Inequitable Conduct Goes to Trial – Bad News for BlackBoard’s Case Against Desire2Learn

The Desire2Learn website that is tracking the BlackBoard v. Desire2Learn patent lititgation has posted a ruling (PDF) by Judge Clark denying Bb’s motion to dismiss D2L’s Inequitable Conduct claims.

Inequitable Conduct is described at the Nixon, Peabody law firm website this way…

"…Inequitable conduct is a serious concern to patent holders. Unlikeinvalidity, which may strike a single patent claim but leave others,inequitable conduct takes out the entire patent and, quite possibly,later continuations and divisional applications…."

… so this is a big victory for the D2L side of the lawsuit. Nixon, Peabody further mention…

"…To find a patent unenforceable due to inequitable conduct, an allegedinfringer bears a significant burden of showing inequitable conduct inthe patent process through a failure to disclose material informationor submission of false material information with intent to deceive.What information is “material,” however, is the source of endless legalwrangling. And although intent to deceive is typically inferred fromthe surrounding circumstances, it cannot be found solely from the factthat information was not disclosed. There must be a factual basis forfinding deceptive intent. Moreover, those two elements, materiality andintent, must be proven by clear and convincing evidence. Finally, ifthe threshold levels of materiality and intent are proven, the courtmust still balance the materiality with intent to determine if theconduct as a whole was inequitable…."

If you read the entire Nixon, Peabody article, though, you willrealize that this is far from settled, but that’s not the point Iwanted to make.

D2L passed the first hurdle by successfully defending this defense against a quick dismissal. It will now be a part of the trial and subject to all kinds of discovery, deposition, expert witness testimony, etc. This case just got a lot longer and more complicated.

After reading the decision, I re-listened to my podcast interview with Professor Vince Chiapetta from Willamette University School of Law and have reproduced the relevant section here as a 14 minute podcast.

Click to listen or right click to download – ChiapettaInequitableConduct.mp3

Professor Chiapetta reminded me that there might be a linkage to the inequitable conduct defense and possible Sherman Act (antitrust) cross-claims that Desire2Learn could bring against BlackBoard. Remember, we still don’t know what or how much BlackBoard disclosed to the Department of Justice during the review of their purchase of WebCT back in January of this year.

A finding of inequitable conduct – still a far from sure bet – with a paucity of disclosure to the DOJ would be rather damaging to BlackBoard’s case I believe.

Please note that IANAL (I am not a lawyer) and none of this should be construed as legal advice).

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