Case 9:06-cv-00155-RHC Document 369 Filed 03/24/2008 Page 1 of 36
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS LUFKIN DIVISION
Blackboard Inc., § § Plaintiff, § § Case No. 9:06-CV-155 vs. § § Desire2Learn Inc., § § JUDGE RON CLARK Defendant. § § §
DESIRE2LEARN’S POSTVERDICT MOTION FOR JUDGMENT AS A MATTER OF LAW AND MOTION FOR A NEW TRIAL
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TABLE OF CONTENTS
I. INTRODUCTION ...... 1
II. UNDISPUTED MATERIAL FACTS ...... 1
III. ISSUES PRESENTED...... 4
IV. ARGUMENT...... 5 A. Bb Failed to Present Substantial Evidence to Support a Jury Finding That All Steps of Claim 36 Are Performed Within the United States...... 6 B. Bb Failed To Provide Substantial Evidence Showing that Any Single Entity Performs Each and Every Step of the Asserted Claims...... 8 C. Bb Failed to Present Sufficient Evidence of Specific Instances of Infringement...... 10 D. Bb Failed to Present Substantial Evidence That All Steps of Claim 36 Were Performed After the Issuance of the ’138 Patent...... 11 E. Bb Failed to Present Substantial Evidence to Support a Jury Finding That D2L Indirectly Infringes Pursuant to 35 U.S.C. § 271...... 13 F. Claims 36-38 Are Invalid as Anticipated as a Matter of Law Under a Proper Application of the Court’s Claim Construction Or, Alternatively, D2L is Entitled to a New Trial on the Issue of Invalidity...... 15 1. Clear and Convincing Evidence Establishes that Claims 36-38 of the ’138 Patent Are Invalid as Anticipated...... 15 a. CourseInfo ILN v1.5 Anticipates Claims 36-38...... 16 b. Serf 1.0 Anticipates Claims 36-38...... 17 2. In the Alternative, D2L is Entitled to a New Trial on Invalidity...... 18 G. Claims 36-38 Are Obvious as a Matter of Law...... 21 1. Claims 36-38 Are Obvious Combinations of Prior Art Elements...... 22 2. Claims 36-38 Are Obvious in View of the Cook and Win Patents...... 26 3. Secondary Considerations Are Unrelated to the Claimed Invention and Fail to Overcome Evidence of Obviousness...... 27 H. The Lost Profits Damages Award Is Not Supported by Substantial Evidence...... 28 I. Entry of a Post-Judgment Rate of Interest in Excess of the Statutory Rate is a Manifest Error of Law...... 29 J. Court’s Judgment Should be Altered to Reflect that Claims 1-35 are Invalid...... 30
V. CONCLUSION...... 30
i
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TABLE OF AUTHORITIES
CASES
ACCO Brands, Inc. v. ABA Locks Mfrs. Co., Ltd., 501 F.3d 1307 (Fed. Cir. 2007) ...... 11
BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007)...... 8
Bradley v. Armstrong Rubber Co., 130 F.3d 168 (5th Cir. 1997) ...... 5
C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670 (Fed. Cir. 1990) ...... 6
Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 418 F. Supp. 2d 1021 (S.D. Ind. 2006)...... 11
Celeritas Technologies, Ltd. v. Rockwell Intern. Corp. 150 F.3d 1354 (Fed. Cir. 1998)...... 6
Cybiotronics, Ltd. v. Golden Source Electronics Ltd., 130 F. Supp. 2d 1152 (C.D. Cal. 2001)…………………………………………………………………………………………12
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., --- F. Supp. 2d ----, 2008 WL 48358 (D. Mass. Feb. 25, 2008)…………………………………………………………………………19
DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006)...... 12
Dynacore Holdings Corp. v. U.S. Philips Corp, 363 F.3d 1263 (Fed. Cir. 2004)...... 11
Exxon Chem. Patents, Inc. v. Lubrizoil Corp., 64 F.3d 1553 (Fed. Cir. 1995) ...... 20
Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354 (Fed. Cir. 1999)...... 15
Goodwall ConsTr. Co. v. Beers ConsTr. Co., 991 F.2d 751 (Fed. Cir. 1993) ...... 30
Hiltgen v. Sumrall, 47 F.3d 695 (5th Cir. 1995)...... 5
Hollywood Fantasy Corp. v. Gabor, 151 F.3d 203 (5th Cir. 1998)...... 6
In re GPAC, 57 F.3d 1573 (Fed. Cir. 1995)……………………………………………………..27
Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993) ...... 6
KSR Intern. Co. v. Teleflex, 127 S.Ct. 1727 (2007)...... 22
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157 (Fed. Cir. 2007)...... 22
Markman v. Westview Instruments, Inc., 517 U.S. 371 (1996) ...... 20
Medtronic Navigation, Inc. v. BrainLab Medizinische Computersystems Gmbh, 2008 WL 410413 (D. Colo. Feb. 12, 2008)………………………………………………...…………………...13
ii
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Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352 (Fed. Cir. 2007) ...... 11
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988) ...... 28
NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) ...... 6
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997)...... 6
Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) ...... 20
Smith v. Transworld Drilling Co., 773 F.2d 610 (5th Cir. 1985) ...... 5
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347 (Fed. Cir. 1999) ...... 15
Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360 (Fed. Cir. 1992) ...... 6
Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356 (Fed. Cir. 2004)...... 20
Tegal Corp. v. Tokyo Electron Co., 248 F.3d 1376 (Fed. Cir. 2001)…………………………...14
Templet v. HydroChem Inc., 367 F.3d 473 (5th Cir. 2004) ...... 5
Trell v. Marlee Elec. Corp., 912 F.2d 1443 (Fed. Cir. 1990)……………………………………12
Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989) ...... 8
Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348 (Fed. Cir. 2003)...... 14
Zoltek Corp. v. United States, 51 Fed. Cl. 829 (2002)...... 5
STATUTES
28 U.S.C. § 1961...... 30
35 U.S.C. § 102...... 15
35 U.S.C. § 103...... 22
35 U.S.C. § 271...... 6
iii
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I. INTRODUCTION Defendant Desire2Learn Inc. (“D2L”) renews the motions for judgment as a matter of
law that made prior to the Court’s submitting the case to the jury and moves for judgment as a
matter of law under Federal Rule of Civil Procedure 50(b), or for a new trial under Rule 59.
II. UNDISPUTED MATERIAL FACTS 1. Blackboard Inc. (“Bb”) asserted claims 36-38 of the ’138 patent. Claims 37 and 38
depend from claim 36. (PX-1, at Col. 32.)
2. Bb failed to prove that each and every step of the claims takes place in the United States.
For D2L Canadian-hosted clients the Learning Environment resides on servers located in
Canada. D2L installs and upgrades the Learning Environment for all clients from its offices in
Canada. (Tr. 565:15-566:2, 566:14-22, 588:11-589:15, 1291:10-1292:24, 1508:2-13, 1556:17-
1557:6, 1557:23-1558:11, 1874:11-1876:8.)1
3. Bb failed to prove that a single entity performs each step of the asserted claims. Step (a)
of claim 36 is performed, if at all, by D2L; steps (b)(i) and (b)(ii) are performed by instructors;
steps (c) and (d) are performed by the entity hosting the system. Claim 37 can only be
performed by student users. Claim 38 can only be performed by instructor users. (PX-1 at Col.
32; Doc. No. 110 at 26; Tr. 531:22-532:8, 1878:20-1879:9, 1879:13-1882:16, 1882:20-1883:22.)
4. Bb did not prove that D2L directs or controls any client, instructor, or student performing
any step recited in the asserted claims.
5. The ’138 patent issued on January 17, 2006. (PX-1.) Bb did not prove that all steps
recited in the asserted claims were performed after January 17, 2006.
6. D2L first had notice of the ’138 patent on July 26, 2006, hours before receiving notice of
the suit. Bb did not prove that D2L possessed a specific intent to infringe the ’138 patent after
1 All citations to the trial transcript are provided in Ex. A. 1
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July 26, 2006. Bb did not present substantial evidence that any steps recited in the asserted
claims were performed after July 26, 2006 by D2L, clients, or users. (DX-207; Tr. 1510:13-
1511:8, 1526:13-21.)
7. Bb sought lost profits in the amount of $15,455,375 based on sales to 19 D2L clients. 16
of the 19 D2L clients are hosted by D2L on servers in Canada. Only 3 of those clients -
Rochester Institute of Technology, University of Iowa and University of Arizona - are not hosted
by D2L in Canada. The lost profits claimed for those three self-hosted clients totaled $990,088.
(Ex. B.)
8. The application that matured into the ’138 patent was filed June 30, 2000 and relies on a
provisional application filed June 30, 1999 for priority. (PX-1, at 1.)
9. CourseInfo ILN v1.5 was on sale and in public use in November of 1997. The
CourseInfo ILN v1.5 manual was provided with the CourseInfo ILN v1.5 system at that time and
it describes the CourseInfo ILN v1.5 system. Both the CourseInfo ILN v1.5 system and manual
disclose every limitation of claims 36-38 of the ’138 patent. (DX-4; Tr. 261:1-263:3, 264:10-
266:11, 1193:23-1194:23.)
10. Serf 1.0 was on sale and in public use in September of 1997. The Serf 1.0 user guide was
provided with the Serf 1.0 system at that time and it describes the Serf 1.0 system. Both the Serf
1.0 system and user guide disclose every limitation of claims 36-38 of the ’138 patent. (DX-5;
Tr. 1714:15-23, 1715:24-1717:8, 1718:6-15, 1727:2-1729:4, 1737:6-1738:15, 1740:25-1743:13,
1748:4-7, 1749:6-20, 1754:9-1756:2.)
11. Claim 36 of the ’138 patent does not recite a “single login” limitation. The Court’s claim
construction of the term “user” as used in claim 36 does not recite a “single login” limitation.
2
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(PX-1, at Col. 32:20-44; Doc. No. 300, at 4; Tr. 361:20-362:10, 567:24-568:25, 583:7-12,
585:24-586:15, 1004:21-25, 1134:16-1135:20, 1162:20-1163:2.)
12. CourseInfo ILN v1.5 and Serf 1.0 were among the many course management systems on
sale and in public use at the time of the invention. (Tr. 1164:10-21.)
13. Role based access control (“RBAC”) was well known at time of the invention of the ’138
patent and had been applied in other fields. The numerous RBAC prior art printed publications
and patents describe the concept of a single login for multiple predetermined roles and
predefined permissions for access to files. (Tr. 1165:12-18, 1777:5-15, 1778:9-1779:15, 1811:1-
1814:4, 1815:6-1816:10, 1816:14-1817:1, 2069:12-24, 2071:3-21, DX-111; DX-112; DX-113;
DX-140; DX-180; DX-181; DX-186; DX-187.)
14. Bb was the primary contractor to the IMS project. Bb inventors attended IMS meetings
where the concept of a single login, multiple predetermined roles with predefined permissions,
and access and control to course files based on role was discussed. The Bb inventors were told
how to use RBAC for a course management system. (Tr. 1321:2-1323:9, 1332:6-1335:3,
1338:12-23, 1340:13-1345:14, 1352:22-1365:19, DX-11; DX-89; DX-128; DX-131; DX-167.)
15. The IMS 0.5 Specification expressly describes a user having multiple roles with access to
course files based on role. The IMS 0.5 Specification expressly adopted RBAC as defined by the
National Institute of Standards and Technology. (Tr. 1327:20-1328:22; DX-9 at 21, 44-45.)
16. The IMS 0.5 Specification provides a motivation to combine course management systems
with RBAC. (Tr. 1840:25-1844:6.)
17. Course management system prior art combined with RBAC prior art discloses each and
every limitation of claims 36-38 under the Court’s constructions or Bb’s interpretation of claim
36. (Tr. 1839:10-1840:10.)
3
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18. The PTO rejected all claims in the application that matured into the ’138 patent as
anticipated by the Cook patent. Bb argued that multiple roles distinguished the claims over the
prior art and amended its claims accordingly. (DX-104, 7/8/2004 Office Action; 12/1/2004
Amendment; Tr. 1846:18-1847:11-1848:3, 2007:11-2009:5.)
19. The Win patent discloses RBAC having a single login, multiple predetermined roles,
predefined permissions, and access to files based on role. (DX-145; Tr. 1848:4-20.)
20. The inventors of the ’138 patent were aware of RBAC at the time of their invention.
Claims 36-38 of the ’138 patent are obvious in view of the combination of the Cook and Win
patents. (DX-9, at 21, 44-45; DX-11, DX-89; DX-128; DX-131; Tr. 1849:16-1851:10.)
21. Bb failed to present substantial evidence of secondary considerations of nonobviousness. III. ISSUES PRESENTED 1. Whether there is substantial evidence to support a jury finding that each and every step of
the asserted method claims is performed within the U.S.
2. Whether there is substantial evidence to support a jury finding of specific instances of
infringement.
3. Whether D2L is entitled to a new trial on the issue of infringement in view of the weight
of the evidence demonstrating that the D2L Learning Environment does not have roles
set in advance within the system.
4. Whether there is substantial evidence to support a jury finding of D2L’s intent to induce
infringement.
5. Whether a reasonable jury could have concluded that the asserted claims are not
anticipated by CourseInfo ILN v1.5 or Serf 1.0 under the Court’s claim construction.
6. Whether D2L is entitled to a new trial on the issue of invalidity because the jury
impermissibly engaged in claim construction of the disputed claim term “user.”
4
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7. Whether a reasonable jury could have concluded that the asserted claims are not obvious
in view of the prior art in evidence.
8. Whether the jury’s finding with regard to lost profits damages is supported by substantial
evidence.
9. Whether entry of a post-judgment rate of interest in excess of the statutory rate is a
manifest error of law.
10. Whether the judgment should be amended to reflect the Court’s ruling that claims 1
through 35 are invalid.
IV. ARGUMENT Under Rule 50(b) of the Federal Rules of Civil Procedure, a party may file a renewed
motion for judgment as a matter of law (“JMOL”) and a joint request for a new trial if the Court
does not grant the party’s motion for JMOL made under Rule 50(a). A court should grant a
JMOL if no legally sufficient evidentiary basis exists for a reasonable jury to find as it did.
Hiltgen v. Sumrall, 47 F.3d 695, 699 (5th Cir. 1995). To avoid JMOL, Bb must have introduced
substantial evidence in support of each element of its claims. “Substantial evidence” means
evidence of such quality and weight that reasonable and fair-minded persons in the exercise of
impartial judgment might reach different conclusions; a mere scintilla of evidence is insufficient.
Bradley v. Armstrong Rubber Co., 130 F.3d 168, 174 (5th Cir. 1997).
Under Rule 59, a court should grant a new trial if it finds that the verdict is against the
weight of the evidence. Smith v. Transworld Drilling Co., 773 F.2d 610, 613 (5th Cir. 1985). In
making the determination, a court should weigh all the evidence and need not view it in the light
most favorable to the nonmoving party. Id. A court also may alter or amend a judgment
pursuant to Rule 59(e) to correct a manifest error of law or fact. Templet v. HydroChem Inc.,
367 F.3d 473, 479 (5th Cir. 2004). 5
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A court should enter a JMOL of invalidity where no reasonable jury could determine that
the patent is not invalid in view of the prior art. Celeritas Technologies, Ltd. v. Rockwell Intern.
Corp. 150 F.3d 1354, 1361 (Fed. Cir. 1998) (reversing denial of JMOL on anticipation);
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1485 (Fed. Cir. 1997) (affirming grant of
JMOL on obviousness). A court should review an award for lost profits damages for substantial
evidence. Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1372 (Fed. Cir.
1992); Hollywood Fantasy Corp. v. Gabor, 151 F.3d 203, 213 (5th Cir. 1998).
A. Bb Failed to Present Substantial Evidence to Support a Jury Finding That All Steps of Claim 36 Are Performed Within the United States. A defendant does not directly infringe a method claim by the importation, offer to sale
and sale of products and services in the U.S. Standard Havens, 953 F.2d at 1374. A defendant
can directly infringe a method claim only by practicing the patented method. Id.; Joy Techs.,
Inc. v. Flakt, Inc., 6 F.3d 770, 774-75 (Fed. Cir. 1993). A defendant does not practice a method
“within” the U.S. as required by 35 U.S.C. § 271(a) unless it performs every step in the U.S.
NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005) (no infringement of
a method claim where the alleged infringer used a component in Canada); Zoltek Corp. v. United
States, 51 Fed. Cl. 829, 836 (2002) (a party practicing even one step of a patented process
outside the U.S. avoids infringement liability). There cannot be inducement of infringement
under 35 U.S.C. § 271(b) or infringement under 35 U.S.C. § 271(c) unless there is direct
infringement. C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 673 (Fed.
Cir. 1990). The undisputed evidence showed that D2L did not practice the patented method in
the U.S. for either hosted or non-hosted clients.
1. D2L Hosted Clients. D2L is a Canadian company with its headquarters in Canada.
(Tr. 638:8-10.) For clients hosted by D2L in Canada, as Jones acknowledged, D2L supplies the
6
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hardware and software that runs the system. (Tr. 796:9-12.) D2L runs this software on hardware
located in Canada. (Tr. 565:15-566:8, 796:18-20.) Jones testified that, for hosted clients, all of
the conditions giving rise to infringement occur in D2L’s facilities in Canada. (Tr. 796:13-17.)
According to Jones, the “establishing step” of claim 36(a) occurs when D2L installs or
upgrades the product. (Tr. 667:5-22.) For hosted clients, D2L performs all installations and
upgrades from its Canadian offices on servers in Canada.2 (Tr. 565:15-566:8, 796:18-20,
1292:7-20, 1508:2-13, 1556:17-1557:6, 1557:23-1558:11.) Jones also claimed that D2L
performs Step 36(a) when it operates the software. (Tr. 669:7-23.) But the software operates in
Canada on servers located in Canada (Tr. 565:15-566:8, 796:18-20), so this step again occurs
outside of the U.S. Steps 36(c) and (d) likewise occur, if at all, in Canada. Steps (c) and (d)
require “providing a predetermined level of access and control” for a student user and non-
student user respectively. The servers and databases located in Canada determine whether a user
can gain access to a particular file and if so, provide that file to the user. (Tr. 565:15-566:2,
588:11-589:15.) Likewise, step 36(b)(iii), which relies on the server and databases, must also
occur where those systems are hosted. Jones testified that D2L performs these steps by installing
or upgrading the software in Canada. (Tr. 687:9-12.) Jones testified that D2L also performs
these step when it operates the software system. (Tr. 687:13-18.) But, it is undisputed that all of
D2L’s servers and databases that operate the software for hosted clients are in Canada. (Id.) As
Bb acknowledged, no dispute exists with respect to these facts. (Post-Trial Hearing, 03/10/08,
Tr., at 71:4-73:7, 75:10-20.)
2 During trial, Bb placed great but unwarranted weight on Cara Dekker’s testimony. Bb asked Ms. Dekker whether “aspects of the installation ever occurred when a person on the installation services team was at a U.S. client’s site,” and she answered “yes.” (Tr. 535:3-13.) Bb never followed up: which aspects, which client, whether the client was hosted, which member of the installation team was in the U.S., what that individual did, or when that installation took place (before or after the issuance of the patent or D2L’s knowledge of the patent). This question and answer does not constitute substantial evidence that D2L performs or has performed Steps 36(a), (c) or (d) in the U.S. for any specific client or clients. 7
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Bb also argued that because users in the U.S. use a web browser to connect to D2L’s
Canadian servers over the Internet, D2L infringes when it hosts clients in Canada. (Tr. 565:15-
566:2, 566:14-22.) But this makes no difference. It is the servers and databases that establish
the capability of the systems and provide access to users; these servers and databases reside in
Canada. These facts are identical to NTP, where the “interface” used in performing the claimed
method was in Canada. NTP, 418 F.3d at 1318.
Because the undisputed evidence shows that D2L does not perform steps 36(a), (b)(iii),
(c), and (d) in the U.S. for its hosted clients, the Court should grant a JMOL to D2L as to its
hosted clients. Id. at 1318 (practicing even one step of a method outside the U.S. defeats
infringement); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989)
(holding that dependent claims are not infringed unless the independent claim is also infringed).
Eliminating the Canadian-hosted clients reduces Bb’s lost profits claim from $2.5 million
to $990,088. See infra at 28-29. The Court also should amend the injunction expressly to
exempt any current or future clients hosted by D2L in Canada
2. Non-hosted clients. The Court also should grant JMOL with respect to D2L’s non-
hosted clients. As with hosted clients, Bb did not submit evidence showing that D2L performed
steps in the U.S. when D2L installed or upgraded any particular client. Nor does D2L run the
software on its servers for non-hosted clients; the clients run the software. As a matter of law,
D2L does not perform Steps 36(a), (b)(iii), (c), and (d) in the U.S. for non-hosted clients.
B. Bb Failed To Provide Substantial Evidence Showing that Any Single Entity Performs Each and Every Step of the Asserted Claims. Bb failed to establish that D2L or any of its clients perform each and every step of claims
36-38. Other than the narrow exception of joint infringement, direct infringement only occurs
when a single entity performs all steps of the claimed method. BMC Resources, Inc. v.
8
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Paymentech, L.P., 498 F.3d 1373, 1381 (Fed. Cir. 2007) (direct infringement is limited to those
who practice each and every element of the claimed invention.); Joy Techs., 6 F.3d 770 at 773
(holding that to infringe a method claim, every limitation must be found in the accused process).
The claim language requires that end users, not D2L, perform steps (b)(i) and (b)(ii).
James Austin of the University of Arizona testified that D2L does not create course files (step
(b)(i)) and does not upload files to the server (step (b)(ii)).3 (Tr. 531:22-532:8.) Rather, users of
the Learning Environment system perform the steps of generating course files, and transferring
course files to the server. (Id. at 1879:13-1880:20.)
On the other hand, step (a) of claim 36 cannot be performed by D2L’s clients or end users
of the Learning Environment System. (Id. at 1878:20-1879:9.) The Court construed
“establishing that each user is capable of having predefined characteristics indicative of multiple
predetermined roles in the system” as “establishing that discrete roles and their associated
characteristics to which a user can be multiply assigned are set in advance within the system”
(Claim Constr. Order, Doc. No. 110 at 11 and 26.) Accordingly, to infringe roles must be set in
advance within the system, not by clients or end-users. Further, steps (b)(iii), (c), and (d) are
performed by the entity that hosts the D2L software. Thus, for hosted clients D2L performs
steps (b)(iii), (c), and (d), while for non-hosted situation the client hosting its own system
performs these steps. (Tr. 1880:21-1882:16.)
Finally, under the plain language of claims 37 and 38, only users, not D2L or clients, can
perform the steps of:
• the student user “creating” and “transferring” a student file” (claim 37); and
3 To the extent that Bb contends that D2L performs steps (b)(i) and (b)(ii) in those instances when it converts a client’s existing course file from one format to another format, this step is performed in Canada and therefore cannot establish infringement by D2L. (Tr. 1425:16-1427:17). 9
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• the instructor user “accessing,” “reviewing,” and “assigning a grade to” the student file” (claim 38).
(PX-1, at Col. 32; Tr. 1882:20-1883:22.)
Nor did Bb provide evidence sufficient to establish the narrow exception of joint
infringement. Actions by multiple parties to perform the required elements of a claim cannot
together constitute joint direct infringement unless one party exercises direction or control over
the other. BMC Resources, 498 F.3d at 1380-81. An arms-length licensing agreement is
insufficient as a matter of law to establish direction and control. Id. at 1380 (“No court has ever
found direct infringement based on the type of arms-length business transaction presented
here.”).
Bb did not present any evidence that D2L directs or controls the clients or users who
perform any step of the claims. (Tr. 1883:23-1884:11.) Bb did not present any evidence that
D2L directs or controls a “student user” or “instructor user” to perform any step. An arms-length
licensing agreement, such as the agreements between D2L and its clients, does not establish joint
infringement. Id. Bb failed to show that training sessions or manuals provided by D2L direct or
control clients and users to practice any of the steps of Claims 36-38. Instead, the opposite is
true; D2L instructs clients and users on how to create their own roles, modify permissions, and
customize the system to meet their specific needs. (PX-85.) Accordingly, D2L and its clients
cannot as a matter of law jointly infringe the asserted claims.
C. Bb Failed to Present Sufficient Evidence of Specific Instances of Infringement. A plaintiff cannot prove that a method claim is infringed simply by showing that a
product can be used in an infringing way. Joy Techs., 6 F.3d at 773 (every limitation in method
claim must be in the accused process); Standard Havens, 953 F.2d at 1374 (method claim not
directly infringed by providing an apparatus capable of performing the claimed process). The 10
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plaintiff must introduce evidence of actual use of the infringing method. Cardiac Pacemakers,
Inc. v. St. Jude Medical, Inc., 418 F. Supp. 2d 1021, 1040 (S.D. Ind. 2006); Dynacore Holdings
Corp. v. U.S. Philips Corp, 363 F.3d 1263, 1274 (Fed. Cir. 2004) (indirect infringement must be
tied to actual identified instances of direct infringement). Expert testimony, without evidence of
actual users having used the system in an infringing manner or surveys of the defendant’s
customers, is legally insufficient to establish infringement. ACCO Brands, Inc. v. ABA Locks
Mfrs. Co., Ltd., 501 F.3d 1307, 1313 (Fed. Cir. 2007). Even expert testimony combined with the
defendant’s own documentation describing the accused system is legally insufficient to establish
direct infringement. Id.
Here, Bb failed to establish any specific instances of actual use of the methods claimed
by the ’138 patent by D2L or any of the clients Bb alleges infringe the patent. Bb did not
compare the claims step-by-step with the use of D2L’s software by any specific client—not even
one. Bb failed to present any evidence showing that D2L’s clients use sample roles, only that
some clients have a role titled “student” or “instructor.” Bb failed to present any evidence
showing that D2L’s clients generate course files and transfer course files. Jones admitted that he
had not actually witnessed any infringement by anyone. (Tr. 575:16-19.) He further admitted
that he did not even investigate the database information for a number of the universities. (Id. at
783:4-784:24.)4 For this reason, the Court should grant D2L’s motion for judgment as a matter
of law of no infringement.
D. Bb Failed to Present Substantial Evidence That All Steps of Claim 36 Were Performed After the Issuance of the ’138 Patent. A method claim is not infringed if even a single step of a multi-step method claim is
performed before the patent issues. Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1360
4 The only evidence that Bb presented of anyone performing any steps is that of D2L’s performance of the sanity test. However, the sanity test is performed by D2L in Canada. (Id. at 1560:14-1563:6.) 11
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(Fed. Cir. 2007). Likewise, there can be no indirect infringement of a method claim when steps
were performed prior to the defendant’s learning of the patent. See Cybiotronics, Ltd. v. Golden
Source Elec. Ltd., 130 F. Supp. 2d 1152, 1165-66 (C.D. Cal. 2001); DSU Med. Corp. v. JMS Co.,
Ltd., 471 F.3d 1293, 1304-1305 (Fed. Cir. 2006); Trell v. Marlee Elec. Corp., 912 F.2d 1443,
1447-48 (Fed. Cir. 1990).
According to Jones, step 36(a), the “establishing step,” takes place when D2L installs the
Learning Environment system. (Tr. 642:19-643:4.) Bb failed to present evidence establishing
that D2L installed the Learning Environment after the issuance of the patent. Instead, the
evidence is that D2L installed the Learning Environment system for many U.S. clients well
before the patent issued on January 17, 2006. (See Tr. 1973:15-25, 1975:21-1976:6, 1976:25-
1977:8, 1977:13-18, 1983:5-12, 1984:1-14.) While Jones also opined that D2L performs this
step when it updates the system, (Id. at 667:5-668:23), the opinion is legally wrong for two
reasons. First, D2L performs all upgrades from its offices in Canada, so those upgrades cannot
perform a step of a method claim in the U.S. (Id. 1292:7-24.) Second, other than the few clients
upgraded to version 8.2.2, D2L has not performed any upgrades related in any way to roles,
sample roles, or role categories since the ’138 Patent issued on January 17, 2006. (Id. at 606:13-
21, 1291:10-1292:7, 1878:1-19.)
Jones also opined that D2L performs step 36(a) on a daily basis for its hosted clients. (Id.
at 669:7-23.) This opinion runs directly counter to the Court’s claim construction that
“establishing that discrete roles and their associated characteristics to which a user can be
multiply assigned are set in advance within the system.” (Doc. No. 110, at 24.) The Court
expressly rejected Bb’s proposed construction “that user roles and associated characteristics can
be created downstream, i.e., after the system is installed and operating.” Id. at 9. Instead, the
12
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Court observed “that the claim language suggests that predetermined user roles and associated
characteristics are settled or decided in advance within the framework of the system.” Id. The
Court should not permit Bb to rewrite the Court’s claim construction to suit its infringement
theories. See Medtronic Navigation, Inc. v. BrainLab Medizinische Computersystems Gmbh,
2008 WL 410413, at *6 (D. Colo. Feb. 12, 2008) (“The opinions of [Bb’s] expert[] were crafted
to fit the infringement theories put forward by [Bb’s] counsel, and those theories were legally
and factually untenable in light of the court’s claim construction. [Bb] pursued a strategy of
giving superficial recognition to the court’s claim construction rulings, while pressing its own
interpretations of the claims.”).
Bb must establish that each and every step was performed after the issuance of the patent.
As Bb did not attempt to introduce any evidence of the installation dates of D2L’s software to
establish that step (a) was performed after the issuance date of the patent, the Court should grant
JMOL of non-infringement as to all D2L clients. Alternatively, the Court should grant JMOL on
the direct infringement claims against D2L with respect to all clients who had their software
installed before January 17, 2006 and the Court should grant JMOL on the indirect infringement
claims against D2L with respect to all clients who had their software installed before July 26,
2006, the undisputed date on which D2L received learned of the ’138 Patent.
E. Bb Failed to Present Substantial Evidence to Support a Jury Finding That D2L Indirectly Infringes Pursuant to 35 U.S.C. § 271. The Court should grant JMOL to D2L with respect to Bb’s indirect infringement claims
for several reasons. First, as explained, Bb did not present evidence of specific acts of direct
infringement by D2L’s clients. Dynacore Holdings, 363 F.3d at 1274 (liability for indirect
infringement must relate to identified instances of direct infringement). Without this evidence, a
reasonable jury could not find D2L liable for active inducement or contributory infringement.
13
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Second, Bb had to prove specific intent to knowingly induce infringement. DSU Med.,
471 F.3d at 1304-1306. Mere knowledge of the acts alleged to constitute infringement, or of
possible infringement by others, does not amount to the requisite intent for an active inducement
claim. Id.; Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1364 (Fed. Cir. 2003). Bb
failed to present sufficient evidence to satisfy this high standard. Other than a few emails sent
within D2L hours before receiving notice of the suit, Bb did not present any evidence that D2L
knew of the patent prior to the date of the lawsuit. After D2L learned of the ’138 patent, it
vigorously defended itself against the lawsuit, presented legitimate defenses of non-infringement,
invalidity and unenforceability and filed an inter partes reexamination. The PTO ordered inter
partes reexam as to each and every claim of the ‘138 patent. As a matter of law, Bb cannot
satisfy the specific intent requirement for knowingly inducing infringement.5 See Cybiotronics,
130 F. Supp. 2d at 1165-66; DSU Med. Corp., 471 F.3d at 1304-1305.
Third, in addition to direct infringement and specific intent, Bb must prove that D2L took
affirmative acts to encourage others to perform all of the steps of the method claims in the U.S.
Id.; Tegal Corp. v. Tokyo Electron Co., 248 F.3d 1376, 1378-79 (Fed. Cir. 2001). Active
“inducement requires evidence of culpable conduct, directed to encouraging another’s
infringement.” DSU Med., 471 F.3d at 1306. Bb did not present any evidence that D2L
encouraged, through any affirmative acts or otherwise, its customers to perform each and every
step of the asserted claims of the ’138 patent within the U.S. As a matter of law, Bb cannot
establish this element of its active inducement claim and D2L is entitled to a judgment as a
matter of law.
5 Similarly, there can be no contributory infringement prior to knowledge of the patent. Trell v. Marlee Elec. Corp., 912 F.2d 1443, 1447-48 (Fed. Cir. 1990). 14
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F. Claims 36-38 Are Invalid as Anticipated as a Matter of Law Under a Proper Application of the Court’s Claim Construction Or, Alternatively, D2L is Entitled to a New Trial on the Issue of Invalidity. In determining that claims 36-38 of the ’138 patent are valid, the jury failed to apply the
Court’s claim construction of the term “user.” Although nothing in claim 36 requires or even
suggests a “single login” limitation, Bb’s trial tactic of having its witnesses repeatedly testify that
claim 36 requires a “single login” confused the jury. The Court’s supplemental instruction in
response to jury note number 3 did not answer the jury’s question or address the jury’s
difficulties in understanding whether in the Court’s definition using “a user name and password
= single logon.” (Tr. 2333:18 – 2344:11.)
Comparing the properly construed claims to the prior art of record, CourseInfo ILN v1.5
and Serf 1.0, no reasonable jury could find claims 36-38 were not invalid. A two-step process is
carried out to determine invalidity. First, the court determines the scope and meaning of the
claims to understand the subject matter for which patent protection is sought. See Smiths Indus.
Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1353 (Fed. Cir. 1999). Second, the fact finder
compares the properly construed claims with the prior art. Id. at 1354. Determining that a claim
is anticipated under 35 U.S.C. § 102 requires clear and convincing evidence. A single prior art
reference that either expressly or inherently discloses all of that claim’s limitations anticipates.
Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1365 (Fed. Cir. 1999).
1. Clear and Convincing Evidence Establishes that Claims 36-38 of the ’138 Patent Are Invalid as Anticipated Under a proper application of the Court’s construction of the term “user,” the evidence
establishes by clear and convincing evidence that CourseInfo ILN v1.5 and Serf 1.0, and the
corresponding documentation respectively describing those systems, anticipate claims 36-38.
The Court explicitly rejected Bb’s argument that “user” should be construed as a “user identity”
15
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or “user account,” as opposed to a single person having the ability to have multiple roles in
multiple courses. (Doc. No. 300.) Instead the Court construed “user” to mean:
a person who interacts with the system as an administrator, instructor, or student, and who accesses the system by logging on with a username and password, and then keys in information. Id. at 4.
The Court previously construed the establishing step of claim 36 to mean:
Establishing that discrete roles and their associated characteristics to which a user can be multiply assigned are set in advance within the system. (Doc. No. 110, at 24.)
Under the Court’s constructions, a person must be able to be assigned multiple discrete
roles. As the Court observed, while the person will have to login to the system to interact as one
of those roles, there is no requirement that the user be able to interact with the system with all of
their assigned roles or all of their assigned courses through a single login. (Tr. 2017:24-2019:3.)
Bb knew how to write a claim requiring a single login, but chose to omit that limitation from
claim 36. (Compare PX-1, claim 25, requiring access to all courses a user is registered in after a
single login.) Jones’s opinion that CourseInfo ILN v1.5 and Serf 1.0 do not anticipate the
asserted claims is based on the flawed premise, contrary to the Court’s claim construction, that
claim 36 requires a single login. (Id. at 2021:13-2022:9, 2030:7-12, 2035:2-18, 2037:16-22.)
Jones does not dispute that the prior art references disclose multiple roles, and thus comparing
the claims as construed by the court to the references, a reasonable jury could only conclude that
CourseInfo ILN v1.5 and Serf 1.0 each anticipate the asserted claims.
a. CourseInfo ILN v1.5 Anticipates Claims 36-38. The CourseInfo ILN v1.5 System and CourseInfo ILN v1.5 User Manual anticipate
claims 36-38. The testimony of Bb’s own witnesses proves as a matter of law that claims 36-38
of the ’138 patent are invalid as anticipated by the prior art, specifically the CourseInfo ILN v1.5
system. Bb’s witness, Dan Cane, testified that the CourseInfo ILN v1.5 system was on sale and
16
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in use in November of 1997. (Tr. 261:1-13.) The accompanying manual for CourseInfo ILN
v1.5, a printed publication, was also distributed in 1997. (Id. at 265:6-266:11; DX-4.) Cane
testified that the idea for the invention was conceived no earlier than the beginning of 1998. (Tr.
181:12-24.) The earliest filed provisional application to which the ’138 patent can claim priority
was filed June 30, 1999. Therefore, both the CourseInfo ILN v1.5 system and the manual
qualify as prior art pursuant to 35 U.S.C. §102(b).
Cane further testified that CourseInfo ILN v1.5 provided multiple courses with multiple
predefined roles with predetermined permissions. (Id. at 261:14-263:3; Ex. E, (Bb
Demonstrative).) Gilfus also testified that CourseInfo ILN v1.5 included multiple predetermined
roles with predefined permissions. (Id. at 1193:23-1194:23.) Cane also testified that course files
could be generated and transferred to a server for storage. (Id. at 264:10-16.) Cane further
testified that the steps recited in claims 37 and 38 could be performed using CourseInfo ILN
v1.5. (Id. at 264:17-265:5.)
As summarized below, the CourseInfo ILN v1.5 User Manual (DX-4) expressly discloses
each and every limitation of claims 36-38. Dr. Simmons further elaborated on the testimony
provided by the Bb inventors with regard to CourseInfo ILN v1.5 and the accompanying manual.
Claim Limitation CourseInfo ILN v1.5 Manual (DX-4) Trial Testimony 36(a) Bb2410507-508, -533 261:14-263:3; 1193:23-1194:23 36(b)(i) and (ii) Bb2410492, -503-504, -536 264:10-16 36(b)(iii) Bb2410507-508, -533 36(c) Bb2410492, -507-508, -533 261:14-263:3; 1193:23-1194:23 36(d) Bb2410492, -507-508, 533 37 Bb2410502, Bb2410517-519, -532 264:17-265:5 38 Bb2410517-519, -532 264:17-265:5
b. Serf 1.0 Anticipates Claims 36-38. The Serf 1.0 System and Serf 1.0 User Guide anticipate claims 36-38. Dr. Hofstetter
testified that the Serf 1.0 system was in use and on sale September of 1997. (Tr. 1714:15-23, 17
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1715:24-1717:1) A user guide (DX-5) was also provided with the Serf 1.0 system that fully
described the system. (Id. at 1717:3-8, 1718:6-1719:25.) Dr. Hofstetter also authored a paper
describing the Serf 1.0 system that was freely available in 1997. (Id. at 1727:2-1729:4; DX-
147.) As the Serf 1.0 system was in use and on sale and the printed publications (DX-5, DX-
147) were publicly available more than one year prior to June 30, 1999, each qualify as prior art
pursuant to 35 U.S.C. § 102(b).
Dr. Hofstetter also established that Serf 1.0 had multiple courses with multiple
predetermined roles with predefined permissions. (Id. at 1716:13-18, 1737:6-1738:15, 1749:6-
20.) Dr. Hofstetter further testified that Serf 1.0 disclosed the steps recited in claims 37 and 38.
(Id. at 1740:25-1743:13.) The Serf 1.0 User Guide also expressly discloses the features of claims
36-38, as testified to by Dr. Simmons. As summarized below, the Serf 1.0 User Guide (DX-5)
discloses each and every limitation of claims 36-38.
Claim Serf 1.0 User Trial Testimony Limitation Guide (DX-5) 36(a) 27, 52 1716:13-18; 1737:6-1738:15; 1749:6-20; 1819:6-16; 1820:8-19 36(b)(i) & (ii) 55-57, 59, 99 1820:23-1821:14 36(b)(iii) 52 1737:6-1738:15; 1749:6-20; 1821:15-1822:8 36(c) 83, 100-101 1822:18-1823:23 36(d) 53 1823:24-1824:8 37 56, 99-100 1740:25-1743:13; 1824:12-1826:19; 1826:20-1828:3 38 74
2. In the Alternative, D2L is Entitled to a New Trial on Invalidity. The Court’s construction of the term “user” explicitly rejected Bb’s argument that the
term “user” should be construed as a “user identity” or “user account.” (Doc. No. 300.) 6
Pursuant to the Court’s construction, under claim 36, a person may be assigned multiple discrete
roles. While the person will have to login to the system to interact as one of those roles
6 During trial, the Court further modified the construction of the term “user” from the bench, eliminating reference to the specific roles. 18
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(administrator, instructor, or student), there is no requirement that the user interact with the
system with all of their assigned roles or all of their assigned courses with a single login. (Id.)
Nevertheless, throughout trial, Bb’s witnesses, including Jones, testified as though claim
36 required a “single login” – disregarding the Court’s rejection of Bb’s proposed claim
construction and over D2L’s objections. However, the requirement of a single login is not
among the limitations of claims 36-38. The single login limitation is found in claim 25 where
“the user is provided with access to all courses with which the user is associated after entry of
the login sequence.” No such similar limitation appears in Claims 36-38.
Rather than accept the Court’s construction that rejected Bb’s interpretation of the term
“user,” which was contrary to the opinion of Jones and the position Bb took in its summary
judgment papers, Bb’s counsel relentlessly presented a case that misdirected the jury to an
improper interpretation of the claim language. Medtronic Navigation, Inc., 2008 WL 410413, at
*6 (assessing defendant’s fees against plaintiff’s attorneys for litigation misconduct following
grant of JMOL of noninfringement to defendant); Depuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., --- F. Supp. 2d ----, 2008 WL 48358, at *1, *3 (D. Mass. Feb. 25, 2008) (assessing
sanctions for ignoring Federal Circuit’s claim construction and repeatedly presenting expert
testimony adding limitations to the claims contrary to the construction). Bb had its expert testify
repeatedly that claim 36 includes a “single login” limitation, contrary to the Court’s construction
entered just prior to trial and even though the words are expressly absent from the language of
the claim.7 Bb continued to press its “single login” argument through the testimony of its fact
witnesses and in closing argument, in essence urging the jury to nullify the Court’s claim
construction.
7 This is the very argument Bb presented in opposition to supplemental claim construction and that the Court rejected. (Doc. No. 259, at 11, 14.) 19
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Construction of claim terms of a patent is exclusively within the province of the court.
Markman v. Westview Instruments, Inc., 517 U.S. 371, 372 (1996). “The duty of the trial judge
is to determine the meaning of the claims at issue, and to instruct the jury accordingly.” Exxon
Chem. Patents, Inc. v. Lubrizoil Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (citations omitted).
The district court is to provide the jury with instructions adequate to ensure that the jury fully
understands the claim construction rulings and what the claims cover. Sulzer Textil A.G. v.
Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004).
An erroneous instruction on claim interpretation that affects the jury’s decision on
anticipation is grounds for a new trial. Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d 1361,
1381 (Fed. Cir. 2005). A party seeking to set aside a judgment based on erroneous jury
instructions must establish that (1) it made a proper and timely objection to the jury instructions,
(2) those instructions were legally erroneous, (3) the errors had prejudicial effect, and (4) it
requested alternative instructions that would have remedied the error. For prejudicial error to
exist, there must have been sufficient evidence proffered to support anticipation under a correct
construction. Id. Not clearly instructing the jury as to the meaning of term “user” was not
harmless and D2L is entitled to a new trial on at least the issue of anticipation. As described
above, the testimony and evidence clearly establishes prior art systems and publications that
disclosed multiple predetermined roles and predefined permissions through multiple logins.
Jury note number 3 demonstrates that the misleading trial tactics employed by Bb’s
counsel plainly influenced the jury and that the jury did not fully understand the Court’s
construction of the term user. Jury note number 3 asked whether “In your definition, does using
‘a’ user name and password = single logon?” Over the objection of D2L (Id. at 2343:23-2344:9)
the Court responded to the jury with “The court has provided definitions that you must use.
