Open-source group seeks reversal of 'junk patent'

A legal centre is trying to overturn a patent it says threatens three open-source educational projects, a sign of the tension between patent holders and the collaborative programming community.

The Software Freedom Law Center said on Thursday that it has asked the US Patent Office to re-examine a patent awarded to education software company Blackboard. It claims that the patent is bogus and could undermine three open-source education software projects it represents: Sakai, Moodle and ATutor. The patent, number 6,988,138, is titled "Internet-based education support system and methods", and relates to a central feature of Blackboard's software: the ability to grant different people, such as students and teachers, different access rights to online resources such as grades, files or quizzes.

"It's a junk patent that should never have been given by the Patent Office," said Richard Fontana, a patent attorney with the Software Freedom Law Center. And the patent's claims could have an impact on the three projects, he said: "They do effectively cover just about any e-learning software that is currently in use."

Blackboard, which filed for the patent in 1999 and was awarded it in January this year, sees things differently. It sued a proprietary software rival, Desire2Learn, for infringement of the patent, but it isn't going after open-source projects or educational institutions, said Matthew Small, general counsel of the Washington, DC-based company.

"It's important to point out this is an isolated suit. It is not the first step in a multistep campaign... Our focus not is not on open source or universities. We want them to sleep easy at night," Small said. Blackboard uses and supports open-source software, he said.

The disagreement highlights growing tensions between the open-source movement, which shares software methods freely, and the proprietary realm, where patents and copyrights are used to keep control over software. Patents have proved to be a thorny issue in a recent partnership between Microsoft and Novell and in discussions over a new version of the General Public License. Meanwhile, open-source allies such as IBM and Nokia have made various pledges not to sue over patents used in Linux, the best-known open-source project.

Re-examination process
The US Patent Office has three months to decide whether to re-examine the patent, Fontana said. During that time, Blackboard may offer its opinion and the centre may rebut. If, at the end of that period, the agency chooses to re-examine it, the discussions will be held between just it and Blackboard.

Blackboard is confident the patent is valid, Small said. "We welcome another look at the patent. We believe a re-examination will only serve to strengthen our patent."

One issue that divides the two sides is the assessment of the patent's claims. The Software Freedom Law Center believes the claims "are extremely broad", Fontana said. "They're claiming [patent rights to] any kind of system in which there are different user roles and different file access depending on those roles." But role-based access rules is a decades-old technology in the computing industry, he said.

But the centre's assessment "is a gross overstatement of what is claimed in the patent", Small rebutted. The patent covers the specific situation in which a single user has multiple roles. "It used to be that if you were an individual in multiple courses — a student in some and a teacher in one — you would have a different logon, a different calendar, a different environment when you switched from one to [the] other," Small said.

Another difference of opinion is on what sorts of assurances Blackboard might provide to open-source projects.

The company said it couldn't come to a patent agreement with the Software Freedom Law Center because the group was asking for too much. It said the company should "give up its rights to enforce not only this patent, but any patent we may ever come with in the future for any use of open-source, whether by commercial or non-commercial" organisations, Small said. If Blackboard didn't agree to do so within 10 days, it would request government re-examination, he said.

But Fontana presented a different view. He said the Software Freedom Law Center only sought an agreement for Blackboard not to assert current and future patents against open-source projects, and said an even narrower agreement would have been welcome. "If they had offered to provide a patent pledge or commitment not to assert this one patent against the open-source community, that would have been acceptable to our clients," Fontana said.

Though the centre can't withdraw its re-examination request, there might still be room for a separate agreement between the two sides. If Blackboard offered a pledge not to assert its patents, that promise would likely take the form of other non-assertion policies, such as IBM's list of patents it won't assert against open-source groups, Small said.

And Fontana said there's still room for discussion. "We are always open to further discussions with them."