Judges: Bryson (author), Moore, Cudahy (Senior Circuit Judge sitting by designation)

[Appealed from E.D. Tex., Judge Clark]

In Blackboard, Inc. v. Desire2Learn Inc., Nos. 08-1368, -1396, -1548 (Fed. Cir. July 27, 2009), the Federal Circuit affirmed the district court’s grant of SJ that certain claims of U.S. Patent No. 6,988,138 (“the ’138 patent”) are indefinite but reversed the district court’s denial of JMOL on three other claims that the Federal Circuit concluded are anticipated as a matter of law.

Blackboard, Inc. (“Blackboard”) sued Desire2Learn Inc. (“Desire2Learn”) for infringing the ’138 patent, which is directed to an Internet-based educational support system and related methods. After a Markman hearing, the district court entered partial SJ for Desire2Learn, holding claims 1-35 of the ’138 patent invalid for indefiniteness. A jury then found claims 36-38 valid and infringed. An important issue at trial was whether the asserted claims of the ’138 patent require that a person be able to use a “single login” to access multiple courses and multiple roles in those courses. Blackboard asserted, for example, that the 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 access both courses and the materials for each course according to the graduate student’s role in each.

Desire2Learn filed motions for JMOL, contending that claims 36-38 were anticipated and obvious, which the district court denied. The district court agreed with Blackboard that the asserted claims require that the recited method permit access to multiple courses and roles through a single login. Desire2Learn appealed the JMOL decision and Blackboard cross-appealed the district court’s SJ ruling of indefiniteness. Blackboard separately appealed the district court’s denial of an award of costs related to certain discovery expenses.

On appeal, Desire2Learn argued that two prior art references anticipate claims 36-38 as a matter of law. That argument turned on whether those claims contain the “single login” limitation. In concluding they do not, the Court applied the doctrine of claim differentiation to language recited in both independent claims 1 and 36. The Court concluded that construing the language in claim 1 to require access to all courses with a single login would make dependent claim 25 redundant because claim 25 adds the requirement that, after a single login, the user be provided with access to all courses and course files with which that user is associated.

The Court also rejected Blackboard’s argument that the term “user” means an electronic account that allows access to multiple courses and roles through a single login. The Court found that “the specification makes clear that the word ‘user’ refers to a fl esh-and-blood person and not an electronic representation of that person.” Slip op. at 7. Similarly, the Court was not persuaded that the phrase “capable of having predefined characteristics indicative of multiple predetermined roles in the system” in claim 36 requires that the claimed method include the “single login” capacity. Finally, the Court disagreed with Blackboard that the language “according to the established roles for the users according to step (a),” which appears in claim 36, requires each user to gain access to all of the multiple roles with a single login.

Turning to the prosecution history of the ’138 patent, the Court considered the examiner’s “somewhat cryptic” remarks in two interview summaries concerning the “multiple roles” limitation. Id. at 10. The Court concluded that the statements referred to enabling users to have multiple roles rather than a single role and did not refer to the capability of accessing these multiple roles with a single login.

Finally, the Court rejected Blackboard’s argument that Desire2Learn waived its validity challenge, finding that Desire2Learn presented its argument about the absence of the single login requirement “with sufficient timeliness and clarity” in the district court proceedings. The Court also concluded that Desire2Learn’s Rule 50(a) motions on both anticipation and obviousness were sufficient under Fifth Circuit law to preserve Desire2Learn’s right to make a JMOL after trial.

Based on the testimony of Blackboard’s witnesses and the documentary evidence that was presented to the jury, the Federal Circuit concluded that claims 36-38, as properly construed, are anticipated as a matter of law by the two references cited by Desire2Learn. Accordingly, the Court reversed the district court’s failure to grant JMOL.

In its cross-appeal, Blackboard challenged the district court’s ruling that claims 1-35 of the ’138 patent are invalid for indefiniteness.

The district court held that the specification contained insufficient structure to support one of the means-plus-function limitations found in claim 1 of the ’138 patent and, by incorporation, in dependent claims 2-35. Blackboard argued that the structure that performs the “assigning” function is the server computer’s software feature known as the “access control manager” or “ACM.” The Court, however, found that the specification contains no description of the structure or process that the access control manager uses to perform the assigning function. Further, the Court found that, in district court,

Blackboard’s expert and counsel described the access control manager as “any computer-related device or program that performs the function of access control.” Id. at 22. The Court reminded that, under its holdings in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 1331 (Fed. Cir. 2008), and Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), “when a computer is referenced as support for a function in a means-plus-function claim, there must be some explanation of how the computer performs the claimed function.” Slip op. at 22-23. Blackboard pointed to a sentence in the specification that states, “Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information.” Id. at 24. The Court concluded that this sentence “describes an outcome, not a means for achieving that outcome,” and thus is impermissible under the Court’s holding in Aristocrat. Id. (quoting Aristocrat, 521 F.3d at 1334). The Court also found that Blackboard’s argument that the process of putting together control lists through software is well known to a person of ordinary skill in the art confl ated the definiteness requirement of § 112, ¶¶ 2 and 6, and the enablement requirement of § 112, ¶ 1. The Court reminded that “[a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function,” because doing so “would allow the patentee to claim all possible means of achieving a function.” Slip op. 25-26. For these reasons, the Court concluded that the ’138 patent disclosed insufficient structure to perform the “assigning” function and affirmed the district court’s decision that claims 1-35 are invalid as indefinite.

Because the Court found claims 36-38 anticipated, it declined to address Desire2Learn’s assertion that the claims are obvious and the parties’ contentions with respect to infringement of those claims. The Court also dismissed as moot Blackboard’s appeal pertaining to the award of costs in the district court.