20
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Please refer to the jury instructions for guidance as to the meaning of words that are not
specifically defined.” (Id. at 2343:13-17.) D2L argued for the Court to provide a specific
response to jury to the meaning of the term “user” that would have eliminated any question the
jury may have to the meaning of the term.8 (Id. at 2334:16-2335:12.) However, the Court
rejected this approach. (Id. 2335:16-2336:9.)
The Court’s response to the jury did not adequately instruct the jury on the construction
of the term “user” and ultimately the scope of claim 36. Consequently, the jury necessarily and
impermissibly engaged in claim construction. To prevent the jury from construing the term
“user,” a specific supplemental instruction to the jury as to meaning of the term was necessary.
A specific instruction was particularly warranted in view of Bb’s constant and improper
presentation throughout trial that claim 36 includes a “single login” limitation. Had the Court
adopted D2L’s instruction, no reasonable jury could have found claims 36-38 not invalid.
Therefore, D2L is entitled to a judgment as matter of law that claims 36-38 are invalid as
anticipated or, in the alternative, D2L is entitled to a new trial on the issue of anticipation in view
of the jury’s improper performance of claim construction.
G. Claims 36-38 Are Obvious as a Matter of Law. D2L established by clear and convincing evidence that claims 36-38 of the ’138 patent
are obvious. Patent claims are obvious “if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a). “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield predictable results.”
8 The Court also overruled D2L’s objections to the instruction given to the jury. Tr. 2340:21-2341:3; 2343:6-12; 2343:24-2344:9. 21
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KSR Intern. Co. v. Teleflex, 127 S.Ct. 1727, 1739 (2007). Consideration must be given to
whether the claimed improvement is more than the predictable use of prior art elements
according to their established functions. Id. at 1740. Indeed, a patent that is a combination of an
old idea and commonly available newer technology is obvious. Leapfrog Enter., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). “When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR Intern., 127 S.Ct. at 1740.
Claims 36-38 of the ’138 patent do nothing more than combine familiar elements in a
way that yields predictable results. Indeed, the claims recite a method that combines the
traditional elements of the education process with the Internet – an adaptation of a very old idea
using commonly available newer technology. Leapfrog Enter., 485 F.3d at 1161-62 (finding
claimed device obvious as a matter of law as an electronic adaptation of commonplace
mechanical device that accomplished the underlying goal of the claim).
1. Claims 36-38 Are Obvious Combinations of Prior Art Elements. For centuries participants in higher education (users) have been both students and
teachers, e.g., a teaching assistant in Biology 101 and a student in Zoology 501 (multiple
predetermined roles). Teachers inherently have had more access to course materials than
students (predefined level of access and control to course files). Likewise, students completing
assignments, turning assignments in to instructors, instructors grading assignments and providing
grades to students, even using a computer, was not new at the time of the invention.
The inventors and Bb’s expert confirmed that the invention is a combination of known
features previously conceived of and reduced to practice by others. Jones testified that the
primary distinguishing feature of the invention over the prior art is the capability of a user to 22
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have access to all of his roles in all courses. (Id. at 2045:16-24.) The asserted claims are
obvious, even under Jones’s incorrect claim construction. Indeed, Jones testified that the concept
of student and teacher roles have been around for a long time. (Tr. 739:7-21.) Chasen testified
that a software program for schools that is available to students and instructors was not new. (Id.
374:10-17.) Cane testified that the inventors did not invent role based access control (“RBAC”)
where a user has multiple roles or where a user has a single login. (Id. at 271:14-22.) Gilfus
testified that several systems in existence at the time of the invention allowed a user to have
access to all of her courses with a single login. (Id. at 1164:5-21.) Gilfus further testified that
course management systems using RBAC were available at the time of the invention. (Id. at
1165:12-18.) Cane also testified that the limitations recited in claims 37 and 38 were met by
CourseInfo ILN 1.5, the inventors’ product that preceded conception of the claimed invention of
the ’138 patent. (Id. 264:10-265:5.) The only conclusion that can be drawn from the inventors’
own testimony is that the invention is an obvious combination of elements, if not already
implemented in existing course management systems, then merely reinterpreted for the Internet.
Additionally, Cane testified that CourseInfo 2.0, which Bb asserts was the first
embodiment of the ’138 patent, incorporated RBAC. (Tr. 271:23-272:2.) Jones testified that a
role is a collection of permissions that define what a user can do in the system and is
implemented by RBAC. (Id. at 734:25-735:19.) However, Dr. Simmons testified that RBAC
and the concept of employing multiple user roles to control access to computer files was well
known in the art before the date of the invention. (Id. 1777:5-15, 1778:9-1779:15, 1811:1-
1812:23.) In particular, Dr. Simmons testified that numerous prior art papers and patents
described RBAC, including the concept of multiple predetermined user roles via a single login
providing a predefined level of access and control to files. (Id. at 1812:24-1814:4, 1815:6-
23
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1816:10, 1816:14-1817:1, DX-113; DX-140; DX-180; DX-181.) Critically, Jones agreed that
RBAC was well known in the area of computer security prior to the date of the invention. (Tr.
2069:12-24.) Jones further testified that RBAC is a form of computer security which had been
applied to various other fields such as banking and medicine. (Id. at 2071:3-21.)
Thus, the concept of RBAC was well known in the field of computer security and
applying RBAC in education was an obvious solution. Publications and patents disclosing
RBAC discuss its application in various settings such as banking, healthcare, and business to
provide users multiple predetermined roles with a level of access and control to files. Applying
RBAC to an education setting was an obvious extension and simply an obvious solution to the
age old problem - in education, people can have multiple roles. KSR Intern., 127 S.Ct. at 1740
(“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”)
Moreover, the concept of multiple roles with access based on role, and in particular using
RBAC to satisfy this need in education, was explicitly disclosed to the inventors through their
work on the IMS project and the IMS 0.5 Specification. (DX-9, at 21, 44-45.) The IMS project
was Bb’s sole focus and Chasen testified that it was the sole source of revenue for Bb from its
inception in 1997 until the merger with CourseInfo in 1998. (Tr. 392:11-393:1.) Mr. Griffin
testified that the concept of multiple roles with access based on role was addressed in IMS
meetings attended by Pittinsky, an inventor of the ’138 patent, as early as February 1997. (Id.
1321:2-1323:9, 1332:6-1335:3, 1338:12-23; DX-89.) The same concepts of RBAC were further
discussed and identified as important features of the IMS project in meetings held in June 1997
and attended by Pittinsky and Chasen. (Tr. 1340:13-1345:14; DX-131.) The same concepts
24
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were again discussed with Bb personnel at their offices in September of 1997. (Tr. 1360:2-
1365:19; DX-128.)
The IMS 0.5 Specification, published April 29, 1998, expressly described a user having
multiple roles and access to course files based on roles.
In the IMS, as in many groupware products today, users participate in a group in the context of a particular role. For example, in the Biology 101 group, Mary Clark may be playing the role of a student. In this respect, she will only have access to those items that are granted to students. In addition, students are an identifiable group of people, so the teacher can send an e-mail to all of the students without having to address them one-by-one. In the Biology Study Group contained in the Biology 101 group, Mary plays the role of Group Leader. As such, she is able to invite new users into the group, add resources to the group, and otherwise manage the group.
(DX-9, at 21.)
The IMS project adopted the RBAC model developed by the National Institute of
Standards and Technology (“NIST”). (Tr. 1327:20-1328:22, 1368:5-13; DX-9 at 44-45.) RBAC
with multiple roles and access to course files from a single login was intended to be implemented
in the IMS Prototype that was developed by Bb, including Alcorn, an inventor of the ’138 patent.
(Tr. 1352:22-1360:1; DX-167.) Critically, in June 1998, Alcorn corresponded with Mr. Barkley
of NIST, the leader of the security group for IMS, regarding technical aspects of implementing
RBAC. (DX-11.) Additionally, Dr. Simmons testified that the IMS 0.5 Specification, which
expressly adopts RBAC as the means of providing user security in a course management system,
provides explicit motivation to combine. (Tr. 1840:25-1844:6.) It is undisputed that the IMS
project informed the inventors of the concept of providing users with the capability of having
multiple roles with access to course files based on role and that RBAC, known in the computer
security field, was a solution.
In view of the express teaching of the IMS project and the specification to combine
RBAC with a course management system, it would have been obvious for the inventors to 25
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combine their existing CourseInfo ILN v1.5 course management system or the Serf 1.0 system
with RBAC to achieve the purported invention. This is particularly true in view of the
substantial role of Bb and the inventors’ in the IMS project and their participation in meetings
where these concepts and combinations were expressly addressed.
2. Claims 36-38 Are Obvious in View of the Cook and Win Patents. Claims 36-38 are also obvious in view of Cook, U.S. Patent No. 6,201,948, (DX-199) in
combination with Win, U.S. Patent No. 6,453,353, (DX-145). (Tr. at 1844:10-1848:20, 1849:16-
1851:10.) During prosecution of the ’138 patent, the PTO rejected all claims as anticipated by
Cook. (DX-104, 7/8/2004 Office Action; Tr. 1846:18-1847:11) Cook relates generally to a
computerized learning system. (DX-199; Tr. 1845:7-18.) Blackboard ultimately overcame the
rejection based on Cook by amending the claims to include limitations directed at multiple user
roles. (DX-104, 12/1/2004 Amendment; Tr. 1847:13-1848:3.) Blackboard did not otherwise
alter its claims to overcome Cook, and thus Cook combined with a reference disclosing multiple
predetermined roles and access to files based on role renders claims 36-38 obvious. Cook, filed
March 16, 1998, qualifies as 102(e) prior art. (DX-199.)
The Win patent, “Role-Based Navigation of Information Resources,” expressly teaches
multiple predetermined roles with predefined levels of access and control to files – the
limitations not disclosed by Cook. (DX-145; Tr. 1848:4-20) Win, filed February 12, 1999, is
102(e) prior art. The Abstract of Win summarizes Win’s teachings of RBAC:
A single secure sign-on gives a user access to authorized Web resources, based on the user’s role in the organization that controls the Web resources. The information resources are stored on a protected Web server. A user of a client or browser logs in to the system. A runtime module on the protected server receives the login request and intercepts all other request by the client to use a resource. The runtime module connects to an access server that can determine whether a particular user is authentic and which resources the user is authorized to access. User information is associated with roles and functional groups of an organization to which the user belongs; the roles are associated with access privileges. The access server connects to a registry server that stores information about users, roles, functional groups, resources, and associations among them. The access server and registry server exchange encrypted information that authorized the user 26
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to use the resource. The user is presented with a customized Web page showing only those resources that the user may access. Thereafter, the access server can resolve requests to use other resources without contacting the registry server. The registry server controls a flexible, extensible, additive data model stored in a database that describes the user, the resources, roles of the user, and functional groups in the enterprise that are associated with the user.
(Id. at Abstract.)
Dr. Simmons testified that claims 36-38 are obvious in view of the combination of Cook
and Win. (Tr. 1849:16-1851:10.) As described above, it would have been obvious for one
skilled in the art to combine Cook (computerized learning) with Win (RBAC) to provide a
course management system with multiple roles and access and control to course files based on
role. Bb’s alleged contribution to the crowded field of course management systems, multiple
roles using RBAC, was expressly considered and disclosed by the IMS Project while Blackboard
was the primary technical contractor to the IMS Project. Thus, the inventors did not even require
a motivation to combine a RBAC reference such as Win with a course management system
because the combination had been expressly disclosed to the inventors.
3. Secondary Considerations Are Unrelated to the Claimed Invention and Fail to Overcome Evidence of Obviousness. While a determination of obviousness can be rebutted by secondary considerations, the
proponent of secondary evidence must establish a nexus between the evidence and the merits of
the claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). Further, objective
evidence of nonobviousness, including commercial success, does not overcome a conclusion of
obviousness in view of prior art that establishes a strong case of obviousness. Newell Cos. v.
Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988).
The evidence presented at trial fails to overcome a finding of obviousness of the ’138
patent. Bb primarily pointed to commercial success of its current products and the Smithsonian
Award as objective indicia of nonobviousness. However, Bb failed to establish the commercial
success of its products is tied to the inventive feature of multiple predetermined roles with 27
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predefined permissions. Jones testified that the ’138 patent does not cover all roles, but a subset
consisting of predetermined roles with predefined permissions. (Tr. 744:6-745:14.) Bb
presented no evidence demonstrating commercial demand for multiple predetermined roles with
predefined permissions. In contrast, the evidence is that neither D2L nor Bb promote the feature
and that there is no consumer demand for the feature. (Id. at 846:15-25, 983:7-13, 986:11-25,
1162:20-1163:2, 1589:9-1592:6, 1658:10-1660:17; DX-258.) Blackboard also placed great
emphasis on the Smithsonian Award it received in 2000 for its CourseInfo 4.0 product. (Tr.
1153:24-1154:23; PX-289.) However, absent from the case study, which is the sole basis for
conferring the award, is any mention of multiple roles, multiple courses, single login, or any
other nexus to the purported invention. (Tr. 1942:9-21, 1944:10-1948:7; DX-661.) Finally,
Jones’s conclusory testimony on objective indications of non-obviousness, areas in which he
holds no specialized training or experience, fails to establish any nexus to the patented invention.
To the extent that Blackboard’s objective evidence provides any indicia of non-
obviousness, it fails to overcome the strong showing that claims 36-38 of the ’138 patent are
obvious. Therefore, D2L is entitled to a judgment as matter of law that claims 36-38 are an
obvious adaptation of well-known educational process; in view of Course Info 1.5 or Serf 1.0
when combined with the RBAC control prior art; and in view of the combination of the Cook
and Win patents. No reasonable jury could have found otherwise.
H. The Lost Profits Damages Award Is Not Supported by Substantial Evidence. Bb sought lost profits from 19 D2L clients in the amount of $15,455,375. (Tr. 927:14-
928:6.) 16 of the 19 D2L clients are hosted by D2L in Canada. (Ex. B; PX-145; 565:15-566:2.)
Only three D2L clients, Rochester Institute of Technology, University of Iowa and University of
Arizona host themselves in the U.S. (PX-145.) Accordingly, only 16% of the clients (3 out of
28
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the 19) were self-hosted in the U.S. The total amount of lost profits claimed by Bb for those
three self-hosted customers is $990,088. (Ex. B; Ex. C, Supp. Expert Rpt. of Dr. Ugone, Ex. 44.)
The jury awarded $2,500,000, which represents 16% of the requested lost profits. This
award is consistent with the fact that only 16% of the 19 clients were self-hosted in the U.S.
Indeed, as the Court observed, the jury more likely properly applied the law and sought to
exclude from its verdict clients that D2L hosts in Canada. (Tr. 2488:10-2489:5.) By basing the
lost profits award on the percentage of self-hosted clients, the jury awarded far more than what
Bb claimed for those clients. The only lost profit breakdown presented to the jury was via
testimony of Dr. Ugone and a demonstrative exhibit shown to the jury during Dr. Ugone’s direct
testimony. (Id. at 927:14-928:19; Ex. B.) That demonstrative to which Ugone referred
establishes that Bb was seeking $990,088 in lost profits for the three self-hosted clients. It is
unreasonable, unfair and excessive to award Bb with over 2.5 times more in lost profits than it
was seeking for those three clients. Accordingly, the Court should amend judgment to reduce
the lost profit award from $2.5 million to $990,088, the amount of lost profits sought by Bb for
the three self-hosted clients.
I. Entry of a Post-Judgment Rate of Interest in Excess of the Statutory Rate is a Manifest Error of Law. The United States Code mandates that post-judgment interest shall be calculated from the
date of the entry of the judgment, at a rate equal to the weekly average 1-year constant maturity
Treasury yield. 28 U.S.C. § 1961(a); Goodwall Constr. Co. v. Beers Constr. Co., 991 F.2d 751,
759 (Fed. Cir. 1993). For the week ending March 14, 2008, the applicable rate was 1.52 percent.
(Ex. D, Fed. Reserve Release, March 17, 2008.) The Court was without authority (regardless of
any agreement by the parties at the hearing) to set post-judgment interest at 6.0 percent. (Doc.
No. 363, at 2.) Because the post-judgment rate is set by statute, it was a manifest error of law to
29
CHIC_2211518.3 Case 9:06-cv-00155-RHC Document 369 Filed 03/24/2008 Page 34 of 36
deviate from the statute and judgment should be altered pursuant to Rule 59(e) to reflect
assessment of post-judgment interest at the statutory rate.
J. Court’s Judgment Should be Altered to Reflect that Claims 1-35 are Invalid. The Court in its Memorandum Opinion and Order Construing the Claim Terms of the
’138 Patent, Doc. No. 110, ruled that the “means for assigning” limitation of claim 1(a) was
indefinite. (Doc No. 110 at 17.) Because claims 2-35 depend from claim 1 and because this
Court determined that claim 1 was indefinite as a matter of law, judgment should be altered
pursuant to Rule 59(e) to reflect that claims 1-35 of the ’138 patent are invalid.
V. CONCLUSION For the foregoing reasons, D2L respectfully requests that the Court enter judgment as a
matter of law that the asserted claims of the ’138 patent are not infringed and are invalid. In the
alternative, D2L requests that the Court modify lost profits damages as a matter of law. Should
the Court determine that judgment as a matter of law is not appropriate D2L respectfully requests
that the Court order a new trial.
30
CHIC_2211518.3 Case 9:06-cv-00155-RHC Document 369 Filed 03/24/2008 Page 35 of 36
Dated: March 24, 2008 Respectfully submitted,
/s/ Jonathan R. Spivey Of Counsel Jonathan R. Spivey James Dasso (Illinois Bar No. 6193545) Gregory S. Norrod (Illinois Bar No. 6199391) James J. Zeleskey Jonathan R. Spivey (Texas Bar No. 24002989) [email protected] Jason J. Keener (Illinois Bar No. 6280337) Texas Bar No. 22257700 Foley & Lardner LLP 5034-D Champions Drive 321 North Clark Street, Suite 2800 Lufkin, Texas 75901 Chicago, Illinois 60610 Telephone: (936) 699-3516 Telephone: (312) 832-4500 Facsimile: (936) 832-4700 Jo Ben Whittenburg, Esq. [email protected] Texas Bar No. 21396700 Orgain Bell & Tucker, LLP 470 Orleans Street P.O. Box 1751 Beaumont, Texas 77704-1751 Telephone: (409) 838-6412 Facsimile: (409) 838-6959
Counsel for Defendant and Counterclaim Plaintiff Desire2Learn Inc.
1
CHIC_2211518.3 Case 9:06-cv-00155-RHC Document 369 Filed 03/24/2008 Page 36 of 36
CERTIFICATE OF SERVICE
I hereby certify that on March 24, 2008, that a true and correct copy of
DESIRE2LEARN’S POSTVERDICT MOTION FOR JUDGMENT AS A MATTER OF LAW
AND MOTION FOR A NEW TRIAL was filed electronically in compliance with Local Rule
CV-5(a). As such, this document was served on all counsel who have consented to electronic
service.
/s/ Jonathan R. Spivey Jonathan R. Spivey
1
CHIC_2211518.3 Case 9:06-cv-00155-RHC Document 369-2 Filed 03/24/2008 Page 1 of 109
EXHIBIT A Case 9:06-cv-00155-RHC Document 369-2 Filed 03/24/2008 Page 2 of 109 Jury Trial, Volume 1
Page 178 Page 180 1 And in our system, in CourseInfo 2 and 3 and 1 we were selling it to. 2 4 and the other Blackboard products, that is a way for 2 Q. Mr. Cane, one of the phrases that came up during 3 the system to identify me. And through that user it 3 the opening statements was "course management system." 4 knows what courses I'm taking in the schools; it knows 4 I think I heard you describe your invention as a course 5 if I'm a student or I'm an instructor or I'm a course 5 management system. Do you claim to have invented course 6 helper or all the various roles you might have, even 6 management systems? 7 like a parent, as an example, would be a role that -- a 7 A. No, not by any means. 8 parent would have for a student so that parents can 8 Q. But do you consider yourself to be a pioneer in 9 check the grades of the student. So, when we're talking 9 that industry? 10 about these users, they are people and how they log into 10 A. I consider what we did and accomplished through the 11 a system, almost always with a password to help say you 11 CourseInfo product line certainly to advance where we 12 are that user; and then there are these roles and roles 12 were; but, no, I don't claim to have invented course 13 as parents, instructors, TAs, and so on. 13 management systems. I simply enhanced what was there, 14 Q. And I think you may have said it, also; but I want 14 did a lot -- we came up with this invention which really 15 to be sure. What about multiple courses? What do you 15 changed the game for that space. We went from a system, 16 mean by "multiple courses"? 16 as you'll hear, about focusing on a course -- look at 17 A. What I mean with multiple courses is all the way 17 the name of the space, the category. We even still call 18 back, through grade school, you aren't just taking one 18 it today course management systems, but it's so much 19 course. I'm talking multiple. I'm talking a math 19 more than that. 20 course or a period, if you will, and a science course 20 The word "course" is this really isolated 21 and biology course and a history course. And that's 21 little thing. It's a course. It's, you know, math for 22 true regardless of whether you're in middle school, high 22 the fall of 2008. That's a course. 23 school, college or you're continuing beyond. You take a 23 What we've actually provided -- and it's 24 series of different courses. And in those courses you 24 built upon this patent -- and, again, it's the 25 have, as I was mentioning, those different roles. 25 foundation which all the products all the way back Page 179 Page 181 1 Q. And, again, I don't mean to be repetitive; but tell 1 through 1998 are built upon which this patent covers, is 2 me again about multiple roles. 2 the fact that it's much broader than just a course. 3 A. Multiple roles, again, as I was mentioning, a 3 It's actually about the user and the user will be in 4 parent as a role, a student as a role, a teacher as a 4 multiple courses and have multiple roles and you can't 5 role. It would not be uncommon, especially in 5 trivialize that aspect of what we invented. 6 education, in higher education, in the college and 6 Q. Mr. Cane, I'll direct your attention back to 7 university market, where we predominately sold our 7 Slide 3 -- we may have a better slide, 2 -- and ask: 8 products into, to have people who wore more than one 8 When was this patent actually issued by the United 9 hat, so to speak. 9 States Patent Office? 10 So, I, as an example, would be not only a 10 A. The patent issued -- I believe we're looking at the 11 student in a number of courses; but I would be a 11 date here -- January 17th, 2006. 12 teaching assistant, someone who helped the instructor 12 Q. Now, I heard -- I believe I heard on the video that 13 either with the classroom or grading tests or what have 13 we all saw before the evidence started a gentleman 14 you for courses that I had taken and done well in and 14 talking about the invention process, and they used a 15 the teacher had said, "Dan, will you please come back 15 term for when an inventor comes up with the idea as 16 and help me with, you know, the undergraduates who are 16 conception. So, when did you and your six buddies 17 going through the introductory courses. 17 conceive of this -- the foundation of the inventions in 18 So, people wore multiple hats. You weren't 18 the Blackboard patent? 19 just labeled as a student. You were at times a student. 19 A. These notions were conceived in the beginning of 20 At times you were a teaching assistant. At times you 20 1998, where the inventors came together and thought 21 were even a teacher or an instructor in the class. So, 21 about the problems that our own products faced as well 22 it didn't make sense for the system -- even our own 22 as what our competitor products were doing and what we 23 system prior to this invention would only allow you to 23 could do to really be different and change the game. 24 be labeled as one thing. And this invention allowed us 24 And that's when we came up with this notion. We built 25 to overcome that in a way that made sense to the people 25 the products. We filed for the patents in June 30th of 46 (Pages 178 to 181) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 259 Page 261 1 the old way, if you will, where you had a different 1 You previously testified about CourseInfo ILN 2 class, a different course at each address, a different 2 1.5 as being one of the products that you developed; is 3 login. That was the state of course management -- 3 that correct? 4 again, hence, the name of the category -- was selling 4 A. That is correct. 5 these applications to a course; and what we had invented 5 Q. And isn't it true that CourseInfo ILN 1.5 was 6 and built into CourseInfo 2.0 was something broader. 6 released in November of 1997? 7 Q. Are you familiar with an organization called IMS? 7 A. That timeline sounds correct to me. 8 A. Yes, I am. 8 Q. Okay. Didn't you previously testify that it was 9 Q. And what is IMS? 9 released in November of 1997? 10 A. IMS stands for Instructional Management Systems, 10 A. Yes, I believe I did. 11 and it is a standards group whose goal was to come up 11 Q. And isn't it true that CourseInfo ILN 1.5 was 12 with a way for different course management systems to 12 released prior to the '138 patent issuing? 13 communicate with each other, to share information, with 13 A. Yes, it was. 14 the goal of eventually -- at least my understanding of 14 Q. And isn't it true that CourseInfo ILN 1.5 15 it was you could export your course, take your course 15 included -- was a role-based system? 16 out of CourseInfo and stick it into WebCT, if you had 16 A. It depends on the definition of a "role-based 17 transferred schools or if you wanted to move, from 17 system." 18 vendor to vendor to vendor. So, that was the intent as 18 Q. Isn't it true that on the definition of "role-based 19 I understood the IMS. 19 system" that you demonstrated CourseInfo 2.0, that 20 Q. During your CourseInfo company days, was CourseInfo 20 CourseInfo ILN 1.5 was a role-based system? 21 a member of the IMS? 21 A. In CourseInfo 1.5 a single course would have 22 A. Yes. CourseInfo joined as a development member of 22 students and instructors for that single course, yes. 23 IMS. 23 Q. So, it is true that it was a role-based system; is 24 Q. Has anyone at IMS ever said, "Mr. Cane, we own your 24 that correct? 25 patent"? 25 A. If you're defining roles in the context of a single Page 260 Page 262 1 A. No, no one at IMS has ever said they own the 1 course, yes. 2 patent. 2 Q. And isn't it true that CourseInfo ILN 1.5 allowed 3 Q. Has anyone at Sonoma State University ever said, 3 you to have multiple logins to multiple courses? 4 "Mr. Cane, we own your patent"? 4 A. You could have a different login for each course, 5 A. No, no one at Sonoma State has ever said they own 5 yes. 6 the patent. 6 Q. So, it is true that you could have multiple logins 7 Q. Mr. Cane, are you proud of the patent that you came 7 for multiple courses; is that correct? 8 up with, you and the co-inventors? 8 A. That is correct. 9 A. I am incredibly proud of what we invented. 9 Q. And isn't it true that CourseInfo ILN 1.5 would 10 Q. Why is that? 10 allow the creation and modification of user roles? 11 A. I now know that my product is being used by 11 A. It would allow for the creation -- repeat the 12 millions of students all across this great country; and 12 question, please. 13 that brings me tremendous joy, to know that I've helped 13 Q. Isn't it true that CourseInfo ILN 1.5 would allow 14 their education experience. I've made it easier for 14 for the creation of user roles? 15 teacher and students to teach and learn. It's not every 15 A. No. The user roles in the CourseInfo 1.5 product 16 day that something you create with your housemates in 16 were hard coded, if you will, into the system. They 17 college gets adopted on that scale. 17 were not flexible. It did not allow for the creation of 18 MR. HEARTFIELD: Those are all my questions, 18 user roles. 19 your Honor. 19 Q. So, isn't it true that CourseInfo ILN 1.5 had what 20 THE COURT: Counsel. 20 is called "predefined roles"? 21 CROSS-EXAMINATION OF DANIEL CANE 21 A. Yes, I would agree with that, predefined roles. 22 CALLED ON BEHALF OF THE PLAINTIFF 22 Q. And isn't it true that CourseInfo ILN also had 23 BY MR. SPIVEY: 23 predefined roles with predetermined permissions? 24 Q. Good afternoon, Mr. Cane. I'm Jonathan Spivey, a 24 A. Yes, I would agree that it had predefined roles 25 counsel for Desire2Learn here. 25 with predetermined -- what was the last word you used, 11 (Pages 259 to 262) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 263 Page 265 1 sir? 1 A. Yes, it did have that capability, as well. 2 Q. Permission. 2 Q. And isn't it true that CourseInfo ILN 1.5 then 3 A. Permissions, yes, I would agree with that. 3 allowed the instructor to grade the student's responses 4 MR. SPIVEY: Can we have Number 80, please? 4 to the test? 5 And claim 36, if you would blow that up. 5 A. Yes, I believe it did have that functionality. 6 BY MR. SPIVEY: 6 Q. Mr. Cane, isn't it true that you, in fact, wrote a 7 Q. And, Mr. Cane, you previously testified that you 7 manual for CourseInfo ILN 1.5? 8 recognized the '138 patent, the patent that was issued 8 A. I would say that I likely contributed to the 9 to you and the other inventors; is that correct? 9 writing of a manual. Writing manuals wasn't one of the 10 A. Yes, that is correct. 10 things that I was primarily responsible with. 11 Q. Do you recognize -- this is a page of that patent, 11 Q. Isn't it true that you and one of the other 12 the '138 patent. Is that up on your screen, sir? 12 co-inventors that you mentioned, Mr. Stephen Gilfus, are 13 A. Yes, sir, it is. 13 the ones that were -- that drafted the CourseInfo ILN 14 Q. Okay. And do you recognize that it's claim 36 of 14 1.5 manual? 15 the '138 patent that's on the screen there? 15 A. I would agree that myself and Mr. Steve Gilfus 16 A. Yes, sir, I do. 16 would have been very likely contributors, but I can't 17 Q. And if you would, isn't it true that Limitation A 17 attest that we were the only two that worked on it. 18 of claim 36 talks about predefined characteristics? 18 Q. I have now put up on the screen for you what is the 19 A. If you'll give me a moment to read this. 19 user manual for CourseInfo Interactive Learning Network 20 Okay. I've read it. Sir, once again your 20 Version 1.5. Mr. Cane, do you recognize this document? 21 question? 21 A. Yes, sir, I do. 22 Q. Isn't it true that Limitation A of claim 36 of the 22 Q. And this is the manual that was given to users of 23 '138 patent talks about predefined characteristics? 23 the CourseInfo ILN Version 1.5 system? 24 A. I see the word "redefined characteristics" here, 24 A. Yes, sir, it would have been. 25 sir. 25 Q. And isn't it true that this manual was created Page 264 Page 266 1 Q. So, is it not your understanding that that 1 about the same time that the CourseInfo product was 2 Limitation A of claim 36 of the '138 patent is supposed 2 released? 3 to say "predefined characteristics"? 3 A. The CourseInfo 1.5 product, yes, sir. 4 A. It is my understanding that this was a 4 Q. And that was in 1997; is that correct? 5 typographical error and that it was supposed to read 5 A. That is correct, sir. 6 "predefined characteristics indicative." 6 Q. And isn't it true that the CourseInfo Interactive 7 Q. So, it is your understanding that Limitation A of 7 Learning Network user manual would have provided a user 8 claim 36 talks about predefined characteristics. 8 with all of the information they needed in order to 9 A. Yes, that is my understanding. 9 operate the CourseInfo ILN 1.5 system? 10 Q. Isn't it true, Mr. Cane, that CourseInfo ILN 1.5 10 A. The goal certainly would have been to provide the 11 allowed a user to put any files, such as an assignment 11 user with enough information to use the system, yes. 12 file, in a particular area throughout the system? 12 Q. Mr. Cane, isn't it true that role-based access 13 A. Yes. The CourseInfo 1.5 product allowed the 13 control systems include both single and multiple role 14 instructor to place in a document or an assignment, as 14 systems? 15 you said, anywhere within specific areas, not any area, 15 A. I'm not an expert on role-based access control 16 within the system. 16 systems. 17 Q. And isn't it true that CourseInfo ILN 1.5 allowed 17 Q. My question was: Isn't it true that role-based 18 the creation of a new document, say a student was 18 access control systems include both single and multiple 19 responding to a test that was posted up by an 19 role systems? 20 instructor? 20 A. I don't know the answer to that question. 21 A. Yes, it did allow for that capability. 21 Q. Mr. Cane, do you recall giving a deposition in this 22 Q. And isn't it true that CourseInfo ILN 1.5 allowed 22 case? 23 the user, after responding to the test, to then post 23 A. Yes, sir, I do. 24 that answer back to the file area such that the 24 Q. And do you recall giving that -- that deposition 25 instructor could view it? 25 would have taken place Tuesday, July 31st, 2007? 12 (Pages 263 to 266) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 271 Page 273 1 So, isn't it true that you are, in fact, 1 after the -- or right before the CourseInfo-Blackboard 2 aware or have knowledge about role-based access control 2 merger? 3 systems? 3 A. That's correct. 4 A. As I said in the answer, the general term of a 4 Q. And isn't it true that you testified previously 5 role-based access control system, as you mentioned -- 5 that the single login, multiple roles, multiple courses 6 and there was previous dialogue building up to this -- 6 was something that was conceived of around 1998? 7 does leave open the possibility of single or multiple 7 A. Early 1998, before I met with Mr. Chasen, we came 8 role, yes, sir. 8 up with this notion of shifting towards what I've 9 Q. But my question to you, Mr. Cane: Isn't it true 9 described as the new way. 10 that you are, in fact, aware or have knowledge about 10 Q. And isn't it true that that was also before you met 11 role-based access control systems? 11 Mr. Matthew Pittinsky, one of the other named inventors? 12 A. I am aware of the general term of "role-based 12 A. Yes, sir, it was before Mr. Pittinsky as well. 13 access control systems" but not an expert. 13 Q. And isn't it true that that was also before you met 14 Q. Isn't it true, Mr. Cane, that neither you or anyone 14 one of the other named inventors, Mr. Bob Alcorn? 15 at Blackboard invented anything about role-based access 15 A. Yes, sir, that is also correct. 16 control systems having one user with multiple roles? 16 Q. And isn't it true that was before you met one of 17 A. That's correct, sir. 17 the other inventors, Mr. Scott Perian? 18 Q. And isn't it true, Mr. Cane, that neither you or 18 A. Yes, sir, that is also correct. 19 anyone else at Blackboard didn't invent role-based 19 Q. Mr. Cane, you previously testified that you had 20 access controls with a single login? 20 some knowledge about IMS; is that correct? 21 A. That's correct. No one at Blackboard invented 21 A. Yes, sir, that's correct. 22 role-based access control. 22 Q. Okay. Isn't it true that -- what I have placed on 23 Q. And isn't it true that the CourseInfo 2.0 product 23 the screen has been marked as Defendant's Exhibit 155. 24 incorporates role-based access control systems? 24 And can you see that, sir? 25 A. The CourseInfo 2.0 product, as I now understand 25 A. No, sir, I cannot. Page 272 Page 274 1 what role-based access control systems mean, did 1 THE COURT: You can focus in. 2 incorporate that functionality, yes. 2 A. Yes, sir. It's now apparent, 155. 3 Q. And wasn't role-based access control systems known 3 BY MR. SPIVEY: 4 prior to the CourseInfo 2.0 product that you've 4 Q. Can you see the rest of the paper? 5 demonstrated here today? 5 MR. SPIVEY: Just blow up the title of the 6 A. At the time of the offering of the CourseInfo 2.0 6 document for the witness, please. 7 product, I did not know about role-based access control. 7 BY MR. SPIVEY: 8 Q. But my question to you, Mr. Cane, is: Isn't it 8 Q. Mr. Cane, have you seen this document before? 9 true that, in fact, role-based access control systems 9 A. Yes, sir, I have. 10 were known prior to the CourseInfo 2.0 product that 10 Q. And, Mr. Cane, isn't this, in fact, a 11 you've demonstrated here today? 11 quasi-transcript of a phone conversation that you had 12 A. I can't comment on how they were known in 1998. I 12 with Mr. Matt Pittinsky on or about April 22nd, 1998? 13 did not know them. I learned about them many years 13 A. Yes, sir, that would be my understanding. 14 later, while pursuing a course in computer science. 14 Q. And isn't it true that the notes that are here in 15 Q. Mr. Cane, you previously testified that one of the 15 the quasi-transcript are, in fact, your notes? 16 ideas that was conceived by the inventors was this 16 A. They would appear to be, sir, yes. 17 single login, multiple roles; is that correct? 17 Q. I've blown up what is part of your quasi-transcript 18 A. Previous login -- I'm sorry -- single login, 18 there. Can you see that, Mr. Cane? 19 multiple courses, multiple roles. 19 A. Yes, sir, I can. 20 Q. And that was -- your previous testimony, that was, 20 Q. Isn't it true that during the time that you had 21 in fact, one of the ideas that was conceived by the 21 that conversation with Mr. Matt Pittinsky, you asked the 22 inventors; is that correct? 22 question about what role did Blackboard play in the 23 A. Yes, sir. 23 picture of IMS? 24 Q. Okay. Isn't it true that you didn't meet 24 A. Yes, sir, I did. 25 Mr. Michael Chasen, one of the named inventors, until 25 Q. And isn't it true that you already had an 14 (Pages 271 to 274) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 359 Page 361 1 A. Yes. We had both the help of our internal legal 1 Q. And you heard the gentleman on the video talk about 2 counsel as well as our external legal counsel or law 2 patent claims; isn't that right, sir? 3 firm. 3 A. I did hear that, yes. 4 Q. And this is the name of the law firm that's shown 4 Q. And he said that's the most important part of the 5 on the front page of the patent; isn't that right? 5 patent because that's what defines your invention; isn't 6 A. Yes, it is. 6 that right? 7 Q. And, in fact, Wilmer Cutler Pickering, that's a 7 A. I don't remember his specific wording, but if 8 very large law firm; isn't that right? 8 that's what he said... 9 A. It is a large law firm. 9 Q. Do you remember generally he said that, sir, that 10 Q. And it has offices in a number of different cities 10 this is the part of the patent that defines the 11 around the country? 11 invention? 12 A. I actually don't know where their offices are, but 12 A. Yes. 13 they are certainly a large law firm. 13 Q. And this tells you what your property is, right, or 14 Q. Okay. And you picked this law firm -- you and 14 alleged property in this case? 15 Blackboard picked this law firm because their expertise 15 A. Yes. 16 is in patent law; isn't that right? 16 Q. And it also tells the public what you claim to be 17 A. Yes. 17 your property so they know if they don't do what's in 18 Q. You wanted some good, competent legal counsel to 18 this claim, then they are okay; isn't that right, sir? 19 help you put together this patent; isn't that right? 19 A. Yes. 20 A. Of course. 20 Q. Now, both you and Mr. Cane, as you sat here today, 21 Q. And, in fact, you believe, as you sit here today, 21 said your idea was this idea of a single login for 22 that you got good, competent legal counsel, don't you? 22 multiple courses. Did I understand you correctly? 23 A. I do think we received good legal counsel, yes. 23 A. Well, that's a part of it. 24 Q. And, sir, you and your legal counsel -- you 24 Q. That's what you told the jury as being the essence 25 prepared the applications for this particular patent, 25 of your invention; isn't that right? Or did I get that Page 360 Page 362 1 didn't you? 1 wrong? 2 A. I certainly contributed to it. The majority of the 2 A. Again, I think we talked about our invention being 3 preparation was probably done by our legal counsel. 3 a little bit more than that; but that certainly was part 4 It's a very legal document. 4 of it. 5 Q. Sir, but either you or your legal counsel did it; 5 Q. Okay. I want you, then, to tell me right now what 6 isn't that right? 6 you said in terms of the single login. Is that your 7 A. Also, there were several other inventors that I'm 7 invention, or is that not your invention? 8 sure contributed. 8 A. Well, we didn't invent the login. Our invention 9 Q. But either you, Blackboard, or your legal counsel 9 was about having a person have a single login to 10 chose the words for this patent, right? 10 multiple courses with multiple roles at the same time. 11 A. Oh, yes. 11 Q. Okay. Now, sir, this is claim 36. Okay? And this 12 Q. My client, Desire2Learn, had no involvement in 12 is the first of three claims that are involved in this 13 choosing the words for the patent, did they? 13 case. Do you understand that? 14 A. We didn't consult with them to help us put together 14 A. Yes. 15 the patent, no. 15 Q. And, sir, is there anywhere in there that the word 16 Q. They didn't have any input into the process of 16 "login" appears? 17 defining what the legal boundaries were, did they? 17 A. I don't see the specific word "login." 18 A. No, not to my knowledge. 18 Q. Okay. Do you see the words "single login," which 19 Q. Okay. 19 is what you claim now is your invention? Is that 20 MR. DASSO: Now, if we could go to Column 32 20 anywhere in there, sir? 21 of the patent; and if we could blow up claim 36. 21 A. Well, since the words "login" don't appear, I don't 22 BY MR. DASSO: 22 imagine then the words "single login" would appear. 23 Q. Now, you were here, sir, and watching the video; 23 Q. Do you see the words, sir, "single Web address"? 24 isn't that right? 24 A. No. Those specific words are not there. 25 A. Yes, I was. 25 Q. Do you see the words "separate Web" -- excuse me -- 36 (Pages 359 to 362) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 371 Page 373 1 Q. Have you heard it in some other context, sir? 1 Q. And, in fact, every school has students and 2 That's something you know as a computer scientist, the 2 teachers, don't they, sir? 3 words "hardcoded," isn't it? 3 A. I believe it makes sense that most schools would 4 A. Actually, maybe if you could just give me the 4 have students and teachers, yes. 5 definition, then I'd better understand. 5 Q. Well, can you conceive of a school that doesn't 6 Q. Well, sir, you're the one with the computer science 6 have a student and a teacher? I mean, isn't that a 7 degree. I just want to know: Do you know what the 7 definition of "school"? 8 words "hardcoded" mean or not? 8 A. No, I really can't think of a school that doesn't 9 A. If I knew what the definition of "hardcoded" was, I 9 have students or teachers. 10 would share it at this point. 10 Q. Okay. And most schools, if they are of any size at 11 Q. Now, sir, up here (indicating) there is a reference 11 all, have administrators; isn't that right? 12 to this roles in the system. Do you see that, sir? 12 A. I don't think that would be in the definition of a 13 "Predefined roles within the framework of the system." 13 school, to have administrators. So, no, but I will say 14 A. Yes. 14 that certainly some schools do; and I know schools that 15 Q. And, again, I don't know if we've ever defined 15 have administrators. 16 "role." So, let me just do that. A "role" means 16 Q. Let me ask it this way, sir. I don't have the 17 essentially a group of permissions within the computer 17 exact number, but I understand that you -- your 18 software; isn't that right? 18 statement is that Blackboard has approximately 2400 19 A. I think "role" might also have additional 19 schools that it was working with, right? 20 definitions; so, I don't specifically know whether 20 A. Yes. 21 "role" is defined that way or not. You'd have to show 21 Q. And do all of those schools have administrators? 22 me the definition. 22 A. No, I -- I don't know whether they all do or not; 23 Q. Sir, you're one of the inventors here, right? 23 but I would actually assume that, no, not all of them 24 A. Yes. 24 have administrators. 25 Q. Okay. And you claim that this is an invention that 25 Q. Can you think of one school that doesn't have an Page 372 Page 374 1 you made, sir, right? 1 administrator, sir? 2 A. Yes. 2 A. I don't have the list in front of me, and I 3 Q. And you were one of the people to whom this patent 3 wouldn't want to incorrectly guess. So, I couldn't name 4 originally issued? 4 any. But, again, I'm just saying that out of 2400 5 A. Well, I didn't make it. I was one of the inventors 5 schools, I don't think all of them do, although I will 6 contributing to different pieces of it. 6 say that certainly a number of them do. 7 Q. But, sir, I mean, this is your patent -- or at 7 Q. How about -- would you say most schools have 8 least it once upon a time was your patent before you 8 administrators? Can we at least agree on that, sir? 9 assigned it, right? 9 A. That sounds reasonable. 