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Foley & Lardner Successfully Represents Desire2Learn in Patent Infringement Case

Monday, August 10, 2009

Federal Circuit Overturns E.D. of Texas Jury Verdict, Invalidates Blackboard’s 38 Patent Claims

Chicago, IL – Foley & Lardner LLP announced today that the firm successfully defended Desire2Learn Inc., a provider of enterprise eLearning solutions and developer of online Learning Management Systems for schools, higher education, associations, government and private industry, when the U.S. Court of Appeals for the Federal Circuit overturned a jury verdict and confirmed that all 38 patent claims asserted by Blackboard Inc. are invalid.

The appeal arose 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 Internetbased educational support system and related methods.

"We are proud to have shepherded Desire2Learn through this very important milestone and to have helped them achieve their goal of providing innovative technology to help students and teachers," said Gregory Norrod, partner in Foley’s Intellectual Property Litigation Practice and lead counsel for the Desire2Learn case.

Claims 36-38 of the patent were the subject of the jury trial in the U.S. District Court for the Eastern District of Texas and Desire2Learn asserted that those claims were invalid because the "invention" Blackboard claimed was present in prior art. To decide that issue, the Appellate Court first had to define the word "user" in the ‘138 Patent. Blackboard argued 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.

Desire2Learn asserted that a user is a person who uses the learning system. As the Appellate Court said, "The [patent] makes clear that the word ‘user’ refers to a flesh-and-blood person and not an electronic representation of that person."

Having decided that Desire2Learn’s interpretation of the word "user" was correct, the Court turned its attention to whether the prior art on which Desire2Learn relied at trial contained all of the elements of those claims. The Court stated, "On the merits, we agree with Desire2Learn that claims 36-38, as properly construed, are invalid for anticipation as a matter of law by CourseInfo 1.5 and Serf."

The second issue addressed by the Court was whether the Texas Court was correct in ruling that claims 1-35 of the '138 Patent were invalid. In short, the Texas Court had ruled that the "Means for assigning a level of access to and control of each data file based on a user of the system's predetermined role in a course," a "means-plus-function" term, was indefinite. The Federal Circuit agreed that in the '138 Patent Blackboard tried to claim too broadly which invalidates those claims.

In addition to Norrod, who is based in the firm’s Chicago office, Foley’s team included Sharon Barner, chair of the firm’s Intellectual Property Department and partner in the firm’s Chicago office; Harold Wegner and George Quillin, both partners in the Washington, D.C. office; James Dasso and Jonathan Spivey, partners in the Chicago office; and Jason Keener and Michael Kramer, associates in the Chicago office.

Comprised of nearly 240 attorneys, Foley’s Intellectual Property practice is a recognized leader in IP legal services. For the eighth consecutive year, Foley was ranked by IP Today as one of the top 10 firms for the number of patents issued and by IP Law & Business magazine as one of the top patent litigation firms in the nation. These rankings make Foley the only general practice firm to appear in the top 10 for both patent litigation and patent procurement.

Foley & Lardner LLP continually evolves to meet the changing legal needs of our clients. Our team-based approach, proprietary client service technology, and practice depth enhance client relationships while seeing clients through their most complex legal challenges. The BTI Consulting Group (Wellesley, Massachusetts) recently recognized Foley as one of the top four law firms shaping the U.S. legal market, while CIO magazine has named Foley to its CIO 100 list six times for our client-focused technology. With more than 1,000 attorneys in 21 offices and more than 50 practices, count on Foley for high-caliber business and legal insight.

Desire2Learn Incorporated is a world-leading provider of enterprise eLearning solutions that enable institutions and other organizations to create teaching and learning environments that reflect their vision, values, goals, pedagogical approaches and branding. Desire2Learn and its subsidiaries support more than five million learners worldwide and clients include higher education, K-12, as well as associations, government and other leading organizations. Founded in 1999, Desire2Learn has personnel located in the U.S., Canada, the U.K. and Australia. For more information, visit:, contact, call 1.519.772.0325 or toll-free 1.888.772.0325 (within North America), 0808.234.6744 (for the U.K.) and +61 412 067 308 (for Australia).

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