BlackBoard tries to terminate re-exam of its patent
The Washington Business Journal notes that BlackBoard has filed suit in the ED Va against the USPTO (and Director Jon Dudas) to stop the inter partes re-examination of its patent:
The complaint Blackboard filed on Nov. 21, 2008 in the U.S. District Court for the Eastern District of Virginia argues that the PTO’s decision to continue its re-examination after the court decided the patent was not invalid and Desire2Learn had infringed was improper.
Apparently, BlackBoard didn't quite get things right on Nov. 21, and filed an amended complaint on Dec. 1:
In an amended complaint filed Dec. 1, Blackboard claims that the law says that after a court’s final decision has been made and no proof of a patent’s invalidity has been found, the PTO is “prohibited from maintaining an inter partes re-examination.”
Further, the complaint states, “This case turns on the meaning of ‘final decision’...” And Blackboard says that Director Dudas’s interpretation of “final decision” is wrong.
Of course, the Director himself can order a re-exam. Remember Eolas?
Remember all the discussion about "final decision" in Hatch-Waxman:
While the director, according to Blackboard’s complaint, says a decision is final only after all appeals are over, Blackboard argues that “a ‘final decision’ is a final judgment of a district court, regardless of any appeals.”
**BlackBoard won a jury verdict in ED Texas in Feb. 08 against Desire2Learn.
**Separately**
Patently-O has a post on an interesting strategy to defeat estoppel effects from inter partes re-exam:
PC Guardian presented three 1980's Macintosh portable computers as prior art. According to the defendant's argument, the physical computers when seen in combination with the references considered by the PTO rendered ACCO's patent obvious.
Because reexaminations are restricted to considering only patents and printed publications, the district court agreed that Section 315 does not estop PC Guardian from asserting the combinations during litigation.
The complaint Blackboard filed on Nov. 21, 2008 in the U.S. District Court for the Eastern District of Virginia argues that the PTO’s decision to continue its re-examination after the court decided the patent was not invalid and Desire2Learn had infringed was improper.
Apparently, BlackBoard didn't quite get things right on Nov. 21, and filed an amended complaint on Dec. 1:
In an amended complaint filed Dec. 1, Blackboard claims that the law says that after a court’s final decision has been made and no proof of a patent’s invalidity has been found, the PTO is “prohibited from maintaining an inter partes re-examination.”
Further, the complaint states, “This case turns on the meaning of ‘final decision’...” And Blackboard says that Director Dudas’s interpretation of “final decision” is wrong.
Of course, the Director himself can order a re-exam. Remember Eolas?
Remember all the discussion about "final decision" in Hatch-Waxman:
While the director, according to Blackboard’s complaint, says a decision is final only after all appeals are over, Blackboard argues that “a ‘final decision’ is a final judgment of a district court, regardless of any appeals.”
**BlackBoard won a jury verdict in ED Texas in Feb. 08 against Desire2Learn.
**Separately**
Patently-O has a post on an interesting strategy to defeat estoppel effects from inter partes re-exam:
PC Guardian presented three 1980's Macintosh portable computers as prior art. According to the defendant's argument, the physical computers when seen in combination with the references considered by the PTO rendered ACCO's patent obvious.
Because reexaminations are restricted to considering only patents and printed publications, the district court agreed that Section 315 does not estop PC Guardian from asserting the combinations during litigation.
posted by Lawrence B. Ebert at 9:12 AM
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