Blackboard, Inc. v. DESIRE2LEARN, Inc.

• Decision Date: 27 July 2009
• Docket Number: No. 2008-1548.,No. 2008-1368.,No. 2008-1396.,2008-1368.,2008-1396.,2008-1548.
• Citation: 574 F.3d 1371
• Parties: BLACKBOARD, INC., Plaintiff-Cross Appellant, v. DESIRE2LEARN INC., Defendant-Appellant. Blackboard, Inc., Plaintiff-Appellant, v. Desire2Learn Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

574 F.3d 1371

BLACKBOARD, INC., Plaintiff-Cross Appellant, v. DESIRE2LEARN INC., Defendant-Appellant.

Blackboard, Inc., Plaintiff-Appellant, v. Desire2Learn Inc., Defendant-Appellee.

No. 2008-1368.

No. 2008-1396.

No. 2008-1548.

United States Court of Appeals, Federal Circuit.

July 27, 2009.

Joel M. Freed and Michael S. Nadel, McDermott Will & Emery LLP, of Washington, DC, argued for plaintiff-cross appellant in appeal 2008-1368, -1396 and plaintiff-appellant in appeal 2008-1548. Of counsel in appeal 2008-1368, -1396 was Natalia V. Blinkova.

Harold C. Wegner, Foley & Lardner LLP, of Washington, DC, argued for defendant-appellant in appeal 2008-1368, -1396. On the brief were George E. Quillin; and Gregory S. Norrod, James D. Dasso, and Jonathan R. Spivey, of Chicago, IL.

George E. Quillin, Foley & Lardner LLP, of Washington, DC, argued for defendant-appellee in appeal 2008-1548. With him on the brief were Gregory S. Norrod, James D. Dasso, Jonathan R. Spivey, and Jason A. Keener, of Chicago, IL. Of counsel was Harold C. Wegner, of Chicago, IL.

Before BRYSON and MOORE, Circuit Judges, and CUDAHY, Senior Circuit Judge.^*

BRYSON, Circuit Judge.

Blackboard Inc. is the market leader in providing educational institutions with course management software that allows interaction between students and teachers over the Internet. Desire2Learn Inc. is Blackboard's primary commercial competitor. This appeal arises from an action by Blackboard against Desire2Learn for infringement of Blackboard's U.S. Patent No. 6,988,138 ("the '138 patent"), which claims an Internet-based educational support system and related methods.

The '138 patent is not the inventors' first work in the field of education-support software. In 1996, while they were college students, several of the same inventors developed a software product called CourseInfo 1.5, which allowed for online management of information relating to individual courses. In the CourseInfo system, each course had its own website, and students and instructors would log in to each course separately. In 1999, the inventors merged their company with Blackboard. Another prior art course management system, which was available by 1997, is the Serf system, developed by a professor at the University of Delaware. Like CourseInfo 1.5, the Serf system provided a way for students and teachers to interact through the Internet.

Upon issuance of the '138 patent, Blackboard filed an infringement action against Desire2Learn in the United States District Court for the Eastern District of Texas. After a Markman hearing, the district court entered partial summary judgment for Desire2Learn, holding claims 1-35 of the patent invalid for indefiniteness. The court then conducted a jury trial that addressed whether Desire2Learn had infringed claims 36-38 of the patent; Desire2Learn asserted by way of defense that those claims were anticipated and would have been obvious in light of prior art that predated the patent's priority date of 1999.

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.

At trial, Blackboard took the position that the method of claims 36-38 required that the user have the capacity to access multiple courses and multiple roles through a single login. Desire2Learn took the position that Blackboard's claims did not require such access through a single login, and that the claims were therefore invalid in light of the prior art. The jury found that claims 36-38 were neither anticipated nor obvious, and that Desire2Learn had infringed those claims.

Desire2Learn then filed motions for judgment as a matter of law ("JMOL"), contending that claims 36-38 were invalid for both anticipation and obviousness. The court denied the motions. In so doing, the court agreed with Blackboard that the asserted claims required that the recited method permit access to multiple courses and roles through a single login.

In appeal No. 2008-1368, Desire2Learn argues that claims 36-38 are invalid in light of the prior art and that its system does not infringe those claims. In appeal No. 2008-1396, Blackboard cross-appeals from the district court's ruling, on summary judgment, that claims 1-35 are indefinite. In a separate appeal, No. 2008-1548, Blackboard appeals from the district court's denial of an award of costs related to certain discovery expenses.

I

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. According to Blackboard, under the prior art systems "[a] person could not be a student in one course and a teacher in another using one user name and password," whereas the '138 patent enables a person "to access all his roles in all his courses at once. With a single login and password, a person could be a student in one course and a teacher in another during one interaction with the system."

Independent claim 36 provides:

An [sic] method for providing online education method [sic] for a community of users in a network based system comprising the steps of:

a. establishing that each user is capable of having redefined [sic: "predefined"] characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files;

b. establishing a course to be offered online, comprising

i. generating a set of course files for use with teaching a course;

ii. transferring the course files to a server computer for storage; and

iii. allowing access to and control of the course files according to the established roles for the users according to step (a);

c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and

d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course.

Claims 37 and 38 add further limitations that are not the principal focus of this appeal. Claim 37 provides:

The method of claim 36 wherein at least one of the course files comprises a course assignment, further comprising the steps of:

e) the student user creating a student file in response to the course assignment; and

f) the student user transferring the student file to the server computer.

Claim 38 provides:

The method of claim 37 further comprising the steps of:

g) the instructor user accessing the student file from the server computer;

h) the instructor user reviewing the student file to determine compliance with the course assignment; and

i) the instructor user assigning a grade to the student file as a function of the determination of compliance with the course assignment.

Blackboard makes several arguments in support of its contention that claims 36-38 require a person using the claimed method to be able to access multiple roles in multiple courses using a single login. First, Blackboard argues that the definition of the term "user" requires that access to multiple roles in multiple courses be achievable through a single login. Blackboard's argument is that the term "user" refers to an electronic user account, and that a user account is defined by a single user name and password combination; accordingly, for a "user" to be capable of "having predefined characteristics indicative of multiple predetermined roles in the system" requires that the method allow access to multiple courses and roles through a single login.

In support of its definitional argument, Blackboard points out that the specification sometimes uses the word "user" in a manner that appears to refer to the electronic representation of a person in the system. The references to which Blackboard alludes employ a kind of shorthand, such as "Create User" and "Manage User," to describe the creation and manipulation of user entries and accounts, not the creation and manipulation of "users" themselves. For example, the "Create User" web page "allows creation of a user entry by entering personal information" and the "Manage User" web page "allows listing, modification, and/or removal of users" once "a user is created." '138 patent, col. 27, ll. 14-26.

Aside from those shorthand references, the specification repeatedly employs the term "user" in its ordinary sense to refer to an individual who uses the system. For example, the specification states: "Users (who may have one or several roles such as a student, instructor, teaching assistant (TA), or administrator) access and interact with education support system 100 via web browser 120." '138 patent, col. 7, ll. 58-61. See also, e.g., id., col. 3, ll. 26-28 (claimed system and methods "allow users to interact with a computer network-based education support system through means of a simplified, easy-to-use user interface"); id., col. 3, ll. 43-46 (claimed system "allows multiple types of users to access the features of the system as a function of their predefined role within the framework of the system (e.g., student,...