10 A. Yes, that is true. 10 Q. Okay. So, the idea of having a software program 11 Q. And I want you to tell the jury: What does "role" 11 for schools that was available to students, was 12 mean? I just want a definition of "role" so we can use 12 available to teachers, and available to administrators, 13 that when we move forward. 13 that's not something new, is it? 14 A. I don't have what the specific definition of that 14 A. Certainly having software that's available to 15 single word on this page would be; so, I wouldn't want 15 students or teachers is not something new. Software has 16 to misspeak. 16 been around for a long time and so have students or 17 Q. So, your testimony, sir, is you cannot define the 17 teachers. 18 word "role" for us. 18 Q. And you're not claiming, sir, just because this 19 A. I think the word "role" has a number of different 19 piece of software that you say you developed had roles 20 characteristics or definitions. I'm not excluding what 20 for students, had roles for teachers, and had roles for 21 you said for it, but I couldn't define it absolutely. 21 administrators, that it's something that was patentable. 22 Q. Okay. But, sir, if we go on in this sentence, 22 You're not saying that today, are you? 23 again, you see there is a reference to a student, 23 A. Actually, I do think that having roles for those 24 teacher, and administrator. Do you see that, sir? 24 individual people -- so, having a student role or a 25 A. Yes. 25 faculty role in software -- could certainly be unique 39 (Pages 371 to 374) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 391 Page 393 1 MR. DASSO: Okay. Thank you, your Honor. 1 A. Yes, they were the only client paying us money. 2 THE COURT: Bring in the jury, please. 2 Q. All right. Now, sir, let me turn your attention to 3 (The jury enters the courtroom, 1:30 p.m.) 3 Defendant's Exhibit 634, which we'll show you on the 4 MR. DASSO: Thank you, your Honor. 4 screen. 5 BY MR. DASSO: 5 MR. DASSO: If you'll go to the third page of 6 Q. Good afternoon, Mr. Chasen. 6 that, please. 7 A. Good afternoon. 7 BY MR. DASSO: 8 Q. Let me take you back to another topic, then, and 8 Q. And, sir, do you recognize this document? I can 9 that is the founding of Blackboard and its connection 9 provide you a hard copy if you want. But do you 10 with IMS. Blackboard, sir, was founded in 1997; is that 10 recognize this document as a contract between Blackboard 11 right? 11 and Sonoma State University? 12 A. Yes, Blackboard was founded in 1997. 12 A. Yes, that is a contract between Blackboard and 13 Q. And, sir, before you founded Blackboard with 13 Sonoma State University. 14 Mr. Pittinsky, both of you worked at a company called 14 Q. Okay. And you saw that I raised that during the 15 KPMG Peat Marwick; is that right? 15 opening statement; isn't that right, sir? 16 A. Yes, that's correct. 16 A. I do remember you mentioning that, yes. 17 Q. And KPMG Peat Marwick is a very large, global 17 Q. Okay. Let me go, sir, to the first -- do you see 18 consulting firm; isn't that right? 18 Section 2.0 up here? 19 A. Primarily accounting, but they do accounting and 19 MR. DASSO: If you could blow that whole 20 consulting work. 20 thing up. 21 Q. And, in fact, sir, it bills itself as one of the 21 BY MR. DASSO: 22 largest educational consulting firms in the world? 22 Q. Relates to Blackboard, LLC, and describes your 23 A. I don't know if they are one of the largest 23 company. Do you see that, sir? 24 educational consulting firms in the world but they are a 24 A. Yes, I do see that. 25 very large consulting firm and they do have a big 25 Q. And you see the first sentence there or the first Page 392 Page 394 1 education consulting practice. 1 phrase says: "Created specifically" -- 2 Q. And that was a pretty good job, wasn't it? I mean, 2 MR. DASSO: Your Honor, if I might inquire, 3 you had -- it was a professional job at a high-quality 3 can the jury see that? Because it's a little hard to 4 institution. 4 read. We could blow it up more. 5 A. Yeah. I was very happy to be offered that job. 5 THE COURT: If you can blow it up more, you 6 Q. Okay. And then when you left that to form 6 may want to. 7 Blackboard, your first contract was with IMS; isn't that 7 MR. DASSO: Okay. Could you blow it up more, 8 right? 8 please? 9 A. Yes, that was the first client that Blackboard 9 THE COURT: Will you go ahead and shut down 10 has -- was IMS. 10 the lights, the circular ones? That may help a little 11 Q. Okay. And, sir, for the first period of time until 11 bit. 12 you acquired -- excuse me, not WebCT. That was later. 12 MR. DASSO: Thank you, your Honor. 13 Until you acquired CourseInfo, Blackboard -- I mean, IMS 13 THE COURT: Yeah. 14 was your sole source of income; isn't that right? 14 MR. DASSO: I think that's better. Thank you 15 A. It was our sole source of income, but we had also 15 very much. 16 gotten some money from our parents and put in some 16 THE COURT: That last is a little bit too 17 money. So, it was our sole source of revenue; but we 17 much. 18 had borrowed some money to keep the company going as 18 Okay. That helps. 19 well. 19 MR. DASSO: Thank you. 20 Q. You borrowed ten, $20,000 from your parents; is 20 BY MR. DASSO: 21 that right, sir? 21 Q. Do you see the first phrase there, sir? It says: 22 A. Yeah. 22 "Created specifically to support the IMS prototype 23 Q. But other than that, in terms of a client paying 23 development process." Do you see that, sir? 24 you money for doing work, IMS was the only client paying 24 A. Yes. 25 you money to do work; isn't that right? 25 Q. And, in fact, was Blackboard created specifically 44 (Pages 391 to 394) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 531 Page 533 1 A. Yes. 1 in Ontario, Canada. We'll begin the deposition on page 2 Q. Okay. And the same for a professor. If the 2 28, question beginning on line 15. 3 professor is outside the United States with Internet 3 THE COURT: Okay. Hold up one minute, 4 access, could the professor log in to the system? 4 counsel. 5 A. Yes. 5 And, ladies and gentlemen, in this case you 6 MR. DARK: The next witness is Mr. James 6 don't have the video to look at. You're just going to 7 Austin. Mr. Austin is employed by the University of 7 have the deposition read. And, again, you'll just have 8 Arizona, which is another Desire2Learn customer. His 8 to evaluate it as to content and credibility as best you 9 position at the University of Arizona is director of 9 can as though the witness was here. Obviously this lady 10 learning technologies; and his deposition was taken on 10 is not the witness herself. But Ms. Dekker couldn't be 11 October 15, 2007. 11 here; so, we'll do the read deposition instead of a 12 DEPOSITION TESTIMONY OF JAMES AUSTIN 12 video. 13 Q. And what is your general understanding about when 13 Go ahead, counsel. 14 the University of Arizona first began using the 14 MR. DARK: Again, beginning on page 27, line 15 Desire2Learn Learning Environment? 15 15. 16 A. I would say that would have been about five years 16 DEPOSITION TESTIMONY OF CARA DEKKER 17 ago. 17 PRESENTED ON BEHALF OF THE PLAINTIFF 18 Q. Do you know if administrators within the D2L 18 Q. When you say "created users," you're not talking 19 Learning Environment are enrolled in any courses in 19 about cloning physical people, are you? 20 another role aside from the role of administrator? 20 A. I don't understand the question. 21 A. Not to my knowledge. 21 Q. Well, when you're talking about users, does this 22 Q. I have just a couple of questions for you just to 22 relate to electronic information? 23 follow up, and the first is with respect to course 23 A. There is a tool in the system where you create user 24 files. You mentioned that course files are stored on 24 accounts. So, when I say "users," I mean user accounts. 25 server computers. To your knowledge, are the course 25 MR. SPIVEY: At this time, your Honor, we're Page 532 Page 534 1 files created by Desire2Learn? 1 going to object to that testimony as being contrary to 2 A. No, they are not. 2 the court's claim construction on the term "user." 3 Q. Okay. Are the course files maintained by 3 MR. NADEL: Your Honor, this was -- 4 Desire2Learn? 4 THE COURT: As I understand it, this 5 A. No, they are not. 5 Ms. Dekker is a D2L -- a Desire2Learn employee? 6 Q. Okay. Are the course files uploaded to the servers 6 MR. DARK: Yes, your Honor. 7 by Desire2Learn? 7 THE COURT: Is that not correct, Mr. Spivey? 8 A. No, they are not. 8 MR. SPIVEY: She is, your Honor. 9 Q. Are the course files owned by Desire2Learn? 9 THE COURT: All right. Well, ladies and 10 A. No, they are not. 10 gentlemen, you will have -- and you actually have in 11 Q. How would you -- how is it that you're aware that 11 your book the way "user" is defined and that is the 12 students access the system, for example, from Tucson? 12 definition you will accept because it is the one that I 13 A. I have taught using D2L and had my students 13 have given to you. I will allow testimony in cross, 14 enrolled in the class and had them log in to the system 14 basically of the other side, about this particular 15 as part of their class experience. 15 subject. So, go ahead, counsel. 16 MR. DARK: Your Honor, we have one more offer 16 MR. DARK: Judge, for the record, that ended 17 through deposition and this one we're going to read the 17 on page 28, line 3. 18 questions and the answers and I've asked Ms. Rebecca 18 We'll now go over to page 61, line 13. 19 Watson, one of my colleagues, to read the answers. 19 Q. Earlier you testified about integrating the 20 THE COURT: If you'll step up, please. 20 Learning Environment with university student information 21 MR. DARK: Your Honor, this is the deposition 21 systems, correct? 22 of Ms. Cara Dekker. 22 A. Yes. 23 That's an unusual spelling, Ms. Bickham. 23 Q. During that process, Desire2Learn would create 24 It's C-A-R-A D-E-K-K-E-R. 24 users for the Learning Environment, correct? 25 Her deposition was taken October 5th, 2007, 25 A. Yes. 79 (Pages 531 to 534) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 564 Page 566 1 system? 1 Desire2Learn to do that. So, the customers -- the users 2 A. That's correct. 2 are in the United States, and the servers are in Canada. 3 MR. BRIGHT: Let's go to our next slide, 3 In the self-hosted case, this is where 4 Slide 16. 4 everything happens typically at the university. So, for 5 BY MR. BRIGHT: 5 example, at Marquette University, Marquette runs the 6 Q. And we're looking at Plaintiff's Exhibit 385, 6 Desire2Learn software themselves; and its students and 7 page 1. Can you explain this to us? 7 faculty are also at Marquette. 8 A. Yes. This is for Desire2Learn's help desk support 8 Q. Now, where are the users in these two situations? 9 services. What they're doing there is when a customer 9 A. The users are in the United States. 10 has a problem or an issue using the system, a current 10 Q. So, both in the hosted situation and in the 11 customer, they will try to answer their questions or 11 self-hosted situation, the users are in the United 12 find ways to fix the problems that they're encountering. 12 States? 13 MR. BRIGHT: Let's go to the next slide, 13 A. Yes, the users are in the United States. 14 Slide 17. This is showing us Plaintiff's Exhibit 386, 14 Q. Now, do you see the server there? It's a little 15 page 1. 15 hard to see, but it says "course management system 16 BY MR. BRIGHT: 16 server" -- 17 Q. Can you describe this for us? 17 A. Yeah. 18 A. Yes. This is Desire2Learn's hosting services which 18 Q. -- there in the hosted situation as well as in the 19 they do through their hosting facility. This is where 19 self-hosted situation. Can you just tell us what the 20 Desire2Learn runs the system on behalf of their 20 server is? 21 customers. Now, some of Desire2Learn's customers 21 A. The server is the computer on which the 22 actually run the Learning Environment software on their 22 Desire2Learn software and databases are running. 23 own computers; others of their customers ask 23 Q. Now, let me ask you: Do we have a definition from 24 Desire2Learn to run it on Desire2Learn's computers. 24 Judge Clark about what a user is in the Blackboard 25 Q. And, so, here, during its hosting services, 25 patent? Page 565 Page 567 1 Desire2Learn is actually using its own course management 1 A. Yes, we do. 2 system? 2 MR. BRIGHT: Let's go to Slide 19. 3 A. Yes, it is. 3 BY MR. BRIGHT: 4 Q. Now, are there Desire2Learn customers who do not 4 Q. Can you tell us what Judge Clark's definition is? 5 use Desire2Learn's hosting services? 5 A. So, what he's telling us is a user is "a person who 6 A. Yes. There are several customers in -- or many 6 interacts with the system as an administrator, 7 customers in the United States who run the Desire2Learn 7 instructor or student, and who accesses the system by 8 Learning Environment software on their own computers. 8 logging on with a user name and password, and then keys 9 Q. Okay. Have you prepared a slide that would 9 in information. 10 illustrate these different types of Desire2Learn 10 So, essentially a physical person who logs 11 customers, whether they are hosted or self-hosted? 11 into the system with a user name and password. 12 A. Yes, I have. 12 Q. And, so, this definition of "user" that we have 13 MR. BRIGHT: Let's go to Slide 18. 13 from Judge Clark, does that apply to all claims 36, 37, 14 BY MR. BRIGHT: 14 and 38 that you studied in this case? 15 Q. So, we have two types of Desire2Learn customers 15 A. Yes. 16 here. One is hosted on the left, and the other is 16 Q. Now, you were here yesterday, were you not, doctor? 17 self-hosted on the right. Doctor, why don't you just 17 A. Yes, I was. 18 describe this for us. 18 Q. And did you hear Mr. Dasso's examination of 19 A. Okay. On the left we have the hosted system. 19 Mr. Chasen? 20 Here, as we said, Desire2Learn is running the 20 A. Yes, I did. 21 Desire2Learn system; and they are doing this on their 21 Q. And did you ask -- or did you hear Mr. Dasso ask 22 computer system in Canada for clients in the United 22 Mr. Chasen about a single login? 23 States. So, the servers are running up here in Canada 23 A. Yes, I did. 24 in this case; and say, for example, as you'll see later, 24 Q. And has the court given us some guidance about 25 for example, the University of Tennessee system asks 25 whether a login is required here, a single login? 8 (Pages 564 to 567) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 568 Page 570 1 A. Yes. It's telling us that a user -- 1 BY MR. BRIGHT: 2 MR. DASSO: Objection, your Honor. At this 2 Q. Just looking at the judge's definition, doctor, can 3 point I think he's starting to construe claim terms 3 you tell us whether a login is required here? 4 again. 4 A. Yes, it is required. 5 THE COURT: Well, I haven't heard the answer 5 Q. Okay. Now, we were talking about Desire2Learn's 6 yet; but I thought he was asking if the court had given 6 hosted and self-hosted customers. Can you take a look 7 some guidance. 7 at Plaintiff's Exhibit 145, doctor? It should be there 8 MR. DASSO: Okay. I apologize, your Honor. 8 in front of you. 9 I'll wait to hear the answer, and then I may extend my 9 MR. DASSO: Counsel, do you have a copy of 10 objection. 10 that for me? 11 THE COURT: All right. Overruled. 11 A. I have that in front of me. 12 Go ahead, counsel. 12 MR. DASSO: Chris, I can get a copy if you'll 13 BY MR. BRIGHT: 13 just wait one second. 14 Q. So, the question, doctor, is: Has the court given 14 MR. BRIGHT: Here's a box. 15 us some guidance about whether a single login is 15 MR. DASSO: Okay. Thank you. Thank you. 16 required here? 16 BY MR. BRIGHT: 17 A. Yes. It's telling us that it has -- that a 17 Q. Now, doctor, do you have Plaintiff's Exhibit 145 18 physical person is going to access the system by logging 18 there in front of you? 19 on with a single user name and password. 19 A. Yes, I do. 20 MR. DASSO: Again, objection, your Honor. 20 Q. And does that identify all of Desire2Learn's hosted 21 He's construing claim terms. That's not what the 21 and self-hosted customers, doctor? 22 court's definition says. 22 A. Yes, it does. 23 THE COURT: Well, other than the word 23 Q. Okay. And did you look at Desire2Learn's contracts 24 "single," I think he quoted what the definition of 24 with those customers in this case? 25 "user" was. 25 A. Yes, I did. Page 569 Page 571 1 Okay. Now, ladies and gentlemen -- and 1 Q. Okay. Is Plaintiff's Exhibit 145 a summary of 2 you'll get this instruction at the end. I have 2 those contracts with Desire2Learn's customers? 3 construed the terms that were in dispute between the 3 A. Yes, it does. 4 parties at the beginning of the case. In other words, 4 Q. And do your opinions that Desire2Learn has 5 they were instructed to let the court know which terms 5 infringed with respect to all of those customers -- do 6 or phrases were in dispute; and I went ahead and 6 your opinions apply to all those customers? 7 construed those, or the court did. 7 A. Yes, they do. 8 The other words are going to -- you're going 8 Q. Okay. Now, let's talk a little bit more about what 9 to get an instruction that you are to consider those in 9 you did in this case. 10 their ordinary, common meaning as understood by one 10 MR. BRIGHT: And let's take a look at 11 skilled in the art. In other words, the words -- you 11 Slide 20. 12 can't -- there's a lot of words there that are just used 12 BY MR. BRIGHT: 13 in their everyday sense. There is no point in trying to 13 Q. And, doctor, did you go through a number of steps 14 give special definitions to them. And, so, as you're 14 to reach your finding of infringement? 15 listening to the testimony, that's how you're going to 15 A. Yes. My investigation took many steps. 16 be making your decision. You'll use the definitions 16 Q. Okay. Let's talk about those steps. What's the 17 that I give you and then the other words are going to be 17 first thing you did? 18 based on the ordinary, common meaning of those words as 18 A. The first thing I did was to read the patent. I 19 understood by one skilled in the art and you'll have a 19 read that through at least ten times and keep going back 20 definition of that. If you'll just keep that in mind, 20 to it over and over again so I can compare the claim 21 then that may help as we go through this testimony. 21 terms, the actual claims, to the Desire2Learn's products 22 I'll overrule the objection. I will note 22 and services. 23 that I think you said "single" and the definition there 23 Q. Okay. And after you read the Blackboard patent, 24 just says "a user." 24 what did you do? 25 25 A. I read the Blackboard patent file history. This is 9 (Pages 568 to 571) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 572 Page 574 1 a record of the communication between the Patent Office 1 Judge Clark did not define for us? 2 and the inventors. 2 A. I read them as one of ordinary skill in the art. 3 Q. Okay. Now, there are a number of other steps that 3 Q. And has the court told us what the level of 4 we're going to look at. Did you do the rest of these 4 ordinary skill in the art is in this case? 5 steps in any particular order, doctor? 5 A. Yes. 6 A. No, I didn't. I had to keep going back and forth, 6 MR. BRIGHT: Let's go to Slide 22. 7 for example, going back to the patent, going to 7 BY MR. BRIGHT: 8 different pieces of source code and software. 8 Q. Can you tell us what we're looking at, doctor? 9 Q. Okay. So, you said you read the Blackboard patent 9 A. Yes. This is the court's definition of one of 10 file history. What is the Blackboard patent file 10 "ordinary skill in the art." Essentially it's someone 11 history? 11 with a four-year degree in the field of computer science 12 A. As we say, this is the communication between the 12 or a related field. In addition to that, that person 13 inventors and the Patent Office. It includes the 13 will have two to three years of application programming 14 provisional applications as well as summaries of the 14 experience, as it says other experience and technical 15 meetings between the Patent Office and the inventors. 15 training could substitute for some of the educational 16 Q. Okay. And have you heard of the term "cited 16 requirements. 17 references" in the file history? 17 Q. Now, based on your education, training, and 18 A. Yes, I have. 18 experience, doctor, do you meet this definition? 19 Q. What are those? 19 A. Yes, I do. 20 A. Those are the references that the examiner looks at 20 Q. In fact, do you exceed it? 21 as well as the references -- that the examiner looks at 21 A. Yes. 22 but that they find either on their own or, as well, 22 Q. Okay. Now, let's go back to Slide 20 and look at 23 those provided by the inventors. 23 the fourth thing that you did in your investigation of 24 Q. Okay. So, these are things like the patents and 24 infringement. 25 publications, articles, things like that that the 25 A. Yes. This is where I went in and inspected or Page 573 Page 575 1 examiner at the Patent Office considered when it was 1 actually ran the Desire2Learn software. So, this is a 2 looking at the Blackboard patent application? 2 case where I operated Desire2Learn's system multiple 3 A. That's correct. 3 times to see how it worked. 4 Q. And you studied those? 4 Q. Did anyone from Desire2Learn demonstrate the system 5 A. Yes, I did. 5 for you during that inspection? 6 Q. All right. Now, if you would, just take a look at 6 A. No, they did not. I operated the system myself. 7 Plaintiff's Exhibits 2 through 5 and tell us whether 7 Q. But you were already familiar with the use of 8 that is the Blackboard patent file history you studied. 8 course management systems? 9 A. (Perusing documents.) Yes, it is. 9 A. Yes, I was. 10 Q. How long did the Patent Office review the 10 Q. Now, why did you inspect and use the Desire2Learn 11 Blackboard patent application before deciding that the 11 system yourself? 12 patent should issue? 12 A. Well, I wanted to see how it worked from the 13 A. Over six years. 13 perspective of a student, from the perspective of an 14 Q. And that included a number of meetings with the 14 instructor, and the perspective of an administrator. I 15 inventors about the invention? 15 needed to do that myself to understand it. 16 A. That's correct. 16 Q. Okay. But you weren't inspecting the actual 17 Q. What was the third thing you did in your 17 operation at that point of any particular school use of 18 investigation in this case, doctor? 18 the Desire2Learn system, right? 19 A. I read and studied the court's definitions of the 19 A. No, I was not. 20 claim terms and applied them. 20 Q. Did you need to do that? 21 Q. So, there was certain claim language, as we've 21 A. No, I didn't. The use of that system is going to 22 already seen; and there will be other claim language 22 be consistent across Desire2Learn's customers. A course 23 that we will see that Judge Clark has defined for us? 23 management system is going to be used to manage courses 24 A. Yes. 24 and the use by students and instructors is going to be 25 Q. How did you understand the claim language that 25 consistent and it's my understanding that Desire2Learn's 10 (Pages 572 to 575) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 580 Page 582 1 Q. And what was the seventh thing you did? 1 Q. And let's go to the 13th step. What did you do 2 A. Looked over Desire2Learn's documents. This 2 there? 3 included manuals that they give to their customers to 3 A. I read over the applicable legal standards in this 4 tell them how to use the software as well as contracts 4 case. 5 between Desire2Learn and its customers. 5 Q. And why did you do that? 6 Q. And among the seventh thing you did are the 6 A. So I could understand how -- what the basis would 7 Desire2Learn manuals. Are these the manuals that 7 be for my investigation for determining whether there 8 Desire2Learn provides to its customers to describe how 8 was infringement. 9 the Desire2Learn system works? 9 Q. Let's go to Step 14, the final step that you went 10 A. Yes. It tells their customers how to use the 10 through to investigate infringement. Tell the jury what 11 system, how to install the system, basically every -- 11 you did, doctor. 12 all the information they need to know to use the system. 12 A. Well, there I went in and wrote a summary of my 13 MR. BRIGHT: Let's go to Slide 21. 13 investigation with citations to the evidence and 14 BY MR. BRIGHT: 14 reaching a conclusion on infringement; and those are the 15 Q. And look at the eighth thing you did to investigate 15 reports I wrote up there. 16 infringement. Can you tell us what that was? 16 Q. Let's get into the details, doctor, of what you did 17 A. Yes. Here I attended many of the depositions of 17 in this case. Have you prepared a summary of what we're 18 Desire2Learn's employees so I could understand how they 18 going to talk about? 19 say the system worked and how they installed the system 19 A. Yes, I have. 20 and operated the system. 20 MR. BRIGHT: Let's go to Slide 23. 21 Q. Okay. And what was the next thing you did, the 21 BY MR. BRIGHT: 22 ninth thing? 22 Q. Can you tell us what we're going to talk about? 23 A. Well, for those employee depositions that I wasn't 23 A. Well, first we'll talk about what's in the 24 able to attend, I read -- well, actually I read all the 24 Blackboard patent. Then I'll talk about what 25 deposition transcripts from these but including those of 25 Desire2Learn does in its products and services. And Page 581 Page 583 1 employees whose depositions I did not attend. 1 then we'll go through and compare those two things, the 2 Q. And, then, what was the tenth thing that you did? 2 claims of the patent to Desire2Learn's products and 3 A. Looked at Desire2Learn's Web site. We saw a few 3 services, side-by-side. 4 excerpts from that earlier. I wanted to understand how 4 Q. So, let's first talk about the Blackboard patent. 5 Desire2Learn was representing their product to its U.S. 5 MR. BRIGHT: And let's go to Slide 4. 6 customers. 6 BY MR. BRIGHT: 7 Q. And, then, looking at the 11th step that you did to 7 Q. Doctor, can you just tell us and summarize, if you 8 investigate infringement, what was that? 8 would, what the Blackboard patent is about? 9 A. Here I was able to study database data from 9 A. As we've talked about, this is for a course 10 Desire2Learn's customers. These were several U.S. 10 management system and the key aspect of this patent is 11 customers, schools, universities, and look at database 11 that this is a system that allows a user on a single 12 data that did not contain any information to 12 login to have multiple roles across multiple courses. 13 individually identify a student; but I could look at 13 Q. Now, before the Blackboard patent, were there any 14 courses and roles in the system. 14 problems with prior course management systems? 15 Q. So, the private information was taken out of that 15 A. Yes, there were. 16 database data; but what remained was important to your 16 Q. And what were those problems? 17 analysis? 17 A. Well, essentially, as we saw graphically before, a 18 A. Yes, it is. 18 user, to have multiple roles across multiple courses had 19 Q. And what was the next thing you did, doctor, the 19 to have a different login for every one of these 20 12th step? 20 courses. This presented not only significant 21 A. The next thing I did was look at the deposition 21 difficulties for the user but administrative issues for 22 transcripts that were taken from several of 22 the university. It made it very difficult to scale the 23 Desire2Learn's U.S. customers. We saw two of those -- 23 system, as we've been talking about, from these 24 or excerpts from two of those depositions in the videos 24 course-by-course course management systems, or the 25 played yesterday afternoon. 25 CourseInfo 1.5 model, to go to the model where they sell 12 (Pages 580 to 583) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 584 Page 586 1 the course management system for the entire university 1 A. Yes, it does. 2 so it's available for all of the classes. 2 Q. How does it do it? 3 Q. Okay. Have you prepared an illustration of these 3 A. It does it by providing the mechanism by which a 4 problems in the prior art? 4 single user can have multiple roles in multiple 5 A. Yes, I have. 5 courses -- 6 Q. And this was before the Blackboard patent came 6 MR. DASSO: Objection, your Honor. At this 7 along, right? 7 point, again I think we're going outside the court's 8 A. That's correct. 8 claim construction, as the court pointed out earlier it 9 Q. Can you describe this for us? 9 does not really involve the word "single"; and that's, 10 A. So, prior to the Blackboard patent, say we have a 10 again, what Dr. Jones is testifying to. 11 user here, in this case Daniel; and this user has a role 11 THE COURT: Overruled. 12 of student in math, instructor in history, student in 12 BY MR. BRIGHT: 13 physics, student in English, and teaching assistant in 13 Q. Go ahead, doctor. 14 biology. As you can see, there is a different Web page 14 A. The Blackboard patent allows a single user to have 15 to go to in each case and a different user name and a 15 multiple roles in multiple courses on a single login. 16 different password. 16 Q. Can you just tell us: What is a role? 17 Q. Okay. And the different Web pages, those are the 17 A. At a high level, a role is a collection of 18 different addresses that you have to type into the 18 permissions that define what someone in that role can 19 computer? 19 do. There's a bit more to it as part of role-based 20 A. Yes, the URL -- URLs are Web addresses. 20 access control; but at a high level, that's what a role 21 Q. Okay. And, so, can you describe a little further 21 does. 22 what the problems were here in this prior art before the 22 Q. Now, you heard Desire2Learn's opening statement; is 23 Blackboard patent? 23 that right, doctor? 24 A. Sure. If this user were to try -- to have this 24 A. Yes, I did. 25 user be a student in one course and instructor in 25 Q. Did you hear Desire2Learn describe this as a tiny Page 585 Page 587 1 another, we had to create a whole separate user name and 1 advance in the art? 2 password for that individual; and that meant having to 2 A. Yes, I did; but I disagree with that. This is the 3 distribute that password as well as imposing 3 framework, if you will, for the invention. It's also 4 administrative hassles, if you will, on the university. 4 the framework upon which Blackboard's products rely; and 5 Q. Okay. And, so, was one of the problems of the 5 it's a framework, as I examined in their source code, 6 prior art that a user having a login, a user name, and 6 for how Desire2Learn's products operate. 7 password, couldn't get to multiple roles in multiple 7 Q. And you also heard Desire2Learn say that this 8 courses? 8 Blackboard patent is invalid. Do you agree? 9 A. That's correct. 9 A. No, I don't agree with that. 10 Q. Does the Blackboard patent describe these problems 10 Q. Why not? 11 in the prior art? 11 A. Well, I did an investigation and determined that 12 A. Yes, it does, in its "Background of the Invention" 12 there is nothing that invalidates this patent. 13 section. 13 Q. Now, we'll talk more about validity and go into 14 MR. BRIGHT: Let's go to Slide 26 and look at 14 your opinions about that later, after we hear from 15 that. 15 Dr. Simmons. Let's continue on with infringement. 16 A. So, this is the part of the patent that we talked 16 Let's talk more about how the Blackboard 17 about earlier, "Background of the Invention" section, 17 patent solves these problems of the prior art. Can you 18 where they're laying out the problems in the prior art. 18 give us an example of where a user would have multiple 19 Here we see that they identify as a problem that a user 19 roles? 20 would have to log on to multiple networks if they wanted 20 A. Yes, I can. 21 to access different information. That information 21 Q. Okay. Please do. 22 included grading information, class schedule, exam 22 A. Okay. A user, for example, in my university and 23 materials, student group meetings, et cetera. 23 many others -- I have a graduate student who assists me 24 Q. Now, doctor, does the Blackboard patent solve these 24 in teaching a course, a graduate assistant or a TA, 25 problems of the prior art? 25 teaching assistant. This student will be an instructor 13 (Pages 584 to 587) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 588 Page 590 1 in my class. They'll have access to grades and other 1 who sets up courses, for example, or enters new users in 2 materials so that they can enter grades for the 2 into the system. They are responsible for running this 3 students. But they will be taking their own classes as 3 software. 4 well, and they will be a student in those classes, so 4 Q. Okay. So, Figure 39 in the Blackboard patent is a 5 that they would not be able, of course, to enter grades 5 system that can be used in the Blackboard invention? 6 for other students where they are a student or enter 6 A. That's correct. 7 their own grades, for that matter. 7 Q. Have you prepared another illustration of the 8 Q. And is that a typical situation, doctor? 8 course management system type that we see in Figure 39? 9 A. Yes. That's a situation at virtually every 9 A. Yes, I have. 10 university. 10 Q. Tell us what we're seeing here, if you would. 11 Q. Does the Blackboard patent illustrate how a single 11 A. So, what we're seeing here is a depiction of the 12 user is both an instructor and student? 12 system where here is the server down here (indicating). 13 A. Yes, it does. 13 This is where the course management system is running. 14 MR. BRIGHT: Let's go to Slide 27. 14 We have the software on there, the database on there, 15 BY MR. BRIGHT: 15 along with a definition of the roles in the database. 16 Q. And here we're seeing figure 39 from the Blackboard 16 This is occurring -- then we have the Internet with 17 patent. Go on, doctor. 17 users at their computers operating over the Internet. 18 A. Okay. So, this is a high-level view of how the 18 Here (indicating) we have our user, Daniel. 19 system is organized; and what we're seeing in this 19 Daniel is both an instructor and a student. We have two 20 picture is that we have multiple users -- here is a 20 other users, one who is a student only and one who is an 21 (indicating) group of student users sitting at their 21 instructor only. 22 computers. Here are instructor users (indicating) and 22 Q. Okay. And the Internet, is that a collection of 23 administrator users at their computers. They're all 23 networks, computer networks where computers talk to each 24 operating over the Internet. This user (indicating), 24 other? 25 however, plays the role of both instructor and student. 25 A. That's correct. Page 589 Page 591 1 So, this user in some courses will be an instructor and 1 Q. Okay. Now, what we see here in what you've 2 in others will be in the student role. 2 depicted, is this the only way the system might be set 3 And, of course, down here (indicating) -- 3 up? 4 actually if we can go to the next slide. 4 A. No, it's not. 5 Down here (indicating) we see highlighted -- 5 Q. Okay. So, this is just an example? 6 we see highlighted down here the system server. This is 6 A. Yes, this is an example. 7 where the course files are stored, and it's also where 7 Q. Now, we see the software and the database are 8 the levels of access and control. This is -- we have 8 connected there together. Can you tell us why they're 9 the course files as well as a determination of who gets 9 connected? 10 to see those course files, and this is all going on on 10 A. Yes. The software is using the database to store 11 the server computer. 11 its information on courses and users and levels of 12 So, the users have their own computers; and 12 access and control; so, it's constantly communicating 13 the Desire2Learn software and database is running down 13 with the database to store information and retrieve 14 here (indicating) on the system server. All of these 14 information. 15 users are interacting with that over the Internet. 15 Q. Now, we talked about Figure 39 in the Blackboard 16 Q. Okay. And, so, these other user computers that 16 patent showing us a single user who is both an 17 just say "student user" or "instructor user" or 17 instructor and a student. Does the Blackboard patent go 18 "administrator user," those are users that just have one 18 on to describe that situation? 19 role? 19 A. Yes, it does. 20 A. That's correct. 20 MR. BRIGHT: Let's go to Slide 30. 21 Q. Okay. And what is an administrator? 21 BY MR. BRIGHT: 22 A. An administrator in this system would be the person 22 Q. Just for the record, this is Column 4, lines 7 23 who runs the system. So, we're not talking about the 23 through 11 of the Blackboard patent. Go ahead. 24 president of the university or something like that. 24 A. So, we can see up here in the highlighted section 25 We're talking about a computer administrator, someone 25 that a user could have different roles; and they give an 14 (Pages 588 to 591) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 604 Page 606 1 files. 1 software and a database and roles stored in that 2 Q. Is there another name for "permissions" in the 2 database. This is running on a server computer. Users 3 Blackboard patent? 3 access the system over the Internet or a network; and 4 A. Yes. They also call -- permissions are also a 4 those users can have roles of, for example, student, 5 "characteristic of a role." 5 instructor, as well as have more than one role as 6 Q. Okay. Now, have you prepared an illustration of 6 instructor and student, just like they can in the 7 the roles providing levels of access and control over 7 Blackboard patent. 8 course files in the Blackboard patent? 8 Q. Now, does Desire2Learn provide everything that we 9 A. Yes, I have. 9 see in this illustration to its customers? 10 Q. What are we seeing here? 10 A. No, they don't. They provide the software, they 11 A. So, here we're seeing a little more detail on the 11 provide database information, and in some cases they 12 student and instructor roles. And Characteristic 1 for 12 provide the computer hardware on which these things run. 13 the student is that they submit completed assignments; 13 Q. Now, have you prepared an illustration of what 14 Characteristic 2, view grades. 14 Desire2Learn does provide to its customers? 15 For instructor, Characteristic 1, view 15 A. Yes, I have. 16 completed assignments and Characteristic 2, to grade or 16 MR. BRIGHT: Let's go to Slide 56. 17 post comments on those completed assignments. 17 A. So, here, zeroing in on this, here we have the 18 Q. So, we've talked about the Blackboard patent; and 18 software -- that would be, for example, the Learning 19 we've talked about the roles being set in advance within 19 Environment software -- and we have the database data. 20 the system. What about the characteristics? 20 And as we'll see, there are roles stored in that 21 A. The characteristics are part of the roles and are 21 database data. 22 set in advance within the system. 22 BY MR. BRIGHT: 23 Q. Okay. And what about the levels of access and 23 Q. You mentioned in some cases Desire2Learn actually 24 control? 24 provides the server. Can you tell us what those 25 A. Well, the levels of access and control are 25 situations are? Page 605 Page 607 1 determined by the characteristics associated with the 1 A. Yes. In the case where Desire2Learn is running the 2 roles. So, the levels of access and control are set in 2 system for their clients -- we call that the "hosted 3 advance within the system. 3 situation" -- then Desire2Learn is providing the 4 Q. We've talked about the Blackboard patent. Let's go 4 computers on which this runs. So, they are running the 5 to the next part of your investigation of infringement. 5 software and the database for their customers. 6 A. So, this is our -- my investigation of 6 Q. Now, we see the roles in the database data. How do 7 Desire2Learn's products and services. 7 the roles get there? 8 Q. Now, before we go on, doctor, we're going to see in 8 A. Well, they get there when Desire2Learn installs the 9 this next part of your investigation documents and other 9 system. 10 things describing Desire2Learn's products and services. 10 Q. And have you illustrated that? 11 And just for the jury's benefit -- they don't have those 11 A. Yes, I have. 12 items in their jury book; is that right, doctor? 12 Q. So, what are we seeing here? 13 A. That's correct. 13 A. So, what we're seeing here is a depiction of the 14 Q. Okay. And, so, they will be seeing those items 14 three roles that Desire2Learn sets in advance within the 15 later in the case? 15 system. And they call these their "default roles"; and 16 A. Yes, they will. 16 the three default roles are student, instructor, and 17 Q. Okay. So, let's talk more about the Desire2Learn 17 administrator, just like they are in the Blackboard 18 products and services. Now, have you prepared an 18 patent. 19 illustration of the Desire2Learn system? 19 Q. And have you seen evidence of this, doctor? 20 A. Yes, I have. 20 A. Yes, I have. 21 MR. BRIGHT: Let's go to Slide 55. 21 MR. BRIGHT: Let's go to our next slide, 22 BY MR. BRIGHT: 22 Slide 58. 23 Q. Can you tell us what we're seeing here? 23 BY MR. BRIGHT: 24 A. So, what we're seeing here is a depiction of the 24 Q. And we're seeing Plaintiff's Exhibit 85, page 5? 25 Desire2Learn system. It is a course management system, 25 A. What we're seeing here is an excerpt from a manual 18 (Pages 604 to 607) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 608 Page 610 1 that Desire2Learn gives to its customers. The manual's 1 they do in the Blackboard patent. 2 title is "Managing Roles and Security Settings," Version 2 Q. Let's look at the evidence. 3 8.1. This tells their customers how to manage roles in 3 MR. BRIGHT: Let's go to Slide 60. 4 the system. And we're seeing a definition of roles in 4 BY MR. BRIGHT: 5 the Desire2Learn system: "A role is defined in the 5 Q. What does this tell us, doctor? And we're looking 6 D2L system by a set of permissions" and we see that by 6 at Plaintiff's Exhibit 85, page 6. 7 default, they set up organizations with three roles, 7 A. This is the same manual that we were talking about 8 student, instructor, and administrator, as we showed in 8 earlier, about how to manage roles and security 9 the previous depiction. 9 settings. And here we see, for example, a user might be 10 Q. Have you seen evidence of why Desire2Learn sets up 10 enrolled in one course offering as a student, in another 11 its system with three default roles? 11 as a TA, and in another as an instructor. So, that user 12 A. Yes, I have. 12 may have, on a login, multiple roles in multiple 13 Q. Okay. And what evidence have you seen? 13 courses. 14 A. I have seen depositions of Desire2Learn employees 14 Q. And that's just like the Blackboard invention? 15 where they explain why they set them up that way. 15 A. Yes, it is, just like the Blackboard invention. 16 Q. And what have they said? 16 MR. BRIGHT: Let's go to our next slide, 17 A. They have said that they set up the system this way 17 Slide 61. 18 because this is the way their customers want it set up. 18 A. So, this is Plaintiff's Exhibit 15, page 86. This 19 Q. And have we seen these roles before, these roles of 19 is another manual that Desire2Learn provides to its 20 student, instructor, and administrator? 20 customers. This is their Site Management Version 8.1 21 A. Yes. These are the same three roles that we saw in 21 manual. Here, again, we see an example for a user being 22 the Blackboard patent. 22 enrolled as a teaching assistant in one course and a 23 Q. And these roles -- and how are they the same, 23 student in another. 24 doctor? 24 BY MR. BRIGHT: 25 A. They are the same. They have the same permissions 25 Q. And what conclusion do you draw from that? Page 609 Page 611 1 that are described in the Blackboard patent, the same 1 A. That this is exactly as it is in the Blackboard 2 permissions for student, instructor, and administrator. 2 invention. 3 Q. So, what do the roles in the Desire2Learn system 3 Q. Now, do users of the Desire2Learn system have a 4 do? 4 single login? 5 A. They provide levels of access and control to course 5 A. Yes, they do. 6 files, just like in the Blackboard patent. 6 MR. BRIGHT: Let's go to Slide 62. 7 Q. Have you prepared an illustration of the roles in 7 BY MR. BRIGHT: 8 the Desire2Learn system and what they do? 8 Q. What are we seeing here? 9 A. Yes, I have. 9 A. This is an example of a contract between 10 Q. What are we seeing here in Slide 59? 10 Desire2Learn and what's called "TBR-VSCC." This is from 11 A. So, what we're seeing here is more detail on the 11 the school called "Volunteer State Community College." 12 roles of student and instructor. In the case of 12 It's part of the University of Tennessee system, and 13 student, we see a characteristic that they may submit 13 we'll see this TBR again. That's Tennessee Board of 14 completed assignments and that they may view grades. 14 Regents. Here they are describing -- Desire2Learn is 15 And as another example of permissions for the 15 describing that a user can authenticate -- that means 16 instructor, we see that they may view completed 16 login -- to the Desire2Learn system using their user 17 assignments and grade completed assignments. 17 name and password that's been designated by the college. 18 Q. Let's talk more about the roles in the Desire2Learn 18 Q. Okay. And here we're looking at Plaintiff's 19 system, particularly the Desire2Learn database. Did you 19 Exhibit 298, page 1? 20 find multiple roles for a user in the Desire2Learn 20 A. That's correct. 21 system? 21 Q. And what conclusion do you draw from this? 22 A. Yes, I did. 22 A. I conclude that a user logs in to the system with a 23 Q. What do you mean by "multiple roles for a user"? 23 single user name and password in the Desire2Learn 24 A. That a user on a single login may have one role in 24 system. 25 one course and another role in another course, just like 25 Q. That's just like the Blackboard invention? 19 (Pages 608 to 611) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 624 Page 626 1 pages -- I can't read that. 1 we're looking at this piece of evidence and what the 2 BY MR. BRIGHT: 2 roles do in the Desire2Learn system? 3 Q. Looks like pages 1 and 101. 3 A. Sure. This is an example of how the roles in the 4 MR. DASSO: I'm going to object, your Honor, 4 Desire2Learn system are determining the level of access 5 to the relevance of the drop box. That's not part of 5 and control of a user to a course file. So, as you can 6 the claims. 6 see here, these are the permissions associated with the 7 THE COURT: Overruled. 7 roles -- or a subset of those permissions. And it's 8 BY MR. BRIGHT: 8 those roles that determine the kind of access the user 9 Q. Go ahead, doctor. What are we seeing in 9 could get. 10 Plaintiff's Exhibit 36, pages 1 and 101? 10 So, the student is allowed to, for example, 11 A. Okay. This is a manual that Desire2Learn intends 11 submit an assignment or see their own feedback; whereas, 12 to be used by teachers and instructors. And if we look 12 an instructor gets to see all of the files the students 13 down here describing the drop box, this tells us what 13 submit and post feedback for all of the files the 14 instructors can do. They can view submitted assignments 14 students submit. 15 and they can grade and leave feedback directly within 15 Q. And how does that fit into your investigation here? 16 the drop box. 16 A. Well, that's one -- as we'll see, that's one of the 17 Q. Now, doctor, we're talking about the drop box 17 terms in the claims is that roles provide levels of 18 feature in the Desire2Learn system. Are we going to 18 access and control to course files. 19 talk about that more when we get to the claims? 19 Q. Anything else you want to show us, doctor? 20 A. Yes, we will. 20 A. Yes. 21 Q. Can you just summarize why? 21 MR. BRIGHT: Let's go to our next slide. 22 A. We'll be looking at claims 37 and 38 and showing 22 A. So, here we're showing how the -- sorry. Let me 23 the correspondence. 23 explain what this is first. This is Plaintiff's 24 Q. Now let's take a look at Plaintiff's Exhibit 85 24 Exhibit 34, pages 1 and 2; and this is from the 25 again. 