In Brief: Blackboard v. Desire2Learn

2008-1368 Blackboard v. Desire2Learn
ED/TX 9:06-CV-155
Judge Ron Clark

Cross-appeals involving Blackboard's 6,988,138 patent. The jury found Desire2Learn infringed claims 36-38, also finding those claims valid.  The court found claims 1-35 invalid for indefiniteness.  The '138 is also currently in reexams, with the PTO having preliminarily rejected claims 1-44.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 201.  When it becomes available, an mp3 of the oral argument should be here.

Summary of the Argument from Desire2Learn.  George E. Quillin, Foley & Lardner (Washington, DC); Gregory S. Norrod, Jonathan R. Spivey, Jason J. Keener, Foley & Lardner (Chicago) on brief.

     

The asserted claims, properly construed, are invalid as anticipated by the prior art. The district court erred in construing the term “user” by importing unnecessary limitations into its construction and narrowing the scope of claim 36. As used in the '138 Patent, “user” refers to a physical person that interacts with the system. The district court's construction includes super-fluous language that adds a “single login” limitation, albeit ambiguously. The flaw in the construction was highlighted when the jury asked the court whether the construction meant a “single-login.” After trial, the court reversed its interpretation of its own construction and concluded that under its construction a user accesses all roles using a “single-login.” Properly construed, the asserted claims are anticipated by the prior art references. In fact, the testimony of named inventors establish that CourseInfo discloses every limitation of the claims. Blackboard's only argument asserted at trial against antici-pation by both the CourseInfo and Serf references was that they fail to teach the “single-login” feature. Even under the district court's claim construction the asserted claims are invalid as obvious in view of the prior art. As con-ceded by Blackboard, each and every limitation of the asserted claims, other than a “single-login,” is disclosed by the prior art CMS references. However, accessing multiple roles using a single-login, known as role based access control “RBAC,” was well-known in the art. Moreover, the notion of combining a CMS with RBAC was also known. This Court should reverse the judgment on invalidity and direct the district court to enter a judgment invalidating the asserted claims. At a minimum, a new trial should be ordered on the issue of invalidity. There was no infringement of the asserted claims. Blackboard failed to present evidence of even a single instance of the claimed method being performed in the United States by a single entity. Desire2Learn, a company located in Canada, per-forms step (a) of claim 36 when it installs its clients' systems from its facilities in Canada, precluding infringement. Further, for clients that are hosted by Desire2Leam, the entire system used to perform the method is located on Desire2Learn's equip-ment located in Canada. Moreover, the claim language itself demonstrates that no single entity can perform all the steps of any claim. There cannot be indirect infringement in the absence of a direct infringer. This Court should reverse the judgment on infringement and direct the district court to enter judgment on noninfringement.

Summary of the Argument from Blackboard.  : Christopher D. Bright, McDermott Will & Emery LLP (Irvine, CA); Joel M. Freed, Michael S. Nadel, McDermott Will & Emery (Washington, D.C.) on brief.

     

