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North Texas Patent Group, Inc v. Blackboard

May 9, 2011


The opinion of the court was delivered by: Matthew F. Kennelly, District Judge:


Qui tam relator North Texas Patent Group, Inc. (NTPG) has sued Blackboard, Inc. for falsely marking course management software in violation of the patent false marking statute, 35 U.S.C. § 292. Blackboard has moved to dismiss NTPG's complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). For the reasons stated below, the Court grants the motion.


The Court takes the following facts from the allegations in NTPG's first amended complaint. The Court accepts the allegations in the first amended complaint as true for purposes of the motion to dismiss. See Hallinan v. Fraternal Order of Police of Chicago Lodge No. 7, 570 F.3d 811, 820 (7th Cir. 2009). The Court also takes judicial notice of the Federal Circuit's decision in a related case, Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1373 (Fed. Cir. 2009). See Palay v. United States, 349 F.3d 418, 425 n. 5 (7th Cir. 2003) ("[I]n resolving a motion to dismiss, [a] district court is entitled to take judicial notice of matters in the public record.").

NTPG's claims concern United States patent number 6,988,138 (the '138 patent), which contains forty-four claims relating to course management software. Claims 1-35 are system claims, and claims 36-44 are method claims. NTPG alleges that the United States Patent and Trademark Office (PTO) issued the patent on January 17, 2006. The patent listed Blackboard as the patent's assignee. See Am. Compl., Ex. A. NTPG alleges that Blackboard subsequently falsely marked software product lines including Blackboard AttendancePro, Blackboard Learn and Blackboard Mobile with the patent with the intent to deceive the public.

In July 2006, Blackboard sued Desire2Learn Inc., alleging infringement of the '138 patent. See Pl.'s Resp. to Def.'s Mot. to Dismiss, Ex. A. The trial court found claims 1-35 of the patent invalid for indefiniteness. At a trial held in February 2008, however, a jury found that claims 36-38 were infringed by Desire2Learn and were not invalid.

In December 2006, while the infringement suit was pending, Desire2Learn instituted an inter partes reexamination proceeding before the PTO. In an office action dated March 25, 2008 -- after the jury trial on the infringement suit -- an examiner found all forty-four claims of the '138 patent invalid as anticipated or obvious in light of the prior art. See id., Ex. C.

In May 2008, the trial court in the infringement suit entered final judgment, confirming the jury's infringement and validity determinations regarding claims 36-38. After Desire2Learn appealed, Blackboard petitioned the Director of the PTO to terminate the inter partes reexamination proceeding, relying on a statute that prohibits the PTO from maintaining an inter partes reexamination if a court has entered a final decision affirming validity against a party seeking reexamination on invalidity grounds. See 35 U.S.C. § 317(b). In November 2008, after the Director denied Blackboard's petition, Blackboard filed suit seeking to enjoin the maintenance of the reexamination proceeding. See Pl.'s Resp to Def.'s Mot. to Dismiss, Ex. B. Blackboard voluntarily dismissed the suit in late December 2008.

In the interim, after Desire2Learn appealed the trial court's judgment in the infringement suit, it sought a stay of the injunction, based in part on the PTO's office action. The Federal Circuit declined to stay the case. See Def.'s Reply Mem. at 6-7 (citing docket entries).

When, however, the Federal Circuit considered the case on its merits, it affirmed the trial court's invalidity decision regarding claims 1-35 but reversed the finding in Blackboard's favor on claims 36-38. Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1381, 1379 (Fed. Cir. 2009). The court held those claims invalid as anticipated by the manuals of two software systems, CourseInfo 1.5 and Serf. Id. at 1379-82. The Federal Circuit did not address the validity of the '138 patent's remaining claims (claims 39-44).

In its response to the motion to dismiss, NTPG states that in November 2010 (after this suit was filed), the PTO cancelled all claims of the '138 patent. See Pl.'s Resp. to Def.'s Mot. to Dismiss at 2. It appears that this represented the conclusion of the reexamination proceeding. Cf. Def.'s Reply Mem. at 8 (referring to the PTO's "November 9, 2010 issuance of the reexamination certificate"). NTPG contends that Blackboard has nonetheless continued to mark its products with the patent. Id. NTPG's complaint, however, makes no reference to either the cancellation or the alleged subsequent false marking. The Court thus does not consider in this decision any claim that NTPG might bring based on the November 2010 cancellation of the patent. The Court also notes that NTPG does not appear to contend that the PTO's March 2008 office action in the reexamination proceeding constituted any sort of final action that invalidated the patent in its entirety.

In its amended complaint in the present false marking case, NTPG alleges that NTPG alleges that "[c]laims 39-44 cannot cover any product, including Defendant's products, as they are method claims." First Am. Compl. ¶ 36. NTPG also asserts that claims 39-44 are invalid due to anticipation, obviousness, and indefiniteness, and that several of the claims do not cover the allegedly marked products because they require the performance of tasks by an instructor. Blackboard disputes these contentions.


I. Motion to ...

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