Blackboard has posted their response to the USPTO ruling. They make some claims about how this will impact the trial, which I'm not in a position to evaluate just yet. They mention that all of the claims in the re-examination request "were unsuccessfully raised by Desire2Learn during recent litigation," which is irrelevant since these are different forums operating under different rules with different burdens of proof. But what really gave me pause was their statistic. They claimed that "more than 90% of patents that undergo reexamination of this kind ultimately are upheld." That didn't seem consistent with the statistics that I remembered. Where did that number come from?
Funny story, that...
First, let's review the basics. Desire2Learn filed what's known as an inter partes challenge with the USPTO. The Software Freedom Law Center filed an ex parte challenge on behalf of the Sakai, Moodle, and ATutor communities. If you want a refresher on what the differences are between these two types of challenges, you can go back and look at my post on the subject. But it really doesn't matter for our present purposes. All you need to know is that these two different types of challenges were filed. The USPTO recently merged them into one challenge that largely follows the inter partes rules but allows the SFLC to comment in much the way that they would in an ex parte filing.
OK, so what are the statistics for ex parte and inter partes filings? (I'll be using USPTO statistics through June 2007 here as quoted by Morrison and Foerster.)
- 90% of patents in ex parte challenges survive with at least some of their claims intact.
Ah, there it is! But hold on...
- 64% of patents have some claims changed or invalidated, and
- another 10% get completely invalidated, meaning that
- 74% of patents in ex parte challenges get partly or completely invalidated.
But waitaminute. This is a hybrid challenge with both ex parte and inter partes aspects (though it's more like the latter than the former). So what are the statistics for inter partes? Well, inter partes is actually a relatively new type of challenge, so we don't have much data on their success yet. Only 8 have been followed to completion as of June 2007. However,
- 7 out of 8 patents in inter partes challenges were completely invalidated.
So. Blackboard's statistic is correct if you define "upheld" as "survived with at least one claim partly intact" and if you pretend that it is a purely ex parte challenge.
In my post header, I said that Blackboard failed statistics. But given the old saying about "three kinds of lies," maybe they get an A+.