Sunday, March 30, 2008

Non-final re-exam Office Action rejects claims of BlackBoard's '138 patent

Darlene Darcy of the Washington Business Journal wrote of an Office Action in the re-exam of BlackBoard's patent: The U.S. Patent and Trademark Office issued a preliminary decision Tuesday that would invalidate Blackboard Inc.'s patent on its e-learning management systems. While more accurate than John Simpson's earlier inaccurate ramblings on the re-exam
of the WARF patents, IPBiz adds some text. Keep in mind that an Office Action does NOT have the effect of invalidating claims.

There were two re-exams filed on BlackBoard's US 6,988,138: 90/008,330 and 95/000,199. On 17 March 2008, there was a decision merging the inter partes and ex parte proceedings. On 25 March 2008, a non-final Office Action was mailed to McDermott, Will and Emery in Washington, DC. The patentee gets 2 months to respond, and the third party requestor has 30 days from the date of the patentee's response to respond.

The examiner essentially adopted requestor's issue 10, an obviousness rejection over TopClass, and accepted with modification
issues 1-6.

For those interested in KSR issues, the examiner cited first to the CAFC's In re Kahn, and then to KSR. Of Kahn: Rejections on obviousness cannot be sustained by mere conclusory statements. In re Kahn, 441 F.3d 977, 988 (CAFC 2006).
One recalls that the ill-fated re-examination effort of PubPat and FTCR (now re-named "Consumer Watchdog") on the WARF patents fell apart on the conclusory nature of statements by Loring and Trounson. The statements contained no articulated reasoning with rational underpinning. The examiner in the BlackBoard matter also cited KSR on the "combination of familiar elements." 127 S. Ct. at 1749. The examiner cited LeapFrog on old idea with new technology, tho that was of course the
point of KSR itself. [See LeapFrog, 485 F.3d 1157, 1162]

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