Blackboard: Federal Circuit Again Find Software-Related Means-Plus-Function Claims Invalid for Failing to Disclose Sufficient Structure

Blackboard v. Desire2Learn (Fed. Cir. 2009) 08-1368.pdf

Blackboard’s patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated. pic-54.jpg

Means-Plus-Function: Blackboard’s seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a “means for assigning a level of access and control.” The specification briefly discusses an “access control manager” (ACM) with an “access control list.” On appeal, however, the court found that brief description to be an insufficient “disclosure of the structure that corresponds to the claimed function” and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).

“[W]hat the patent calls the ‘access control manager’ is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed.”

Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.

The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the “corresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.

Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite

Claim construction: At the trial, Blackboard’s expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a “single login” feature that allowed one user to have various roles within the system. “For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each.” However, on appeal, the Federal Circuit determined that the claims do not actually require that feature — leading them to hold the claims invalid based primarily on the admissions of Blackboard’s own expert.

[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.

Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

41 thoughts on “Blackboard: Federal Circuit Again Find Software-Related Means-Plus-Function Claims Invalid for Failing to Disclose Sufficient Structure

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  2. Blackboard was probably using the broad patent as a means to keep hold of their market shares. New software such as Moodle and Sakai have begun taking a significant part of the education market away from Blackboard.

    For more on patent infringement see, link to generalpatent.com

  3. “the patent owner has to pay the PTO when the PTO makes a mistake and erroneously issues a patent?”

    The flip side of this would of course be that the PTO has to pay the applicant every time it issues a crappy rejection, which would more than offset the rare occasion where the PTO accidentally allows something.

    I also like the way that man thinks. This could be the beginning of an absolucrative (new word?) revenue stream for applicants.

  4. Not in any way a surprising decision – it follows a number of earlier decisions to the same effect.

    Persuading those who draft software and business method patents that the necessary supporting detail has to be added and getting the necessary detail is another matter.

    There is a large number of invalid “black box” patents out there. Non-enablement, lack of written description and failure to comply with 35 USC 112(6) provides strong grounds for invalidity because if established there is no cure and the patent is invalid

  5. “brocious — the patent owner has to pay the PTO when the PTO makes a mistake and erroneously issues a patent!”

    I like the way this man thinks!

  6. brocious — the patent owner has to pay the PTO when the PTO makes a mistake and erroneously issues a patent?

  7. i wouldn’t mind trebles in every single case if when a patent is invalidated, the patent owner has to pay the PTO $10k or 100% of gross revenues and judgments ever made from the patent, whichever is higher. unlike judgments for attorneys fees, you don’t get parties going nuclear on each other to win (like with the brits), and the PTO’s funding skyrockets. you could even grandfather it in by making it only applicable to patents filed, or maintenance fees paid for after X date. that way, patent owners have to consent to it. and since the remedy isn’t to any particular party, you don’t get the same problems as in hatch-waxman P4 actions.

    on another issue, this case just shows how silly 112-6 still is. numerous practitioners (and apparently the eastern district) still advocate the use of the noun form of verbs and adverbs (manage, managing -> manager) as a valid method of evading means-plus-function. can someone please explain to me how a “means for managing” is any more or less structurally specific than a “manager”?

  8. “You cannot possibly disclose any algorithm without abstraction”

    If you want to recite “a means for XYing”, thereby invoking 112, 6th paragraph, you have to actually disclose a level of abstraction at least one level below XYing. You cannot simply say that one of ordinary skill can implement XYing.

    If you don’t invoke 112, 6th, then you still to make sure you have enough particular structure to avoid Bilski/101 issues in your claim, but you don’t necessarily have to establish a particular machine for every single claim element.

  9. “In many software cases, cutting open a blackbox will only reveal more blackboxes, each of which will contain yet more blackboxes. Even if you get down to the circuits, circuit diagrams are themselves abstractions that look nothing whatsoever like what they represent. ”

    The very reason their claim format is a fraud.

  10. Taking the hatchet to blackbox claiming …is one thing the CAFC has done well…. Some day we will see the end of things like “a means for collecting” where the only disclosed “structure” is a “collector” in a high-level block diagram showing data flow

    In many software cases, cutting open a blackbox will only reveal more blackboxes, each of which will contain yet more blackboxes. Even if you get down to the circuits, circuit diagrams are themselves abstractions that look nothing whatsoever like what they represent.

