By Eric Schweibenz
On April 20, 2009, Blackboard Inc. of Washington, D.C. filed a complaint requesting that the ITC commence an investigation pursuant to section 337.

The complaint alleges that Desire2Learn Incorporated of Canada unlawfully imports into the U.S., sells for importation, and/or sells within the U.S. after importation certain course management system software products that infringe certain claims of U.S. Patent No. 6,988,138.

According to the complaint, the ‘138 patent is entitled “Internet Education Support Systems and Methods” and is directed to a “system and methods for implementing education online by providing institutions with the means for allowing the creation of courses to be taken by students online.”

Blackboard alleges that Desire2Learn is involved in the development, marketing, and sale of CMS software (which it markets as Desire2Learn Learning Environment products, ePortfolio, Learning Repository, Live Room, Essentials, 2Go, and Competencies products) and services to support use of its products, including implementation, training, content, and help desk services.  According to the complaint, Desire2Learn markets and sells its products in the U.S. and imports its products in the U.S.  Specifically, Blackboard alleges that “[u]nlawful importation occurs both in cases where Desire2Learn’s customers run the Learning Environment software on their own servers and in cases where Desire2Learn runs the software for the customers on Desire2Learn’s own servers in Canada.”  Blackboard further alleges that Desire2Learn’s customers include, among others, the Ohio State University, the University of Oklahoma, Oklahoma State University, and the University of Arizona.

The complaint identifies two litigations in the U.S. District Court for the Eastern District of Texas between Blackboard and Desire2Learn: (1) Desire2Learn was found to infringe claims 36-38 of the ‘138 patent and became subject to a permanent injunction – according to the complaint this matter is currently on appeal at the Federal Circuit; and (2) Blackboard recently filed suit against Desire2Learn for infringement of U.S. Patent No. 7,493,396 (a continuation of the ‘138 patent).  The complaint also alleges that the ‘138 patent is the subject of both inter partes and ex parte reexaminations at the U.S. Patent and Trademark Office.

Blackboard alleges that it satisfies the technical prong of the domestic industry requirement because its course management system software (Blackboard Learn) is covered by claim 36 of the ‘138 patent.  Blackboard also alleges that it satisfies the economic prong based on significant U.S. investment in plant and equipment, significant employment of labor and capital in the U.S., and substantial investment in the exploitation of the ‘138 patent, including engineering and research and development.

Regarding potential remedy, Blackboard requests the Commission to issue limited and general exclusion orders, as well as a cease and desist order relating to Desire2Learn’s course management system products and services.