25 Desire2Learn database that they provide to their Page 625 Page 627 1 MR. BRIGHT: So, we'll go to our next slide. 1 customers. So, this is another part of that database; 2 BY MR. BRIGHT: 2 and this is the part that stores information about the 3 Q. Here we're looking at Plaintiff's Exhibit 85, pages 3 permissions or security settings in their system. 4 81 and 82? 4 So, here we've highlighted the permissions 5 A. Yes. And, again, this is from a manual we've been 5 we've been talking about, some highlighted ones about 6 looking at earlier that Desire2Learn provides describing 6 the drop box and the names associated with them and 7 how to manage roles; and this is a page describing the 7 display names associated with them. These are provided 8 permissions or characteristics associated with roles. 8 to the customer. These are set in advance. 9 And the two roles we're looking at here are instructor 9 BY MR. BRIGHT: 10 and student, and the permissions are "submit files" and 10 Q. Have you actually watched schools using the drop 11 see the "student view." That's something that a student 11 box feature, Desire2Learn customers using the drop box 12 can do. 12 feature? 13 We see "see the files that students have 13 A. No, I haven't sat over the shoulder of anybody 14 submitted." That's something an instructor can do, but 14 using the system from a particular school or university. 15 other students shouldn't be able to see other students' 15 Q. Why? 16 assignments. 16 A. Well, again, for privacy considerations I can't go 17 "Give feedback," that's something an 17 following around students and instructors at various 18 instructor can do. 18 universities. 19 "Receive feedback," something a student can 19 Also, because the use is -- you know, we're 20 do. 20 talking about how the system is used. It's a course 21 And "pick up the files that students have 21 management system that we're talking about here, and 22 submitted," something an instructor can do. 22 it's used to manage courses. This is a prime feature of 23 These are the same permissions we saw for the 23 the system that's used in everyday usage in my 24 drop box in the Blackboard patent. 24 experience. It's what we do. We post assignments. 25 Q. Okay. Now, can you please just tell the jury why 25 Students submit files. We grade them. 23 (Pages 624 to 627) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 632 Page 634 1 and control that the user has to course files. 1 a little bit, second point, role types of student, 2 Q. Is there any deposition testimony that you would 2 instructor, and administrator; and these are in the 3 like to show us, doctor, from Desire2Learn? 3 database in the Desire2Learn source code. 4 A. Yes, there is. 4 We'll see that the Desire2Learn products are 5 So, here we're looking at testimony from 5 specifically designed for these roles and that the 6 Brian Cepuran -- he's the vice-president of development 6 intended use of the Desire2Learn products as described 7 from Desire2Learn -- speaking as a corporate 7 in the manuals is specifically for those -- for just the 8 representative; and here he's being asked to give some 8 roles of student, instructor, and administrator. 9 examples of essentially the role being used to determine 9 Q. So, let's start with your first reason. What do 10 the access to a course file. 10 you mean there are default roles in the Desire2Learn 11 And what he's saying down here, in order to 11 database? 12 view the course files, there is a permission for seeing. 12 A. Well, these are the roles that are provided on a 13 And, again, if he is viewing a file in the content 13 standard installation of Desire2Learn's clients, the 14 tool -- that's a different tool -- then that would be 14 roles of student, instructor, and administrator. 15 controlled by a permission as well. So, essentially the 15 Q. And who uses the word "default" to describe those 16 roles determine the level of access and control to 16 roles? 17 course files. 17 A. That's from Desire2Learn's manuals that we saw 18 Q. And that's just like the Blackboard invention? 18 earlier. 19 A. Just like the Blackboard invention. 19 MR. BRIGHT: Let's go to Slide 82. 20 Q. Can you summarize where you have found evidence of20 BY MR. BRIGHT: 21 roles in the Desire2Learn system providing levels of 21 Q. What are we seeing here? 22 access and control over course files? 22 A. Here again we're seeing Plaintiff's Exhibit 85, 23 A. Yes, I can. 23 pages 1 and 76. This is that "Managing Roles and 24 So, using the same organization as before, 24 Security Settings" document and this is an excerpt from 25 here, looking at the evidence we examined for roles 25 it where talking to their customers, your initial Page 633 Page 635 1 providing levels of access and control to course files, 1 Desire2Learn installation is configured with three roles 2 I found that in the Desire2Learn manuals and contracts, 2 with specific security settings and the default roles 3 in the Desire2Learn source code, in the Desire2Learn 3 are administrator, instructor, and student, just like 4 database, in the deposition testimony -- for example, we 4 they are in the Blackboard patent. 5 just saw the testimony of Brian Cepuran. And previously 5 Q. Anything else you want to show us? 6 we had looked at database information from the 6 A. Yes. 7 customers, and in that same database information is 7 Here is a part of the database, the 8 information -- is the permission information associated 8 Desire2Learn database, that they provide to their 9 with those roles. 9 customers. We saw this briefly before. This is from -- 10 Q. So, now we've talked about the multiple roles in 10 so, if we look at this, we see "RoleId." Last time we 11 the Desire2Learn system, the roles providing levels of 11 looked at 575 and 576. Here we'll also look at 577, 12 access and control over course files. Let's go on to 12 which is the administrator role. 13 the next subject of your investigation. 13 So, stored in the database that they provide 14 What is the next topic we're going to talk 14 to their customers, we see student, teacher, and 15 about, doctor? 15 administrator. 16 A. We're going to focus on roles being set in advance 16 Q. And here we're looking at Plaintiff's Exhibit 230, 17 within the system. Recall that was part of the judge's 17 pages 1 and 2? 18 construction which we'll see in more detail later. But 18 A. Yes. 19 here we're going to be looking at whether roles are set 19 Q. So, what conclusion have you drawn from this 20 in advance within the system. 20 evidence? 21 And I found this in four ways in the system. 21 A. That the default roles are set in advance within 22 First, Desire2Learn provides default roles, that we saw 22 the Desire2Learn system, just like the Blackboard 23 earlier, to its customers and these are set in advance 23 patent. 24 within the system. 24 Q. Have you seen any other evidence that the default 25 They have role types which we'll be seeing in 25 roles and their characteristics in the Desire2Learn 25 (Pages 632 to 635) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 636 Page 638 1 system are set in advance within the system? 1 A. Yes, I do. 2 A. Yes, I have. 2 This is more deposition testimony from 3 So, this is more deposition testimony. This 3 Kenneth Chapman from Desire2Learn answering the question 4 is from, again, Bryan Cepuran, vice-president of 4 on who predefines the roles. As he says, the people who 5 development, speaking on behalf of Desire2Learn. So, 5 predefine the roles are the people that install the 6 he's being asked about the default roles. He says that 6 system; and later on, saying who does that, it's the 7 that refers to a sample set of roles provided to clients 7 Desire2Learn employees. 8 and that in this marketing literature he's read, he sees 8 Q. Now, Desire2Learn is in Canada, right? That's 9 the roles of administrator, teacher, or -- essentially 9 where its headquarters are, doctor? 10 an instructor -- so, he's drawing an equivalence between 10 A. That's correct. 11 teacher and instructor -- and a role named student. And 11 Q. Have you seen any evidence that Desire2Learn 12 asked a little bit more, he says that default roles mean 12 provides its installation services in the United States? 13 the sample roles that they provide to clients. 13 A. Yes, I have. 14 Q. Is there any other deposition testimony from 14 MR. BRIGHT: Let's take a look at Slide 87. 15 Desire2Learn that you want to show us? 15 A. This is deposition testimony of Cara Dekker, who is 16 A. Yes. 16 manager of the delivery services team. And asked about 17 So, this is from Kenneth Chapman, who is the 17 whether the implementation services have occurred at a 18 product manager at Desire2Learn, and being asked about 18 U.S. client's site, she confirms that yes, they have 19 the -- sorry -- being asked about these roles, answers 19 been done onsite at a U.S. client's site. 20 that there are three roles available when they install 20 BY MR. BRIGHT: 21 it and, again, confirming that the default roles are 21 Q. Now, have you seen any evidence that any 22 initially available when they install the product. 22 Desire2Learn customers in the United States are using 23 Q. And do you notice that he uses the term 23 the default roles of student, instructor, and 24 "predefined" there, doctor? 24 administrator? 25 A. Yes, I do, just like in the patent he uses the word 25 A. Yes, I have. Page 637 Page 639 1 "predefined" to describe the roles. 1 Q. Okay. What is that evidence? 2 Q. And who predefines -- 2 A. Well, again, when I examined the database data 3 MR. DASSO: Objection, your Honor. I think 3 provided by the customers, I saw evidence that those 4 that's in the question. 4 customers were using the default roles. We saw that 5 THE COURT: I'm sorry? What's your 5 explicitly in the case of Marquette. I also went and 6 objection? 6 compared the roles that they are using, the permissions 7 MR. DASSO: Objection, I think that that 7 associated with those roles to the default roles, and 8 is -- the question was whether Mr. Chapman used those 8 found that they were the same. 9 words, and that's actually in a question to Mr. Chapman. 9 Q. Have you seen any evidence that Desire2Learn's 10 It's not Mr. Chapman's -- so, I think that's an 10 customers have changed the default roles? 11 inaccurate statement -- 11 A. No, I haven't. I didn't do an exhaustive look at 12 MR. BRIGHT: I'll rephrase, your Honor. 12 every last permission in the system; but I looked at a 13 BY MR. BRIGHT: 13 representative sample of the permissions, particularly 14 Q. Do you see he's asked whether the roles are 14 those at issue here, and found them to be the same. 15 predefined? 15 Q. Let's talk more about your second reason that you 16 A. Yes. And then he's saying that refers to the fact 16 found roles are set in advance within the Desire2Learn 17 that when the user first logs in to the system, they 17 system. And you mentioned the role types in the 18 will see those three roles. 18 Desire2Learn system. Do you want to show us some 19 Q. And who predefines the roles in the Desire2Learn 19 evidence about that? 20 system? 20 A. Yes. 21 A. Desire2Learn does. 21 Q. Okay. 22 Q. Where have we seen the word "predefined" before? 22 A. So, again, turning to the Plaintiff's Exhibit 85, 23 A. We see that in the claims -- in claim 36. 23 pages 1 and 76, this is the managing roles and 24 Q. Do you have any more evidence, doctor, that 24 permissions document Desire2Learn provides to its 25 Desire2Learn considers its roles to be predefined? 25 customers. This is saying that there are default 26 (Pages 636 to 639) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 640 Page 642 1 security settings that are going to be applied when a 1 A. Yes. 2 new role is created so -- depending on the role category 2 Q. Have you seen evidence of the use of role types in 3 or role type. 3 the Desire2Learn source code? 4 So, as we'll see in a second, when a new role 4 A. Yes, I have. 5 is created in the Desire2Learn system, it's going to be 5 Q. Would you like to show us that evidence? 6 given default settings from the Desire2Learn database. 6 A. Yes. This is Plaintiff's Exhibit 22, page 4; and 7 Q. And what conclusion do you draw from this evidence? 7 this is a file called "processEditRole.asp." This piece 8 A. That the roles and role types in the Desire2Learn 8 of the source code is associated with creating the new 9 system are set in advance within the system. 9 role. We saw that screenshot earlier. Well, this is 10 Q. Is that just like the Blackboard invention? 10 the source code that is associated with that screenshot. 11 A. Yes, it is. 11 And what we see here is setting a roleTypeId. 12 Q. Now, anything else you want to show us? 12 So, if they have selected isStudent, set it to 1; 13 A. Yes. 13 isTeacher, 2; isAdmin, 3, this ties into that database 14 Q. What is this? 14 data we just looked at in the previous slide where we 15 A. This is a screenshot, an example, of the 15 had 1, 2, and 3 being teacher, student, administrator. 16 Desire2Learn system from their manual. This is the 16 And following that, Desire2Learn source code 17 process of creating a new role in the system. So, as 17 calls a database function that will set the default 18 they said, a user starts out with these roles of 18 security based on that role type. 19 student, instructor, and administrator; and if they want 19 Q. Okay. And here we're looking at Plaintiff's 20 to add a new role, this is the screen they would go to. 20 Exhibit 22, page 4. Can you tell us what conclusion 21 Here we see they can type in a new name for a 21 you've drawn from this evidence? 22 role. They could put in a description for it. But then 22 A. Yes, that the roles and associated permissions are 23 they have to select one of these three boxes -- is this 23 set in advance within the system, just like the 24 a student role, an instructor role, or an administrator 24 Blackboard patent. 25 role. Based on which one they select, a set of 25 Q. So, we've been talking about the roles being set in Page 641 Page 643 1 permissions, the default permissions associated with 1 advance within the Desire2Learn system. When are they 2 that role, will be applied to the new role. So, if they 2 set in advance within the system, doctor? 3 say this is a student role, then it will get the same 3 A. They are set in advance when Desire2Learn, for 4 permissions as the default student role. 4 example, installs the system. 5 Q. Okay. And we were previously looking at page 76 of 5 Q. Is there any deposition testimony you'd like to 6 Plaintiff's Exhibit 85, and now we're looking at pages 1 6 show us? 7 and 8 -- 7 A. Yes. 8 A. That's correct. 8 So, again, this is deposition testimony from 9 Q. -- of that same exhibit? 9 Kenneth Chapman, the product manager, speaking on behalf 10 And what conclusion do you draw from 10 of Desire2Learn. Asked how those roles are configured 11 Plaintiff's Exhibit 85, pages 1 and 8? 11 as part of a standard installation for clients, and his 12 A. That the roles and characteristics in the 12 answer is that "In the standard installation we've got 13 Desire2Learn system are set in advance within the 13 our three role templates." And what those role 14 system, just like the Blackboard patent. 14 templates are, what we've been referring to as the 15 Q. Anything else you want to show us? 15 "permissions" associated with these three role types. 16 A. Yes. 16 Q. Anything else you'd like to show us? 17 Q. What is this? 17 A. Yes. 18 A. This is another part of the Desire2Learn database 18 Q. What is this? 19 that they provide to their customer, and this part of 19 A. This is another Desire2Learn document. This is 20 the database is just listing the three role types. And 20 Plaintiff's Exhibit 329, pages 1 and 5. This talks 21 as we can see, the three role types are -- the names of 21 about what Desire2Learn does when they install and 22 those are student, teacher, and administrator; and they 22 configure their Learning Environment. 23 have the numbers associated with them of 1, 2, and 3. 23 Down here (indicating) we see one of the 24 Q. And here we're looking at Plaintiff's Exhibit 24, 24 things they do as a deliverable associate with these 25 pages 1 and 2? 25 services is that they create the initial users and the 27 (Pages 640 to 643) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 664 Page 666 1 steps are going to describe the method, but that it's 1 definition apply to the user in Step A as well as other 2 not -- that it's not limited to those steps. There can 2 places in claim 36? 3 be additional steps; but if someone performs those four 3 A. Yes, it does. 4 steps, then they are infringing that claim. They could 4 And, again, a user is to be taken as a person 5 perform additional steps. That's fine. But if they do 5 who interacts with the system as an administrator, 6 these four -- I'm sorry -- if they perform additional 6 instructor, or student, and who accesses the system by 7 steps but still perform these four, then they are still 7 logging in with a user name and password, and then keys 8 infringing. 8 in information. 9 Q. So, Desire2Learn can do more than the claim 9 Q. Now, have you compared Step A of claim 36 to the 10 requires in these four steps -- A, B, C and D -- and 10 use of Desire2Learn's products? 11 still infringe? 11 A. Yes, I have. 12 A. Yes. 12 MR. BRIGHT: Let's put Slide 114 back on the 13 Q. And are you saying that even if Desire2Learn 13 board if we could -- Slide 112. 14 products have additional capabilities, that they can be 14 BY MR. BRIGHT: 15 used to infringe? 15 Q. And what have you concluded, doctor? 16 A. Yes. 16 A. I've concluded that both Desire2Learn and its 17 Q. Now let's look at Step A of claim 36. Can you just 17 customers perform Step A of claim 36. 18 tell us what we see in Step A? 18 Q. And where do Desire2Learn and its customers do 19 A. What we're seeing in Step A is -- let's break it 19 Step A of claim 36? 20 apart. We're talking about establishing something. 20 A. They do that in the United States. 21 We're going to establish that each user can have 21 Q. Can you tell us why? 22 multiple roles in the system, that they will be 22 A. Yes. We're talking about establishing, and we're 23 characteristics -- or what we've been talking about, the 23 talking about establishing something for the users. The 24 permissions associated with those roles in the system 24 users of this system are in the United States. In the 25 and that the roles are going to determine a level of 25 schools at issue, we're talking about, for example, the Page 665 Page 667 1 access and control to the course files. And we also see 1 University of Tennessee and Marquette University. The 2 that a user is capable of having multiple roles in the 2 users are in the United States; and, so, we're talking 3 system. So, this is the key aspect of the invention 3 about establishing that for those users in the United 4 that we've been talking about. 4 States. 5 Q. Okay. Now, earlier you said that Judge Clark 5 Q. Let's start with Desire2Learn. When has 6 provided some definitions for us. Has he provided any 6 Desire2Learn done Step A? 7 definitions for Step A of claim 36? 7 A. Desire2Learn does Step A, for example, when it 8 A. Yes, he has. 8 installs and sets up, configures the system for one of 9 Q. What is this? 9 its customers. 10 A. So, for the highlighted area of this claim, Judge 10 Q. Does Desire2Learn do Step A in any other 11 Clark has given us a definition that that is to be 11 circumstances? 12 understood as "Establishing that discrete roles and 12 A. Yes, they do. They'll do that when they go and 13 their associated characteristics to which a user can be 13 update a system for their user. For example, when they 14 multiply assigned are set in advance within the system." 14 provide a new version of the software, they will go in 15 Q. Can you tell us what the key part is to this 15 and reestablish the system. 16 definition? 16 So, by "new version" of the software, what I 17 A. The key parts are the "set in advance within the 17 mean is it's the practice of almost all software 18 system" and again the indication that a user could have 18 manufacturers to release new versions of the software. 19 multiple roles. That's what the -- the key parts of 19 Those new versions may fix previous problems and add new 20 this definition. 20 features. So, when Desire2Learn has one of those, they 21 Q. Now, does the jury have in its jury notebook the 21 can go in and update this for one of their customers and 22 definitions from Judge Clark? 22 reestablish the system. 23 A. Yes, they do. 23 Q. Let me ask you to look before you, if you would, in 24 Q. And earlier we looked at Judge Clark's definition 24 your binders at Plaintiff's Exhibits 135, 598, and 599. 25 for "user." Let's look at that again. Does that 25 A. I've got 135. 33 (Pages 664 to 667) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 668 Page 670 1 Q. Okay. Can you tell us what Plaintiff's Exhibit 135 1 because these are new exhibits. 2 tells you? 2 THE COURT: Any objection? 3 A. Yes. This is a list of Desire2Learn's clients or 3 MR. DASSO: No objection, your Honor. 4 customers; and it gives upgrades of one -- tells the 4 THE COURT: All right. Plaintiff's 598 and 5 dates for when certain -- well, the dates when products 5 599 are admitted. 6 were updated for those customers. One example would be 6 BY MR. BRIGHT: 7 updating from 7.4 to 8.1. They tell if that's happened 7 Q. We've been talking about Desire2Learn doing Step A 8 for each client and the date on which it happened. 8 of claim 36, doctor. Let's go to Desire2Learn's 9 MR. DASSO: One second, your Honor. 9 customers. In what situation do Desire2Learn's 10 BY MR. BRIGHT: 10 customers do Step A of claim 36? 11 Q. And while we're waiting, doctor, can you look at 11 A. When Desire2Learn's customers are actually running 12 Plaintiff's Exhibit 598 and 599? 12 the software for themselves -- so, when they're not 13 Doctor, do you have those in front of you? 13 having Desire2Learn run it -- they are the ones doing 14 A. Yes. 14 the establishing; and they're doing that on a daily 15 Q. Can you tell us what Plaintiff's Exhibit 598 and 15 basis. 16 599 tell you? 16 Q. Okay. And earlier we talked about the different 17 A. Yes. Those are updated versions of the same 17 types of Desire2Learn customers, hosted customers and 18 exhibit, showing when -- on what dates, how software was 18 self-hosted customers. What kind of customers run their 19 updated at each of the customers. 19 own system again? 20 Q. And what conclusion do you draw from that evidence? 20 A. The self-hosted customers are the ones that run 21 A. That Desire2Learn has updated the software at its 21 their own systems. We've been talking about one example 22 customers; and when it updates it, it is performing 22 of a school that does that; that is, Marquette 23 Step A of 136 claim 36. 23 University. An example that we've been talking about 24 Q. You mentioned installations by Desire2Learn as an 24 that has Desire2Learn run it for them, a hosted school, 25 instance when Desire2Learn has done Step A of claim 36. 25 is the TBR, or University of Tennessee system. Page 669 Page 671 1 When do installations occur? Through what services? 1 MR. BRIGHT: Your Honor, at this time I'd 2 A. Through Desire2Learn's implementation services. 2 like to ask if Dr. Jones can step down and illustrate 3 Q. Did we talk about those implementation services 3 his testimony about the evidence and how it relates to 4 earlier? 4 the claim in this case. We've got a couple of boards 5 A. Yes. I showed you the Web site where Desire2Learn 5 that we'd like to set up -- 6 describes what its implementation services do. 6 THE COURT: All right. 7 Q. Now, other than installations and upgrades, how 7 MR. MORISSEAU: -- right in front of the 8 often does Desire2Learn do Step A? 8 jury. 9 A. When Desire2Learn is operating the system in a 9 THE COURT: Dr. Jones, since you won't be 10 hosted mode -- so, this is where Desire2Learn is running 10 right next to the microphone, please be sure to speak up 11 the software for their customers, on a daily basis they 11 very loudly because the acoustics in this room aren't 12 are establishing this for the users in everyday usage. 12 very good. 13 Q. Can you explain that? 13 THE WITNESS: Yes, your Honor. 14 A. Yes. Desire2Learn is -- if you look at the claim, 14 MR. DASSO: Your Honor, could I move around 15 they are establishing this capability for the users; and 15 so I can see it? 16 they are doing that establishment when they are running 16 THE COURT: Certainly. 17 the software. Every day they are doing that. They 17 MR. SPIVEY: Your Honor, does that permission 18 are -- like we talked about before, this is happening 18 extend to me, as well? 19 where the users are. This is -- in this case we're 19 THE COURT: Oh, certainly. And, for that 20 talking about the United States. So, if they are 20 matter, any other counsel at the table can move. 21 hosting this software for the University of Tennessee 21 BY MR. BRIGHT: 22 system but the users are in the University of Tennessee, 22 Q. Doctor, can you just tell us what evidence you have 23 then they are establishing that where those users are. 23 that Desire2Learn and its customers have done Step A of 24 MR. BRIGHT: And, your Honor, I'd like to 24 claim 36? 25 offer at this time Plaintiff's Exhibit 598 and 599 25 A. What I want to do is walk through the evidence that 34 (Pages 668 to 671) Christina L. Bickham, RMR, CRR 409/654-2891
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684 686 1 the result is that the level of access and control that 1 Steps C and D of claim 36? 2 the user has to course files is determined by that 2 A. Yes, we do. 3 user's roles. 3 Q. Can you tell us what this is? 4 Q. Now, do you understand that Desire2Learn has taken 4 A. Yes. So, if we look at the first clause up here, 5 the position that Step B of claim 36 does not take place 5 "providing a predetermined level of access and control," 6 in the United States when Desire2Learn is providing its 6 similar to the other constructions that the judge gave 7 hosting services because Desire2Learn is in Canada? 7 us, we are told that the level of access and control is 8 A. I do understand that. 8 set in advance within the system. That's what he termed 9 Q. And that's when Desire2Learn is creating course 9 there. 10 files? 10 Q. All right. And did you apply that definition here, 11 A. Yes. So, Desire2Learn does do that in the United 11 to Steps C and D, doctor? 12 States when they convert course files. For example, as 12 A. Yes, I did, as well as the definition of "user" as 13 we saw from the -- their description of what they do to 13 the judge gave us. 14 the University of Tennessee system, they described how 14 Q. Now, where do Desire2Learn and its customers do 15 they take courses from Blackboard and WebCT systems, 15 Step C and D of claim 36? 16 from customers in the U.S., and place those -- or create 16 A. Well, in the United States, where the users are. 17 those course files and transfer them. 17 Q. Now, can you tell us from the evidence what you've 18 Q. And what about B-3? What about in the hosting 18 concluded about Steps C and D? 19 situation for Desire2Learn? 19 A. Looking at that, we see that it's a predetermined 20 A. Well, similar to Step A, when Desire2Learn is 20 level of access and control; and this is for the student 21 hosting the system, they're allowing this access and 21 role in C and the nonstudent role in D. 22 control to the users; and the users are in the United 22 Up here (indicating) we looked at evidence 23 States. These are at the University of Tennessee, for 23 before, summarized this for "roles providing level of 24 example. 24 access and control over course files." You'll recall 25 Q. And, now, how -- can you just tell us -- if you 25 the judge's construction had "set in advance within the 685 687 1 would, just summarize your conclusion on the doctrine of 1 system." I've shown you the evidence why -- from all 2 equivalents infringement for Step B of claim 36. 2 these categories, why the roles are set in advance 3 A. So, I've concluded that both Desire2Learn and its 3 within the system. 4 customers perform Step B, both literally and under the 4 Finally, we need a student user in this case 5 doctrine of equivalents. 5 and a nonstudent user for D. And I showed evidence of 6 Q. Now, do you understand, doctor, that we have to go 6 users, both student users and nonstudent users, in fact, 7 through the rest of the steps of the claim? 7 a user enrolled as a student and an instructor, from the 8 A. Yes. 8 actual university databases. 9 Q. Can we speed this up and maybe look at C and D 9 Q. And when has Desire2Learn done Step Cs and D? 10 together? 10 A. Desire2Learn has done this when they installed the 11 A. Sure. 11 Learning Environment and when they have upgraded the 12 Q. And before we do that, can I go ahead and write 12 software as we've talked about? 13 "yes"? Did you find "yes" for -- 13 Q. Any other situation in which Desire2Learn has done 14 A. Yes. 14 Steps C and D? 15 Q. -- Step B, doctrine of equivalents infringement? 15 A. Yes, when Desire2Learn is running the system for 16 So, can you tell us why we can look at C and 16 their customers, when they are in the hosted situation, 17 D together, Steps C and D of claim 36? 17 as we've been talking about where the example was the 18 A. When we look at these two claims, the difference 18 University of Tennessee system. 19 between the claims is that C has an established role as 19 Q. And what about for Desire2Learn's self-hosted 20 a student user. D has an established role other than a 20 customers who run their own Desire2Learn systems? When 21 student user. 21 do they do Steps C and D? 22 Q. And is that the only difference between those 22 A. They are doing that on an everyday basis. When 23 steps? 23 they are running the system, they are providing this 24 A. Yes. 24 level of access and control to their users every day, 25 Q. Do we have any definitions from Judge Clark for 25 just like Desire2Learn does that every day when they are
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Page 732 Page 734 1 right? 1 A. Yes. 2 A. I believe I may have operated WebCT. I'm not sure. 2 Q. And those are the opinions essentially that you 3 Q. And that's also owned by Blackboard; isn't that 3 gave here today? 4 right? 4 A. Yes. I looked at additional evidence for the other 5 A. Yes, it is. 5 reports and offered additional opinions. 6 Q. Just so we're clear, there's two types of 6 Q. Okay. So -- and I'm going to slow down. I 7 Blackboard products. There is this CourseInfo line of 7 apologize. I got a little -- I was sitting there all 8 products, right? 8 morning, and I kind of got all the juices wound up. So, 9 A. There is something called the Blackboard Academic 9 I apologize. 10 Suite. 10 Sir -- so, before your first opinion, before 11 Q. Right. And, then, there's some legacy products, 11 the opinions you gave here today, you had never talked 12 the WebCT products, from the acquisition of WebCT back 12 to the inventors; isn't that right? 13 in 2005; isn't that right, sir? 13 A. I believe that's correct. 14 A. Yes, I believe so. 14 Q. And you had never read their deposition testimony. 15 Q. And those aren't the same products, are they? 15 A. I believe that's correct. 16 A. No, they're not. 16 Q. So, in all the hundreds of hours that you did and 17 Q. So, you have used two different types of Blackboard 17 in all this work telling us what the invention was here, 18 products; and those are the only two products you used 18 you never talked to the inventors. 19 before you got involved in this case; isn't that right? 19 A. That's correct. 20 A. That's correct. 20 Q. Now, sir, we tried to get a definition of what a 21 Q. And, sir, you put together a series of expert 21 "role" is the other day with Mr. Chasen; and I want to 22 reports for us, I mean, like five or six; isn't that 22 see if we can get that with you. 23 right? 23 Are you able, sir, to define a "role"? 24 A. That's correct. 24 A. Yes. 25 Q. Okay. And in each of those expert reports, you 25 Q. And can you tell the jury what a "role" is, just so Page 733 Page 735 1 listed out all of the work that you had done; isn't that 1 we have that clearly established in the record? 2 right? 2 A. Sure. A "role" is at a high level within a 3 A. All of the materials I've examined and the steps 3 role-based access control system. A "role" is a 4 I've taken, yes. 4 collection of permissions that define what a user of 5 Q. And in none of those expert reports do you list any 5 that role can do in the system. 6 survey or any investigation or any sort -- other similar 6 Q. Let's break that down a little bit, if we could. 7 sort of effort to find out how different people around 7 You said it's a "collection of permissions." And that's 8 the country use course management systems, do you? 8 a -- a permission is something that a user can or 9 A. That's correct. 9 cannot do -- isn't that right -- within the system? 10 Q. In fact, that's not something you've done in this 10 A. That's correct. 11 case. 11 Q. So, for example, one of the examples you use is the 12 A. That's right. I have not done a user survey. 12 idea of going to check grades. That's a permission. 13 Q. Okay. And, sir, back to your resumT, isn't it a 13 Either you can do that or you can't do that, right? 14 fact, sir, that your resumT doesn't even mention the 14 A. That's correct. 15 words "course management system"? 15 Q. And there is a number of different things you can 16 A. That's correct. 16 or cannot do within a system; isn't that right? 17 Q. Now, sir, we talked about all of the work that 17 A. Yes. The system has to have role-based access 18 you've done on this case. But one of the things you 18 control implemented, and those things you can and can't 19 didn't do before you reached your conclusion was talk to 19 do are going to be defined by the system. 20 the inventors; isn't that right? 20 Q. But the idea of a role -- I mean, the idea of a 21 A. I -- I did talk to them. I don't believe I talked 21 permission is something you can or cannot do within the 22 to them before my first report. 22 system, right? 23 Q. And in your first report you set out your 23 A. That's the idea, yes. 24 opinions -- isn't that right -- with respect to 24 Q. Okay. And the idea of a role, sir, is it's a 25 infringement? 25 collection of these permissions. So, it's a bunch of 50 (Pages 732 to 735) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 736 Page 738 1 permissions, right? 1 A. Yes, there were. 2 A. That's -- at a high level, yes. 2 Q. And, so, whole groupings of people were getting 3 Q. So, I'm not an engineer. So, I'm kind of doing 3 together and discussing this idea of role-based access 4 this at a high level. But at a high level, that's what 4 control before Blackboard ever applied for its 5 a role is, isn't it? 5 invention; isn't that right? 6 A. That's correct. 6 A. That's correct. 7 Q. And, so, what you're talking about is a grouping of 7 Q. So, when we talked about the roles and all the idea 8 things someone can or cannot do within the system, 8 of roles up on the screen, that's not the invention. 9 right? 9 Will you agree with me on that? Just the general 10 A. Yes. 10 concept of a role. 11 Q. And that grouping limits how a person can operate 11 A. Role-based access control isn't the invention. 12 within the system. 12 Q. Okay. And, sir, there has been no dispute, has 13 A. It does, but the system has to be checking those 13 there, that my client, Desire2Learn, uses roles. We've 14 permissions. 14 never disputed that, have we? 15 Q. Now, sir, you and Blackboard are not claiming that 15 A. You have not. 16 the idea of roles was something you invented, is it? 16 Q. Okay. In fact, you note that in your report, that 17 A. I'm not claiming I invented anything. I'm 17 we have never made that part of the dispute; isn't that 18 interpreting the patent. And in there Blackboard in 18 right? 19 this invention does not invent role-based access 19 A. That's correct. 20 control. It existed before this. 20 Q. In fact, the dispute that we have made and that you 21 Q. In fact, it was well-known in the art before this, 21 cover in your report has been about whether they are 22 wasn't it, sir? 22 predetermined or not; isn't that right? 23 A. No. 23 A. I think that's one of the disputes, yes. 24 Q. It was -- are you, sir, aware of the Win patent? 24 Q. Okay. Now, sir, in this case we're talking about a 25 That's something you reviewed in this case? 25 set of particular types of roles for the educational Page 737 Page 739 1 A. Yes, I did. 1 system, right? 2 Q. And that was a patent issued by the United States 2 A. Essentially, yes. 3 Government? 3 Q. Okay. And some of the roles we've talked about are 4 A. Yes, it was. 4 the idea of student, teacher, and administrator, right? 5 Q. And that was a patent covering role-based access 5 A. Those are the roles we've covered. The patent 6 control, wasn't it? 6 discusses others as well. 7 A. Yes. 7 Q. And the idea that there were students, teachers, 8 Q. And that patent came out before the Blackboard 8 and administrators, that idea was around before there 9 patent; isn't that right? 9 were computers, right? 10 A. Yes. 10 A. Certainly we've had students, teachers, and 11 Q. And you are aware, sir, of an entity called the 11 administrators before that. The administrators we're 12 National Institute of Standards and Technology, aren't 12 referring to here, though, aren't the administrators -- 13 you, sir? 13 the physical ones we associate with a principal. These 14 A. Yes. 14 administrators are administrators who are running the 15 Q. And, again, that's an institution out in 15 system. 16 Washington, DC -- right outside of Washington, DC? 16 Q. Sir, my question, though, is: When you're in an 17 A. Yes, it is. 17 educational context -- let's go back even in the 1800s. 18 Q. And you're aware, sir, that they had published a 18 You had students, you had teachers, and in certain 19 number of articles about role-based access control 19 schools you had administrators. Those concepts have 20 before Blackboard ever applied for the patent; isn't 20 been around for a long time, haven't they? 21 that right? 21 A. Those concepts have, yes. 22 A. Yes. 22 Q. Okay. And you're not claiming here today that the 23 Q. Okay. And, in fact, there were conferences on 23 idea of using those types of roles -- student, teacher, 24 role-based access control before Blackboard ever applied 24 and administrator -- that's not something new or novel, 25 for a patent, wasn't there? 25 is it? 51 (Pages 736 to 739) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 744 Page 746 1 here as part of that invention. 1 Q. And those aren't my words; those aren't your words; 2 Q. Okay. Can you answer my question "yes" or "no"? 2 those are the words of the patent we've just been going 3 A. I think I'm answering it; so, I'm -- I'm sorry. 3 over, right, sir? 4 Q. Okay. 4 A. The words of the patent and the words I gave are 5 A. I'm missing you. 5 the judge's construction, yes. 6 Q. Let me try it a different way then, sir. 6 Q. Sir, in the claim 36, again, there is no use of the 7 You see in subparagraph A there, when it 7 word "single login," is there? 8 refers to "multiple roles," it also refers to "multiple 8 A. We have the judge's construction which is "logging 9 predetermined roles" in the system. Do you see that, 9 in with a user name and password." 10 sir? 10 Q. And the judge's construction doesn't say "single," 11 A. Yes, I do. 11 does it, sir? 12 Q. So, it's not all roles or even all multiple roles. 12 A. It says "a." 13 It's multiple predetermined roles; isn't that right? 13 Q. But, sir, my point is there's no words "single 14 A. I understand what you're saying at this point. So, 14 login" anywhere in this claim, is there? 15 you're asking about the judge's construction, set in 15 A. I would agree those words don't appear there 16 advance within the system. The roles have to be set in 16 literally. 17 advance within the system, as we talked about -- is 17 Q. Okay. Now, sir, let me return to the various 18 that -- 18 claims you make of infringement. And as I understand 19 Q. My point, sir, is simply that this claim -- I just 19 it, you've got four different types of infringement. 20 want to focus on what the claim says, not characterize 20 It's direct infringement; it's -- I'm not sure I can 21 it, not do anything at this point. I just want to focus 21 keep them all straight -- direct infringement, joint 22 on what the claim says. And the claim doesn't say "all 22 infringement, induced infringement, and contributory 23 roles." It says "multiple predetermined roles," right? 23 infringement, right? 24 A. That's what the claim says. 24 A. Essentially, yes. 25 Q. And that's a subset of this larger idea of roles. 25 Q. And, then, you're claiming that not only do those Page 745 Page 747 1 Wouldn't you agree with me on that? 1 four things apply; but every single one of D2L's 2 A. I would say that I would go with the judge's 2 products infringes, right? 3 construction that the roles have to be set in advance 3 A. The Learning Environment product. 4 within the system. 4 Q. Well, sir, don't you say in your report that all 5 Q. And are there any roles that are not set in advance 5 products -- all D2L products, including all versions or 6 within the system, in your opinion? 6 subversions or releases, infringe the asserted claims of 7 A. Yes. 7 the '138 patent? 8 Q. Okay. So, would you agree with me, then, that this 8 MR. MORISSEAU: Your Honor, I would ask if 9 isn't covering all roles? 9 counsel has a copy of Dr. Jones' report for him. 10 A. Yes. It -- literally it's not. 10 THE COURT: Well, if -- I mean, the witness 11 Q. Okay. And, in fact, it also refers to having 11 can answer the question. 12 predefined characteristics, again something that's set 12 A. Yes, I do offer that opinion. 13 in advance within the system, right? 13 BY MR. DASSO: 14 A. That's correct. 14 Q. So, sir, you're claiming that every single one of 15 Q. And, then, just to focus on a little bit more, C 15 D2L's software products, including all versions, all 16 and D both also talk about a predetermined level of 16 subversions, and all releases, all have those four 17 access and control; isn't that right? 17 different types of infringement, right? 18 A. That's correct. 18 A. I'm not claiming that the products infringe. The 19 Q. Okay. And those are all the words that are in that 19 claim is that the products are used to infringe. 20 patent, correct? 20 Q. Sir, don't you make the statement in your report 21 A. I didn't get your last -- 21 that all D2L products, including all versions and 22 Q. Those are the words of the patent, the ones we've 22 subversions or releases, infringe the asserted claims of 23 just been going over. 23 the '138 patent? 24 A. Yes, and we have a similar construction there of 24 A. They are used to infringe those, yes. 25 "set in advance within the system." 25 Q. Okay. And, sir, you also make the statement, don't 53 (Pages 744 to 747) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 780 Page 782 1 A. Well, my understanding is that it's noninfringing 1 category or they don't have a role category, it's still 2 and acceptable. In other words, it wouldn't cause the 2 infringing; isn't that right, sir? 3 product to function in a way that would make it 3 A. As the system is built and used right now, yes. 4 noncompetitive. 4 Q. Okay. Could we turn to another issue, sir? And 5 Q. Okay. What we're talking about is whether there is 5 that is talking about -- looking at specific instances 6 any other software system out there that's both 6 or specific clients. 7 noninfringing and acceptable, right? 7 You had, sir, the opportunity to look at a 8 A. Or competitive, yeah. I think that's correct. 8 number of different specific clients, didn't you? 9 Q. And it's your view, sir, that there is no other 9 A. Yes, I did. 10 software system out there that's both noninfringing and 10 Q. You looked at University of Arizona; you looked at 11 acceptable. 11 Marquette, correct? 12 A. That I don't see a modification to Desire2Learn's 12 A. Yes, I did. 13 system that would make it such. 13 Q. You looked at a bunch of information about hosted 14 Q. Sir, are there other nonacceptable -- are there 14 clients? 15 other acceptable noninfringing technologies in the 15 A. Yes, I did. 16 marketplace? 16 Q. And you were able to get all that information about 17 A. I would have to examine this like I examined the 17 all these clients despite the privacy concerns that you 18 D2L one, looking at the source code, operating it, 18 raised in connection with your direct testimony; isn't 19 looking at all the manuals. I'd have to do the same 19 that right? 20 inspection I did here to determine that. 20 A. I -- I asked for information that didn't identify 21 Q. Now, sir, let me turn to the issue of role 21 any users. 22 category. You mentioned that during the course of your 22 Q. So, you were able to get information about clients 23 examination. Do you remember that? 23 without implicating the privacy concerns; isn't that 24 A. Yes, I did. 24 true? 25 Q. And let me define what that is. A role category, 25 A. That information, yes. Page 781 Page 783 1 sir, is not something you can -- it's not a set of 1 Q. Okay. And, so, you selected a certain number of 2 permissions, is it? 2 clients and got information about those clients, right? 3 A. The role category has a set of permissions 3 A. Yes. 4 associated with it. 4 Q. And then there were other clients you didn't take 5 Q. Sir, my question again was very specific. And my 5 the time or effort to go back and look at specifically; 6 question to you was: A role category is not a set of 6 isn't that right? 7 permissions, is it? 7 A. I didn't look at every single client. That's 8 A. The category itself is like a name or a number; so, 8 correct. 9 it's not actually a set of permissions. 9 Q. And, sir, you didn't look specifically at Adventist 10 Q. And you can't enroll any user in a role category, 10 Distance Education Consortium, did you? 11 can you? 11 A. I don't recall whether I did or not. 12 A. You assign a user -- a role to a role category and 12 Q. Alabama State Department of Education? 13 a user to a role. So -- 13 A. I did not look at their database information. I 14 Q. Sir, my question to you again is very 14 don't believe so. 15 straightforward and very simple. I'm trying to ask a 15 Q. Columbia College? 16 simple questions. My simple question is: You can't 16 A. I don't believe I looked at that database 17 assign a user to a role category, can you? 17 information. 18 A. Not directly, no. 18 Q. Hamilton Department of Education? 19 Q. Okay. And if you change the role category, it 19 A. I don't believe I looked at that information. 20 doesn't affect the permissions of a user, does it? 20 Q. Elgin Community College? 21 A. Not of that user, no. 21 A. I don't believe I looked at that information. 22 Q. And, in fact, sir, you -- your infringement 22 Q. International Society For Technology and Education? 23 position is not based upon whether there is role 23 A. I don't believe I looked at that information. 24 categories or not in the D2L system; isn't that right? 24 Q. Maryland State Department of Education? 25 I mean, it's your view, sir, whether they have a role 25 A. I'm not sure if I looked at that database 62 (Pages 780 to 783) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 784 Page 786 1 information or not. 1 enrolled in the course." Do you see that, sir? 2 Q. Can you recall -- you can't recall as you sit here 2 A. I do see that. 3 today? 3 Q. And would it be possible, sir, under the D2L system 4 A. I cannot. 4 to remove the student sample role? Isn't that right? 5 Q. Maryville University? 5 A. Yes, it would be possible to remove default roles. 6 A. I did not look at that database information. 6 Q. And, so, it would be possible to use the D2L system 7 Q. Mississippi Virtual School? 7 without ever enrolling a student in a sample role; isn't 8 A. I did not look at that information. 8 that right? 9 Q. Monmouth University? 9 A. You could do that, yes. 10 A. I did not look at that database information. 