Response to Desire2Learn's Appeal The district court's construction of “user”- “a person who interacts with the system, and who accesses the system by logging on with a username and password, and then keys in information” (A006575)-properly reflects the context of the other claim language. Claim 36 is directed to the use of a system in which “each user” is “capable” of being “multiply assigned” roles in the system, as construed by the district court without challenge by Desire2Learn. Id. Each person using the system is thus able to access all his courses and all his roles at once, such that he can be a student in one course and a teacher in another course by logging in with one user name and password. The district court's construction is in accord with the position that Desire2Learn initially took during claim construc-tion. Desire2Learn unambiguously told the district court that independent claim 36 requires the use of a system in which, for example, a user “can be assigned a teacher role for Biology 101 and a student role for English 405 all under one user account.” (A016279). Desire2Learn has now reversed itself, but its earlier position was correct. Use of a system in which multiple logins were necessary to access different roles would not satisfy the claim's require-ment that “each user” is “capable” of being “multiply assigned” roles in one interaction with the system. (A006575). The district courts construction of “user” is supported by the claim language, the specification, and the prosecution history. Desire2Learn's misplaced effort to employ claim differentiation doctrine-contrasting the language of claim 36 with claims that are neither redundant nor superfluous and which depend on a different independent claim-cannot overcome the intrinsic evidence that supports the district court's construction. Ultimately, however, it does not matter whether the correct construction of “user” is the district court's construction or Desire2Learn's proposal, namely “a physical person that interacts with the system.” Even under Desire2Learn's proposal, there is no anticipation. Pursuant to the district court's unchallenged construction of step (a) of claim 36 (A006575), the claim still requires the use of what Desire2Learn dubbed during claim construction a “Multiple Role” system-a system in which a person, during an interaction with the system, can have multiply assigned roles across courses at once. (A016279-81). The inventors' own prior art, CourseInfo 1.5, did not allow that, and neither did Serf. Rather, CourseInfo 1.5 and Serf embodied the problem that the inventors set out to solve, which was that someone interacting with the systems could only have one role during that interaction. The district court properly denied Desire2Learn's JMOL motion on obviousness. (A007224-26, reprinted in the Ad-dendum). Desire2Learn failed to carry its burden. Its witnesses simply were not credible. The district court con-cluded: “Not to put too fine a point on it, a jury would have been fully justified in discounting Desire2Learn's expert testimony on invalidity. Desire2Learn's factual witnesses did not fare much better.” (A007226). Given this credibil-ity determination, which this Court will not disturb, the district court could not have granted JMOL to Desire2Learn. The district court's decision on obviousness is further supported by the failure of the record to establish that, either alone or in combination, the prior art at issue disclosed all of the elements of claims 36, 37, and 38, as construed by the district court. Desire2Learn's contrary assertions are based on supposed testimony that was never given, a self-serving analysis of documentary material that it never presented to the jury, and a combination of prior art that it never mentioned in its Rule 50(b) JMOL motion and relies on for the first time on appeal. Additionally, Blackboard presented substantial evidence of objective indicia of non-obviousness. As the district court found, “Desire2Learn did little to rebut Blackboard's evidence of secondary considerations, partly because its expert did not know what those were.” (A007226). In any event, Desire2Learn has waived its argument regarding obviousness, because its Rule 50(a) motion for JMOL on obviousness consisted solely of: “We would make a motion for judgment as a matter of law on... obviousness, as well, Your Honor.” (A006328). Desire2Learn did not identify any factual or legal arguments in support of its mo-tion, as required by Rule 50(a). It did not even identify the prior art or combinations of prior art on which its motion was predicated. This failure to properly move under Rule 50(a) waived the obviousness issue for purposes of a Rule 50(b) motion and, therefore, for appeal. The district court also properly denied Desire2Learn's motion for JMOL on non-infringement. (A007223-24). Blackboard presented substantial evidence that Desire2Learn directly infringed claims 36, 37, and 38 by performing all the steps in the United States. In some instances, Desire2Learn employees traveled to the United States to per-form the steps of the claims. Blackboard also presented substantial evidence that Desire2Learn indirectly infringed claims 36, 37, and 38 by actively inducing and contributing to its U.S. customers' performance of all the steps in the United States. Desire2Learn argues that the evidence at trial showed that step (a) of claim 36 is performed only by Desire2Learn and only in Canada. But the evidence at trial showed otherwise on both points. Desire2Learn's non-infringement position on appeal, as below, relies on Desire2Learn's own “self-serving testimony.” (A007224). But Desire2Learn is not entitled to ignore the substantial contrary evidence presented by Blackboard, which was sufficient to support the jury's findings of direct and indirect infringement. Indeed, the law requires that such evidence be credited and that all inferences be drawn in favor of the jury's verdict JMOL was particularly inappropriate given the district court's recognition that Desire2Learn's witnesses on non-infringement lacked credibility. Blackboard's witnesses were “more trustworthy” that those of Desire2Learn. Id. Blackboard's Cross Appeal The district court erred in holding that claims 1-35 are invalid as indefinite. The patent discloses corresponding structure for the term “means for assigning a level of access to and control of each data file based on a user of the system's predetermined role in a course” in claim 1, as required by 35 U.S.C. § 112 ¶ 6. The corresponding structure is “an access control manager (e.g., 152 in Fig. 1) and equivalents thereof.” The district court misread the specification, which does, in fact, disclose such structure to an artisan of ordinary skill. The specification explicitly discloses that, in response to a request to protect system resources such as course data files, an access control manager creates an access control list which associates a user's role with the access and control level for the data file. Patent 8:6-20, 9:3745.

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