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BlackBoard tries to terminate re-exam of its patent

By Lawrence B. Ebert, Esq.

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.

Full post as published by IPBiz on December 02, 2008 (boomark / email).