  11. *****”Speaking of continuations, 6,988,138 has four child applications still pending. I foresee an additional child application with a lot more detail on the access control manager.”********

    Mark, are you saying that they will add detail to the spec? That would make it a CIP, and the parent (and everything else) would be prior art to it. Might as well file an entirely new patent application.

    On the other hand, they can surely add claims in the existing child applications that are NOT “means plus function” claims, and that are tailored to recite the subject matter about the single login granting multiple levels of access privileges (if they have not done that already).

  12. “Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.”

    Yikes! But I’d like to note that I think the problem here was the use of “means plus function” claims, rather than failure to disclose the details of a well-known functional software module. I only think the court went there, anyway, because the supposed point of patentability distinguishing over the prior art lay in the access control feature that let a single login grant multiple levels of access privileges. But that is kind of beside the point.

    Or is it? Is it really the lesson here that if you claim an automobile car, and you have an element that is “means for accessing a passenger compartment,” but you don’t disclose that it is a door, and provide details on the metallurgical makeup and the shape of the handle and the brand of lock mechanism and type of latch blah blah blah …

    So, means plus function claims bad. Got it. Thanks Federal Circuit!

  13. “[W]hat the patent calls the ‘access control manager’ is simply an abstraction that describes the function of controlling access to course materials”

    You cannot possibly disclose any algorithm without abstraction. Even if you were to set forth the actual code, For example, suppose the first line of code were “OPEN FILE=c:\course_materials.doc” That very line discloses a black box called “OPEN”. Even at the machine level where one is setting and clearing individual bit, the idea of a “bit”, and the meaning of “set” and “clear” is an abstraction. After all, how many square inches does a bit take up? What shape is it? Does a bit have to be a contiguous area? What magnetic field polarity is associated with “setting” a bit. Is the bit even magnetic, or can it be optical? These and other details are blithely abstracted away just by saying “bit”.

  14. Sorry, Americans, but your means+function law is just dumb. Where there is no enablement issue, and the form is incidental to the claim, why does it matter what’s in the black box?
    Stop crappy computer brain patents with a decent obviousness argument. Let the significance of means+function be assessed by the PHOSITA.

  15. With even brand-newly-issued U.S. patents still relying on “means-function” claims, after years of CAFC decisions clearly demonstrating that such claims are undesirably narrow for infringement and undesirably broad in the PTO, and that such claims also require specific identifiable spec support, it is amazing that so many patent attorneys and agents still do not think the P-Bar needs any MCLE.

  16. “Patents server NO USEFUL PURPOSE in this country ”

    Occasionally you will see one of the millions of patents cited in a technical journal. I think (based on my own personal experience) this has happened a combined 10 times in the history of the world. Therefore, we must surmise, patents have accomplished their goal to promote the useful arts k?

    Sure, it is a lot of time an effort put into the whole system for those 10 occassions, BUT whatever would have happened if those 10 patents hadn’t been available? Those academics would have been CITATIONLESS! Well, at least in the instances (amongst the 10 instances) where the patent was the only citable work on that topic.

    Consider yourself rebutted to a degree which will satisfy a court.

  17. If the court were really “bringing the hammer down” it would award court costs PLUS significant damages to the defendant. The patent office issues thousands of junk patents like this that any intellegent person (including the filer and attorney) KNOWS are not legally patentable. The patent office does not care, it just wants filing fees. And even a junk patent like this is valuable if your opponent doesn’t have the millions it requires to sue. Patents server NO USEFUL PURPOSE in this country except to allow patent holders to steal from society.

  18. So what if someone claimed “a means for fastening” and only described “a fastener that fastens” in the spec? There, the only algorithm for the function fastening is “fastens.” Why should anyone get a patent that covers all the algorithms for fastening? Shouldn’t they have to specify particularly their fastener fastens, so as to limit their claim to their particular algorithm for fastening?

  19. By the way, there is an interesting “crowdsourcing” angle to this story. This patent offended quite a few academics and inspired the creation of a special Wikipedia page just to be a repository for prior art. It’s called “History of Virtual Learning Environments” link to bit.ly

  20. “Mark, that would be futile, wouldn’t it?”

