You may recall that Blackboard purchased a patent in what appeared to be a fruitless attempt to countersue TechRadium, the company that sued them for patent infringement over their emergency warning system and that now is suing Twitter. It turns out that the purchase was not quite fruitless after all, because Blackboard used it to get some sort of cross-licensing agreement with TechRadium (with undisclosed terms) in return for TechRadium dropping the suit.
Well, that apparently freed up some bandwidth on Blackboard’s legal team, and you know what they say about idle hands. Blackboard is now pre-emptively suing the individuals from whom they purchased the patent. Washington Business Journal has the scoop:
Critics say Blackboard bought the technology just to defeat a patent infringement claim from a third-party competitor and now wants to skip out on payment because that claim has been settled.
Here is the back story: In May 2008, a Texas company, TechRadium Inc., sued Blackboard, alleging that Blackboard was selling products that infringed on TechRadium’s patent on an alert-notification technology. (TechRadium also sued Twitter Inc. last month for infringing on the same patent.)
Seven months later, in December, Blackboard bought a patent on technology similar to TechRadium’s from two people unrelated to TechRadium, Steven Zimmers and Daniel Davis. Blackboard then used that patent as a basis to countersue TechRadium.
Stay with us here. This summer, Blackboard settled the TechRadium litigation, in part by agreeing to license the Zimmers/Davis patent to TechRadium.
After Blackboard had licensed the Zimmers/Davis patent to TechRadium, it started negotiating for a discount on the remaining payments that the D.C. company owed to Zimmers and David.
Apparently, the price was not right. Blackboard’s lawyer told Zimmers and Davis they could have their patent back. (Never mind that the patent is already encumbered by a license to TechRadium, which apparently has no obligation to pay Zimmers and Davis for it.) Blackboard is now asking a federal judge in D.C. to declare that Zimmers’ and Davis’ only recourse is to take the patent back from Blackboard.
Zimmers and Davis claim, in their response to Blackboard’s suit, that Blackboard has no right to walk away from its agreement to buy the patent. They say the company still owes $75,000 for the final payment.
Neither side would comment on the case, but a third-party source involved in related litigation calls Blackboard’s move “a big screw job on Zimmers.”
In less colorful language, Blackboard’s litigation tactics have been heavily criticized in the industry — the company has taken pre-emptive litigation strikes against at least five competitors.
Waitaminute. Five? Let’s see. There’s Desire2Learn, iParadigms (that’s TurnItIn), this Zimmers and Davis duo…. I think we’re missing a couple here. If anybody has information on Blackboard’s other pre-emptive suits, please let me know.