10 Q. Okay. And, then, similarly in D, it's a similar 11 Q. Rochester Institute of Technology? 11 item; but it says predetermined level of access and 12 A. I did not look at that database information. 12 control other than a student user. Do you see that, 13 Q. South Dakota Board of Regents? 13 sir? 14 A. I don't recall on that one. 14 A. I do see that, yes. 15 Q. Temple College? 15 Q. And we talked about the administrator and the 16 A. I didn't look at that database information. 16 instructor sample roles. 17 Q. University of West Florida? 17 A. Yes, we've talked about those. 18 A. I did not look at that database information. 18 Q. And, again, it would be possible to remove those 19 Q. West Virginia Department of Education? 19 sample roles, the administrator and instructor sample 20 A. I don't believe I looked at that database 20 roles, and never use them in connection with the D2L 21 information. 21 system? 22 Q. Or WK Health? 22 A. It would be possible to remove the default roles; 23 A. I don't recall if I looked at that database 23 and, therefore, they wouldn't be used anymore. That's 24 information or not. 24 right. 25 Q. And, sir, you've issued the opinion in this case, 25 Q. Now, sir, let me turn to another issue. Page 785 Page 787 1 haven't you, that in order for -- let me go back to 1 MR. DASSO: Could we go back to 36? And this 2 claim 36, 37, 38. Those are method claims, right? 2 time 36A. 3 A. That is correct. 3 BY MR. DASSO: 4 Q. Those don't claim a product. They claim a method 4 Q. And you understand, sir, that in order for 5 or series of steps that need to be taken in order for 5 infringement to be found, each one of these steps has to 6 infringement to be found; is that right, sir? 6 be met; isn't that right? 7 A. That is correct. 7 A. That's correct. 8 Q. Okay. And you've issued an opinion, sir, haven't 8 Q. And if any single one of them is not met, there is 9 you, that in order for infringement to be found, you 9 no infringement; isn't that right? 10 need to meet a certain set of conditions; isn't that 10 A. That's correct. 11 right? I'm referring you over to paragraph 142 of your 11 Q. And in terms of A, it talks about establishing that 12 report. 12 each user is capable of having redefined characteristics 13 A. What I'm saying there is that those are conditions 13 indicative of multiple predefined [sic] roles in the 14 under which infringement occurs. I'm not saying that 14 system. Do you see that, sir? 15 you have to meet those to infringe. 15 A. It was close. 16 Q. And you see, sir -- this is claim 36, items 16 Q. I'm getting better. 17 numbered C and D. Do you see that on the screen, sir? 17 But it's up on the board to see. 18 A. Yes, I do. 18 And, sir, my understanding is is that the 19 Q. And do you see C talks about providing a 19 system -- the D2L system is capable, in your opinion, of 20 predetermined level of access and control over the 20 having predefined characteristics indicative of multiple 21 network files to course users -- I think I misread that. 21 predetermined roles in the system at the time of 22 Let me try it again. 22 installation; is that right? 23 "Providing a predetermined level of access 23 A. It provides that capability for a user, yeah; but 24 and control over the network to the course files to 24 the D2L system is capable of doing that at installation, 25 users with an established role as a student user 25 yes. 63 (Pages 784 to 787) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 796 Page 798 1 A. Yes, I do. 1 A. If we're talking about files, yes. 2 Q. And we talked about hosted and self-hosted sites. 2 Q. And isn't it also, sir, your view that the time, 3 Do you remember that generally? 3 way, and result are independent of the time of creation 4 A. Yes, I do. 4 of the role or the modification of the permissions 5 Q. And hosted -- in hosted sites D2L offers the 5 associated with a role? 6 customers the option to host the system up in Canada; 6 A. Can you point me to my report so I can read that? 7 isn't that right? 7 Q. Sure. 8 A. That is correct. 8 A. It's a lot to parse. 9 Q. And under a hosting situation, when D2L 9 Q. If you would go to paragraph 78, sir. 10 purchases -- D2L supplies all of the hardware and 10 A. Okay. All right. I'm at paragraph 78. 11 software required to run the system; isn't that right? 11 Q. And, sir, over on the second page -- because 12 A. Yes, they do. 12 paragraph 78 is a long paragraph. I think it's the 13 Q. And once the system is used by the customer, it's 13 second to last sentence of that paragraph. 14 your opinion that all of the conditions giving rise to 14 A. Yes, I see that. 15 infringement are met within D2L's facilities; isn't that 15 Q. And the statement is made, sir, that "the function, 16 right? 16 way, and result described in the preceding sentences" -- 17 A. Essentially. 17 I'm sorry -- the preceding sentences described your 18 Q. And you understand, sir, that D2L's facility is 18 equivalents analysis; isn't that right? 19 located in Canada; isn't that right? 19 A. Yes. 20 A. I do understand that, yes. 20 Q. That "the function, way, and result described in 21 Q. Now, sir, during the course of your direct 21 the preceding sentences achieved are independent of the 22 examination you talked about the doctrine of 22 time of creation of a role or the modification of the 23 equivalents. Do you remember that? 23 permissions associated with that role." 24 A. Yes, I do. 24 A. And the time is referring to either the creation or 25 Q. And you indicated that even if some elements of the 25 the modification. Page 797 Page 799 1 claim were not met, that their equivalent was in the 1 Q. Sir, didn't you say that in your report? 2 claim. That was your opinion? 2 A. Yes, I did. 3 A. That if something wasn't literally done, that there 3 Q. So, what you're saying is -- isn't it, sir -- that 4 were equivalent ways in which it was done, yes. 4 even a postdetermined role is the same thing in your 5 Q. And, sir, with respect to 36A -- 5 mind as a predetermined role? 6 MR. DASSO: Can we go back to that one? 6 A. It depends on how it's used. What I'm stating here 7 BY MR. DASSO: 7 is I'm stating that the new roles that they create 8 Q. And, again, sir, 36A refers to "multiple 8 perform exactly the same as the roles that were set in 9 predetermined roles in the system." Do you see that, 9 advance within the system. And I believe that 10 sir? 10 Dr. Simmons offers opinion that agrees with that. 11 A. I see that reference, yes. 11 Q. The jury is going to hear from Dr. Simmons, sir. I 12 Q. And, again, we talked about Judge Clark defining 12 want your opinions since we're up here. 13 predetermined roles as roles that were set in advance 13 And my question to you, sir: Isn't it your 14 within the system; isn't that right? 14 equivalents analysis that it doesn't matter when the 15 A. Yes, it is. 15 roles are set, if they are set in advance or set 16 Q. And you have issued the equivalents opinion, sir, 16 afterwards, they still perform the same function, the 17 that even if the roles were done after the system was 17 same way, and the same result? Isn't that the essence 18 set, then they would still be infringing under the 18 of your analysis? 19 doctrine of equivalents; isn't that right? 19 A. It is for the Desire2Learn system. It's not for 20 A. It depends on what the roles are. I offered -- I 20 every system in the world. This analysis is for the 21 mean, I offered the function-way-result test to 21 Desire2Learn system. 22 determine that. 22 Q. Now, sir, do you have your supplemental report up 23 Q. Sir, isn't it your view that the time of creation 23 there? 24 of a file does not change the behavior of D2L's products 24 A. Just a second. 25 with respect to that file? 25 I'm not finding it. Is there a tab for it? 66 (Pages 796 to 799) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 844 Page 846 1 CROSS-EXAMINATION OF DAVID SAMPLE 1 Q. You believe there are conditions on that, though? 2 CALLED ON BEHALF OF THE PLAINTIFF 2 A. Absolutely. 3 BY MR. NORROD: 3 Q. In your binders could you turn to Exhibit 305? 4 Q. Mr. Sample, near the end of your examination, you 4 A. Okay. 5 voiced an opinion that if Desire2Learn were not in the 5 Q. And on page 2 of that exhibit, do you see where 6 market, that Blackboard would capture Desire2Learn's 6 Blackboard states that "open source alternatives are 7 sales. 7 affecting competition and pricing for CMSs and will 8 A. Yes. 8 continue to be a significant threat to all commercial 9 Q. And you indicated that in competition, Blackboard 9 CMS vendors"? 10 had lost sales to Desire2Learn in the past, correct? 10 A. Yes. 11 A. Yes. 11 Q. Okay. And this document, you understand, was 12 Q. Okay. Has Blackboard also lost sales to Moodle? 12 submitted to the United States Department of Justice on 13 A. Sure. 13 behalf of Blackboard? 14 Q. Has Blackboard also lost sales to Sakai? 14 A. Yes, that's what it says. 15 A. Yes. 15 Q. If you could turn back in the binder Mr. Heartfield 16 Q. To ANGEL? 16 gave you to Exhibit 173. 17 A. Yes. 17 A. Yes. 18 Q. Okay. To any other entities? 18 Q. And you read from that to the jury a line in an RFP 19 A. I'm sure we've lost some to people who just don't 19 that was asking whether multiple user roles for a single 20 make a decision. 20 user were available in the vendor system. 21 Q. Okay. So, what is the basis, sir, of your opinion 21 A. Yes. 22 that all of Blackboard's sales -- I'm sorry -- that all 22 Q. Okay. And did that ask for predetermined user 23 of Desire2Learn's sales would go to Blackboard if 23 roles? 24 Desire2Learn were to exit the market? 24 A. No. If you read it, it says "multiple roles." It 25 A. I don't believe I said all -- all sales; but 25 doesn't say anything about "predetermined." Page 845 Page 847 1 certain ones that we've lost I believe would definitely 1 Q. Okay. And is there an indication in the RFP that 2 go to Blackboard because they're the closest match to 2 this particular item is required by the Clear Creek 3 us. Much different competing -- as I had mentioned 3 school district for a successful bidder? 4 earlier in my testimony, it's much different to compete 4 A. All of the things they put on there are 5 against a commercial product such as Desire2Learn than 5 requirements that they would like the vendors to meet. 6 it is competing against Moodle or Sakai. One is a 6 Q. That they would like. 7 do-it-yourself; it takes a lot afterwards. The other is 7 A. Yes. They want them to meet, yes, sir. They would 8 commercial, which is taken care of by the company; and 8 reject them if you said no. 9 that's the way Desire2Learn is sold. 9 Q. So, it's your position that everything in the RFP 10 Q. Sir, Blackboard sees Moodle as a strong competitive 10 is mandatory? 11 option, correct? 11 A. I cannot answer that. I'd have to -- if you give 12 A. It is a strong competitive option for certain types 12 me the time to read through it, I certainly could give 13 of customers, yes, but not all customers. 13 you my opinion. 14 Q. Which types of customers? 14 Q. Okay. And how many pages is the RFP response? 15 A. The ones that would like to do it themselves, in 15 A. Oh, this is probably -- my guess is -- I don't 16 other words, get all the parts, put it together, put 16 know -- 70 pages. I didn't count them. 17 more resources on perfecting the product and making it 17 Q. Okay. Is it common in the CMS business for a 18 work versus putting your energy into improving teaching 18 prospective seller to assist prospective clients with 19 and learning through an already-built product. It's a 19 drafting their RFPs? 20 totally different kind of system. 20 A. Could you repeat the question? 21 Q. And it's also Blackboard's view that open source 21 Q. Does it happen in the CMS business that prospective 22 competitors are affecting competition and pricing of 22 sellers will assist or participate with prospective 23 CMSs and will continue to be a significant threat to all 23 clients in drafting RFPs? 24 commercial CMS vendors? 24 A. What do you mean by "assist"? 25 A. In some way I guess that's a true statement. 25 Q. Provide information. 78 (Pages 844 to 847) Christina L. Bickham, RMR, CRR 409/654-2891
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927 929 1 of those profit margins; and I used those profit margins 1 56 schools you mentioned earlier? 2 in my analysis, everything that Mr. Alexander had talked 2 A. Right. I think we can go back to a slide that we 3 about. So, I've got to figure out what are they going 3 had shown early on. 4 to buy, what's the revenue, what's the profit margin. 4 So, the number that I just showed, that 5 Then you multiply all of those together, and you get the 5 15,400,000, that's the left side. That's the lost 6 profits Blackboard would have earned if they had 6 profits on the 19 contracts that Blackboard would have 7 received those contracts. So, that's the analysis I 7 received. 8 did. 8 The other 56 contracts, I'm not saying they 9 Q. Did you calculate that amount for each of the 19 9 would have gone to Blackboard; but my understanding is 10 schools that we talked about earlier? 10 that because the teachings of the patent were still used 11 A. Yes, I did. 11 in those contracts -- just like if somebody uses your 12 MR. FOSTER: Let's go to the next slide. 12 house, they have to pay rent. When somebody uses 13 BY MR. FOSTER: 13 intellectual property, they should have to pay a royalty 14 Q. Is this the same list of 19 schools that you 14 payment. So, Blackboard -- my understanding from an 15 discussed with us earlier? 15 economic point of view is that Blackboard should receive 16 A. Yes. So, this is a summary chart of my analysis. 16 royalty fees for the use of the teachings of the patent 17 So, for each of the 19 schools, I went through that 17 in those 56 contracts. 18 approach that I said, where I figured out the revenues, 18 So, we're now to the right-hand side where we 19 applied profit margins, did the calculations; and I got 19 have to look at the royalty payments that Blackboard 20 a profit associated with each of the schools over the 20 lost out on. 21 length of the contract that Blackboard would have had if 21 Q. Before we move to the details of the right side, on 22 they had the contract instead of Desire2Learn. 22 the left side we walked through your lost profits 23 Now, there are some other technical 23 analysis. Did Mr. Britven, on behalf of Desire2Learn, 24 calculations, like some of these profits take place over 24 offer any lost profits analysis? 25 time; and, so, I had to do this calculation to bring it 25 A. He -- Mr. Britven does not believe that Blackboard 928 930 1 into a lump-sum amount today as opposed to this 1 is entitled to lost profits; so, he did not provide his 2 profitability happening over time. So, I did all of 2 own sort of separate analysis. He did do some 3 those calculations; and you can see the results up on 3 calculations with my numbers. 4 the board there. So, the total lost profits to 4 Q. Did Mr. Britven criticize any of the calculations 5 Blackboard because of D2L's -- Desire2Learn's 5 that you performed with respect to your lost profits 6 infringement is $15,455,375. 6 analysis? 7 Now, you can also see on a school-by-school 7 A. No, he did not. 8 basis or institution-by-institution basis what those 8 Q. Let's now take a look at the right side of this and 9 profits were. And those profits are determined by, you 9 talk about the 56 lost royalty contracts that you have. 10 know, the revenues that come from the school, the 10 MR. FOSTER: If we could go to the next 11 profitability, and also the length of time that the 11 slide. 12 contract would have been in force. So, that's why some 12 BY MR. FOSTER: 13 of the numbers are different. 13 Q. And if you could tell us how you determined those 14 So, you can see Alabama State Department of 14 royalty amounts. 15 Education is $266,769. And then there is a much larger 15 A. If you look at the top of the chart, it says: "How 16 contract and, in fact, one where we saw the response to 16 Royalty Damages Are Calculated." But the way you do 17 the RFP by Blackboard for the Tennessee Board of 17 this calculation is you need a royalty rate; in other 18 Regents -- "BOR" is "board of regents" -- that's a much 18 words, what's the percentage charged. It's almost like 19 larger contract and that was $7,339,120. 19 a price, what are you going to charge for use of the 20 Q. And the Tennessee Board of Regents -- or on the 20 teachings of the '138 patent. In this context that 21 board it's "Tennessee BOR" -- that's one of the schools 21 price is called a "royalty rate." And you determine 22 that Dr. Jones testified about yesterday, isn't it, sir? 22 something called a "reasonable royalty rate." 23 A. I believe so, yes. 23 Once that's determined, you apply it to 24 Q. So, once you determined these 19 schools, what did 24 something called a "royalty base," in other words, 25 you do to analyze the damages with respect to the other 25 what's the dollar sales, the infringing sales, the
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Page 983 Page 985 1 the following pages as you work through, there are 1 'course-centric' data model as opposed to something new 2 bullet points for features -- 2 'built around a repository' that could represent 3 A. Yes. 3 'organizations and structures.'" Do you see that? 4 Q. -- for the system that is being sought by South 4 A. I do see that sentence, yes. 5 Dakota Board of Regents? 5 Q. And do you see in the indented paragraph where 6 A. Yes. 6 Blackboard said to the United States Department of 7 Q. Okay. Before you formed your opinion that in the 7 Justice that the reason they lost at Iowa was a couple 8 absence of the alleged infringement, the South Dakota 8 of things: "(1) Support - They had a bad experience and 9 Board of Regents would have gone to Blackboard, did you 9 we never helped ourselves out of that hole for a variety 10 look in this RFP to the identify a place where South 10 of reasons." 11 Dakota Board of Regents requested or demanded the 11 "Architecture - This, I believe, is our next 12 presence of multiple predetermined roles in that system? 12 major marketing challenge. We've lost a couple major 13 A. I don't know that I see in this RFP that request. 13 deals on this issue and I do believe it is a weakness 14 Q. Another of the 19 clients is the University of 14 that will continue to get exposed by competitors." 15 Iowa, correct? 15 Do you see that? 16 A. Yes. 16 A. Yes, I do. 17 Q. Okay. If you would go, sir, to Defendant's 17 Q. Another of the 19 is WK Health, correct? 18 Exhibit 224. See this, sir? 18 A. Yes. 19 A. I'm on Exhibit 224, yes. 19 MR. NORROD: Let's go to Exhibit 228. 20 Q. Okay. And you see this is a letter sent by -- on 20 A. I'm at 228. 21 behalf of Blackboard to the United States Department of 21 BY MR. NORROD: 22 Justice in connection with the WebCT acquisition? 22 Q. And you see Exhibit 228 is a response to RFP by 23 A. Yes. 23 Blackboard to Wolters Kluwer Health, Inc., WK Health. 24 Q. And you reviewed several of these types of letters 24 A. Yes. 25 in forming your opinions, correct? 25 Q. And in this document -- do you recall looking at Page 984 Page 986 1 A. Yes. 1 this document before deciding that in the absence of the 2 Q. Okay. 2 alleged infringement, that WK Health would have gone to 3 MR. NORROD: Let's move on in this letter to 3 Blackboard instead of D2L? 4 page 10, first of all. If we'd pull up the bottom 4 A. I believe I had had all the -- I had all the RFPs, 5 paragraph for the University of Iowa. 5 yes. 6 A. I am there. 6 Q. Okay. And do you recall if you looked in this RFP 7 BY MR. NORROD: 7 to see whether WK Health was demanding that its provider 8 Q. Okay. Now, you see that Blackboard invested 8 establish the presence of multiple predetermined roles? 9 significant time and resources into competing for Iowa, 9 A. As I'm sitting here right now, I don't recall 10 according to what Blackboard told the Department of 10 seeing that in this one. 11 Justice. 11 Q. Okay. And did you put into your report narrative 12 A. Okay. 12 or anywhere else in your report that WK Health demanded 13 MR. NORROD: Now let's go on to the next 13 the presence of multiple predetermined roles from its 14 page, if you could. And if you could highlight the 14 provider? 15 paragraph beginning with the word "following" and the 15 A. If I understand your question, I didn't put that 16 indented paragraph beginning with "why." 16 they demanded those roles; but as we know, that the -- 17 BY MR. NORROD: 17 I'm sorry. 18 Q. Okay. You see that there is a discussion about the 18 Q. Did you put into your report that WK Health 19 loss to Iowa, and the second sentence says: "Blackboard 19 requested those roles? 20 noted that D2L was perceived to have a totally new 20 A. I did not put those -- that sentence is not in my 21 architecture...while Blackboard is perceived to be a 21 report. 22 first-generation product currently being loaded with new 22 Q. Okay. And did you put into your report that D2L 23 features." 23 attempted to sell WK Health on the basis of the presence 24 A. Yes. 24 of multiple predetermined roles? 25 Q. And do you see: "In other words, Iowa saw an old 25 A. I did not put that sentence in my report. 34 (Pages 983 to 986) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1003 Page 1005 1 of predetermined roles? 1 Q. And, again, you have assumed infringement by 2 A. My understanding is that predetermined roles is a 2 Desire2Learn of the Blackboard patent based on the 3 determinative factor as to why people buy this product. 3 testimony of Dr. Jones; is that right? 4 Now, a couple of things could happen. D2L 4 A. That's correct. 5 could raise their price, but then customers would buy 5 Q. Counsel spoke with you about actively protecting 6 from Blackboard. That's what we're talking about here, 6 the patent and whether or not Blackboard has been doing 7 the losses to Blackboard from the infringement -- go 7 that. Do you remember that? 8 ahead. 8 A. Yes, I do. 9 Q. And at the end of your discussion with Mr. Foster, 9 Q. And I believe we had a slide on that. 10 you indicated the total damages claimed was $17 million 10 MR. FOSTER: I think it was Slide 17 -- 11 and that that was reasonable? 11 sorry, Slide 24. 12 A. Yes. 12 BY MR. FOSTER: 13 Q. Okay. And that is a damages of 17 million and 13 Q. Is that the language you were discussing with 14 compared to D2L's total revenue during that period of 14 counsel? 15 16.2 million? 15 A. Yes. 16 A. Okay. And you know that's not a proper comparison. 16 Q. Now, in this case the patent issued in January, 17 Q. And you think that's reasonable, sir? 17 2006; is that right? 18 A. Absolutely, because that is just the past revenues. 18 A. That's correct. 19 It does not take into account the fact that these are 19 Q. And the complaint in this case was filed in July, 20 multiyear contracts that are going into the future. The 20 2006? 21 ultimate revenues that D2L will get are multiples of 21 A. That's my understanding. 22 that $16 million. 22 Q. Wouldn't you say that the filing of this case is 23 MR. NORROD: No further questions, your 23 actively protecting Blackboard's patent? 24 Honor. 24 A. Yes. 25 THE COURT: Mr. Foster. 25 Q. And trying the case here before this court and this Page 1004 Page 1006 1 REDIRECT EXAMINATION OF KEITH UGONE 1 jury, would you say that's actively protecting 2 CALLED ON BEHALF OF THE PLAINTIFF 2 Blackboard's patent? 3 BY MR. FOSTER: 3 A. Yes. 4 Q. Dr. Ugone, do you remember you were speaking with 4 Q. We saw some testimony as well yesterday from 5 counsel about this document? 5 Mr. Sample about marking the patent number on the 6 A. Yes. 6 Web site and on documents. Do you remember that? 7 Q. And counsel was speaking with you about 7 A. Yes, I do. 8 predetermined roles? 8 Q. Would you say that Blackboard putting its patent 9 A. Yes. 9 number on its Web site for the world to see is actively 10 Q. Have you been asked to assume, for your analysis, 10 protecting its patent? 11 that the Desire2Learn products have been infringed? 11 A. Yes. Yes, it is. 12 A. Yes. 12 Q. Would you also say that putting the patent number 13 Q. We've also heard testimony from a number of other 13 on Blackboard's manuals and other documents is actively 14 witnesses about the invention, and you're familiar with 14 protecting the Blackboard patent? 15 that testimony; is that right? 15 A. Yes. 16 A. Yes. 16 Q. You were only asked to analyze the damages to 17 Q. Are you familiar with the testimony that's been 17 Blackboard as a result of Desire2Learn's infringement, 18 given that the invention really involves single logins 18 weren't you, sir? 19 with multiple roles over multiple courses? 19 A. That's correct. 20 A. Yes. 20 Q. You didn't analyze whether another party's 21 Q. In assessing your economic damages analysis, what 21 activities may have caused Blackboard damage, did you? 22 is it you have been assuming the patented invention was? 22 MR. NORROD: Objection, leading. 23 A. The concept of a single user, single login that 23 THE COURT: Sustained. 24 allows access to multiple courses and allows for 24 BY MR. FOSTER: 25 multiple roles by that user. 25 Q. Did you analyze whether or not Blackboard has been 39 (Pages 1003 to 1006) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1131 Page 1133 1 A. We did. During that time frame, we would get 1 those lines, sir? 2 feedback from customers that we were talking to about 2 A. Well, we were trying to solve initially the problem 3 other systems that they might have seen or other systems 3 of multiple user names and passwords; but at the same 4 that they might have looked at. And one of the ways 4 time, in the application, when you went to your course 5 that we were able to get out and talk to schools about 5 online, that economics or Bio 101 I was talking about, 6 what we were doing was attendance at national 6 you typically went in as a specific role. So, an 7 conferences across the nation. And, so, at that time 7 instructor would go in as an instructor; and a student 8 when we went to those conferences, we would see other 8 would go in as a student. 9 people that were also working within the space. 9 But what we came to realize is that, in fact, 10 Q. And what were those competitors doing in that time 10 instructors never stop learning themselves. They are 11 frame to compete? 11 constant students in their own environment. And, so, in 12 A. Mostly everyone was focused on developing features. 12 that regard, we wanted to understand how could we 13 As I mentioned, if you're a biology teacher, there are 13 actually allow instructors to log in both in the 14 certain things that you require in the way that you 14 capacity of teaching people as well as in a capacity of 15 teach that's different than economics or imagine trying 15 being taught themselves by other instructors. 16 to put a writing course in an electronic environment. 16 Q. And you said you stepped back to have this 17 That's one of the most challenging. So, most of the 17 realization. What did you do next, sir, along those 18 competitors were focused on building features around the 18 lines? 19 application to really dip into what specific instructors 19 A. Well, you step back because it takes a little bit 20 were doing versus thinking about what a holistic system 20 of time to really understand what that impact might be 21 might look like. 21 and takes time to develop the concepts around meeting 22 Q. And can you give us a couple of examples of the 22 that need and solving that problem. 23 features that you were seeing that the other competitors 23 And, so, we started developing a system that 24 were adding to the course management systems in order to 24 allowed us to have an individual access the system and 25 compete in the marketplace? 25 by nature of accessing the system, they would access -- Page 1132 Page 1134 1 A. Yes. There were -- course management system is a 1 have access to economics and Biology 101 without having 2 collection of tools. I apologize if you've heard this 2 to jump to the different Web browsers I mentioned 3 before -- but a series of tools such as a virtual chat 3 earlier or type in a separate URL -- excuse me, Web page 4 room, a discussion board where people can type something 4 address, "myschool.economics101" -- as well as have 5 in a Web page and then somebody else can come back and 5 access to the courses they might have a different role 6 type back and you can view the responses later, 6 in. So, I could log in and see all of the courses I was 7 development of quiz and test engines so that instructors 7 teaching; and then, as I mentioned about as an 8 could create automated tests online and deploy those to 8 instructor, also, all of the teaches [sic] I may be a 9 students. And most of what was being talked about was 9 student in, also. 10 around features for the different tools for different 10 Q. All right, sir. 11 instructors and the courses they were trying to create. 11 MR. MORISSEAU: I ask for a blowup of our 12 Q. Now, did CourseInfo decide to compete like the 12 next time entry on our timeline, and if we could blow it 13 other competitors out there by adding features; or did 13 down just a little bit smaller than that so we can get 14 CourseInfo do something else? 14 all of it. That's good. 15 A. We were in some capacity also developing features, 15 BY MR. MORISSEAU: 16 but we decided to step back and -- because we had this 16 Q. This says: "Early '98, Inventors Conceive Multiple 17 grand realization of this challenge with user name and 17 Roles, One Login." Do you see that, sir? 18 passwords and the capabilities that individual 18 A. I do see that. 19 instructors and students needed just to get into their 19 Q. How does that relate to what you just said? 20 course environments because -- again, they had so 20 A. That is the essence of where we were going. And 21 many -- we stepped back and decided to commit some time21 when I say we stepped back from ILN 1.5, we were still 22 to thinking about what would the next generation of a 22 out talking about ILN 1.5 to instructors and students 23 system like this look like. 23 and academic institutions but at the same time started 24 Q. And when you say stepped back to think about the 24 creating this concept. 25 next generation, what specifically were you doing along 25 And stepping back took us some time to 71 (Pages 1131 to 1134) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1135 Page 1137 1 actually figure out what does that look like, how does 1 worked in the Blackboard offices? 2 that get structured in architecture in the application 2 A. Also correct. 3 and then, of course, at the end of the day, how do 3 Q. And that was you, Mr. Tim Chi, and Mr. Dan Cane? 4 people actually use the system and do it without having 4 A. Tim Chi, Dan Cane, myself, Lee Wang, John Yang, and 5 to know what the technology is, do it so that they can 5 John Knight as well as Steve Kim. 6 simply log in and see it. And that's about right in 6 Q. Now, after you got to Blackboard, did you and 7 early '98, we were in the development of those concepts. 7 Mr. Cane and Mr. Chi continue to work on this core 8 Q. Okay. We've been referring to -- to this 8 foundation issue that you've been testifying about? 9 conception as a "log in with multiple roles and multiple 9 A. We did, except at that point in time, because we ad 10 courses." Does that ring any bells with you, sir? 10 had merged with another company, we had the opportunity 11 A. Yeah, that's correct. 11 to leverage new individuals that allowed us to add some 12 Q. All right. How does that, that description, relate 12 experience and more intelligence to what we were trying 13 to the patent that you're an inventor on? 13 to build in the system. 14 A. That would be the -- that would be the core -- the 14 Q. All right. I want to go to the next time entry and 15 core fundamental concept of what we had designed and 15 it says "November, '98, CourseInfo 2.0 released." Do 16 started conceptualizing at that time, the idea that, 16 you remember that, sir? 17 again, a user could log in to the system and go to a 17 A. I do. 18 course and if you had a role as an instructor or a role 18 Q. By that time had you and the other inventors come 19 as a student, you could have both roles within those 19 up with a product that had this core foundation issue 20 courses and see them all at the same time. 20 that we've been talking about? 21 Q. So, is it fair to say the '97-'98 time frame, the 21 A. That was the first release of this core component 22 course management systems that you were aware of were 22 that we're talking about for the system, yes. 23 focusing on features where you were really -- you and 23 Q. And did that product have your invention in it? 24 the other course information colleagues were focusing on 24 A. Yes, it did. 25 this core foundation that you just testified on? 25 Q. Now, back in November of '98, were you still a Page 1136 Page 1138 1 A. That's correct. 1 marketing guy? 2 Q. Is it fair to say you were going against the grain? 2 A. I'm always going to be a marketing guy; but in that 3 A. Yeah, more so than not, I think. And it was very 3 capacity, yes, I was -- I was officially still a 4 challenging for a young company at the time to do that 4 marketing guy within the company. 5 because what we were working on wasn't necessarily the 5 Q. Would you go out and try and sell CourseInfo 2.0? 6 core component or it wasn't -- I'm sorry. Excuse me. 6 A. Absolutely. 7 It wasn't necessarily a feature in regards to I need 7 Q. Can you share with the members of the jury how you 8 this for my test or I need this for my discussion board. 8 and your colleagues at Blackboard at this time went out 9 We were still trying to keep up in both realms, both 9 and marketed CourseInfo 2.0? 10 create the features but also focusing heavily on this 10 A. Again, it was very much as I described before. We 11 core component and the key architectural component for 11 would travel to academic institutions. We would go 12 the system going forward. 12 spend time with instructors themselves. We would then 13 Q. Back in the '97-'98 time frame, when you were going 13 go to national conferences where we would have the 14 out and learning about other course management systems, 14 opportunity to sit with groups of instructors, faculty 15 did any of them have this core foundation that you were 15 members, and give them one-on-one demonstrations of the 16 talking about? 16 product and how the product actually worked. 17 A. At the time no one did, no. 17 Interesting story during that time frame, a 18 Q. Now, I want to continue with our timeline here, 18 lot of those conferences were both a lot of fun but 19 sir. Our next time entry -- 19 really exciting because we found that once we released 20 MR. MORISSEAU: If we could blow that up. 20 CourseInfo 2.0, faculty members were so excited that 21 BY MR. MORISSEAU: 21 essentially the conversations spread like wildfire and 22 Q. All right. You were part of the merger between 22 we ended up in a situation in conferences where we were 23 CourseInfo and Blackboard? 23 just significantly overwhelmed with people to show the 24 A. That's correct. 24 product to. 25 Q. After the merger, you went down to Washington and 25 Q. Okay. Can you describe for the members of the jury 72 (Pages 1135 to 1138) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1151 Page 1153 1 individual. 1 A. I would say yes, I am proud of the award. 2 Q. Now, I'm going to ask if I can -- 2 Q. And what is the core and foundation of 3 MR. MORISSEAU: Can I have Mr. Foster just 3 CourseInfo 4.0? 4 help me lift this up? Because it's a little bit heavy. 4 A. The core and foundation is the key architecture 5 BY MR. MORISSEAU: 5 component of allowing an individual to log in to the 6 Q. And I want you to come over here, sir, if you can 6 system and have access to all of their courses and all 7 and -- come over to my side. 7 of the roles. 8 A. I have problems reading this. 8 MR. MORISSEAU: No further questions of this 9 Q. Okay. Can you read that for the members of the 9 witness. 10 jury? Read it from the top to the bottom. 10 THE COURT: Mr. Spivey. 11 A. Sure. "The Computerworld Smithsonian Medallion is 11 MR. SPIVEY: Yes, your Honor. 12 presented annually to individuals or designated 12 May we approach the witness to give an 13 representatives of institutions, public or private, who 13 exhibit book for the witness, the court, and opposing 14 have, under the auspices of the Computerworld 14 counsel? 15 Smithsonian Program, submitted materials approved and 15 CROSS-EXAMINATION OF STEPHEN GILFUS 16 accepted for inclusion in one or more of the Permanent 16 CALLED ON BEHALF OF THE PLAINTIFF 17 Research Collections of the Smithsonian Institution. 17 BY MR. SPIVEY: 18 "The Medallion is" -- excuse me. 18 Q. Mr. Gilfus, my name is Jonathan Spivey; and I'm 19 "The Medallion is gilt pewter on a band of 19 counsel for Desire2Learn here. 20 sky-blue ribbon. The obverse of the medal depicts a 20 You were previously just testifying about the 21 Corinthian Column, symbolic of the classic and 21 Smithsonian Laureate Award that Blackboard received; is 22 never-ending search" -- I've got to pause. I get a 22 that correct, sir? 23 little passionate. Like I said, I'm a modest guy. 23 A. That is correct. 24 I'll be okay. 24 Q. And you testified that Blackboard received the 25 "The obverse" -- "never-ending search for 25 Smithsonian Laureate Award for CourseInfo 4.0; is that Page 1152 Page 1154 1 innovation, dedication, talent, and achievement worthy 1 correct, sir? 2 of special recognition. The reverse bears the motto of 2 A. That's correct. 3 the Computerworld Smithsonian Program, 'A Search For New 3 Q. Isn't it true that Blackboard did not receive the 4 Heroes.'" 4 Smithsonian Laureate Award for CourseInfo ILN 1.5? 5 "The following words are spoken upon 5 A. Did not receive? 6 presentation of the Medallion: On behalf of the 6 Q. Did not. 7 Smithsonian Institution, the American People, and future 7 A. For ILN 1.5. 8 generations throughout the world for whom we hold these 8 Q. Yes, sir. 9 historic materials in trust, it is my honor and duty to 9 A. That's correct. It was for CourseInfo 4.0. 10 bestow this medallion in commemoration of the 10 Q. Isn't it true that Blackboard did not receive the 11 outstanding quality of your work, and to thank you for 11 Smithsonian Laureate Award for CourseInfo 2.0? 12 your contribution to the history of information 12 A. That's correct. 13 technology." 13 Q. Isn't it true that Blackboard did not receive the 14 Q. Now, sir, that's in a frame. It looks like it's 14 Smithsonian Laureate Award for CourseInfo 2.1? 15 hung somewhere. Where is it hung? 15 A. That's correct. 16 A. That's hung in the Blackboard lobby. 16 Q. Isn't it also true that Blackboard did not receive 17 Q. Was there any type of ceremony at Blackboard when 17 the Smithsonian Laureate Award for CourseInfo 3.0? 18 the medallion was hung? 18 A. That is correct. 19 A. At Blackboard itself? 19 Q. And isn't it true that you just testified 20 Q. Yes, sir. 20 previously that the invention was a single login, 21 A. Yeah. We do -- we would frequently host Friday 21 multiple roles, multiple courses and that was present in 22 meetings or other meetings where we would gather the 22 CourseInfo 2.0? Is that correct, sir? 23 employees of the company, and I believe we did do 23 A. That is correct. 24 something when we hung that in the lobby of the office. 24 Q. Mr. Gilfus, isn't it true that you identified your 25 Q. Are you proud of the award? 25 concept of the invention as having multiple roles in 76 (Pages 1151 to 1154) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1159 Page 1161 1 there's a series of numbered claims. 1 just pointed out another part of the deposition he wants 2 "Yes, let's see. 1A, B, 2, and then, of 2 to read into the record. There's -- 3 course, if I actually go through them all, I'll have 3 THE COURT: Okay. Well, I'll overrule that 4 read them, and then some of the other ones below that. 4 objection. 5 But primarily 1A" -- it's 1A and B. 5 Go ahead, Mr. Spivey. 6 "Do you recall reading claim 36? 6 MR. SPIVEY: Okay. 7 "Yes, I do. 7 BY MR. SPIVEY: 8 "Okay. Can you describe in your own words 8 Q. Mr. Gilfus, can you turn to page 51 of the 9 what your invention was? 9 transcript, please? 10 "ANSWER: In my own words, sure. 10 A. I'm there. 11 "The document clearly states a design in 11 Q. And line 21. 12 which a individual user can have multiple roles within a 12 The question is: "I understand that. 13 system across the multitude of courses, so that they 13 Previously, you were able to identify one aspect you 14 could coexist as both an instructor and a student at the 14 thought that was unique and novel, the idea of one user 15 same time in different courses in one system." 15 having multiple roles in many courses in one system." 16 Do you see that, sir? 16 Your answer was: "That's correct." 17 A. I do see that. 17 Sir, today you talked about a single -- 18 Q. Did you see the words "single login" used in any of 18 THE COURT: Wait, wait, wait, wait. Now, 19 that? 19 counsel -- 20 A. In that section I do not. 20 THE WITNESS: Was that a question? 21 Q. Okay. If you will go to page 51, starting at line 21 THE COURT: You need to go on with the rest 22 21 of your transcript, sir. 22 of that, in all fairness. The first one was just a -- 23 THE COURT: Now, wait a minute. Are you 23 you were asking him does he agree with what you said 24 trying -- normally you ask a question and you get a 24 in -- go ahead and read on down to the line 19, please. 25 response and then you go into trying to -- 25 MR. SPIVEY: Yes, sir. Page 1160 Page 1162 1 MR. SPIVEY: Your Honor, he answered the 1 "THE WITNESS: I think in its entirety, as a 2 same -- 2 whole component, based on what I just described" -- 3 THE COURT: Do you think this applies to the 3 THE COURT: Wait a minute. The question -- 4 same question as before? 4 he says "That's correct." Then you get line 4, is your 5 MR. SPIVEY: It is. 5 next question -- or -- 6 THE COURT: Okay. 6 MR. SPIVEY: "Are you able to point to 7 MR. SPIVEY: The same question, your Honor. 7 anything else as being unique and novel?" 8 THE COURT: Go ahead. 8 "ANSWER: I think in its entirety, as a whole 9 MR. MORISSEAU: Your Honor, the rule of 9 component, based on what I just described I would say 10 optional completeness. This is just a continuing 10 that's what it is, right. 11 question and answer for four or five, six pages and to 11 "Could I go through it line-by-line and could 12 put it in context -- 12 we discuss the line-by-line components, yes. 13 THE COURT: Well, let me have him identify 13 "Are they unique and novel individually? I 14 what page and line number he wants to look at so I can 14 don't know if I can say that they are. 15 make a ruling on that. 15 "But as a component of the patent and as a 16 Go ahead, Mr. Spivey. 16 component of what I've already described, I believe the 17 MR. SPIVEY: It is page 51. The question 17 whole thing is." 18 starts at line 21, continuing to his answer on page 52 18 THE COURT: Okay. 19 to line 3. 19 BY MR. SPIVEY: 20 THE COURT: All right. Now, counsel -- 20 Q. Mr. Gilfus, today you testified about the single 21 what's your objection or what part do you think should 21 login, multiple roles, multiple courses; is that 22 be read as far as optional completeness? 22 correct? 23 MR. MORISSEAU: I'm not sure what's -- I'm 23 A. That is correct. 24 not sure what's happening here, your Honor. He read a 24 Q. And today was the first time that you ever 25 section. He read it in context. And now counsel has 25 mentioned anything about a single login; isn't that 78 (Pages 1159 to 1162) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1163 Page 1165 1 correct? 1 Q. As well as WebCT, sir? 2 A. I believe that is correct. 2 A. That is correct. 3 Q. Mr. Gilfus, isn't it true at the time of your 3 Q. As well as Lotus Learning, sir? 4 invention that it was not new to have a staff 4 A. That is correct. 5 information file associated with a course management 5 Q. Mr. Gilfus, isn't it true that you have an 6 system? 6 understanding of role-based access systems? 7 A. It was not. 7 A. I have an understanding of what role-based access 8 Q. Mr. Gilfus, isn't it true that at the time of your 8 systems is, but I'm not an engineer. 9 invention, it was not new to have an assignment file 9 Q. Okay. But you do have an understanding of what 10 associated with a course management system? 10 role-based access systems are? 11 A. It was not. 11 A. Yes. 12 Q. Mr. Gilfus, isn't it true that at the time of your 12 Q. Sir, isn't it true that prior to your invention, 13 invention, that it wasn't new to have an instructor 13 that there were role-based access systems in existence? 14 create a test out of a pool of questions associated with 14 A. I believe so, yes. 15 a course management system? 15 Q. And, Mr. Gilfus, isn't it true that prior to your 16 A. That's correct. 16 invention, that there were course management systems 17 Q. And, Mr. Gilfus, isn't it true that at the time of 17 associated with role-based access systems? 18 your invention, that it was not a new concept to have an 18 A. I believe so, yes. 19 instructor creating questions or creating a test 19 Q. In fact, sir, wasn't there a predominant amount of 20 associated with course management systems? 20 role-based course management systems prior to your 21 A. That's correct. 21 invention? 22 Q. And, Mr. Gilfus, isn't it also true that at the 22 A. Role-based course management systems? 23 time of your invention, you didn't believe that either 23 Q. Yes, sir. 24 you or someone else at Blackboard were the first ones to 24 A. You had to be an instructor to instruct a course, 25 come up with the idea of logging in before being able to 25 correct. Page 1164 Page 1166 1 access a course? Isn't that true? 1 Q. So, it is a fact that there were a predominant 2 A. Let's just assume that you need to get an identity. 2 amount of role-based course management systems prior to 3 So, you would have to log in to get access to a course, 3 your invention? 4 yes. 4 A. I believe so. I can't tell you if they structured 5 Q. But as far as you and yourself -- you and anyone 5 those as roles, but I know that you did have to be 6 else at Blackboard, it's not your belief that you were 6 defined as a specific person. 7 the first to come up with logging into a system to get 7 Q. And, Mr. Gilfus, today you testified that the 8 access to a course; isn't that correct? 8 concept of the single login, multiple roles, and 9 A. No, not at all. 9 multiple courses, and -- as we heard from you for the 10 Q. And isn't it also true that at the time of your 10 first time -- single login was a collaborative, group 11 invention, you did not believe that either you or 11 effort by all of the inventors; is that correct? 12 someone else at Blackboard were the first ones to log 12 A. That is correct. 13 into a system to have access to more than one course? 13 Q. Isn't it true that you didn't meet Mr. Michael 14 Isn't that correct? 14 Chasen until after the merger with CourseInfo -- after 15 A. That is correct. 15 the merger between CourseInfo and Blackboard? 16 Q. In fact, isn't it true that prior to your 16 A. I didn't meet Michael until after the merger? 17 invention, that there were many course management 17 Q. Yes. 18 systems that allowed a user to log in and have access to 18 A. That's not true. 19 their courses? 19 Q. When is the first time that you met Mr. Chasen? 20 A. There were many systems that allowed that to 20 A. The first time I met Mr. Chasen was when he came 21 happen, yes. 21 down to Ithaca, New York, to start the first discussions 22 Q. And isn't it true, sir, that you previously 22 around what we could do together as CourseInfo and 23 identified some of those in your testimony earlier such 23 Blackboard. 24 as TopClass? Isn't that correct, sir? 24 Q. And when was that, sir? 25 A. I did. 25 A. Probably three or four months, I think, before we 79 (Pages 1163 to 1166) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1191 Page 1193 1 system, yes. 1 CourseInfo was actually released in the spring of 1999, 2 Q. So, Mr. Gilfus, do you have an understanding of the 2 sir? 3 use of drop boxes in course management systems? 