    Perhaps, but I have learned to have great respect for the combined abilities of a skilled patent attorney and a motivated client… particularly when several million dollars are at stake.

  21. Anon: “how would you detect infringement? Or calculate damages?”

    When has that ever stopped a business method patent-asserting troll from filing a lawsuit? Hire some lawyer from Aspen to write something “reasonable” and let discovery do the rest.

    “Nobody would want to pay money for a patent on this technology”

    Are you kidding? Lots of folks would pay $$$ for a patent on a high frequency stock trading “algo” if they suspected or knew that some gigantic fund managing corporation was making a profit from it.

  22. Taking the hatchet to blackbox claiming in Aristocrat Techs. and Finisar (both cited in the opinion) and now this case is one thing the CAFC has done well in the past year or so. Some day we will see the end of things like “a means for collecting” where the only disclosed “structure” is a “collector” in a high-level block diagram showing data flow.

  23. “I applaud your answer. What’s odd is how frequently this inexpensive and common sense approach to out-competing your rivals is ignored these days. Perhaps it’s because of those mythical non-practicing entities we aren’t supposed to disparage.”

    No, it is a business model. The “algos” are very valuable if they are better and faster than the competition. They are not so valuable if they are a baseline capability.

    In other words, to maximize profit you can only build one for one customer (e.g., yourself or a single client).

    Besides, how would you detect infringement? Or calculate damages?

    Nobody would want to pay money for a patent on this technology, much less pay money plus tell the world their most important competitive advantages.

  24. “Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).”

    As in most endeavors involving dispute, attorneys tend to make out well.

  25. >>Umm.. if you know that your clients aren’t disclosing best mode when you are filing their applications, then I think you may have a bigger problem.<< Speaking hypothetically, I might just have been taking the client's word that, in their field of art, their disclosure constituted best mode. Just like I might have been taking the client's word that their disclosure included an adequate and enabling written description. Just like I might have been taking the client's word that their "invention" was novel and non-obvious despite some possibly relevant references antedating their invention disclosure. After all, I'm not necessarily one of ordinary skill in the inventors' field of art, so who am I to guess what might be obvious, enabled, or best mode? It just seems possible that there may be aspects of some inventions(?) that are more complicated and more interesting than (hypothetically) a "data gathering module" and a "relevance calculating module". But hey, if (hypothetically) the inventors flat-out insist that their slender and high-level disclosure contains all the inventive aspects of their novel and non-obvious device, and if they do so even in view of some possibly relevant art ... and if they insist on paying me to prep the spec and draft claims ... and if they sign the Declaration of Inventorship after thorough review of the spec and claims ... what problem do I have, that's not shared by at least hundreds of other practitioners? /sarcasm /rationalization /informal survey

  26. “36. An method for providing online education method for a community of users in a network based system comprising the steps of: a. establishing that each user is capable of having redefined characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files; b. establishing a course to be offered online, comprising i. generating a set of course files for use with teaching a course; ii. transferring the course files to a server computer for storage; and iii. allowing access to and control of the course files according to the established roles for the users according to step (a); c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course.”

    That might make a great claim in a universe where computer networks were invented before colleges that offer a plurality of courses. But on Earth that is some laughably obvious garbage. Where do people get the nerve?

  27. Anonymous: “Unlike a commercial software developer, they make profit by using their software, not selling it. There is nothing to be gained from disclosure.”

    I applaud your answer. What’s odd is how frequently this inexpensive and common sense approach to out-competing your rivals is ignored these days. Perhaps it’s because of those mythical non-practicing entities we aren’t supposed to disparage.

  28. “Now I just have to get my clients to disclose the best-mode details of the means inside their black boxes.”

    This is why more best mode rejections should be issued.

    And shows yet another attorney determined to make himself look bad.

  29. “36. An method for providing online education method for a community of users in a network based system comprising the steps of: a. establishing that each user is capable of having redefined characteristics indicative of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files; b. establishing a course to be offered online, comprising i. generating a set of course files for use with teaching a course; ii. transferring the course files to a server computer for storage; and iii. allowing access to and control of the course files according to the established roles for the users according to step (a); c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course. ”

    Shreddin’ time.

