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July 27, 2009


Was it pitiable prosecution and excrescent examination, or just deviously scrappy litigation? Blackboard's 6,988,138, claiming an Internet education system, got erased by Desire2Learn on appeal. Indefiniteness for lacking a backing structure for a means-plus-function limitation, and a devious claim construction gone awry, left Blackboard with a failed assertion.

Blackboard v. Desire2Learn (CAFC 2008-1548) precedential

Blackboard and Desire2Learn are direct competitors in the online education space.

At the district court, claims 1-35 were held invalid for indefiniteness. Desire2Learn was found infringing claims 36-38.

A cunning claim construction argued by Blackboard was that a 'user' was an account login, not a person. Whether a 'user' was a person or an account was dispositive to claims 36-38 being valid in light of prior art.

An important issue at trial was whether the asserted claims of the '138 patent required that a person using the claimed method be able to use a "single login" to access multiple courses and multiple roles in those courses. Blackboard touted its method as allowing a person to use a single login to obtain access to all the courses of interest to that person and to obtain different levels of access to the course materials depending on that person's role in each course. For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student's role in each.

Desire2Learn argues that two prior art references anticipate claims 36-38 as a matter of law. That argument turns on whether those claims contain a "single login" limitation. Blackboard asserts that the "single login" feature is the '138 patent's essential improvement over the prior art and is a part of every claim of the patent.

Blackboard pointed to the spec as referring "to the electronic representation of a person in the system." The CAFC panel saw through that.

[T]the specification repeatedly employs the term "user" in its ordinary sense to refer to an individual who uses the system... Thus, the specification makes clear that the word "user" refers to a flesh-and-blood person and not an electronic representation of that person. In addition, the word "user" as employed in the claims is inconsistent with Blackboard's interpretation of "user" as referring to a "user account." For example, claim 1 refers to a "community of users," "user computers," and a "user of the system." Id., col. 30, ll. 19-22. Those uses clearly refer to a person rather than to an account. The use of the term "user" in claims 36-38 therefore does not establish that a single electronic account must be capable of providing access to multiple roles and courses through a single login.

Blackboard pointed to claim language in 36 as requiring a single login. The CAFC pointed out that claim 1 had the same language, and that claim 1 had a dependent claim (25) explicitly requiring single login. Why have a dependent redundantly claim?

Claim 24 adds to claim 1 the requirement that the user enter a login sequence in order to obtain access to course files, and claim 25 adds the further requirement that, after a single login, the user be provided with access to all of the course files and courses with which that user is associated. Yet the single login requirement is the very limitation that Blackboard asserts is inherently contained in the phrase "capable of having predefined characteristics indicative of multiple predetermined roles in the system" that appears in the claim from which claim 25 depends. Thus, claim 1 cannot be construed to afford access to all courses with a single login without making claim 25 redundant. That is powerful evidence that claim 36, which contains the same pertinent language as claim 1 ("capable of having predefined characteristics indicative of multiple predetermined roles in the system"), also does not require access to all courses with a single login. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ("[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim."); Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1319 (Fed. Cir. 2006) (independent claim ordinarily does not include explicit limitations of a dependent claim); Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (independent claim should not be construed in a manner that renders dependent claim superfluous).

Significantly, the specification states that a user "may be required to enter a login sequence into a user computer in order to be provided with access to course files associated with that user," and it adds that in such a case, the user "is then provided with access to all courses with which the user is associated after entry of the logon sequence." '138 patent, col. 4, ll. 52-56. That passage tracks the language of claims 24 and 25, and it is introduced by the phrase "may be required," which provides further support for Desire2Learn's argument that the "single login" capacity is an optional feature of the claimed invention, not a limitation inherently found in all the claims.

Given the proper claim construction, the CAFC agreed with Desire2Learn that two prior art systems anticipated Blackboard's claims.

Claims 1-35 went to a means-plus-function server computer claim, construed using § 112, ¶ 6.

Blackboard asserted that the structure that performs the recited "means for assigning" function is "a server computer with an access control manager and equivalents thereof." On appeal, Blackboard again argues that the structure that performs that recited function is the server computer's software feature known as the "access control manager" or "ACM." The entirety of the description of the access control manager in the specification is contained in a single paragraph, which reads as follows:

Access control manager 151 creates an access control list (ACL) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherence to an ACL. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information.

The district court found the disclosure of structure described in that paragraph to be inadequate to satisfy section 112, paragraph 6, as it failed to describe "how the levels themselves are assigned to the data files in the first place."

It is well settled that "if one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have "failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112," which renders the claim invalid for indefiniteness. Id.

[W]hat the patent calls the "access control manager" is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed.

The specification contains no description of the structure or the process that the access control manager uses to perform the "assigning" function. Nor has Blackboard ever suggested that the "access control manager" represents a particular structure defined other than as any structure that performs the recited function. In fact, before the district court, counsel for Blackboard defined the term "access control manager" in precisely those terms. He stated, "We suggest that the corresponding structure for [the function of assigning a level of access to and control of each data file] is the access control manager. That's not really a revolutionary thought. The access control manager manages access control." Counsel also stated of the access control manager that "the name of it pretty much describes what it does. It assigns a level of access to and control of a user's role in a course." Blackboard's expert made clear that he did not regard the term "access control manager" as limited even to software... In other words, the access control manager, according to Blackboard, is any computer-related device or program that performs the function of access control.

That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in "means-plus-function" form must disclose the particular structure that is used to perform the recited function. By failing to describe the means by which the access control manager will create an access control list, Blackboard has attempted to capture any possible means for achieving that end. Section 112, paragraph 6, is intended to prevent such pure functional claiming. Aristocrat, 521 F.3d at 1333. We thus agree with the district court that the '138 patent discloses insufficient structure to perform the function of "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."

'138 is past tense.

Blackboard's lead counsel was Joel Freed of McDermott Will & Emery, "a world-class team." Desire2Learn had Hal Wegner of Foley & Lardner in its counsel chair.

Posted by Patent Hawk at July 27, 2009 4:45 PM | Claim Construction