It’s usually best to sit down and read the patent document, but that can be boring and soul-killing. Basically, the Blackboard patent grants the company exclusive rights to have distinct user roles (like “student”, “teaching assistant”, and “professor”), each with different levels of access to content, among 44 other claims.

Suffice it to say that Blackboard’s patent was sufficiently broad enough that no for-profit learning management systems emerged between 2006 and 2008, for fear of being sued into oblivion for patent infringement, no matter how unique or innovative their platforms might have been. Blackboard bought the majority of its biggest competitors, including WebCT and Angel Learning, thus securing a near monopoly on the proprietary course management market.

Blackboard effectively patented the learning management system. It then bought out its competitors. No anti-trust cases have been brought against the company.

It’s difficult to create a wholly novel, revolutionary piece of software. Rather, progress in software engineering tends to be incremental, if not cumulative. By this I mean that most new software builds upon previous software, even if it doesn’t include the functionality of previous works.

In patent-speak, previous work is called “prior art”. Daniel A. Tysver at BitLaw articulates the prior art problem very well:

The invention is compared to previous software programs (the prior art) and a determination is made whether the differences in the new program would have been obvious to an ordinary programmer.

It is the problem of finding software prior art that is the biggest limitation for software patents. For other types of inventions, patent examiners can review previously issued patents. However, since most software inventions were unpatented (based upon the incorrect assumption that software is not patentable), examiners who rely only on previous patents for prior art end up missing most of the preexisting software. Nevertheless, patent examiners still rely primarily on previous patents, and the result is that many software patents have been issued that are “bad patents”–meaning that they would not have been issued had the examiner been able to find all of the prior art.

In the case of Blackboard, there was an effort by educators to establish a body of prior art. A heavily-trafficked Wikipedia page sprung up. Moodle, an open-source alternative to Blackboard, also set up a wiki. These documents aggregated a history of learning management system and established that Blackboard’s patent heavily incorporated prior art.

“Patenting the obvious” is a real problem in the world of software. One of the requirements for patentability is that a “person having ordinary skill in the art” would not know how to solve the problem at which the invention is directed by using the same mechanism. Elements of the Blackboard patent were discounted as trivial or obvious. The ability to set viewing permissions based on a user’s “role” in a course is one such example. It simply applied aspects (like access to information) from the real world onto software. Nothing fancy there.

Now I have a scary question: What would’ve happened if Lycos patented the search bar? Chew on that.

In February, 2008, Blackboard Inc. won its suit against Desire2Learn. It received $3.3 million and the right to bar Desire2Learn from selling its learning management system in US markets.

In March, 2008, the US Patent Office issued a non-final action that rejected all 44 claims of Blackboard’s patent. Finally, in July 2009, the US Court of Appeals for the Federal Circuit ruled on the appeals that resulted from the trial against Desire2Learn, and confirmed that Blackboard’s patent claims were invalid. Blackboard no longer includes patent 6,988,138 on its online list of patents.

I conclude this case study with a question. What ought to be the role of patents on software, or patents on anything for that matter? If patents, as many politicians like to say, exist to further and support innovation, then I believe that they’ve failed the software development community. For entrepreneurs, who are in the business of applying new innovations to the world of commerce, software patents are detrimental. For consumers, they act as a kind of tax; companies like Google, Apple, and Microsoft spend terrifying quantities of money on building or acquiring patent portfolios and these costs are passed on to you, the consumer.

If software patents are to persist, serious policy changes must be considered. Whether it’s limiting the scope of patents (thus fixing the vagueness problem), or crowd-sourcing prior art or other solutions to the same problem (to test for obviousness), the USPTO has an opportunity to use the power of the internet, and its billions of users, to validate patents before a single minute of a professional patent clerk’s increasingly valuable time is wasted on rubbish. And please, for our sake, shorten the lifespan of all technology patents from 25 years to something more reflective of our fast-paced community.

As a college student, I cringe at the thought of Blackboard being the sole for-profit provider of learning management systems (because they have since obtained more patents, each a derivative of the invalidated one) for another 20-some years. It’s the sad, clunky, ineffectual things, like Blackboard’s LMS, that innovators are supposed to take society past.

And here comes my patently insane realization: the world of tech can be a scary and tumultuous place; patents, perversely, serve to hinder innovation; it’s easier for large corporations to acquire patents (they have money and lawyers). Technology patents do indeed serve a purpose: they provide stability. They entrench corporate positions and prevent the sudden meteoric rise of competitors. Because that would be scary, and if there’s one thing America’s brand of capitalism can’t tolerate, it’s being scared.

If God can’t forbid another Apple from rising up against another Microsoft or IBM, the USPTO sure will.

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If you missed parts 1 & 2 of Jason Rowley’s Patently Insane series, find them here: Part 1: An Introduction and Part 2: Fowl Play and How Writing and Coding are Similar