P atent litigation is a potential disaster ticking time bomb for higher education. College leaders need to understand it, and to take proactive steps to reduce the risk of a real disaster to their interests. But not every patent poses a serious threat.
The latest education-related patent to raise concerns is owned by Elsevier. As a recent piece in The Chronicle highlighted, some open-access advocates are concerned that Elsevier might use the patent on their journal-submission system to suppress competition from open-access journals. A letter to the editor in response noted that the patent could also be used against traditional competitors, such as Springer. The threat, the writer argued, is the potential for “inhibiting innovation in academic publishing in general.”
Elsevier naturally responds that these concerns are overblown, arguing that the patent is narrow and would be used only to protect their particular innovation.
So how can we judge the scope and severity of the threat?
I traveled down a similar rabbit hole about a decade ago, when Blackboard sued a competing course-management company called D2L (then known as Desire2Learn) for patent infringement. At the time, I didn’t know anything about patent law. What I learned scared me.
It turns out that arcane details matter in complex ways.
The Elsevier patent is a good case study in the knowns and unknowns that should concern us.
The Patent Itself
Elsevier’s patent has been described as a “journal-recommendation tool,” but that doesn’t tell us nearly enough to understand what the company claims to have invented. Most nonexperts read the abstract at the top of a patent application to try to understand it. But the abstract has no legal force. Legally, the important part is the list of claims.
Before you fire up your search engine to read Elsevier’s patent claims, you should be aware of another concept in patent law: willful infringement. If your employer were to be sued for patent infringement and any of its employees is known to be aware of the patent, the employer is vulnerable to the charge of willful infringement, meaning that it broke the law knowingly. The consequences? Treble damages. Perhaps you believe that, as an employee of a college or a university, your employer could not be sued because it does not make software. You would be wrong. U.S. patent law allows patent holders to sue users of infringing systems under some circumstances.
Reading a patent is not only legally risky but also very hard. Any patent trial includes a “construction phase” devoted to interpreting the claims. Until that process has been completed, the scope of the patent is legally indeterminate. Patent owners naturally use this ambiguity in their public-relations efforts to calm the sorts of concerns that are being raised regarding Elsevier’s patent. When accused of attempting to patent the learning-management system (LMS) itself, Blackboard’s public response was that it would never do any such thing, and that the company was attempting only to protect one modest but important innovation that it had contributed to the market.
At the end of the construction phase of that trial, their patent was determined to cover the following:
Any system in which a user can log in with the role of teacher in one course and the role of student in another.
Had this patent been upheld, it would have applied to every LMS that existed at the time, most that have been created since, and many other types of educational software as well. Bottom line: You cannot trust what any company says outside the courtroom about the breadth of its patent. You can read the patent yourself only at potential legal peril to you (or your employer), and even an expert reading will not give you a definitive interpretation of the patent in advance of an actual infringement trial.
The Company’s Intentions
There are hundreds, thousands, even tens of thousands of patents that are relevant to educational software, with more being filed every year. Most of them will sit in a drawer and never be used. For example, eCollege was granted a patent for an electronic gradebook decades ago. The company (and the patent) are now owned by Pearson. If weaponized, that patent could do a lot of damage. Yet neither past nor current owner has shown any inclination to do so.
In our current world of patent proliferation, the most sensible strategy for a company to reduce its chances of being sued is to file for patents that it can use in countersuits. It’s the intellectual-property version of the old mutually assured destruction theory of nuclear deterrence. D2L did not have any patents that it could use in countersuits at the time that Blackboard came after it. I would be shocked if the same could be said today. There are good reasons for companies to file for patents that they hope they never need to use.
What do we know about Elsevier’s intentions? In the Chronicle article, the company’s vice president for corporate relations was quoted as saying, “There is no need for concern regarding the patent. It’s simply meant to protect our own proprietary waterfall system from being copied.”
Wrong answer. This suggests that Elsevier may be willing to use the patent for offensive purposes. The only way that its patent could “protect” its system “from being copied” is if Elsevier were to take — or threaten — legal action.
The Effect of Patent Assertion
Even when a company does threaten action regarding a patent, things usually don’t wind up in court. Instead, many companies in Desire2Learn’s position decide that a legal battle is too risky and expensive. They just quietly pay the license fee. Unfortunately, that one fee is not always the only toll on the road. Once a company decides it is willing to assert a patent, the temptation arises for it develop (or buy) multiple overlapping patents, which can kill off competition — death by a thousand cuts. This strategy of asserting multiple related patents to create an effective monopoly is common enough to have a name: a patent thicket. Blackboard’s patent filings during the time of its lawsuit suggest that the company was preparing just such a strategy to create a stranglehold on the LMS market.
In large markets, like those for mobile phones or pharmaceuticals, there is enough money in the sector for both patent licensing deals and patent lawsuits to proliferate without killing the market itself. Whether all this activity produces a net benefit to consumers is a separate question and beyond the scope of this article. The point is that Apple, Google, and Oracle can sue the heck out of one another and still survive.
But in education markets, which have much smaller revenues and profits, patent assertion is an existential threat. Had Blackboard’s patent been upheld, Instructure, a growing rival, probably wouldn’t exist today. And had Blackboard succeeded in creating a patent thicket, D2L might not have survived, either.
While we cannot say whether the Elsevier patent will prove to be a problem, patents in general are a serious potential threat to innovation in education. Regrettably, few legal tools are available to combat that threat. The best weapon that colleges have is economic. When customers didn’t like Blackboard’s behavior, they voted with their feet. There is an argument to be made that the company is still paying a price today for its litigation. Its brand was damaged in a substantial and lasting way.
The market learned a lesson from Blackboard v. Desire2Learn. But since it has been a while, the lesson is beginning to fade from the memories of some college leaders. By the time the current CEO of Elsevier got his first job in the education industry, the lawsuits were mostly over.
Now that the specter of ed-tech patent fights has resurfaced, college leaders should make a declaration en masse, through interest groups like Educause, that they will not buy products from companies that assert educational patents except in cases of defensive countersuits. Individual colleges should be willing to sign on to that pledge, making a public declaration of their intent.
Michael Feldstein is a partner at MindWires Consulting, co-publisher of the e-Literate blog, and co-producer of e-Literate TV.