    “is capable of” lololololololololololol

    “establishing” lolololololololololol

    Even though this is a MPF claim, it doesn’t bode well for you powerful computer brain patenters.

  30. >>Now I just have to get my clients to disclose the best-mode details of the means inside their black boxes.<< Umm.. if you know that your clients aren't disclosing best mode when you are filing their applications, then I think you may have a bigger problem.

  31. “Speaking of continuations, 6,988,138 has four child applications still pending. I foresee an additional child application with a lot more detail on the access control manager.”

    Mark, that would be futile, wouldn’t it? The details would be new matter, any claims depending on those details (including means-plus-function claims identical to those in the parent application) would have a late filing date, and the parent application would render the claims obvious. (If not anticipated – the court already acknowledged that the means-plus-function claims might be enabled even though the spec lacked detailed structure.)

  32. MM:

    Few to none are getting patents on their “algos.”

    They are protecting their methods for trading as trade secrets.

    Unlike a commercial software developer, they make profit by using their software, not selling it. There is nothing to be gained from disclosure.

  33. >>”We’re moving toward a two-tiered marketplace of the high-frequency arbitrage guys, and everyone else. People want to know they have a legitimate shot at getting a fair deal. Otherwise, the markets lose their integrity.”<< An efficient market (according to the "wisdom of crowds" theory of information sharing) supposedly prices-in all available information and opinion regarding the net present value of the market goods. But efficiency depends upon the ability of _all_ participants to contribute to the crowd-wisdom. Where the market is over-driven by feedback loops that run faster than the response time of the crowd, we wind up with wild oscillations. Some would argue that $145 oil barrels, and the failure of Lehman Brothers, both can be traced to the inefficiencies of a market driven beyond its natural frequency of response.

  34. >>Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.<< Thanks for the tip. Now I just have to get my clients to disclose the best-mode details of the means inside their black boxes.

  35. If the recited functions in the claims could have been performed with a Powerful Computer Brain and ways without a Powerful Computer Brain, I wonder whether the means plus function claims might have been limited to just those with a Power Computer Brain. If so, they wouldn’t be covering all ways to perform the function and thus would be definite. Then, God forbid, the defendant would have to argue based on other grounds, like novelty, obviousness, enablement, …

  36. Speaking of continuations, 6,988,138 has four child applications still pending. I foresee an additional child application with a lot more detail on the access control manager.

  37. The hammer is coming down hard on practitioners.

    Think your means+function claims are valuable? Think again.

    Nice article, MM. Good questions too, although I think the answers are so obvious, I’ll let other people have their turn answering.

  38. “At the trial, Blackboard’s expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a “single login” feature that allowed one user to have various roles within the system.”

    OOooo, wow, a single login feature! How very clever and inventive! It’s nice to see the Federal Circuit wielding the hammer with lethal force.

    In other news re the use of Powerful Computer Brains:

    link to nytimes.com

    ——————————
    …[A]s new marketplaces have emerged, PCs have been unable to compete with Wall Street’s computers. Powerful algorithms — “algos,” in industry parlance — execute millions of orders a second and scan dozens of public and private marketplaces simultaneously. They can spot trends before other investors can blink, changing orders and strategies within milliseconds.

    High-frequency traders often confound other investors by issuing and then canceling orders almost simultaneously. Loopholes in market rules give high-speed investors an early glance at how others are trading. And their computers can essentially bully slower investors into giving up profits — and then disappear before anyone even knows they were there.

    “You want to encourage innovation, and you want to reward companies that have invested in technology and ideas that make the markets more efficient,” said Andrew M. Brooks, head of United States equity trading at T. Rowe Price, a mutual fund and investment company that often competes with and uses high-frequency techniques. “But we’re moving toward a two-tiered marketplace of the high-frequency arbitrage guys, and everyone else. People want to know they have a legitimate shot at getting a fair deal. Otherwise, the markets lose their integrity.”
    ———————————

    How many of these patently obvious and/or unpatentable “algos” for making money are pending right now, I wonder? And why would any person without a direct financial interest in “algos” want the PTO to be granting patents on them?

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