3 A. I can't. I've been pretty bad with the timeline. 4 A. You're saying systems, like drop box was the same 4 So, I -- I believe that's correct, but this document 5 thing in every system; and I would argue that it was not 5 we're looking at here -- we're actually looking at a 6 the same thing. I think it was representative of a way 6 snippet of the business plan. The business plan, if 7 for students to submit assignments to instructors and we 7 you're familiar with business plans, is typically a 8 happened to call it a "drop box," but other people 8 living document with business changes. So, I can't say 9 called it different things. 9 that exactly this is the point in time -- when we put it 10 So, the meaning and term of a drop box was 10 in this document, that it was the time that we released 11 primarily based around functionality in an application; 11 the product itself. 12 but it also was a marketing term to describe things as a 12 Q. So, Mr. Gilfus, you have no knowledge of whether or 13 drop box, where students place things so instructors can 13 not Version 2.0 CourseInfo was actually released in the 14 go pick them up, if you will. So, I can't say it was 14 spring of 1999 -- 15 true for all course management systems, from my 15 A. I believe that's correct. 16 perspective. 16 Q. Sir, may I be allowed to finish, please? 17 Q. Mr. Gilfus, are you representing to the jury that 17 A. Of course. 18 you invented drop boxes and their use in course 18 Q. So, Mr. Gilfus, you have no knowledge of whether or 19 management systems, sir? 19 not the CourseInfo Version 2.0 was actually released in 20 A. No, I am not. 20 the spring of 1999, do you, sir? 21 Q. Thank you, sir. 21 A. I cannot personally definitively say "yes." 22 And, Mr. Gilfus, this is out of the 22 Q. Thank you, sir. 23 CourseInfo ILN 1.5 manual; and it talks about drop 23 Mr. Gilfus, isn't it true that CourseInfo ILN 24 boxes. Isn't it true that CourseInfo ILN 1.5 included a 24 1.5 made use of roles? 25 drop box, sir? 25 A. Roles in regards to an instructor? Page 1192 Page 1194 1 A. That's correct. That's what we're looking at. 1 Q. An instructor, sir. 2 Q. Okay. And isn't it true, sir, that, in fact, as 2 A. We did have the opportunity for instructors to own 3 part of the manual when we talked about drop boxes, you 3 courses and create courses, yes. 4 use your name as part of the example for the drop box, 4 Q. And isn't it true that CourseInfo ILN made the use 5 sir? 5 of roles with regard to a student? 6 A. I can't say that I wrote this. I might have 6 A. That's correct. 7 written this. I can't recall everything I wrote; but it 7 Q. And isn't it true that in CourseInfo ILN the roles 8 looks like my name is there, yes. We used our names in 8 determined what level of access and control you had to 9 all sorts of ways, whether it be me or Michael or Dan. 9 files? 10 Every time we did a demonstration, whether it was in 10 A. That is correct. 11 front of the users that I talked about where we 11 Q. And isn't it true, sir, that the roles used in 12 presented at conferences or it was in a manual or 12 CourseInfo ILN were predefined? 13 marketing material, we would tend to use our own names 13 A. That is correct, also. 14 when we could, yes. 14 Q. And, Mr. Gilfus, you understand that the court has 15 MR. SPIVEY: Your Honor, I move to strike the 15 corrected this typo from "redefined" to "predefined"? 16 last part of his testimony as being nonresponsive. 16 A. I do understand that. 17 THE COURT: Overruled, counsel. You're 17 Q. And you also see in claim 36 that it talks about 18 asking the questions. 18 "providing a level of access to and control of a 19 MR. SPIVEY: Defendant's Exhibit 37. 19 plurality of course files," sir? 20 BY MR. SPIVEY: 20 A. I do see that, yes. 21 Q. Mr. Gilfus, I've put up on the screen for you 21 Q. And isn't it true, sir, that that capability was 22 Defendant's Exhibit 37; and it talks about CourseInfo 22 included in CourseInfo ILN 1.5, sir? 23 Version ILN 1.5. My question is regarding Version 2.0 23 A. That is correct. That's my understanding. 24 that was demonstrated by Mr. Cane. 24 MR. SPIVEY: I have no further questions, 25 Can you tell the jury whether or not 25 your Honor. 7 (Pages 1191 to 1194) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1203 Page 1205 1 of the features of it; and it's usually used by smaller 1 something different than another. We try to allow them 2 schools, schools that don't need as much functionality. 2 to turn things on or turn things off to suit their 3 So, we try to keep things more simple with it. 3 needs. 4 Q. And, sir, is there any functionality or any 4 So, we try to make things -- basically 5 features or any tools in that Essentials product that 5 everything we make we try to make flexible so if 6 are not going to be in the product that you're going to 6 somebody doesn't like it, they can use it in a different 7 show us today? 7 way or turn it off. 8 A. The only two that I can think of that we may see 8 Q. And how does that compare with other course 9 would be there's a competencies tool or function we may 9 management systems on the marketplace, this emphasis on 10 look at and some reporting. Other than that, everything 10 flexibility? 11 we see on the screen or in that demo will also be found 11 A. I think typically we see with some other course 12 in Desire2Learn Essentials. 12 management systems in the marketplace is they're more 13 Q. Okay. Is there anything in Essentials that's not 13 out of the box. They're more of a -- they force schools 14 in what we're going to see today? 14 to make some more compromises, to sort of do things 15 A. No. 15 differently to fit into the program; whereas, with our 16 Q. And does Desire2Learn have other products besides 16 programs we try to make it open and flexible so they 17 the Learning Environment and the Essentials product? 17 don't have to make those compromises. 18 A. Yes, we do have some other products. 18 MR. BRIGHT: Your Honor, objection. Move to 19 Q. Are any of those other products course management 19 strike the last answer as lack of foundation. 20 systems? 20 THE COURT: Overruled. 21 A. No. None of the other products are course 21 BY MR. DASSO: 22 management systems. 22 Q. Okay. Mr. Chapman, you have in front of you a 23 Q. And are you aware, sir, as the product manager for 23 laptop; is that right? 24 Desire2Learn, about the design philosophy that the 24 A. Yeah, I've got a laptop in front of me here. 25 company follows with respect to how it develops its 25 Q. And in that laptop you've got a couple different Page 1204 Page 1206 1 product? 1 programs loaded here; is that correct? 2 A. Yeah. The design philosophy that we've sort of 2 A. Yeah. I've got the three programs you can see up 3 always taken since I started is that as a technology 3 on the screen there. 4 company, we're good at technology. You know, we know 4 Q. Okay. And will you tell the jury, is this normally 5 how to solve problems with technology. And the 5 the way that you operate the Desire2Learn product, off a 6 philosophy that we sort of take is to work with grade 6 laptop in a courtroom? 7 schools, work with colleges, and, you know, understand 7 A. No. This is the first time for me. Normally the 8 that they understand teaching and learning so when we 8 software is being run off of a server computer somewhere 9 work closely together with them, we can build really 9 else. But today because we're sitting in the courtroom, 10 good teaching and learning programs using our expertise 10 it's running off of my laptop. 11 and using theirs. So, we really try to partner with 11 Q. Okay. 12 clients more than try to, I guess, dictate an approach 12 A. So, because of that, we may see glitches, I guess, 13 to teaching. 13 that we're not used to. But it should go smoothly. 14 Q. Okay. So, in part of your philosophy, you 14 Q. Okay. Now, sir, let's just jump into the 15 understand that clients have an area of expertise? 15 demonstration if we could. Could you tell the jury what 16 A. Yes, absolutely. Their expertise is in education, 16 they are looking at on this first page that's on the 17 and ours is this technology. 17 screen right now? 18 Q. And, sir, do you have a business philosophy at 18 A. What we're looking at here, I guess, is what we 19 Desire2Learn about flexibility or customability? 19 would call the "home page" or the "landing page." And 20 A. Yeah. We normally see that -- a lot of the schools 20 it's what I would see when I first log into the Learning 21 that we work with, they have very different approaches. 21 Environment. 22 They have their own way of doing things, and we don't 22 Q. Login as what type of a user, sir, or any type of 23 want them to have to make a lot of compromises when they23 user? 24 use our system. So, we try to make options to change 24 A. It depends. Really any type of user, but right now 25 the way something looks if one school wants to do 25 I'm logged in as an administrator. 10 (Pages 1203 to 1206) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1259 Page 1261 1 Q. Now, sir, have you been involved in sales efforts 1 to give opinions as to functions of the systems, unless 2 where you've gone and Blackboard is another one of the 2 he was disclosed, I think that's correct. I mean, I 3 competitors who is involved in the process? 3 don't think you can ask him an opinion as to look at the 4 A. Yes. 4 claim and then does that or doesn't that comply or not 5 Q. And can you tell the jury what features or items of 5 comply. I mean -- 6 your product you emphasize or focus when Blackboard is 6 MR. DASSO: Agreed. 7 one of the other potential competitors in the -- for a 7 THE COURT: Those are not facts. Those are, 8 particular client? 8 in fact, opinions on which both sides have experts who 9 A. We would focus, again, on those three main schemes, 9 have -- 10 the enterprise scalability, or the number of users that 10 MR. DASSO: That's not my intention, your 11 we're able to support; how flexible the system is so 11 Honor. I'm just trying to orient the rest of the 12 that the institution can really put their own face on it 12 testimony so we can put that in context for the jury. 13 or their own personality; and overall just how easy the 13 I'm not intending to ask him his opinion on anything. 14 system is to use. You know, we try to emphasize that 14 THE COURT: Go ahead. 15 there's not really a lot of training involved on how to 15 BY MR. DASSO: 16 use the tools themselves but more how to apply those 16 Q. Okay. Sir, do you see up here claim 36? And we've 17 tools or shape them to do what you're really trying to 17 gone over that a number of times in front of the jury 18 do for your course or for your school. 18 and won't talk about it extensively here. Do you see 19 Q. Now, sir, let me go to another topic. We've heard 19 that, sir? 20 a lot about the sample roles and role categories, and I 20 A. Yes, I do. 21 want to walk through the features of the product with 21 Q. And do you see that there is reference in this 22 respect to those for the jury. 22 claim to "predefined characteristics indicative of 23 A. Okay. 23 multiple predetermined roles in the system"? 24 Q. Before I do that, sir, I think I've only given you 24 A. Yes, I see that. 25 one document to look at today. Do you have that in 25 Q. And then under C there's talking about "providing a Page 1260 Page 1262 1 front of you? Did I give you the document? 1 predetermined level of access and control"? 2 A. I don't have any documents, no. 2 A. Yes. 3 Q. Well, let me -- I'm sorry. 3 Q. And D, the same item is provided there, sir. Do 4 MR. DASSO: Your Honor, if I might hand these 4 you see that? 5 binders out. 5 A. Yes. 6 THE COURT: You may. 6 Q. And just to orient your testimony, not to ask you 7 MR. DASSO: Your Honor, what I'm about -- 7 to express an opinion or anything, do you understand 8 BY MR. DASSO: 8 that Dr. Jones talks about the sample roles and the role 9 Q. Mr. Chapman, the only document I'm going to hand 9 categories as -- 10 you is the patent at issue in this lawsuit. Okay? 10 MR. BRIGHT: Your Honor, he's asking this 11 A. Yeah. 11 witness about what Dr. Jones has said; and we have -- 12 Q. And, sir, would you turn over to claim 36 for me, 12 and we've invoked the rule. 13 please? 13 THE COURT: That's overruled. 14 A. Do you know what page I can find that on? 14 BY MR. DASSO: 15 Q. Yeah. It's on, I think, the second to last page, 15 Q. Again, just to orient you, sir, I'm not asking -- I 16 page 58 of 59. 16 just want to orient where we are and why this is 17 MR. BRIGHT: Your Honor, before we get too 17 important. Do you understand that he's talking about 18 far down this line of questioning, I just want to make 18 sample roles and role categories as what he calls 19 sure I -- I want to renew my objection. If we're going 19 "predetermined roles"? 20 to be going into a discussion about the claims in the 20 A. I understand that, yes. 21 patent with this patent, he hasn't been disclosed as an 21 Q. Okay. Let me then go into the facts about how 22 expert witness and I'll cite Rule 26 of the Federal 22 these work, sir. I'm not going to ask your opinion on 23 Rules of Civil Procedure and Federal Rule of 23 them, just going to get the facts. Okay? 24 Evidence 701. 24 A. Okay. 25 THE COURT: Well, in terms of him being asked 25 Q. Now, sir, are sample roles part of the actual 24 (Pages 1259 to 1262) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1263 Page 1265 1 software product that Desire2Learn sells to its 1 the product that you're talking about. Let's get a date 2 customers? 2 out on the table. 3 A. No, they're not. 3 MR. DASSO: Okay. 4 Q. Okay. Have you ever heard of the definition, sir, 4 BY MR. DASSO: 5 of "hardcoded"? 5 Q. Mr. Chapman, the version we've been looking at of 6 A. Yes. 6 the Desire2Learn software, what version is that? 7 Q. And what do you understand "hardcoded" to be -- to 7 A. The version that we're looking at right now is 8 mean? 8 version 8.2.1. 9 A. The way I understand hardcoded is it's data or 9 Q. And the jury has heard some testimony about 10 ideas that are built into the source code of a program 10 modifications that were made in November of 2007 to the 11 and can't be changed by any users of that program. 11 product. Were you involved in those? 12 Q. Okay. And is the idea or the term "hardcoded" 12 A. Yes, I was. 13 well-known in the industry? 13 Q. In fact, we're going to talk about those later 14 A. Yes. 14 during your examination; is that right? 15 Q. And is the sample roles or role categories 15 A. That's correct. 16 hardcoded within Desire2Learn's products? 16 Q. Is that this that we're looking at right now? 17 A. The sample roles are not, no. 17 A. No, we're not looking at those modifications. 18 Q. Now, sir, can you actually install the Desire2Learn 18 Q. And is this the product that was done -- used 19 product without these sample codes? 19 before the modifications in November of 2007? 20 MR. BRIGHT: Your Honor, I'm going to have to 20 A. Yes. 21 object, invoke your ruling in the pretrial hearing on 21 Q. Now, with that, sir, is it possible to load this 22 this matter. 22 pre -- this 8.2.1 software -- was it possible to load 23 THE COURT: You'll have to give me a little 23 that onto the client without loading sample roles? 24 more indication of which ruling that was. I've probably 24 A. Yes. 25 made a couple of hundred rulings. 25 Q. And do you have a demonstration that would show Page 1264 Page 1266 1 MR. BRIGHT: It may require discussion 1 that to the jury? 2 outside the presence of the jury, your Honor. 2 A. Yes. So, I'll -- I was going to click on this 3 THE COURT: Well, maybe you can give me an 3 here, and I'm going to change to a different Web site. 4 indication as to what area this is in. 4 So, what we were demonstrating before was Version 8.2.1 5 MR. BRIGHT: I can give you a citation to the 5 with the sample roles applied. 6 pretrial transcript, if that's helpful, your Honor. 6 And this Web site that we're looking at here 7 THE COURT: Tell me what issue you're dealing 7 is 8.2.1 with no sample roles applied to it. 8 with. I mean, is it expertise or -- 8 Q. Before we go further, sir, can you tell us whether 9 MR. BRIGHT: This is the issue of -- with 9 in most installations the sample roles are applied or 10 respect to the new software, your Honor, and what is 10 not? 11 done with that product -- 11 A. In most installations the sample roles are applied. 12 MR. DASSO: Your Honor -- 12 Q. Okay. And are you aware, sir, of any instances 13 MR. BRIGHT: -- with respect to customers. 13 where they were not applied? 14 MR. DASSO: Your Honor, this is still dealing 14 A. To my knowledge, we've done that with at least one 15 with the old version of the product before the 15 client. 16 modification; so, it has nothing to do with that issue. 16 Q. And what client was that? 17 MR. BRIGHT: The question was phrased in the 17 A. I believe it was the University of Guelph. 18 present tense, as I remember. 18 Q. And, sir, can you tell -- describe for the jury how 19 THE COURT: Okay. If we were trying to -- 19 the sample roles get there if they are not actually part 20 we're making clear that this is an old version of the 20 of the software product. 21 product prior to when? 21 A. Yeah. We run a task -- we run a task to put those 22 MR. DASSO: Your Honor, can I ask the 22 sample roles into our database after the product is 23 questions or will the court allow me -- 23 installed or part of the installation process. 24 THE COURT: Yes. I want to know -- let's 24 Q. Okay. And have you run that script or that task 25 state for the record. You said it was an old version of 25 with respect to the version that you're showing on the 25 (Pages 1263 to 1266) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1267 Page 1269 1 screen, right here? 1 A. No. 2 A. Sorry. Did you ask have we? 2 Q. Okay. Can you show us, sir -- I'm going to talk 3 Q. Have you done that to this version? 3 about the flexibility of these roles. Can you delete 4 A. No. That task hasn't been run, and there are no 4 the sample roles? 5 sample roles in this screen we're looking at. 5 A. Yes. 6 Q. I just want to be really clear. 8.2.1, the first 6 Q. And can you show the jury how you would go about 7 set we were looking at before, that did have that task 7 deleting a sample role? 8 run, right? That has the sample roles in it? 8 A. Sure. There's a little trash can icon here, and I 9 A. That's correct. 9 click that. And then I can choose to remove any users 10 Q. And we switch now to a different version of the 10 or create replacement roles for them. And it appears 11 software without the task; is that right? 11 I've run into one of those glitches. 12 A. That's right. 12 Q. Okay. 13 Q. And can you show in this different version of the 13 A. I can -- I know how to get around the glitch, if 14 software, sir, that -- can you show the jury that there 14 you want me to. 15 is no sample roles contained in there? 15 Q. If you would, sir. That will be great. 16 A. Yes. So, I'm going to go to an administrative tool 16 A. Sure. 17 called "Manage Roles and Permissions." And this is 17 This will just take about 30 seconds. Sorry. 18 where an administrator would create their roles and 18 Okay. So, now when I click that trash can, 19 change permissions of the system. And here without the 19 it let me delete the role; and then it comes back and 20 sample roles applied, there are just no roles here. You 20 there is now only two roles left in the system. 21 don't see any roles show up. 21 Q. Can you just delete another one so we can show the 22 Q. So, this would have to be what the system looked 22 jury, this time hopefully without the glitch, how you 23 like if you installed it and didn't run the script or do 23 were able to delete it? 24 this task you described earlier. 24 A. Yes. So, again I click the trash can. I confirm 25 A. That's correct. 25 that I want to delete the role; and, so, I'm left with Page 1268 Page 1270 1 Q. And, sir, are there role categories in the system 1 one less role in the system. 2 as installed without the task run or the script run? 2 Q. So, all it takes is those two clicks and you delete 3 A. Yes, there are. 3 a role? 4 Q. Now, that was just to make a point. Let me go back 4 A. That's right. 5 now to the other version of 8.2.1 that we were dealing 5 Q. Can you add a role in the D2L or Desire2Learn 6 with earlier. 6 product? 7 A. Okay. 7 A. Yes. 8 Q. And, sir, this is, again, the version as it's 8 Q. Can you show the jury how you would add a role? 9 usually installed on U.S. software; is that right -- 9 A. Yes. So, I would click on this new link to create 10 U.S. clients? 10 a new role; and then I can provide that role with a 11 A. That's right. 11 name. I can give it a description, you know, just to 12 Q. Now, sir, let me turn now to the issue of roles. 12 let other administrators know what the role is meant to 13 Can you show the jury where the roles are in this 13 be doing in general. 14 particular product? 14 And I can choose a role type -- 15 A. Yes. So, in this list of administrator tools, I 15 Q. Is that the role category we've been talking about 16 will click on the "Manage Roles and Permissions" tool; 16 earlier? 17 and that's where I see the three sample roles that are 17 A. Yeah. We'll then interchange role type and role 18 typically applied. 18 category as the same thing. 19 Q. Okay. And we've heard the term -- or the jury's 19 Q. Okay. We'll come back to that in a little bit, but 20 heard the term "default roles" in this lawsuit. Do you 20 go ahead and show us how you would add a role. 21 sometimes call these roles "default roles"? 21 A. Okay. So, I just click the "save" button here; and 22 A. Yes. We'll interchange different ways of 22 then when I return to my list of roles, I have the new 23 describing these roles. 23 professor role that I just created. 24 Q. Okay. Is there any difference, in your mind, 24 Q. Okay. And can you add more than one role if you 25 between the two? 25 wanted to? 26 (Pages 1267 to 1270) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1271 Page 1273 1 A. Yes. 1 quickly jump to those -- that list of permissions. And 2 Q. Is there any really practical limit on the number 2 then I can, you know, maybe turn off a permission for 3 of roles that you can add? 3 managing grades for a particular role. 4 A. No. We don't put a limit on the number of roles in 4 Q. Okay. So, if you didn't want someone who was not a 5 the system. 5 teacher to be managing grades, you could just click that 6 Q. Okay. It's just limited by the size of the 6 on or off? 7 database that you have there? 7 A. That's right. And that's -- again, with talking to 8 A. Yeah, just the computer storage you have available 8 clients and understanding what they want, we created an 9 would limit the roles you can create. 9 enormous number of these permissions so the system can 10 Q. Sir, can you rename roles in the system? 10 again be very flexible to what they want each role to be 11 A. Yes. 11 able to do in the system. 12 Q. Can you show us that with the administrator role, 12 Q. Okay, sir. Is there any limit on the ways you can 13 how you would rename it, sir? 13 change the permissions within the Desire2Learn product? 14 A. Sure. I click on this little pencil icon to edit 14 A. No. The permissions can be changed really however 15 the role, and then I can change the name to maybe "help 15 you want to. 16 desk." And then I can save the role. 16 Q. Okay. And who would be making those decisions 17 Q. Okay. Now, sir, if you had changed to someone 17 about what permissions to give or not to give to any 18 from -- I think it was a teacher to a help desk -- they 18 individual user or group of users? 19 might have different uses for the system; is that right? 19 A. It's usually administrators of the system. 20 A. That's right. 20 Q. Okay. And, sir, why do you have these various 21 Q. And does the system allow you to change permissions 21 features that allow you to add a role, delete a role, 22 or authorities to reflect that? 22 change the name of a role or change the permissions on a 23 A. Yes. 23 role? Why are those included as part of D2L's product? 24 Q. Can you show that to the jury, please? 24 A. It's part of our core philosophy of flexibility. 25 A. Sure. So, if I go and look at the permissions for 25 Different schools have different, you know, roles on Page 1272 Page 1274 1 this role that I just renamed, it's going to bring up a 1 their campuses that can do different things. They have 2 list of all of the permissions that define what 2 policies for who can see what information, and we needed 3 functions or what actions this role can perform in the 3 to allow them to be able to do that in the Web 4 system. 4 application as well. 5 Q. Can you show that to the jury, please? 5 Q. Now, sir, if you could go back to the page that 6 A. Yes. So, looking at one permission, if I don't 6 kind of shows the roles listed out. 7 want this role to be able to use our -- 7 A. Yep. 8 Q. Let me just step back for one second, sir. Can you 8 Q. Now, sir, would it be possible to use the 9 first explain the idea of permissions and how that's 9 Desire2Learn product by deleting all of the roles? 10 reflected on the table before we talk about changing 10 A. Yes. 11 permissions? 11 Q. You could delete all the three sample roles and 12 A. Sure. 12 still use the product? 13 Q. Show the jury what we're talking about when we mean 13 A. Yes. 14 a "permission." 14 Q. And could you actually delete all three of those 15 A. Sure. So, a permission here would be to see the 15 sample roles, add as many new and different types of 16 "articles" tool. So, this permission is basically going 16 roles as you wanted to? 17 to let anybody with a checkmark in that box, they will 17 A. Yes. 18 be able to see anything created with that articles tool. 18 Q. Now, sir, let me go to the idea of role category. 19 If I don't want a role to have access to 19 A. Okay. 20 that, I would just uncheck the box. 20 Q. And can you explain that concept for the jury, 21 Q. Can you go down to one of the permissions that 21 please? 22 relate to some of the items we were talking about this 22 A. Sure. I'll use an example of creating a new role 23 morning? Are there any of them on there? 23 again. So, here I may want to create one for a 24 A. Sure. I think you used grades before. So, I can 24 participant. And the role category or "role type," as 25 click on the "grades" tool on the side here just to 25 it's shown on the screen here, lets me define a sample 27 (Pages 1271 to 1274) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1275 Page 1277 1 set of permissions that this role is going to be given 1 Q. And will that affect the permissions that are 2 when I first create it. So, it's just a -- it's sort of 2 associated with that role? 3 our best guess at what permissions to start with when 3 A. No. 4 they create a role and then an institution is free to go 4 Q. Can you show that to the jury? 5 and change those permissions at any time to meet their 5 A. Yes. 6 specific needs. So, it's really a convenience for our 6 So, again, if I go and look at the 7 clients if we're trying to check off what we think is 7 permissions, again still they're -- they're all still 8 going to get used most often. 8 checked off. And that's what the sample permissions 9 Q. Can you show for the jury where those 9 were from the original role category I created it from. 10 permissions -- the set of permissions -- that are 10 So, once you create a role and assign that role 11 initially set that's displayed within the system? 11 category, the role category is never used again to 12 A. Sure. 12 change any permissions. 13 So, I've just created a role and I gave it a 13 Q. And, sir, can you role a user -- can you put a user 14 role type or a role category of instructor. And then 14 actually in one of the role categories? 15 when I go and look at the permissions, I can see it 15 A. No. 16 already has some check boxes in here indicating that 16 Q. Why is that? 17 this role can perform certain functions, in this case in 17 A. A role category is not a role. 18 the grades tool. 18 Q. Can you explain your answer a little bit more? 19 Q. Okay. Now, sir, do you have to stick with the 19 What do you mean when you say "a role category is not a 20 permissions that are established initially by the role 20 role"? 21 category? 21 A. In a role-based system, a user is allowed access to 22 A. No. Schools aren't going to take our word for what 22 functions or parts of the system by enrolling them as a 23 an instructor can do or what a student can do. They 23 role. So, I would enroll somebody as, you know, a 24 have well-defined ideas for what their students are 24 participant. The role categories aren't a role. They 25 allowed to do in the system or what their instructors 25 don't have permissions. I don't assign users to role Page 1276 Page 1278 1 are allowed to do. So, they're going to go through 1 categories. I assign users to roles. 2 these sample permissions we have with a fine-toothed 2 Q. Let me try it this way, sir. If you had no roles 3 comb. 3 in the system -- you've deleted all the sample roles; 4 Q. Can you give the jury an example about how you 4 you hadn't created any new ones -- but you still have 5 would change some of the permissions that have been 5 the role categories, could anyone use the system? 6 initially set by selecting the role category? 6 A. You would not be able to enroll anybody in the 7 A. So, here I have some of the permissions that are 7 system if there was just role categories. Now you would 8 already checked but because I've just created a 8 have to create a role. 9 participant role, I might want them to just have very 9 Q. Okay, sir. Let me turn on, then, to Desire2Learn's 10 basic functions they can perform in grades here. So, I 10 expectations about roles. Do you expect your -- what 11 can uncheck all of the permissions that were given as a 11 expectations, if any, do you have about whether your 12 sample and just give them one permission so that they 12 customers and clients will keep these roles the same or 13 can see grades and that's all. 13 change them? 14 Q. Okay. Now, sir, if we could go back to the page 14 A. We expect clients to change them. It would be a 15 that kind of lists out the roles -- the role list, I 15 stroke of genius if we guessed right for every 16 think, page again. 16 institution on our sample permissions. So, we expect 17 A. Okay. 17 that they are going to be, you know, responsibly looked 18 Q. And we've been, I think, dealing with the 18 through, all of the sample permissions that we provide, 19 participant. Was that the one we were working with? 19 and decide which ones they want to use and which ones 20 A. That's what we just looked at, yes. 20 they want to change. And oftentimes our clients are 21 Q. Now, sir, could you change the role category of the 21 creating many more roles than the samples that we 22 participant? 22 provide or even deleting some of the sample roles that 23 A. Yes. So, in the same area that I changed the name, 23 we provide for them. 24 I have the role type or role category. I could change 24 Q. Okay. And, sir, have you actually had experience 25 that to administrator and save it. 25 working with your clients with respect to roles and 28 (Pages 1275 to 1278) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1291 Page 1293 1 (Open court, all parties present, jury 1 was done in November of 2007. Did you do that 2 present.) 2 modification because you believed the product before it 3 THE COURT: Counsel. 3 was modified infringed the '138 patent? 4 MR. DASSO: Good evening, your Honor. 4 A. No. 5 BY MR. DASSO: 5 Q. Can you tell the jury if you didn't believe there 6 Q. Mr. Chapman, we were discussing the modification 6 was infringement, why did you change your product? 7 that was made in November of 2007 before we broke. Do 7 A. The language in the claim construction was talking 8 you recall that? 8 about a function of the system that really wasn't that 9 A. Yes, I do. 9 important for us and wouldn't take a lot of effort for 10 Q. I'd like to go back and clear up one thing before 10 us to change. So, from our perspective, if this was all 11 we continue on with that discussion and that is we were 11 the patent was about, we wanted to change our system so 12 talking about a number of modifications that were not 12 there was no real doubt that our product was different 13 the modifications in 2007. Do you remember that 13 than what's claimed in the '138 patent. 14 testimony? 14 MR. BRIGHT: Your Honor, move to strike the 15 A. Yes. 15 last answer on the same grounds, calling for expert 16 Q. And in those modifications -- or modifications 16 testimony. 17 generally, does Desire2Learn reinstall the entire 17 THE COURT: Sustained. 18 system? 18 Ladies and gentlemen, this person was not 19 A. No, we don't reinstall the entire system when we 19 designated as an expert; and to give expert opinions 20 upgrade. 20 about -- such as this is or is not infringing on the 21 Q. Can you tell the jury what happens in connection 21 patent, he would have to do that so that depositions and 22 with an upgrade? 22 so forth can be taken. So, I will direct you -- I will 23 A. Yeah. Any change that we make -- let's say for an 23 direct that you disregard his comment specifically "no 24 upgrade we just made changes to our grades tool. We 24 real doubt" about our product being different. That is 25 would only update the grades part of the program and the 25 not an area that he was -- he is qualified to testify Page 1292 Page 1294 1 rest of the program would be just like it was before. 1 about before you. I believe there may be other 2 Q. And, so, if you didn't upgrade or affect the role 2 witnesses who will talk about that, but you'll disregard 3 or role category function, that wouldn't have any impact 3 it as to this person. 4 upon that part of the system? 4 Go ahead, counsel. 5 A. That's right. After the upgrade and before the 5 MR. DASSO: Your Honor, can I ask for a 6 upgrade, it would still be the same code. 6 clarification of the court's ruling? 7 Q. And, sir, where are these modifications done? 7 THE COURT: Yes. 8 A. These modifications are done out of our offices in 8 MR. DASSO: I was intending to ask him what 9 Canada. 9 his motivation was in terms of the change of the 10 Q. Can you explain to the jury how that works? If the 10 product, not whether or not it infringed or not. Is the 11 clients are in the states, how it's done from Canada? 11 court sustaining -- 12 A. Our staff in Canada are able to go on their 12 THE COURT: Well, if the answer is they were 13 computers and upgrade our client's site just right from 13 trying to avoid infringement or avoid infringement under 14 the desk. 14 the claim construction, that's fine. But in terms of 15 Q. And, sir, does D2L also install the products on a 15 him giving an opinion as to what the result was, I think 16 number of its clients' servers? Is that right? 16 that's improper. 17 A. Yes. 17 MR. DASSO: I'm going to try and ask it 18 Q. And where are those installations done? 18 again, your Honor, and make sure it's a proper question. 19 A. Again, that's done by the same staff in our offices 19 BY MR. DASSO: 20 in Canada. 20 Q. Sir, can you tell the jury what your motivation was 21 Q. And, sir, are you aware of any actually running 21 at Desire2Learn for changing the product without 22 installation for a client that's been done by 22 expressing an opinion one way or the other the effect of 23 Desire2Learn in the United States? 23 the change? 24 A. I'm not aware of any, no. 24 A. Yeah. Our motivation was that it was -- the 25 Q. Sir, let me then turn back to the modification that 25 functionality that we were talking about was not a core 32 (Pages 1291 to 1294) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1319 Page 1321 1 testimony, which we're going to get to in one minute, I 1 basically 30 days. 2 wanted to go over a little bit about the background 2 Q. At the point in time when you met in February of 3 before we came to your testimony today. You've been 3 1997, did the IMS group anticipate putting out a 4 talking with lawyers from both sides before your 4 specification? 5 testimony today; is that right? 5 A. That was the whole objective. 6 A. That's correct. 6 Q. Was there anyone from Blackboard or KPMG who 7 Q. You met with Mr. Keener from my office before; is 7 attended this meeting? 8 that right? 8 A. Yes. Matt Pittinsky. 9 A. That's correct. 9 Q. But you recollect that he was there for 10 Q. And have you also met with lawyers -- or met with 10 approximately a week or so of the session? 11 or spoken to lawyers representing the plaintiff in this 11 A. I would say somewhere in that range, at least, you 12 case, Blackboard, Inc.? 12 know, first couple or two or three days when we were 13 A. Yes, I have. 13 doing requirements in use case development. 14 Q. And have you withheld or kept information from 14 Q. Okay. Now, sir, at this meeting in February of 15 either side? 15 1997, did the concept of a user logging in and having 16 A. No. 16 multiple roles come up? 17 Q. Have you cooperated fully with both sides in those 17 A. Yes. 18 meetings and discussions? 18 Q. What do you recall about that, sir? 19 A. Yes. 19 A. It was -- you know, there were issues and problems 20 Q. Do you have any bias or prejudice one way or the 20 that people were having with course management systems 21 other with respect to this case? 21 at the time. And when they were thinking through 22 A. No, I don't. 22 various scenarios they would say, well, you know, we've 23 Q. Let me go, sir, then kind of through the history of 23 got people having to log in twice or something, you 24 the IMS project leading up to the IMS specification. 24 know, they have two different roles, so to speak, in an 25 And let me direct your attention to February of 1997, 25 application because the application doesn't do -- Page 1320 Page 1322 1 sir. Was there a meeting that was held at that point in 1 doesn't recognize them as having multiple roles. The 2 time? 2 often-cited example was the graduate student who teaches 3 A. Yes. 3 an undergraduate section in some course but then is also 4 Q. Where was that meeting? 4 a student in a graduate-level course. So, that one came 5 A. At -- Santa Rosa, California, at the -- or Cal -- 5 up. 6 California State University at Sonoma. 6 And later I guess the concept -- you know, 7 Q. What was the purpose of that meeting? 7 people would say, okay, also, you know, a student might 8 A. That was the initial IMS requirements meeting. 8 be a group leader. In some types of educational models, 9 Q. And when you say the "initial IMS requirements 9 you know, people teach in groups and split up the class 10 meeting," what were you trying to accomplish at that 10 in groups and then a student leads a little discussion 11 meeting? 11 group or so forth. So, very quickly it became this 12 A. We were gathering together perspectives on 12 whole concept of group roles and actually groups that 13 interoperability for the IMS specification -- and 13 you could assign a resource to a group and people could 14 actually at the time it wasn't even called IMS but the 14 be -- could have different roles in different groups. 15 agency -- it doesn't matter at this point. But we 15 One in particular was if there were like a 16 brought together faculty, corporate leaders, graduate 16 chat session or some kind of interactive educational 17 students, librarians, K through 12 teachers -- I don't 17 environment, you could add that to a class and then the 18 know if we actually had any real students in the room 18 class would automatically get a role in that educational 19 but some of the -- some of the faculty, I guess, at Cal 19 environment, that educational interactive setting, 20 State-Sonoma and others that attended were also taking 20 whatever it might be. 21 classes and we had all taken classes as students. So, 21 And, so, it did -- from a technical 22 you know, administrators, college presidents. We had 22 perspective, it quickly became groups within groups and 23 Wayne Allard who was the president of the educational 23 roles for the group or your group role. So, you could 24 division for Thompson Publishing there. I mean, it was 24 have a class with groups or you could have a -- a 25 a broad range of people. I mean, it went on for 25 university's implementation of a content management 39 (Pages 1319 to 1322) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1323 Page 1325 1 system could be a big group and then you could have 1 like, how does -- if you drop in a new course management 2 smaller groups which would be departments or courses. 2 system into a university and they've got an 3 And then the courses themselves, depending on the 3 administrative software system that has the whole course 4 faculty members' goals and implementation features of a 4 catalog and all the students registered in the 5 particular course management system might then allow 5 particular courses, how does that all get pulled into 6 further grouping. So, you might have, you know, the 6 that particular course. So, we had all these various 7 people studying one particular point or another point 7 different types of interoperabilities -- bridges, so to 8 within the same course, you know, Lab 1, Lab 2, Lab 3 8 speak -- across different kinds of software. It just 9 groups within a chemistry course, for example. 9 wasn't course management systems. And, so, it was quite 10 Q. Was there any consensus reached at this February 10 a big, huge set of functionalities, so to speak, 11 meeting about whether you would want to have a single 11 interoperable functionalities. 12 user login and multiple roles? 12 So, what we decided to do was to segment 13 A. Well, no. I mean, at that meeting it was all about 13 those up. Security and oftentimes group roles and 14 capturing requirements and then taking all these 14 things like that -- "authorization" is what the 15 requirements and these use cases -- and a use case is 15 technical term for it is -- is taken together. Then we 16 just a narrative description of a scenario where, you 16 had things on metadata which is how you describe content 17 know, Tom is a graduate student who is teaching Math 15 17 or people so you can find things. So, we split those 18 but is also taking a course in, you know, advanced 18 all up and then went and had special meetings through 19 mathematics or whatever. So, you take all of that stuff 19 March through May or June or something like that to deal 20 and then you try to capture it and distill it down into 20 with those issues. 21 the core, unique things because two or three use cases 21 Q. Let me ask a question this way, sir: At the 22 might cross over a number of different areas or overlap. 22 February meeting, was there any discussion of role-based 23 So, it was clear when people came up with the 23 access controls? 24 requirement that that was something that, you know, we 24 A. Of role-based access controls? Not in that 25 would have to -- it would at least be a requirement. 25 terminology. It was more of a requirement-based Page 1324 Page 1326 1 Whether we addressed it or not would be a matter of 1 approach. We weren't trying to solve the problem. We 2 further work. 2 were trying to understand what the problems were that we 3 Q. So, there was a consensus reached that having a 3 needed to solve. 4 single user login and multiple roles would have to be a 4 Q. At some point in time, sir, did you, as the 5 requirement for the ultimate specification? 5 technical director of IMS, become aware of some work 6 A. It was a -- the desire was that when courses were 6 that had been done at the National Institute of 7 moved from one system to another, that a person be able 7 Standards and Training? 8 to have -- that the standard recognize that that person 8 A. Yes. 9 could have multiple roles. You know, it wasn't to say 9 Q. And is that often known as NIST, or NIST? 10 that the course management system had to have that. 10 A. NIST, uh-huh. 11 It's just that if two course management systems were 11 Q. And did that work have to do with role-based access 12 going to interoperate at that level of functionality of 12 controls? 13 interoperability, then they would have to -- we, the 13 A. Right. 14 specification writers, would have to write some 14 Q. And do you recall when you were directed to the 15 specification that would allow the definition of 15 individuals at NIST? 16 multiple roles. 16 A. I remember, you know, a meeting with the director 17 Q. Now, sir, when you were considering that 17 of NIST. But we had a couple meetings with him; so, I 18 requirement at the February, 1997, meeting, did you look 18 don't have like a clear picture of that. But I do 19 to any other source for potential information about 19 remember meeting John Barkley, who was our main contact 20 roles and how that could be implemented? 20 on the role-based access control; and he was at a number 21 A. Not at the February, '97, meeting. The way we 21 of meetings. So, I mean -- and it was all around 22 worked this was that -- if you think of all those 22 Washington; and so, John would come into the offices 23 specifications, I mean, there's issues of content 23 and -- occasionally and go over issues. 24 interoperability, these groups and roles, the way 24 Q. Was role-based access control something that NIST 25 administrative, you know, interaction, simple things 25 had worked on prior to the time that you started the -- 40 (Pages 1323 to 1326) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1327 Page 1329 1 A. Yes. 1 Q. Who? 2 Q. -- IMS project? 2 A. Well, I'd have to go back and look at the 3 A. Yes. They had documented their work, done some 3 individual attendee list; but most likely it would have 4 implementations, had worked with various industry 4 been the core group, which would have been Mike Pettit, 5 providers about, you know, trying to implement some of 5 Udo Schuermann, and Bob Alcorn, who were basically the 6 the concepts that they were working on. 6 full-time people from Blackboard that were working as 7 At the time it was the beginning of the 7 contractors. And then there were other people. Frank 8 issues of trying to do authentication, which is just me 8 Farance, I believe, was there and probably Neal Nored 9 proving who I am to a system. Again, this is '96, '97. 9 from IBM and a number of other people. 10 We think of SSL or we think of HTTPS when you go into a10 Q. Sir, I'm going to have -- give to you -- have my 11 Web browser. None of that stuff existed. Everything 11 associate here give you what's been marked as 12 behind the scenes that actually makes it possible for 12 Defendant's Exhibit Number 89. 13 you to send encrypted information simply and easily from 13 Take as long as you need to review that, sir; 14 your Web browser to your bank or whatever didn't exist. 14 but my question to you is: Do you recognize that 15 And, so, NIST was working with a variety of different 15 document? 16 organizations, thinking of different models of which you 16 A. Yes. 17 can prove and/or describe those roles and the access 17 Q. What is this document? 18 that you have to it, because some access may need to go 18 A. This is, in essence, the distillation of the IMS 19 through encrypted or be password protected. 19 requirements process from the February meeting in Santa 20 Q. And did the IMS project under your supervision as 20 Rosa and then the related meetings that occurred from 21 its technical director usually rely on those materials 21 that point to this. So, this -- and I believe it's 22 from NIST that you were referring to in your last 22 probably -- if I recall, it's around a 50-page document 23 answer? 23 or so -- well, a little more than that, 82. 