Blackboard's Response to the USPTO Office Action

In case you haven’t seen it yet, Blackboard has responded to the non-final invalidation of their patent by the USPTO. I’ve only had time to scan it quickly, but here are my preliminary observations.

First, Blackboard has added a bunch of new dependent claims, bringing the total up to 57. (There’s a Steve Martin joke in here somewhere.) It is within the rights of the patent holder to modify or add claims during a challenge under certain conditions (e.g., it can’t add new independent claims that would broaden the scope of the patent.) I haven’t looked at these new claims (and won’t look at them), but in general, patent holders can take advantage of the re-examination process to actually strengthen their patents. It would appear that Blackboard is attempting to do so here.

Second, one of Blackboard’s main arguments appears to be that none of the prior art submitted shows a system in which a person can log on once and simultaneously be a teacher in one class and a student in another with different access permissions in each case. If you have to log in separately to access each role, or if you can have multiple roles but these roles don’t affect your access privileges, then you don’t have prior art (they claim). I am not going to have time to go back through the prior art documentation in the D2L and SFLC re-exam appendices, but if you have the time and inclination to look, all documentation can be found here. In addition to the question of whether the prior art does or does not point to a system with these characteristics, there is also the question of whether the USPTO accepts Blackboard’s characterization of what the patent says in the first place.

Michael Feldstein is the founder of e-Literate who currently works as the Senior Program Manager for MindTap at Cengage Learning. For more information, see his profile page.

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