24 A. We used them to the extent that it seemed like they 24 And, so, this -- when I said before, you 25 had a fairly complete approach. And we had a rule 25 know, we took all of that big mass of stuff from the Page 1328 Page 1330 1 within IMS that was understand the requirements, seek 1 February meeting and all the use cases and all that 2 out specifications that already exist, and reuse those 2 stuff and looked for what was sort of the salient, 3 or point people at them rather than trying to come up 3 unique pieces, this was the document that came out of 4 with our own because each of these areas was just 4 this and it was given to all of the contributing members 5 monstrously large. And, so, it was much better just 5 of IMS. 6 to -- you know, if somebody had something that seemed to 6 Q. Is this a true and accurate copy of the original? 7 be reasonable and that would address the requirements, 7 A. It looks to be, yeah. 8 you know, more power to them. We'd just say that's the 8 Q. And, sir, you said that it was released to 9 way to do it. 9 contributing members. Can you tell the jury what a 10 Where we would get involved with those 10 contributing member is, sir? 11 organizations is to say, okay, we're making some 11 A. Yes. IMS was funded by cash payments and in-kind 12 assumptions about the way in which this interoperability 12 contributions. The contributing members were generally 13 will be expressed; and if you've done it differently, 13 corporations like publishers and universities that were 14 can we work out some means by which, you know, you add14 very interested in seeing the specification get 15 something or modify something so that it sort of makes 15 developed. And, so, they paid anywhere from 25,000 to 16 sense altogether in what we're suggesting. 16 $50,000 per year to be a contributing member which 17 Q. So, as part of the IMS project, you directed people 17 basically meant that they got a say in what -- how 18 to the role-based access work done by NIST? 18 things went and happened, a seat on the advisory board 19 A. Right. And we had a security meeting on issues 19 that would help direct the effort. 20 like this in DC and John Barkley came to that meeting 20 And then below that were -- although, I don't 21 and we had that discussion and John, like I said, came 21 think we actually had it in place at that time -- it was 22 out to the offices. 22 the developer network members and I think they paid 23 Q. Did any individuals from Blackboard participate in 23 about 5,000 a year and they got information later, like 24 those security meetings? 24 six months or so after the contributing members did or 25 A. Yes. 25 sometime, you know, before something was going to be 41 (Pages 1327 to 1330) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1331 Page 1333 1 public but not necessarily in a time frame to really 1 Q. And did you, in fact, participate directly in the 2 influence the core direction of the effort. 2 creation of this document? 3 Q. And how many contributing members were there in 3 A. Yes. 4 1997? 4 Q. And do you see further down on the page Matthew 5 A. I think there was approximately 12, 15, something 5 Pittinsky is listed? 6 like that. It grew to around 25 or so. 6 A. Right, yes. 7 Q. And how many development network members were there 7 Q. And to your knowledge, as the technical director of 8 back at that time? 8 IMS, did Mr. Pittinsky participate directly in the 9 A. At the time of the February meeting or -- 9 creation of this document? 10 Q. Back in this time period, in the spring of 1997. 10 A. He participated in the requirements process that 11 A. A handful. I'm not even sure the developer network 11 led to the development of this document. I don't -- I 12 program was in place at that time. 12 do not believe that Matt participated in the actual 13 Q. And was Exhibit Number 89 released or provided to 13 editing of this document. 14 any representative of Blackboard? 14 Q. So, he was -- I'm sorry. Please finish your 15 A. Yes, in that they were, I think, fairly -- I mean, 15 answer. 16 they were contracted by us, you know, shortly 16 A. You know, all the people that are acknowledged here 17 thereafter, after the February meeting, I believe. I 17 attended that meeting and worked on things during the 18 didn't do the contract; Mark Resmer did. But yeah, you 18 meeting, may have written up notes, may have written up 19 know, we had this in the office all the time because we 19 scenarios, et cetera, distilled things down in a 20 would go back to it when we were writing specifications 20 particular area. And, so, they all, in a sense, 21 and so forth to refer to it. 21 provided content that then, you know, went into this 22 Q. Blackboard was eventually contracted to be involved 22 document. But then the document was edited by myself, 23 in the IMS project; is that right? 23 Kirsten Boehner, and a couple of other people, Mark, Tom 24 A. That's right. 24 Lawson potentially. 25 Q. And as technical director, did you provide them 25 Q. Sir, let me direct your attention to page 67 of Page 1332 Page 1334 1 with all the materials that you had that they needed to 1 this document. And you see that's an appendix marked 2 work on the IMS project? 2 "Requirements Summary Table"? 3 A. Right. I mean, they helped write much of the stuff 3 A. Uh-huh. 4 that went out, that and some of the IMS staff. We all 4 Q. And what was the purpose of this appendix? 5 worked together in the same location. 5 A. Just that, to be sort of a quick summary of all of 6 Q. Sir, let me direct your attention, if we could, on 6 the stuff that's sort of detailed in the previous pages. 7 Exhibit 89 to the page marked "V" on top; and the Bates 7 Q. Further down the page, sir, under the subheading 8 Number is Bb590157. 8 "Accessing-Essential" -- do you see that at the bottom 9 A. I'm sorry. What page was that? 9 of the page, sir? 10 Q. It's marked "V" on top, little Roman "V." 10 A. Yes. 11 A. Okay. 11 Q. Item Number 1, it says: "Enabled varied data 12 Q. Do you have that page, sir? 12 access control." 13 A. Uh-huh. 13 A. Yes. 14 Q. And you see it's entitled "Acknowledgments"? 14 Q. And do you see that, sir? 15 A. Right. 15 A. Yes. 16 Q. And the intro line says: "The following 16 Q. What does "enabled varied data access control" 17 individuals participated directly in the creation of 17 refer to? 18 this document"? 18 A. It means allowing users or automated agents to 19 A. Right. 19 access data in different ways depending on what their 20 Q. And there's a number of individuals listed below 20 role, so to speak, would be so that you could -- that's 21 that? 21 why "varied." That would be the use of that in that 22 A. Uh-huh. 22 particular context. 23 Q. And do you see maybe eight or ten bullets down, 23 Q. How does the concept listed in Item Number 1 there, 24 sir, your name is listed? 24 "enable varied data access control," relate, if at all, 25 A. Right. 25 to the role-based access control idea we talked about 42 (Pages 1331 to 1334) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1335 Page 1337 1 earlier? 1 Q. Can you tell the jury briefly what that refers to? 2 A. Well, that -- it's basically just a different way 2 A. As I mentioned earlier, authorization is who is 3 of saying it. 3 authorized to do what in what context. Authentication 4 MR. DASSO: Your Honor, we had this 4 is how do you prove you're you in a computer system. 5 originally synced up to play the documents next to the 5 So, I would type in a password and an ID in 6 picture; and because we are showing it large enough for 6 like a Web-based, you know, banking system or whatever, 7 the jury to see, we're just having a little technical 7 online shopping; and that would authenticate me to the 8 issue right now. So, I apologize for that. 8 system. And then that system would authorize me to 9 Q. Item Number 2, sir, says: Provide 9 place orders, to look at the catalog of products, you 10 authentication -- excuse me -- "provide authorization 10 know, to go in and change my profile of like credit card 11 and authentication." 11 numbers or whatever I might use to pay for a particular 12 A. Right. 12 shopping cart of stuff. 13 Q. Can you tell the jury briefly what that refers to? 13 Q. We talked earlier, sir, in your testimony about 14 A. As I mentioned earlier, authorization is who is 14 user logins. How, if at all, does this concept relate 15 authorized to do what in what context. Authentication 15 to user logins? 16 is how do you prove you're you in a computer system. 16 A. Authentication is the process of logging in. And 17 So, I would type in a password and an ID in, like, a 17 when you log in, then you're proving who you are or that 18 Web-based, you know, banking system or whatever, online 18 you have the information to access a particular account. 19 shopping; and that would authenticate me to the system. 19 Depending on the computer system that you're logging 20 And then that system would authorize me to place orders, 20 into, they will have either simplistic or sophisticated 21 to look at the catalog of products, you know, to go in 21 authorization mechanisms to authorize you to do 22 and change my profile of, like, credit card numbers or 22 something within that system. 23 whatever I might use to pay for a particular shopping 23 Q. We talked earlier about the idea of a single 24 cart of stuff. 24 user -- single login for a user for multiple roles. 25 Q. We talked earlier, sir -- 25 Does that relate at all to these first two items? Page 1336 Page 1338 1 THE COURT: Let's go ahead and stop at this 1 A. Authorization and authentication has nothing to 2 point. 2 do -- well, not nothing. It's just -- it's a 3 Okay. Ladies and gentlemen, we're going to 3 preliminary step that gets you to the point where 4 go ahead and break for lunch. I'm going to ask you to 4 someone has a particular role. Authorization is where 5 be back at quarter of. Please remember my instructions 5 that comes in. But authorization, again, does not -- 6 not to discuss the case even among yourselves. You're 6 just by saying "authorization" does not imply multiple 7 excused at this time. 7 roles. It just -- "authorization" says that you have 8 (The jury exits the courtroom, 11:59 a.m.) 8 certain capabilities. Whether or not those capabilities 9 THE COURT: We'll be in recess until quarter 9 are bundled up and called a role is, again, an 10 of. 10 implementation issue for whatever system you're working 11 (Recess, 11:59 a.m. 12:45 p.m.) 11 with. 12 (Open court, all parties present, jury 12 Q. And, then, finally, sir, on page 67 there's Item 8. 13 present.) 13 It is "access control for data items." Do you see that, 14 THE COURT: Are we ready to continue with the 14 sir? 15 videotaped deposition? 15 A. Yes. 16 MR. DASSO: Yes, your Honor. We think we 16 Q. And what does that refer to? 17 have the problem fixed, too, of the synchronization 17 A. Well, I think we were being a little redundant with 18 thing. So, hopefully we won't have that issue again. 18 Number 1, "varied data access control" and "access 19 THE COURT: All right. If we can lower the 19 control for data items." It's really the same thing. 20 lights, that one switch, please. 20 Q. So, you mentioned that one twice? 21 Go ahead. 21 A. Yeah. 22 Q. Item Number 2, sir, says "provide 22 Q. Kind of important? 23 authentication" -- excuse me -- "provide authorization 23 A. Yes. 24 and authentication." 24 Q. Now, sir, if you would turn over to the second page 25 A. Right. 25 of Exhibit 130 for me, please. And at the very top of 43 (Pages 1335 to 1338) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1339 Page 1341 1 the page the line says: "NIST provided a high-level 1 Q. And was a normal part of your business to prepare 2 definition of metadata." 2 notes such as this? 3 Do you see that? 3 A. Yes. 4 A. Uh-huh, yes. 4 Q. And were they prepared at or near the time by 5 Q. And the third numbered paragraph says (reading) 5 someone with knowledge of what actually happened? 6 using metadata should indicate what rights the users 6 A. Yes. 7 have -- will have -- excuse me -- once the offering is 7 Q. On the meeting participants, sir, if you look on 8 obtained (i.e., what can be done with the offering.) 8 the way down there's a reference to Rachel Wilson and 9 Do you see that? 9 Mark Resmer from SSU. Do you see that? 10 A. Right, uh-huh. 10 A. Uh-huh. 11 Q. And was that, in fact, discussed during the course 11 Q. And is that Sonoma State University? 12 of this meeting? 12 A. Yes. 13 A. Yes. 13 Q. And you told us before that -- 14 Q. And how does that concept relate at all to the 14 A. It's -- yeah, it's -- it's probably -- it should 15 issue of role-based access control as we discussed 15 have been probably CSU-SSU, but yes, uh-huh. 16 earlier? 16 Q. And then underneath them there is a listing for -- 17 A. Actually, that one -- that actually doesn't have 17 two below them there is again a listing for Mr. Chasen. 18 anything to do with role-based access control. This has 18 Do you see that? 19 to do with intellectual property rights. So, for 19 A. Yes. 20 example -- think about this. I mean, this meeting was 20 Q. And did he, in fact, participate in this meeting on 21 about content, being able to use stuff; and, so, it's 21 June 12th and 13th, 1997? 22 very common in a library to indicate, you know, what you 22 A. Yes. 23 can do and what you can't do. So, part of this was, you 23 Q. And Mr. Schuermann is underneath him, listed 24 know, if a faculty member -- you get some content, can 24 underneath him. Do you see that? 25 you actually reuse it. There was this issue of 25 A. Yes. Page 1340 Page 1342 1 granularity or taking content and breaking it apart. 1 Q. And did he, in fact, participate in the meeting 2 Think about a course that's teaching five 2 from June 12th to 13th, 1997? 3 different topics. Maybe, you know, you'd like to teach 3 A. Yes. 4 in your course Topic Number 2 but you don't really -- 4 Q. And then Mr. Pittinsky is under Mr. Schuermann. 5 you have a different approach for topics 1 and 4 and 5 5 Did he also participate in the meeting? 6 or whatever. So, would that content, the metadata, 6 A. Yes. 7 describe to you effectively in an interoperable way that 7 Q. And then finally you're listed about second to 8 would allow the system that's helping you teach that 8 last. Do you see that, sir? 9 course use that piece. Would the system be able to, in 9 A. Right. 10 a sense, help respect the intellectual property right 10 Q. And you were also at this meeting? 11 objectives of the original author. 11 A. Uh-huh. Yes. 12 Q. Thank you, sir. 12 Q. Now, sir, let me turn you over to the second page 13 Sir, we're going to turn next to what's been 13 of the document. The second full paragraph on that 14 marked as Defendant's Exhibit 131. Do you recognize 14 page, the statement is made: "On Friday morning, the 15 this document, Mr. Griffin? 15 technical and design group discussed primary 'Wow' 16 A. Yes. 16 features that we should focus on during the development 17 Q. What is Exhibit 131? 17 of the IMS. These are features that make the IMS stand 18 A. Again, notes from a similar kind of meeting on a 18 out, that add value to existing strategies and 19 different segment of those requirements. 19 technologies of teaching and learning." 20 Q. And, again, were these either prepared by you or 20 Do you see that, sir? 21 under your supervision? 21 A. Yes. 22 A. Yes. 22 Q. And were, in fact, wow features discussed during 23 Q. And were they prepared as part of the normal course 23 the course of this meeting on -- 24 of business at the IMS? 24 A. Yes. 25 A. Yes. 25 Q. -- June 12th and 13th, 1997? 44 (Pages 1339 to 1342) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1343 Page 1345 1 A. Right. 1 someone in multiple roles. We didn't say you had to be 2 Q. And down further on the page there's a list of wow 2 able to switch roles in a course management system, just 3 features. Do you see that, sir? 3 that, you know, the objective was again to build that 4 A. Yes. 4 bridge so you could communicate that this person served 5 Q. And let me just go over a couple of those. The 5 two different roles. 6 first section deals with management of content. Do you 6 Q. So, the reference to role switching here means an 7 see that? 7 individual can serve one role -- for example, student 8 A. Uh-huh. (Moving head up and down.) 8 role in one course -- and then a different role -- for 9 Q. And underneath that there's a reference to 9 example, a teacher role -- in another course? 10 "Customized access and privileges rights." 10 A. Correct. And in this context, too, when you're 11 A. Right. 11 talking about managing the learning activities of -- 12 Q. What does that refer to, sir? 12 again, a faculty member might -- or teacher might give 13 A. It's, again, role-based access control and sort of 13 someone a new role within the course as well, like that 14 netted out. I mean, it's just -- you know, in the other 14 group leader kind of thing. 15 document that said "varied data access control," this is 15 Q. And that concept of role switching was considered 16 just "customized access and privilege rights." 16 one of the wow features as of June of 1997 for the IMS 17 Privileges are another way of describing what those 17 project? 18 functions are, what are you privilege -- what privileges 18 A. Correct. And it was a wow because people were 19 do you have, just like if you have the privilege to go 19 running into issues where they couldn't do that; and, 20 and open the lock and go swim in the local pool, you 20 so, they were having to bend their business process 21 know. Those are the access rights that you have. 21 around the technology versus the technology supporting 22 Q. So, as of June 12th through 13th of 1997, the 22 their business process or their learning process. 23 individuals working on the IMS project considered 23 Q. Sir, let me hand you or have handed to you what 24 role-based access controls to be one of the wow 24 we've marked as Defendant's Exhibit 634. Do you 25 features? 25 recognize this document, sir, as the agreement between Page 1344 Page 1346 1 I'm just trying to say as of the time of this 1 IMS and Blackboard that you talked about earlier with 2 meeting, your group considered role-based access control 2 respect to the -- 3 to be one of the wow features of what it was putting 3 A. No. Like I said, I didn't negotiate it; and I 4 together? 4 never saw this document. 5 A. Yes. 5 Q. Okay. You are aware, sir, at some point in time 6 Q. Okay. So, further down the same area we're talking 6 there was an agreement signed between -- 7 about, there is a section entitled "Management of 7 A. Yes. 8 learning activities." Do you see that? 8 Q. -- IMS and Blackboard with respect to Blackboard's 9 A. Uh-huh. 9 involvement in IMS? 10 Q. And the second item underneath that is "Role 10 A. Yes. 11 Switching." Do you see that, sir? 11 Q. And if you look, sir, at the purpose of this 12 A. Yes. 12 document, up at the top, it says: "This retainer 13 Q. What does that refer to? 13 agreement will provide software development services by 14 A. Again, you know, if Tom is a graduate student and 14 Blackboard LLC (BLACKBOARD) to Sonoma State University 15 he's teaching in one -- teaching an undergrad class and 15 Academic Foundation, Inc. (SSU FOUNDATION) in support of 16 he's also taking a class, that his role switches in that 16 the National Learning Infrastructure Initiative 17 context. I mean, this is -- role switching written in 17 Instructional Management System Project." 18 this context -- I mean, oftentimes the people we were 18 Do you see that? 19 dealing with had the concept of the software they wanted 19 A. Yes. 20 to work with. And, so, role switching, you know, would 20 Q. And did you understand, sir, that, in fact, 21 mean I would go in and I would be able to have my role 21 Blackboard was providing software development services 22 switched or changed in some fashion, depending on, I 22 to the Instructional Management System, or IMS project? 23 guess, where I was. And it's really more of -- from an 23 A. Yes, uh-huh. 24 interoperability perspective role switching is being 24 Q. And then down on the page -- farther down on the 25 able to provide a means by which you can describe 25 page, sir, there is a reference to -- 3.0 references to 45 (Pages 1343 to 1346) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1351 Page 1353 1 offices. It was in the winter, as I recall. It was 1 Q. What is this document? 2 cold. He had a coat on. 2 A. This is a document I put together to help explain 3 Q. In the meeting you talked about, did I understand 3 what we were and were not going to be able to do in what 4 it to be in a basement, you said? 4 time frame, taking the various key requirements from 5 A. Sort of. It was just sort of a gloomy little -- 5 the -- whichever one that was, the feature requirements, 6 Q. When did that meeting take place? 6 design requirements document. And this was about the 7 A. Sometime in the -- I would think in the late 7 prototype, what we were and were not actually going to 8 spring, after the September -- February meeting in 8 be able to do in the time frame we were working in. 9 Sonoma. 9 Q. And was this document provided at or near the time 10 Q. And who else besides you and Mr. Barkley 10 of its creation to anyone from Blackboard? 11 participated in that meeting? 11 A. Oh, yeah. I mean, we all agreed, sitting in that 12 A. It would have been the guys from Blackboard, the 12 room. I talked about what we could and couldn't get 13 team. The team at that point, you know, would have been 13 done. 14 Bob Alcorn, Mike Pettit and Udo Schuermann. I have a 14 Q. So, did this come out of the meeting with 15 vague recollection of somebody -- one of the three not 15 Mr. Barkley; or did it come out of a different meeting? 16 being there. And then there was Frank Farance and then 16 A. This came out of a different -- this came out of a 17 probably Neal Nored from IBM, maybe not Neal. And then 17 meeting of talking with Mike Pettit and Bob and Udo and 18 there could have been a couple of other people. 18 Ken Schweller and Kirsten about what we would be able to 19 Q. Was one of the topics that you discussed at this 19 do in the prototype, in the specification. 20 meeting the idea of a single user login having multiple 20 Q. Sir, about halfway down that second page there's a 21 roles? 21 reference to "W - Determine access control rights for 22 A. Oh, yeah, absolutely. 22 individuals and specific materials." Do you see that, 23 Q. And was -- 23 sir? 24 A. Well, it was about role-based access control, and 24 A. Yes, uh-huh. 25 that -- I mean, whether it was groups or groups of 25 Q. And that's also marked with a "W," which is "will Page 1352 Page 1354 1 people in different groups with different roles. It's 1 be included in the March 1998 IMS Prototype"; is that 2 all sort of -- at this point with that group of people 2 right. 3 it was really a technical geek kind of discussion. 3 A. Correct. 4 Q. And was Mr. Barkley primarily providing information 4 Q. And what does that item reference? 5 about how vendors and people in other industries dealt 5 A. That is -- it is the same thing I mentioned before 6 with those issues of role-based access control and 6 in that it's the authorization, who's authorized to do 7 multiple users with the single login? 7 what with content. Can a teacher teach it, can a 8 A. Right, and how they had -- in RBAC, their 8 student take it, can a teacher create more and edit it, 9 role-based access control standards, solution, whatever 9 that type of thing. 10 you want to call it -- how they had tried to address 10 Q. How does this idea relate at all to role-based 11 those realities of the marketplace. 11 access control? 12 Q. And, so, as I understand it, sir, this was 12 A. It's another way of saying -- well, determine 13 primarily a situation where Mr. Barkley was providing 13 access control rights for individuals and specific 14 information -- technical information to the other 14 materials. It is -- it's access control rights and -- I 15 members that were -- 15 mean, it's basically the same thing. 16 A. Right. 16 Q. Okay. 17 Q. -- participating in the meeting? 17 A. Now, let me say one thing, though. This "determine 18 A. Right. But he had gone over some of this 18 access control rights for individuals and specific 19 beforehand, I believe. But he was going over it some 19 materials," this doesn't say "roles" and -- but at the 20 more. There were some people in the meeting that hadn't 20 same time, roles is just a way of grouping people, 21 been in some of the previous discussions. 21 grouping individuals. But at this level what it's 22 Q. Sir, we are going to hand you next what is marked 22 saying is "determine access control rights for 23 as Defendant's Exhibit 167. Do you recognize this 23 individuals and specific materials." But in general you 24 document, sir? 24 never set individual rights for Jane because from an 25 A. Yes. I wrote it. 25 administrative perspective, we take a campus with 30,000 47 (Pages 1351 to 1354) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1355 Page 1357 1 people, you're not going to go in and go to Jane's 1 A. Yes. 2 record and say Jane can access, you know, the Math 101 2 Q. -- "e.g., teacher, grader/marker, learner." 3 catalog or whatever. You're going to go in and say, at 3 A. Right. 4 some level, Jane is a member of the students or of the 4 Q. Do you see that? 5 students in Math 101. And then you're going to say 5 A. Uh-huh. 6 students in Math 101 can access to materials for Math 6 Q. And that's marked with an "L," meaning it's likely 7 101. 7 to be in the prototype, correct? 8 Q. So, even though this item we were just discussing 8 A. Right. 9 does not specifically reference "roles," you would have 9 Q. What does that item refer to? 10 understood it to imply the use of roles? 10 A. That's, in a sense, the same thing. It's just 11 A. Yes. And I believe anybody in IMS would have, yes. 11 saying that within the prototype, we -- at this point 12 Q. Turning you over to the next page, sir, under 12 when this document was written, we would likely enable a 13 "Collaboration and Communication Features." 13 person -- or likely -- likely enable an administrator 14 A. Uh-huh. 14 who was controlling the user experience of the users 15 Q. I want to refer you to two items. The first one is 15 using that tool to be able to do things based on their 16 "Form multiple workgroups, and groups within groups." 16 role. 17 Do you see that? 17 So, a grader would be able to grade tests but 18 A. Yes, uh-huh. 18 would not be able to assign them, would not be able to 19 Q. And then several items below that there says: 19 edit them. You know, a student would be able to take 20 "Play different roles within workgroup." 20 the test. And this is in the prototype. It's not 21 A. Yes. 21 something that's -- being able to control that in an 22 Q. And both of those are marked with an "L." Do you 22 application had nothing to do with IMS but in the 23 see that, sir? 23 prototype we had to actually show this concept that, you 24 A. Uh-huh. 24 know, you'd set different roles because the 25 Q. And those are indicated as features that are likely 25 specification was going to communicate those roles in Page 1356 Page 1358 1 to be included in the March 1998 IMS prototype? 1 some interoperable fashion. So, that's why that came 2 A. Yes. 2 into being. 3 Q. And what do those two features refer to? 3 Q. Just to be clear, so, these items in this document 4 A. Well, the first one in that example is just another 4 was referring to a prototype, an actual software program 5 way to say what I said before in that if you've got a 5 that was being developed. 6 student or a teacher who wants to have a group of 6 A. Correct. 7 students work on a particular part of a learning 7 Q. And then further down the page, sir, also under 8 objective and another group, then you need to be able to 8 "User Experience Features," there is a statement: 9 create those groups. It could also be an educational -- 9 "Switch roles seamlessly given appropriate permissions." 10 or course management system, an administrator who goes 10 Do you see that? 11 in and creates a group for a particular course and 11 A. Yes. 12 another group for another course, et cetera, et cetera, 12 Q. And that's marked with an "L" as likely to be in 13 and then links those up with the back-end system so that 13 the prototype. Do you see that, sir? 14 the student registrations flow in and they can get into 14 A. Yes, uh-huh. 15 that course when they log in. 15 Q. And what does that item refer to? 16 They play different roles within the work 16 A. Well, it's that people should not have to jump 17 group. That's, again, roles, just the things that they 17 through hoops to get a different role. That's why the 18 can do in that course, can they take content, can they 18 word seamlessly is there. That's there because people 19 edit content, whatever. 19 were saying they were having a hard time getting people 20 Q. And, sir, I turn you over to the next page, please. 20 to have these multiple roles. And, so, if you're John 21 There's a reference to "User Experience Features." Do 21 and you're a graduate student and you're teaching this 22 you see that? 22 course, when you log in and you go into that course, you 23 A. Yes. 23 should automatically have the roles of a teacher. And 24 Q. And one of the user experience features is "Modify 24 when you're in your, you know, advanced math, you know, 25 user access rights and privileges based on the role" -- 25 PhD program course, you click on that advanced math 48 (Pages 1355 to 1358) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1359 Page 1361 1 course; and the system would automatically know that you 1 prepare these notes? 2 were a student in that context and would not then give 2 A. Yes. 3 you the ability to go in and, say, look at the answers 3 Q. And were they prepared at or near the time by 4 to the test, for example. 4 someone with knowledge of what happened at the meeting? 5 Q. Is this the concept of having multiple roles with a 5 A. Yes, they were. 6 single login that we talked about earlier? 6 Q. And, sir, do you see that the participants are 7 A. Yes. 7 listed as Mr. Barkley on the upper left-hand corner of 8 Q. And that was something that at least in September 8 the first page? 9 of 1997, was anticipated by you and the members of 9 A. Yes. 10 Blackboard as being likely to be in the prototype? 10 Q. And we said earlier that he attended this meeting, 11 A. Yes. 11 right? 12 Q. And do you know whether that actually was in the 12 A. Yes. 13 prototype or not? 13 Q. And also on the first page, Mr. Chasen is listed as 14 A. No. We ended up deciding that we couldn't do roles 14 a participant. Do you see that? 15 in the prototype. There just simply wasn't enough time. 15 A. Yes. 16 So, all we really did was to show more of the 16 Q. And did he, in fact, participate in the meeting 17 content-oriented context of interoperability. We did 17 with Mr. Barkley? 18 have groups, but we didn't do roles and so forth. 18 A. Mike Chasen? Yeah. Again, I think that, you know, 19 Q. And that was a matter of just running out of time 19 at this point in time Mike was -- Michael Chasen was in 20 getting the prototype together? 20 and out of these meetings. If it was nearby, then he 21 A. Yeah. Yes. 21 might attend a little bit, but yeah. 22 Q. But it was an idea that you discussed and talked 22 Q. And then you're listed as a participant in the 23 about with the people from Blackboard as part of the IMS 23 meeting, right? Correct? 24 project? 24 A. Right. 25 A. Yeah, and that explicitly we weren't going to do it 25 Q. Did you attend the meeting? Page 1360 Page 1362 1 in the prototype. We didn't have time. 1 A. Yes. 2 Q. Okay, sir. The next item I'm going to give you is 2 Q. And then over on the second page, Mr. Pettit and 3 marked as Defendant's Exhibit 128. And, sir, do you 3 Mr. Schuermann are listed as participants. 4 recognize this document? 4 A. Yes. 5 A. Yes, I do. 5 Q. And they're both from Blackboard; is that correct? 6 Q. What is this document? 6 A. Correct. 7 A. It's notes from that meeting that I talked about 7 Q. And did they also participate in this meeting? 8 earlier in the dingy room. 8 A. Yes. 9 Q. So, this is the meeting you were talking about with 9 Q. Now, sir, let me direct your attention over to the 10 Mr. Barkley and you and other members from Blackboard 10 fifth page, please. 11 going over, among other things, role-based access 11 A. Okay. 12 control. 12 Q. At the bottom of the page, under the heading 13 A. Uh-huh, as I recall. 13 "Security Group" and the subheading "More detailed look 14 Q. And so -- 14 at security includes." Do you see that, sir? 15 A. And these interfaces that I was talking about 15 A. Yes. 16 before. That's object-oriented design, how do you 16 Q. And do you see, sir, there's a reference there or a 17 break -- how do you break up this functionality into 17 bullet there about "active role set"? 18 pieces and parts. 18 A. Yes. 19 Q. And, sir, were these notes prepared by you or under 19 Q. What does "active role set" refer to? 20 your direction? 20 A. Active role set, I believe, is a terminology used 21 A. Yes. 21 by John Barkley on the role-based access control to say 22 Q. And were they prepared as part of the normal course 22 what is a set of roles. It's a set of those groupings 23 of business at IMS? 23 and a set of -- in what -- sorry. I'm sort of defining 24 A. Yes. 24 it using exactly the same words that are in it, active 25 Q. And was it a normal part of your business to 25 role set. 49 (Pages 1359 to 1362) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1363 Page 1365 1 It's those roles that are currently 1 Q. And do you know what that refers to? 2 operational for that person, in essence. 2 A. Yes. "Interface" is a technical term that 3 Q. So, again, a student in one class, a teacher in 3 programmers use to describe how you actually -- how a 4 another, perhaps administrator in a third situation? 4 software program actually gets the information or sends 5 A. Right. And it's the -- in this context, the role 5 the information, to put it sort of simply. 6 set is the set of roles. So, you know, you could have a 6 Q. And what is the reference to the "interface from 7 role -- in a particular context, security context, you 7 the NIST model"? 8 could have roles for teacher and students and so forth; 8 A. The NIST model is the RBAC model of how they 9 and those would be -- for some individuals they might 9 organized the issue of roles and people and access 10 have more than one role. 10 control and authentication and actually -- actually, I 11 Q. And was this active role set concept discussed 11 don't believe it dealt with authentication directly in 12 during your meeting, object-oriented design meeting in 12 their model. They assumed it coming in. 13 September 16th to 19th, 1997? 13 But this model says, okay, well, there's, 14 A. Yes. 14 let's say, roles and there's means by which a program 15 Q. I'm turning you over, sir, to the next page. At 15 says create a role or delete a role or add an access 16 the top of the page, there is reference to "Access 16 control feature to a role. And it's just the way the 17 Control." Do you see that? 17 actual programmer -- what he would actually type and 18 A. Oh, midway down, "Access Control Management"? 18 have to do to make sure that that information got 19 Q. No, sir. On the first -- there's a set of bullets 19 communicated when the actual program ran. 20 at the top of the page, and there's a bullet that says 20 Q. And do you see down there, there's some numbered 21 "Access Control." 21 paragraphs. The fourth one says "Single log-on." 22 A. Oh, yes. One, two, three, four -- fifth down, 22 A. Yes. 23 right. 23 Q. And what does that refer to? 24 Q. And then underneath that, about five down, there's 24 A. That just means that if at, say, a university 25 a sub bullet that says: (Reading) Use RBAC, quotation, 25 you've got a library system, you've got a course Page 1364 Page 1366 1 role-based access control -- 1 management system, you've got a chat application, 2 A. Yes. 2 generally each of these applications has a prompt where 3 Q. -- closed quote. 3 you have to log in, put in a user ID and a password. 4 Do you see that? 4 And by "single login," it means that programmers are 5 A. Yes. 5 working some magic behind the scenes to make each of 6 Q. And then underneath that (reading) RBAC domain 6 these applications, except the person who logs in in one 7 administrative tool, assigns roles to users. 7 of them can access the other ones without having to 8 Do you see that? 8 re-login; so, you're not constantly having to retype 9 A. Yes. 9 your ID and password. So, it's just magic behind the 10 Q. What do those items refer to? 10 scenes to make that experience seamless. 11 A. That's John Barkley's and his team's work on 11 Q. Is this also that multiple roles for a single login 12 interoperable role-based access control. 12 that we've been discussing? 13 Q. And did Mr. Barkley present that work during the 13 A. Not in this context. This is just about 14 course of these meetings from -- 14 authentication, which means that, you know, this 15 A. Yes, he did. 15 application, this application, and this application 16 Q. -- June -- excuse me, September 16th of 1997? 16 would know that either -- they know me, Steve, and I'm 17 A. Yes. 17 logged in and I have a credential, in a sense, that says 18 Q. And were employees from Blackboard present when he 18 yes, this is the person who's logged into this account. 19 made that presentation? 19 That's all that single login means. That's 20 A. To the best of my knowledge, yes. 20 authentication. 21 Q. And, sir, further down the page there is a 21 If additional information is passed between 22 reference to "Access Control Management." And then 22 those applications, authorization information, then 23 further along it says: "Use the interface from the NIST 23 that's where you would get into roles and stuff like 24 model." Do you see that? 24 that. But single login by itself is just about knowing 25 A. Yes. 25 and believing that that person is the person that they 50 (Pages 1363 to 1366) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1367 Page 1369 1 say they are. 1 requirements, this kind of thing, so that -- just, you 2 Q. So, it doesn't necessarily refer to roles but it 2 know, good sort of PR, et cetera, that type of thing. 3 could refer to roles if you have a multiple role set. 3 And it was, you know, used also to try to develop new 4 A. No. In a classic sense, it's -- authentication and 4 membership, you know, fundraising in a sense. 5 authorization are two separate things. You never give 5 So, if we had someone that was, you know, a 6 authorization without -- well, in 99 percent of the 6 country or a company or a university, whatever, then, 7 time, you don't give authorization without somebody 7 you know, this is the document that we could send to 8 first authenticating who they are. But there's no 8 them that would describe that and hopefully get them 9 assumption that single login would mean you would have 9 interested in joining. 10 multiple roles. 10 Q. And is this document a true and accurate copy of 11 Q. Sir, let me turn you over to the next page, 11 the original? 12 please -- I'm sorry, two pages later. And there's a 12 A. It looks to be, yes. 13 section entitled "More Notes on Access Control." 13 Q. And was this document, in fact, publicly released 14 A. Yes. 14 on or about December 19th, 1997? 15 Q. Do you see that? 15 A. I recall this being -- or that this kind of 16 And underneath that it says: "We do want to 16 document was made public. But when I look down here and 17 use role-based access control because it meets many of 17 see this is confidential and proprietary to Educom's 18 the group privilege scenarios/requirements." Do you see 18 partnership and may not be disclosed without permission, 19 that? 19 this may be a version that we only used for those 20 A. Yes. 20 internal sort of marketing purposes. But, then again, 21 Q. What does that refer to? 21 it was -- this is also -- we were very much -- in doing 22 A. We're just simply saying that the work that -- 22 specification, you had to be really careful about the 23 well, that the approach -- there's lots of different 23 statements that you make about proprietary nature of 24 ways to do group privileges and multiple group 24 information or lack thereof so that you avoid future 25 privileges -- not lots but some. But one way to do it 25 problems for some of the member or people who actually Page 1368 Page 1370 1 is role-based access control. So, this is in lower 1 implement the specification. 2 caps, role-based access control; so, that's the general 2 So, it's -- as I recall, I thought we made 3 term of practice, not the actual RBAC from NIST, you 3 this publicly available. 4 know, in the context of this paragraph. 4 Q. Just so I'm clear, is your best recollection, then, 5 Q. Was a decision made at the September 16th to 19th, 5 that this was made publicly available? 6 1997, meeting, sir, that NIST would provide its RBAC 6 A. That's my recollection. I mean, we didn't normally 7 management software code to IMS and the Blackboard? 7 produce -- I mean, you know, just the editing of this, 8 A. As a reference, yes, uh-huh. 8 the -- this has got graphics in it, say, on page 10 and 9 Q. And that that would become the basis for the 9 9 that were directly out of our public presentations 10 role-based access control features in the specification 10 that we gave all over the place. And that's -- to the 11 and product? 11 best of my recollection, we made it public. If it was 12 A. Yeah. There would be a source for us to define the 12 not public, then it was used in various presentation and 13 interfaces for that part of the specification, yes. 13 to -- for marketing purposes. 14 Q. Okay, sir. Let me, then, turn to the next exhibit. 14 Q. Now, sir, let me turn you over to page 12, Section 15 We're moving ahead from September of 1997 to December of15 2.2, "Design Methods." And in that paragraph, about -- 16 1997; and we're handing you Defendant's Exhibit Number 16 a little over halfway down, there's a statement that 17 23. 17 "Learners are assuming the roles of both providers and 18 Do you recognize that document, sir? 18 teachers, taking a more active approach to shaping their 19 A. Yes, I do. 19 learning experience." 20 Q. What is this document? 20 Do you see that, sir? 21 A. This is a document that we put together, as I 21 A. Yes, uh-huh. 22 recall, that's very similar to the one we produced back 22 Q. And is that another recognition that individuals in 23 in April of this year. And it was primarily intended to 23 the education context can assume multiple different 24 help explain to the public, or people outside of the 24 roles? 25 project, what we were doing, you know, what drove the 25 A. Yes. However, in this context it's a little -- 51 (Pages 1367 to 1370) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1423 Page 1425 1 really interested in just spending some time with my 1 of the impact of what the technology could do in the 2 brother and moving to a different city for the summer. 2 classroom. Because I have taken some online courses in 3 Q. And during that summer, what were your duties and 3 the past, I have had exposure to the success of them and 4 responsibilities at Desire2Learn? 4 I was really looking forward to continuing to work with 5 A. Sure. During the summer of 1999, my 5 my brother and the folks that worked there at that time. 6 responsibilities were -- I was working on a specific 6 Q. Okay. You indicated that currently you are the 7 course for one of our clients, the University of Guelph. 7 manager of content services? 8 MR. DARK: Excuse me, your Honor. We're 8 A. Yes. 9 going to have to object -- 9 Q. Okay. What are your responsibilities as the 10 THE COURT: You're going to have to speak 10 manager of content services? 11 into the microphone or speak up a little bit so she can 11 A. I manage a team that does a series -- that offers a 12 hear you. 12 series of offerings, things like graphic design, Web 13 MR. DARK: I understand that we're not to go 13 development, content development, course conversions as 14 into anything that they did working at Desire2Learn on 14 well as we do a little bit of internal marketing, piece 15 projects before 2000, including 2000. That was based on 15 development. 16 your ruling this morning, your Honor. 16 Q. And one of the things that you mentioned there was 17 THE COURT: Sustained. 17 content development. Can you describe for the jury what 18 Ladies and gentlemen -- and you'll get this 18 content development is? 19 instruction later on in your final instructions. But 19 A. Sure. In those cases a client would approach us 20 you're not to speculate over the fact that lawyers try 20 with a project that would require a conversion from a 21 to ask questions that I've already told them not to ask 21 traditional online environment where they were 22 and then I have to sustain. It's not an attempt to 22 delivering course materials, whether that was in a 23 hide. Again, this is the rules dealing with various 23 classroom or a different environment; and they would be 24 disclosures that were and were not made or various 24 looking to transfer that course to a different 25 rulings I've made on what is or is not proper evidence. 25 environment. So, whether it was from one system to Page 1424 Page 1426 1 You're to take no -- or place no emphasis on the fact 1 another system or it was just a classroom course before 2 that the question was asked or it wasn't answered or 2 and they were now looking to move it online. 3 wasn't. If I sustain an objection, the witness may not 3 Q. And when you're doing work on content development 4 answer the question. Don't speculate as to what it was. 4 at Desire2Learn, how is it arranged between Desire2Learn 5 On the other hand, if a lawyer makes an 5 and the client that that work will be done? 6 objection and I overrule the objection, the witness can 6 A. The client typically approaches either a sales 7 answer the question. Take nothing from the fact that 7 associate or an account manager or directly to myself 8 the lawyer asked -- or made an objection and was 8 requesting a project. Sometimes it's written in the 9 overruled. What they say is not evidence. My rulings 9 contract, as well. 10 are not evidence. The evidence that does come out to 10 Q. Okay. And you anticipated my next questions. 11 you is what you may consider. 11 Typically is that work done under a contract or 12 Go ahead, counsel. 12 agreement with a client? 13 MR. NORROD: Yes, your Honor. 13 A. Yes. 14 BY MR. NORROD: 14 Q. Okay. And when you are doing the content 15 Q. Ms. Baker, was it your plan to return to university 15 development work, do you generally receive materials 16 at the end of the summer? 16 from the client? 17 A. Yes, it was. 17 A. Usually, yes. 18 Q. Okay. And have you made it back yet? 18 Q. Okay. And what kind of materials would you receive 19 A. No, I haven't. 19 from the client for the content development? 20 Q. Okay. And why did you decide to stay on at 20 A. It depends on what type of course they're looking 21 Desire2Learn and continue to work there as opposed to 21 to build. It could be Word documents or PowerPoint 22 going back to university in the summer. 22 presentations. It could be an idea in their head and 23 A. I enjoyed the job. I thought it was an extremely 23 they're just trying to verbalize it. Usually it's 24 challenging job. It was very interesting. And as a 24 lecture notes or PowerPoint presentations. 25 student -- or a recent student in that case, I was aware 25 Q. Okay. And then what typically do you do with that 65 (Pages 1423 to 1426) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1427 Page 1429 1 information that you receive from the client? 1 that was in use? 2 A. From that point we usually will create a project 2 A. Typically the client would be sending us the bundle 3 team and then on that project team would be a content 3 of course files via email or through the Internet or in 4 developer, a graphic designer, and someone to kind of 4 some cases we also receive it on DVD or CD if it's too 5 manage the project. We work directly with the client to 5 large. 6 decide what they would like for their online course, 6 Q. Okay. And are there different types of bundles -- 7 whether it's to use video and audio and quizzing and 7 material bundles of files that you receive? 8 course materials like that. And what we do is we -- 8 A. Yes, definitely. 9 based on the client's needs, we would develop a solution 9 Q. Okay. And what are those types of bundles? 10 for that. 10 A. Typically the types that we're using in what we 11 Q. Okay. And when you're doing that work and creating 11 consider course conversion is an IMS package. 12 that material, is the end product a set of computer 12 Q. Can you explain to the jury what an IMS package is? 13 files? 13 A. An IMS package is -- it's basically a zip of course 14 A. It's a bundle of course files. 14 files. That zip of course files contains what we call a 15 Q. Okay. And where do you do the work of creating 15 "manifest file" in that zip and that manifest file is 16 that bundle of course files? 16 following a standard called an "IMS standard." 17 A. At our office. 17 Q. Okay. And when you receive that bundle of files, 18 Q. Okay. And once the bundle of course files has been 18 what do you do with it? 19 created, what do you do with them? 19 A. Well, we will evaluate that bundle of files for the 20 A. We either send them to a -- via email or through 20 contents, as far as are there course files, are there 21 traditional mail on a DVD or CD or sometimes we'll use 21 quizzes, are there grade book items, components for that 22 it -- or send it through the Internet. 22 course. 23 Q. Okay. And when you transmit the course files to 23 Q. Okay. Now, the information that is within those 24 the client, where are you? 24 files, is that information that was created by the 25 A. At our office. 25 client or created by the old vendor such as Moodle or Page 1428 Page 1430 1 Q. And are there also occasions on which you will move 1 Blackboard, whomever? 2 those files into the Desire2Learn system on behalf of 2 A. I wouldn't be able to answer that question. 3 the client? 3 Q. Okay and what do you do -- after you've evaluated 4 A. Yes, upon request. 4 the files in the bundle, what do you do with those 5 Q. Okay. And when you do transfer the files that you 5 files? 6 created, the computer files, when you transfer those, 6 A. We will go through what we consider to be the 7 where are you? 7 conversion process at that point where we're importing 8 A. At our office. 8 the bundle into our system and making sure that what was 9 Q. Another thing you mentioned was course conversions? 9 originally in the package is reflected in the 10 A. Yes. 10 Desire2Learn system. 11 Q. Okay. Can you explain to the jury what is meant by 11 Q. And then what's the next step? 12 a course conversion? 12 A. Quality assurance. 13 A. A course conversion is typically where it's moving 13 Q. Okay. And when you're doing the conversion work 14 from one learning management system into another 14 and the quality assurance work, where are you? 15 learning management system. 15 A. In our office. 16 Q. Okay. And, so, by way of example, have there been 16 Q. Okay. And after the quality assurance process is 17 occasions on which D2L converted materials from, say, 17 finished, what then happens with the files? 18 Moodle into D2L? 18 A. Typically those files are then sent to the client, 19 A. Yes. 19 back to the client, via an email or through a CD or DVD. 20 Q. Okay. And by the same token, have there been 20 In some cases a client might request we'll publish it 21 occasions on which D2L converted materials from a 21 directly into the Desire2Learn Learning Environment. 22 Blackboard system to a D2L system? 22 Q. So, we talked about some of the files that may be 23 A. Upon client request, yes. 23 included in there. Can you give us a couple of examples 24 Q. Okay. And when you're doing that kind of work, how 24 of the types of files that might be there? 25 do you receive the materials that are from the system 25 A. A Word document, a PowerPoint presentation, a PDF, 66 (Pages 1427 to 1430) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1505 Page 1507 1 A. No, it's not. 1 of our -- when a user is using our system, it's 2 Q. Can you enroll any users in a role category? 2 determining when they enter the drop-box tool, whether 3 A. No, you cannot. 3 they're referred to one of two areas to in the drop-box 4 Q. Can you operate the system with only a role 4 tool. 5 category? 5 One is the administrative page where, for 6 A. No. 6 example, an instructor or someone like that might get 7 Q. Now, sir, let me turn your attention to Plaintiff's 7 assignments to grade them and look at them and things 8 Exhibit 493. Do you have that in the binder in front of 8 like that; or if it sends you to the submission page 9 you, sir? 9 where, for example, a student might go and submit their 10 A. Yes, I do. 10 assignments. So, their comments for admin view is to 11 Q. And we've put that up on the screen. What is that 11 send you to the administrative view. 12 document, sir? 12 And the student view is a typical persona 13 A. This also appears to be source code from our 13 that we use, which is someone like a student who would 14 system. 14 submit an assignment. 15 Q. And, sir, do you see on the first page there is a 15 Q. Okay. Sir, let me turn to a different topic, if I 16 couple of references again to teacher and administrator 16 could, then; and that is: Where is Desire2Learn 17 and some other students? We're going to try and 17 headquartered? 18 highlight a couple of those. 18 A. We are headquartered in Kitchener, Ontario, Canada. 19 Do you see that it says "admin view," 19 Q. Okay. And does Desire2Learn perform installations 20 "student view"? 20 of its software, sir? 21 A. Yes, I do. 21 A. Yes, we do. 22 Q. And do those items in the source code mean, sir, 22 Q. Where does Desire2Learn perform those 23 that the sample roles have been hardcoded into your 23 installations? 24 system? 24 A. From our headquarters. 25 A. No, this doesn't have anything to do with the 25 Q. Okay. The headquarters in Canada, sir? Page 1506 Page 1508 1 sample roles. 1 A. Yes. 2 Q. Can you explain your answer to the jury, please? 2 Q. And can you tell, sir, how -- the jury how you 3 What does this have to do with -- 3 install software for a United States client from your 4 A. Well, firstly, those are comments in the code; so, 4 headquarters in Canada? 5 they're not actually source code. They're just 5 A. Sure. Most of our installation is done over the 6 comments. 6 Internet. So, we transfer the necessary files to a 7 Q. Can you explain what a comment is for the jury and 7 client's servers or computers; and then we would use a 8 why you would include that in the source code? 8 remote terminal software so we could basically access 9 A. Sure. Comments are basically -- a developer would 9 the desktop of those remote computers. And we would do 10 put comments in there so if they were to refer back to 10 an installation from our offices. 11 the code at a later date or some other developer was to 11 Q. And, sir, do you visit the United States when you 12 look at the code, then they might have a better 12 do that installation? 13 understanding of what the code does. So, they don't 13 A. No. There's no need to. 14 actually execute or function. They're just for 14 Q. Now, sir, the jury's heard some testimony about 15 reference for other developers. 15 hosted and self-hosted clients. Are you familiar with 16 Q. So, if you took those comments out of the code, 16 that distinction? 17 sir, would it still function in the same manner? 17 A. Yes. 18 A. Yes. 18 Q. Can you describe that distinction for the jury? 19 Q. Would it have any impact on the functioning of the 19 What's the difference between those two types of 20 product if you took the comments out? 20 clients? 21 A. No. 21 A. Sure. At Desire2Learn we refer to clients which 22 Q. And, sir, I think -- had you finished your answer 22 are hosted in our hosting facility as a hosted client. 23 about why this doesn't mean that sample roles are 23 But in some cases the client wants to host it 24 hardcoded or did you have more to answer? 24 themselves. They have their own data center. So, those 25 A. Well, this code is actually determining for a user 25 would be referred to as "self-hosted clients." 15 (Pages 1505 to 1508) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1509 Page 1511 1 Q. And, sir, the installation procedure you just 1 A. No. 2 described, is that for both hosted and nonhosted or one 2 Q. When did you first learn, on July 26th, that 3 or the other? 3 Blackboard had a patent? 4 A. The process would be almost identical. The hosting 4 A. I believe it was when Kenneth sent me this email in 5 center in Canada is in Toronto, which is an hour's drive 5 the exhibit, at 9:18 a.m. 6 from our headquarters; so, it's technically remote from 6 Q. And, sir, actually Exhibit 207 is a series or a 7 our headquarters, as well. So they would use a very 7 chain of emails; isn't that right? 8 similar process regardless. 8 A. That's correct. 9 Q. And, sir, when you're hosting the facilities, what 9 MR. DASSO: If we could go over to the second 10 is on your server up in Canada? 10 page -- I'm not sure if the jury has seen the whole 11 A. Our product. So, the code and all the compiled 11 email yet. But the bottom email there. If you could 12 code which would execute, the database, and any other 12 blow that up, Mark, please. Yeah, the whole email, 13 files that would be associated would be hosted on those 13 including "To," "From," and all the rest of that stuff. 14 servers. 14 BY MR. DASSO: 15 Q. And when the product operated and the code actually 15 Q. Is that the email you were referring to of 16 functioned, where would that take place? 16 Mr. Auger? Auger (pronouncing), excuse me. 17 A. On the servers in Canada. 17 A. Yes. 18 Q. Would any of that functioning of the code take 18 Q. And, sir, is that something from Mr. Chapman -- who 19 place in the United States? 19 the jury's already heard from -- and I think is back 20 A. No. 20 here -- to you? 21 Q. And, sir, is -- you also have support services? 21 A. Yes. 22 A. Yes, we do. 22 Q. And is there a timestamp on that email, sir? 23 Q. And can you tell the jury what you mean by "support 23 A. There is. It's 9:18 a.m. 24 services"? 24 Q. Okay. And do you see that there is a link there 25 A. Our support services is basically like a help desk. 25 that's referenced in Mr. Chapman's email? Page 1510 Page 1512 1 So, if our clients need assistance with technical 1 A. Yes. 2 difficulty or something like that, they would call our 2 Q. What was that link to? 3 help desk and get technical support. 3 A. I believe it was a press release on the Blackboard 4 Q. And where do you provide the technical support 4 site. 5 from? 5 Q. Okay. And, sir, was that the press release you 6 A. That's also out of our headquarters. 6 were referring to earlier in your testimony? 7 Q. Up in Canada? 7 A. Yes. 8 A. Yes. 8 Q. And was that the first time you had heard about 9 Q. Sir, now, let me turn to another topic, if I could; 9 Blackboard having a patent? 10 and that is an email that you wrote dated January 26, 10 A. Yes. 11 2006. Are you familiar with that email, sir? 11 Q. Now, sir, what did you do after Mr. Chapman's email 12 A. I believe so, yes. 12 was sent to you? 13 MR. DASSO: And I think, your Honor, that has 13 A. Once I received his email, I clicked on the link. 14 been marked as Plaintiff's Exhibit 207. 14 I skimmed the press release on the Blackboard Web site. 15 BY MR. DASSO: 15 Q. And did the press release itself have a copy of the 16 Q. We've put that up on the screen. Now, sir, let me 16 '138 patent that's at issue here? 17 go through this day if I could with you on July 26, 17 A. No. 18 2006. When you woke up that morning, did you know that 18 Q. Were you able to get that patent or review that 19 Blackboard had a patent? 19 patent just by looking at the press release? 20 A. No, I didn't. 20 A. No. 21 Q. Did you know that Blackboard had applied for a 21 Q. Did you take any steps, sir, to locate the patent 22 patent? 22 after Mr. Chapman sent you this email? 23 A. No. 23 A. I did. After I had briefly reviewed the press 24 Q. Did you know anything about any connection between 24 release, I did a Google search for the Patent Office, 25 Blackboard and any possible patents? 25 which I found a link to the U.S.P.T.O. Web site. 16 (Pages 1509 to 1512) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1525 Page 1527 1 A. No. 1 Q. Did they ever come to you and tell you that they 2 Q. Now, sir, did you know -- at the time you sent this 2 thought that the sample roles or default roles in your 3 email, had you been sued? Had Desire2Learn been sued? 3 product infringed your patent? 4 A. No. 4 A. No. 5 Q. Did you know your words were going to be put up on 5 Q. Did they ever come to you and ask you to change 6 the screen in a courtroom several thousand miles away? 6 your product or not to use that feature? 7 MR. MORISSEAU: Objection, speculation. 7 A. No, they didn't. 8 THE COURT: Well, sustained. I mean, unless 8 Q. Did they ever tell you that they were going to sue 9 you're asking him if he's a seer or soothsayer -- let's 9 you? 10 move on to some facts here. 10 A. No. 11 MR. DASSO: Okay. Fair enough, your Honor. 11 Q. Did Blackboard, sir, give you any warning 12 BY MR. DASSO: 12 whatsoever that they were going to sue you before they 13 Q. Sir, if you look up there, you see it says, "Well, 13 did so on the afternoon of July 26, 2006? 14 if this is enforced, there will be no other vendors in 14 A. No. 15 this space." Do you see that, sir? 15 MR. DASSO: Your Honor, I'll pass the witness 16 A. Yes. 16 at this time. 17 Q. And, sir, are you aware today that claims 1 through 17 THE COURT: Mr. Morisseau. 18 35 have been determined to be indefinite and that 18 CROSS-EXAMINATION OF JEREMY AUGER 19 Blackboard cannot assert that Desire2Learn infringes 19 CALLED ON BEHALF OF THE DEFENDANT 20 them? 20 BY MR. MORISSEAU: 21 A. Yes, I am aware. 21 Q. Good morning. 22 Q. And did you have that knowledge back in July of 22 A. Good morning. 23 2006? 23 Q. Now, sir, you were asked some questions about IMS. 24 A. No, I didn't. 24 Do you recall those questions? 25 Q. Would you have sent the same email back in -- 25 A. Yes. Page 1526 Page 1528 1 MR. MORISSEAU: Objection, your Honor. 1 Q. I believe you said you're on the board of directors 2 Speculation. 2 of IMS; is that correct? 3 THE COURT: Sustained. 3 A. That's correct. 4 BY MR. DASSO: 4 Q. As a member of the board of directors, have you 5 Q. Sir, had you even looked all the way through to 5 ever made a motion to the other board members for IMS to 6 claim 36 when you had that two minutes that you had to 6 claim that it owns the Blackboard patent? Have you ever 7 review the patent? 7 done that? 8 A. I don't think so. It was a very brief skim. 8 A. No, I haven't. 9 Q. Now, sir, I think we've talked about your sending 9 Q. How long have you been a member of the board of 10 of this email. At the time you sent this email, had you 10 directors? 11 been sued? 11 A. Since February 1st. 12 A. No. 12 Q. Now, I think you were questioned about the IMS 13 Q. When did you get sued? 13 specification 0.5. Do you recall those questions? 14 A. It was a few hours later that same day. 14 A. Yes. 15 Q. And how did you learn -- you, Jeremy Auger, learn 15 Q. And that specification was from the 1998 time 16 that Desire2Learn had been sued by Blackboard? 16 frame, April of '98? 17 A. I believe I was told by our in-house counsel. 17 A. I believe so. 18 Q. And, sir, before you were -- just so we're clear, 18 Q. In 1998 you were in college? 19 you learned about the patent that morning; and you were 19 A. Yes. 20 sued that afternoon. Is that right? 20 Q. You didn't have anything at all to do with IMS in 21 A. That's correct. 21 1998, did you, sir? 22 Q. Then, sir, before you were sued, did Blackboard 22 A. No, I didn't. 23 ever come to you and tell you that they believed you 23 Q. You had nothing to do with that specification, did 24 infringed the patent? 24 you, sir? 25 A. No. 25 A. That's correct. 20 (Pages 1525 to 1528) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1553 Page 1555 1 control that process. 1 and let's say the instructor wants to go in and do 2 Q. And why would a client want Desire2Learn to host 2 whatever they want to do. For U.S. clients that are 3 the software? 3 hosted by Desire2Learn, can you explain that process to 4 A. On the other hand, smaller clients don't have that 4 the jury? 5 personnel and those computers; so, they want 5 A. Very similarly. The instructor will go onto their 6 Desire2Learn to be able to offer that easy, worry-free 6 personal home computer, go to a Web browser, type in the 7 solution. Desire2Learn takes care of all of that for 7 Web site address for the Learning Environment, and 8 them. 8 access the quiz from there. The quiz is located at the 9 Q. Does Desire2Learn encourage clients to either 9 hosting facility. They can grade and put their comments 10 self-host or have Desire2Learn host the software for 10 on that quiz, and it's saved at the hosting facility 11 them? 11 again. 12 A. No. It's really their option, depending on what 12 Q. I want to kind of direct your attention a little 13 their expertise are, what they are most comfortable 13 bit to the implementation services that are offered by 14 with. They can go either way. 14 Desire2Learn. Do you have -- are you responsible at all 15 Q. Does Desire2Learn have server computers that it 15 for the implementation services and the installation of 16 uses when it hosts the information for clients? 16 the Desire2Learn Learning Environment program? 17 A. Yes. 17 A. In my various roles I do work with clients in the 18 Q. And can you tell the jury where those hosting 18 implementation services team to go through that 19 computers are physically located? 19 installation and implementation process. 20 A. Those computers are located at our hosting facility 20 Q. Can you give the jury a -- just a simple 21 in Toronto, Canada. 21 explanation of what it is that Desire2Learn's 22 Q. Does Desire2Learn have any computers that it used 22 implementation process involves? 23 to host any of the Learning Environment or Essentials 23 A. When a client signs on with Desire2Learn, we work 24 products in the United States? 24 with them to gather their requirements for the system. 25 A. No. 25 Typically we use a client workbook to find those. So, Page 1554 Page 1556 1 Q. Now, for Desire2Learn's U.S. clients that are 1 it's a number of questions about how they want the 2 hosted by Desire2Learn, where would the Learning 2 system configured. 3 Environment program reside? 3 We then set up the Desire2Learn software on 4 A. On that computer hardware in Toronto, Canada. 4 the hosting facility of their choice. 5 Q. And for those -- for Desire2Learn's U.S. clients 5 Q. Now, as part of the implementation process, do any 6 that are hosted by Desire2Learn, where would the 6 of the Desire2Learn implementation services team 7 Essentials program itself reside? 7 employees visit client sites? 8 A. Also in Toronto, Canada. 8 A. Yes, occasionally. 9 Q. Can you explain to the jury, if a U.S. client is 9 Q. And what do they do during those visits to the 10 using the Desire2Learn Learning Environment software -- 10 client sites? 11 can you kind of give the jury an explanation or a brief 11 A. It's really about getting to know the client, 12 description if a student user was taking an exam using 12 building the client relationship. It's very useful to 13 the Learning Environment program? 13 have face-to-face discussion with them to understand 14 A. Certainly. The student user would actually go onto 14 what they're looking for from the system, get to know 15 their personal home computer, go to a Web browser, type 15 them a little bit better, and gather the requirements 16 in the Web site address for the Learning Environment. 16 for the implementation process that will follow. 17 And there they are going to access the quiz which is 17 Q. During those times that the implementation service 18 actually located on the hosting facility servers. They 18 team members visit client sites, is the Learning 19 take that quiz, safety; and it is saved on the hosting 19 Environment program ever installed? 20 facility servers. 20 A. No. 21 Q. And would that differ if the U.S. client was 21 Q. During the time that the implementation services 22 self-hosted? 22 team people visit client sites, is the Essentials 23 A. The process is the same, yes. 23 program ever installed? 24 Q. Okay. Now can you explain for the jury the 24 A. No. 25 process -- now, after the student user takes the exam 25 Q. To your knowledge, has anyone on the Desire2Learn 27 (Pages 1553 to 1556) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1557 Page 1559 1 implementation services team ever installed the Learning 1 role? Can you explain to the jury, if their client 2 Environment software while being physically present in 2 wants to change the sample roles, what they can do? 3 the U.S.? 3 A. They can create any role that they want. Many of 4 A. No. 4 my clients create teaching assistant roles; so, that's a 5 Q. And what about for the Essentials software? 5 brand-new role with a whole set of permissions. Some 6 A. No. 6 clients have help desk roles or support desk roles or 7 Q. Now, you talked about the workbooks that you give 7 different -- even different styles of student roles. 8 to clients as part of the implementation process. Can 8 One student has email; the other students don't, for 9 you explain to the jury what type of information you are 9 example. 10 trying to gather with this workbook? 10 Q. Does Desire2Learn ever create roles during the 11 A. It really helps us to define the project. So, we 11 installation of the Learning Environment program? 12 want to know who the main contacts are at the clients, 12 A. No. 13 who we can get in touch with for different areas, what 13 Q. Does Desire2Learn create roles during the 14 their organizational structure is like. So, if their 14 installation of the Essentials program? 15 school uses "departments" and "semesters" or if they 15 A. No. 16 call them "terms" and "schools" or some other language, 16 Q. As part of the installation -- the standard 17 what they're looking for for training services, so just 17 installation, does Desire2Learn create courses for 18 basically information for the implementation and setup 18 clients? 19 process. 19 A. No, not for clients. We do create a test course 20 Q. And is that information gathered such that you guys 20 during our testing process. 21 can better serve your clients? 21 Q. Okay. Now, does Desire2Learn generate course files 22 A. Yes. 22 for teaching a course during the installation of the 23 Q. Is part of the installation of the Learning 23 Learning Environment program? 24 Environment software -- can you explain to the jury 24 A. No. Again, typically we'll create test files in 25 where that installation of the Learning Environment 25 testing; but none of those files are meant for being Page 1558 Page 1560 1 software takes place if it is for a U.S.-hosted client? 1 used for any sort of teaching or learning. 2 A. We do the installation from our offices. Because 2 Q. And what about for the installation of the 3 it is a Web-based system, we are able to access those 3 Essentials software? Is it any different? Does 4 servers remotely, so from our offices in Canada, 4 Desire2Learn create course files for teaching a course? 5 regardless of where that hosting facility actually 5 A. No. The same process is followed. 6 locates. 6 Q. Now, as part of the installation process, does 7 Q. So, it does not matter if it is a client that is 7 Desire2Learn create or provide user accounts for clients 8 hosted by Desire2Learn or a client that wants to be 8 when it installs a program? 9 self-hosted, the installation of the Learning 9 A. We do create the first account to allow clients to 10 Environment program is the same? 10 actually access it and then create their own accounts 11 A. Yes. 11 from there. 12 Q. There's been some discussion about sample roles. 12 Q. And does that differ for the Essentials program? 13 Do you have any understanding of sample roles and their 13 A. No. Again, it's the same. 14 use in the Learning Environment program? 14 Q. Now, you mentioned something about a testing of the 15 A. Yes, I have a basic understanding. 15 software that you do. Can you explain to the jury what 16 Q. And are clients required to use sample roles as 16 you're talking about? 17 part of the Learning Environment program? 17 A. It's called the "Sanity Test." So, it's basically 18 A. No, certainly not. We encourage them to modify, to 18 the last step in the installation process. We want to 19 customize, to make use of the system and its 19 make sure that the system is working correctly before we 20 flexibility. They are not required to use those as they 20 deliver it to the client. So, we finish the 21 are. 21 installation, go through some basic tests of the system; 22 Q. And do you know if clients modify or change these 22 and then it's available to the client. 23 sample roles? 23 MR. SPIVEY: Can you bring up Plaintiff's 24 A. Yes, certainly. 24 Exhibit 580, please? 25 Q. And what do they do -- do they select their own 25 28 (Pages 1557 to 1560) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1561 Page 1563 1 BY MR. SPIVEY: 1 Q. Now, when Desire2Learn employees are performing 2 Q. It's in your binder; and it will come up on the 2 this Sanity Test, where are they physically located? 3 screen, as well. 3 A. In our offices in Canada. 4 Ms. Frigula, is this document what 4 Q. Has there ever been an occasion where Desire2Learn 5 Desire2Learn uses with regard to the Sanity Test? 5 has ever performed the Sanity Test in the U.S.? 6 A. Yes. 6 A. No, not that I'm aware of. 7 Q. And this is -- sets out the procedures of how you 7 Q. And does it matter -- is there a difference between 8 go about testing the Learning Environment software once 8 the performance of the Sanity Test versus clients that 9 it's installed? 9 are hosted by Desire2Learn and those that are not hosted 10 A. Yes. 10 by Desire2Learn? 11 Q. Have you personally had occasion to perform a 11 A. No. They're the same. 12 Sanity Test after the Learning Environment program has 12 MR. SPIVEY: I pass the witness, your Honor. 13 been installed? 13 THE COURT: Mr. Bright? 14 A. Yes, I have. 14 CROSS-EXAMINATION OF DANA FRIGULA 15 Q. Can you tell the jury the types of things that you 15 CALLED ON BEHALF OF THE DEFENDANT 16 test with regard to the program after it's been 16 BY MR. BRIGHT: 17 installed? 17 Q. Good morning, ma'am. 18 A. Yes. We go through some of the basic tools; so, we 18 A. Good morning. 19 test to make sure you can send an email from the system 19 Q. Isn't it true that Desire2Learn provides default 20 and that you can receive one, that you create a content 20 roles of student, instructor, and administrator to its 21 topic, and that it can be viewed. For example, that you 21 U.S. clients? 22 can put something into your locker; and it's accessible 22 A. There are sample roles in the system, but I don't 23 there. So, those are some of the examples. It just 23 believe they are defaults. 24 goes through all of the basic tools. 24 Q. They are default roles, are they not? 25 Q. And you -- does the manual pretty much describe all 25 A. I believe they're sample roles. Page 1562 Page 1564 1 the procedures that you're going to do and what features 1 Q. And you've never used the word "default" to 2 and functions you're trying to test as far as whether 2 describe those roles? 3 the installation was complete? 3 A. I'm sure we've used the terms interchangeably. 4 A. Yes. 4 Q. Sure, you have. 5 Q. And would it be fair that you guys see this test as 5 You're familiar with the new client 6 a way for you to make sure that the program is properly 6 workbooks, are you not? 7 functioning before you turn it over to the client for 7 A. Yes, I am. 8 their use? 8 Q. And those new client workbooks say default roles 9 A. Yes. It's basically a test drive of the system to 9 are in the system, do they not? 10 make sure it's working. 10 A. I believe they do. 11 Q. And when you perform the Sanity Test, are courses 11 Q. Yes, they do. 12 established to be offered on line? 12 And you provide those to clients? 13 A. No. There's a test course created, but they're not 13 A. Yes. 14 meant to be used by students or teachers. 14 Q. And you're telling the truth to clients, are you 15 Q. Now, when you say "test course," what kind of 15 not? 16 information is in this test course? 16 A. Yes. 17 A. Literally there will be files that say this is a 17 Q. So, you're telling your clients that there are 18 test. They're very small files, just to make sure that 18 default roles in the system of student, instructor and 19 we can actually upload files. 19 administrator, correct? 20 Q. And during the Sanity Test, is a student file 20 A. That's what the workbook says, yes. 21 created by a student user in response to a course 21 Q. That's right. 22 assignment that's been posted up by a instructor of a 22 And, in fact, those roles are in the system 23 university? 23 when you give them to your clients, right? 24 A. No. There's no student users in the system for 24 A. There are roles in the system when I give them to 25 this test. 25 the clients, yes. 29 (Pages 1561 to 1564) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1589 Page 1591 1 way that individual users can be assigned to have 1 roles for a user in its marketing materials? 2 multiple roles? 2 A. Not to my knowledge. 3 A. Sorry. Can you repeat that? 3 Q. Okay. And a very similar question: Does 4 Q. I can. Is it your understanding that using the 4 Blackboard emphasize in its marketing materials the 5 Desire2Learn products, that clients can use the system 5 ability of its product to have multiple roles for a 6 in such a way that a user of the product can have 6 user? 7 multiple roles? 7 A. Not to my knowledge. 8 A. Yes. 8 Q. Okay. Do you recall any Blackboard discussion in 9 Q. Okay. And is the capacity of the system to have 9 any of its marketing materials of multiple predetermined 10 multiple roles something that is emphasized in 10 roles? 11 Desire2Learn's marketing materials? 11 A. No. 12 A. No. 12 Q. Do you recall any discussion by Blackboard in any 13 Q. Why not? 13 of its marketing materials with respect to multiple 14 A. There's many features and functionality, and that's 14 roles? 15 really just not a major one for us. 15 A. No. 16 Q. Okay. Ballpark how many features would you think 16 Q. If Desire2Learn is selling a product without 17 that the Learning Essentials product, for example, has? 17 multiple predetermined roles, do you think that would 18 A. Probably a few dozen. 18 hinder Blackboard -- I'm sorry. I'll back that one up. 19 Q. Okay. 19 If Desire2Learn is selling a product without 20 A. Well, a few dozen -- a few dozen tools and probably 20 multiple predetermined roles, do you believe that will 21 a couple hundred features. 21 hinder Desire2Learn's ability to compete in the 22 Q. Okay. So, there are various tools. For example, 22 marketplace for learning management systems? 23 email is a tool? 23 A. No. 24 A. Yes. 24 Q. And if Desire2Learn is selling a product that does 25 Q. So, for each of those tools, like email, there 25 not have the capacity to have multiple roles for a Page 1590 Page 1592 1 might be a number of features; is that correct? 1 single user, would Desire2Learn be able to sell that 2 A. Yes. 2 product in the market? 3 Q. And closely associated, you may be aware that an 3 A. Yes. 4 issue in the case is whether or not the D2L product has 4 Q. How do you know? 5 the capacity for multiple predetermined roles. Is the 5 A. Again, it's a system that has many features, many 6 use of multiple predetermined roles something that is 6 different tool sets. And that's just one small element; 7 discussed in D2L's marketing materials? 7 so... 8 A. No. 8 Q. Now, are you aware that until recently, when 9 Q. In your job as director of marketing for 9 Desire2Learn turned over products to its customers, that 10 Desire2Learn, are you responsible for keeping track of 10 those were frequently equipped with what's been referred 11 what competitors are doing with respect to their 11 to as sample roles? 12 marketing efforts? 12 A. Yes. 13 A. Yes. 13 Q. Okay. And are you aware that recently Desire2Learn 14 Q. Okay. And it's part of that job to watch 14 stopped using sample roles? 15 Blackboard's marketing efforts? 15 A. Yes. 16 A. Yes. 16 Q. Have you changed your marketing approach because of 17 Q. Okay. How do you keep informed with respect to 17 Desire2Learn's removal of the sample roles from the 18 Blackboard's marketing efforts? 18 product? 19 A. Through various means, anything from trade shows to 19 A. No. 20 public Web sites, brochures, advertising. 20 Q. Has Desire2Learn encountered any client resistance 21 Q. Okay. And have you been doing that during the 21 to the change of removing the sample roles from the 22 entire time you've been employed at Desire2Learn? 22 product? 23 A. Yes. 23 A. No. 24 Q. Okay. And does Blackboard emphasize the ability of 24 Q. Okay. We've talked a good bit here about features 25 Blackboard's product to have multiple predetermined 25 of the products themselves, the characteristics of the 36 (Pages 1589 to 1592) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1657 Page 1659 1 the United States Department of Justice in connection 1 A. Yes. If we could go to the very end -- 2 with the WebCT merger; and they're talking about 2 Q. Okay. And what does Blackboard find in terms of 3 competition in this letter, as well. 3 the number of features of the product? 4 Q. Okay. And, sir, what was the date of this letter? 4 A. So, this document shows that Blackboard has a total 5 A. This is January 26, 2006. And, here again, this is 5 of 353 features; and those features have been compared 6 after the patent has been issued. 6 to the feature sets of WebCT in the next two columns and 7 Q. Okay. And if we could turn your attention, sir, to 7 then Desire2Learn in the column second to the right. 8 page 2. And do you see in the top paragraph there a 8 And it shows here that Desire2Learn has 133 features. 9 description by Todd Gibby, G-I-B-B-Y, with Blackboard 9 The WebCT programs have about 150 or so, a little bit 10 with respect to Blackboard's variety of problems? 10 less. And then ANGEL is right in there at 145. 11 A. Yes. That first paragraph is talking about a 11 Q. Mr. Britven, why does the number of features tend 12 variety of problems. 12 to indicate that Dr. Ugone was wrong in his assumption? 13 Q. Okay. And -- 13 A. Well, what this document tells me is that you don't 14 A. If you're starting right (indicating) here, yes. 14 need 353 features to compete with Blackboard; and 15 Q. And do you see, sir, where Gibby -- I apologize for 15 clearly that's what this document is saying. 16 mispronouncing that ahead -- described the biggest 16 Desire2Learn only has 133 features based on this 17 problem that Blackboard had? 17 document alone. 18 A. Yes. It notes here that "the biggest problem, the 18 Q. And does this document include the patented feature 19 'competitive momentum' of D2L" -- 19 as one of the features that's discussed? 20 Q. Okay. And did you read -- 20 A. Well, I tried to find a patented feature in here -- 21 A. -- and The Sakai Project." 21 let's just go to that section. I think it's on page 12. 22 Q. Okay. And did you read through Exhibit 304, the 22 Yes. So, they have these various categories of feature 23 January 26th letter? 23 groups. If you could open that up just a little bit for 24 A. Yes, I have. 24 me. This is grouping Number 19, I believe. 25 Q. And did that letter mention the patent? 25 So, there is the 19; and that's the whole Page 1658 Page 1660 1 A. No. No, that one doesn't mention the patent, 1 group. And I thought I had something here. This is 2 either. It talks about the competition, doesn't mention 2 called the "role-based information directory." So, I'm 3 the patent. 3 looking for something in here that tells me that there 4 Q. Are there other reasons that you disagree with 4 is multiple roles, multiple predetermined roles, 5 Dr. Ugone's Assumption Number 2, that D2L cannot compete 5 something like that. And I thought I was getting close. 6 without using the patented invention? 6 I looked at this particular cluster, this 19. And at 7 A. Yes. I went to the Blackboard Web site. And I 7 the very bottom it says "multiple roles can be assigned 8 believe part of that's been produced in the form of a 8 to a user." I thought I had something. I thought I had 9 document. 9 found the patented feature in here. And it shows that 10 Q. I point you to Defendant's Exhibit 258. And can 10 Blackboard has that feature. 11 you tell us what Defendant's Exhibit 258 is? 11 But then we go over to the Desire2Learn 12 A. 258 is a document that also appears on the 12 column, there is no check mark. So, this document says 13 Web site, from what I can determine; and it compares the 13 Desire2Learn doesn't have that feature; so, I'm assuming 14 competition between Blackboard and some of its 14 that's not the patented feature. And if that's the 15 competitors. And that's what this is discussing. 15 case, I can't find it in here. I'm not a technical 16 Q. Okay. And does the document also have a checklist, 16 person, but I can't find this patented feature in this 17 if you will, of features of various products in the CMS 17 list of 353. 18 market? 18 Q. Mr. Britven, are there other reasons that you think 19 A. Yes, it does. It actually has quite a few pages of 19 that Dr. Ugone was wrong in his Assumption Number 2 20 features, and then there is a side-by-side comparison 20 about competing in the market without a patent? 21 between Blackboard, WebCT, Desire2Learn, and ANGEL 21 A. Well, Dr. Ugone was talking about features but 22 relative to all these various features. 22 features aren't the only thing that influence the sale; 23 Q. Is there a place in the document where Blackboard 23 and I think we just heard from Mr. McLeod on this very 24 touts up, if you will, the number of features in the 24 issue. 25 various products? 25 Q. Okay. And is it your understanding that customers 53 (Pages 1657 to 1660) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1713 Page 1715 1 Latin and Greek there, as well. It was a seminary 1 A. Yes. Obviously there is a little play on words 2 school. 2 because you "surf" the Internet. But Serf -- the 3 And then I did graduate work at Iowa State 3 spelling is actually S-E-R-F, and it stands for 4 University. My master's degree there is in music 4 server-side educational records facilitator. 5 theory. And I did my doctoral work there, as well. The 5 Q. And, Dr. Hofstetter, are you proud of your 6 PhD was also in music theory; although, I took a lot of 6 achievement in the development of Serf? 7 computer science courses. 7 A. Yes, I am proud of it. I'm still working with it. 8 So, my terminal degree is the PhD. 8 I love to work on it. I have many more ideas of things 9 Q. And, Dr. Hofstetter, where are you currently 9 to add to the invention. Absolutely, yeah. It's my 10 employed? 10 passion. 11 A. I'm currently employed at the University of 11 Q. And can you tell the jury how you actually came up 12 Delaware. 12 with the name Serf? 13 Q. And how long have you been with the University of 13 A. Well, I wanted to call it Serf because of the play 14 Delaware, sir? 14 on words. And I have to admit I've invented other 15 A. For 34 years. 15 technology products over the years and you tend to be 16 Q. And what department within the University of 16 working in a restaurant with a napkin with some 17 Delaware are you in? 17 colleagues and you're trying to figure out, since this 18 A. Well, I'm currently in the school of education; and 18 is the age of the acronym, how can we figure out what 19 there I coordinate the master's and doctoral programs in 19 the acronym is that will make this make sense as an 20 educational technology. 20 acronym. So, again, I was working more for the play on 21 Q. Dr. Hofstetter, do you currently teach any courses 21 words because you surf the Internet and I thought a 22 at the University of Delaware? 22 product name of Serf would be something easy to 23 A. Yes. I teach several courses there. 23 remember. 24 Q. And what courses do you teach? 24 Q. And when was the first version, Serf Version 1.0 25 A. Well, I teach advanced Web design; and I teach 25 available to the public? Page 1714 Page 1716 1 multimedia design. I teach multimedia literacy. I 1 A. It was available to the public in September of 1997 2 teach Internet literacy. I teach accessibility Web 2 when -- if you mean when could people actually buy it, 3 design and some new topics in Web design including Ajax 3 it was available for sale in September of 1997. 4 and CSS. So, I do a lot of teaching in technology. 4 Q. Was Serf ever used to demonstrate courses? 5 Q. And, Dr. Hofstetter, do you have any experience 5 A. I beg your pardon? I couldn't quite hear that. 6 with course management systems? 6 Q. Was Serf ever used to demonstrate courses? 7 A. Yes. I have some experience with them. 7 A. Yes. 8 Q. And what is that experience based on? 8 Q. And were those demonstrations free at that time? 9 A. Well, I've used many. I don't know how full an 9 A. Yes, they were. 10 answer you want. I'll just say I've used many. 10 Q. And was Serf being used to teach any courses at any 11 Q. Have you ever had occasion to develop a course 11 schools? 12 management system yourself? 12 A. Yes. 13 A. Yes, I have had the privilege to develop such a 13 Q. And when was that? 14 system. 14 A. Well, it began in the fall of 1997 when five 15 Q. And can you tell the jury what that system was 15 courses were taught using Serf at the University of 16 called? 16 Delaware. Students could be enrolled in more than one, 17 A. Yes. It's called Serf. It still exists. It's 17 and they would log onto Serf and could switch into any 18 called Serf. 18 of those courses. 19 Q. Okay. And when did you, sir, complete the very 19 Serf was also being used at a dozen other 20 first version of the Serf course management system? 20 colleges and universities that purchased the product 21 A. The first version of Serf was released in August of 21 from the University of Delaware, and that implementation 22 1997, and that was to deliver courses that went live in 22 was in that same fall semester of 1997. The schools 23 September of 1997. 23 were buying the Serf software as well as the Serf manual 24 Q. And is Serf an acronym for a name of the system 24 from the University of Delaware. 25 itself? 25 And I'm going to stop there with -- that was 67 (Pages 1713 to 1716) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1717 Page 1719 1 the activity of 1997, of the fall of 1997. Of course, 1 the roles in Serf. So, there's a sysadmin manual; and 2 the story goes on. 2 then there is an administrator manual. Then there's an 3 Q. Now, you made mention of a manual. Did you, 3 instructor guide, which is what you mentioned. Then 4 yourself, create a manual to explain how Serf 1.0 could 4 there is a teaching assistant guide, and then there is a 5 be used? 5 student guide. And those are the five preassigned roles 6 A. Yes, I did. I wrote a manual. 6 in Serf. 7 MR. SPIVEY: Could we put up Defendant's 7 Now, when this manual was bound and sold, it 8 Exhibit 5, please? 8 had tabs in it. So, there was a tab sticking out. If 9 MR. NADEL: Objection, your Honor. This is 9 you could imagine a -- well, as this binder has tabs. 10 not one of the documents attached to Mr. Hofstetter's 10 There was a tab for each subsection of the book, and the 11 declaration. 11 idea was that information was not repeated from manual 12 THE COURT: Bring it down, please. 12 to manual. 13 Where did this come from? Is it previously 13 What you would do if you were using the 14 disclosed? 14 manual, you would start with the section that 15 MR. SPIVEY: Yes, and the court has already 15 represented your role. For example, if you were the 16 ruled on the objection. 16 sysadmin, you would read the sysadmin part. But you 17 THE COURT: If it is a previously disclosed 17 would also read all of the other parts because you could 18 exhibit, I'm not sure what the objection is, then. 18 also play all of the other roles down the chain. 19 MR. NADEL: The objection is based on your 19 Q. And is Defendant's Exhibit 5 a true and correct 20 order regarding Mr. Hofstetter's testimony and his 20 copy of the manual as you created for the Serf 21 declaration. May I hand it up, your Honor? 21 version -- 22 THE COURT: Please. 22 A. Yes. 23 Okay, yes. Yeah, let me see that, please. 23 Q. -- 1.0 system? 24 MR. NADEL: It's on page 6. 24 A. Yes, except it was in color. Yeah, apart from the 25 THE COURT: And, just to be clear, I heard 25 lack of color, it is the same manual. Page 1718 Page 1720 1 you both say this, in fact, had been previously 1 Q. Dr. Hofstetter, did you ever have an occasion to 2 disclosed and is listed in the invalidity contentions? 2 make a public demonstration of the Serf Version 1.0 3 MR. SPIVEY: Yes, your Honor. 3 system? 4 MR. NADEL: Yes, your Honor. 4 A. Yes. I had had many public demonstrations of it. 5 THE COURT: Okay. Overruled, then. 5 Q. Do you recall making a demonstration of the Serf 6 MR. SPIVEY: Could you put up Defendant's 6 1.0 system in January of 1998, sir? 7 Exhibit 5, please? And can you blow up the portion that 7 A. Yes. 8 says "by Fred T. Hofstetter, please?" 8 Q. And what was that demonstration for, sir? 9 BY MR. SPIVEY: 9 A. Well, actually I gave several in January; so, I -- 10 Q. Dr. Hofstetter, is this the manual you were 10 I gave -- so, let's clarify which one you may be 11 speaking of with regard to Serf Version 1.0? 11 referring to. 12 A. Yes, it is. 12 Q. If you can just identify the demonstrations that 13 Q. And does this manual include all of the information 13 you gave in January, 1998, sir. 14 that would be needed for someone to use the Serf system? 14 A. Okay. I gave -- well, in January of 1998 was one 15 A. Yes. 15 of the demonstrations that I gave working with PBS. PBS 16 Q. And does this manual consist of a instructor's 16 made the Internet literacy course, which was the first 17 guide? 17 course developed with Serf, they made it be one of their 18 A. Well, it consists of actually six parts. The first 18 courses. And in January I conducted the first of a 19 part of it is extremely brief. It contains an overview 19 series of nationwide -- what are now called "Webinars." 20 of the entire document, and it contains the license that 20 The people would be on the telephone and they 21 the institutions bought when they would pay for Serf 21 would also be at their PC. And I would create Serf 22 during that fall semester of 1997. So, the first couple 22 logins for all of the people from all around the country 23 of pages is just the overview to the document and the 23 who were part of that session. And then as I would 24 license. 24 conduct the workshop, they would follow my instructions, 25 Then there are five manuals, one for each of 25 they would cash in their ticket, they would log into 68 (Pages 1717 to 1720) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1725 Page 1727 1 what was the date of -- this last one was -- what was 1 A. Yes, it is. 2 the date of that last one that you just put up? 2 Q. Okay. Dr. Hofstetter, do you recall making a -- 3 MR. SPIVEY: He authored it in May, 1999. 3 presenting a paper in 1997 to the A-A-C-R-A-O, sir? 4 THE COURT: Okay. That's not a year prior to 4 A. Yes. That would be AACRAO (pronouncing). Yes, I 5 June, 1999; so, there's my question. Why are we taking 5 remember that very well. 6 time with that instead of focusing in -- I mean, 6 Q. And can you explain to the jury what AACRAO is, 7 shouldn't you be focusing in on those things that are 7 sir? 8 more than a year prior to June, 1999? 8 A. Well, I'll try. It's the American Association of 9 MR. SPIVEY: Understood, your Honor. My -- 9 Collegiate Registrars and Administrative [sic] Officers. 10 THE COURT: Well, I mean, if I'm missing a 10 Q. Do you recall when you presented that paper? 11 point, if there's some piece of law I've missed here, 11 A. Yes. I presented that paper in August of 1997 at 12 tell me; but -- 12 the AACRAO conference in Denver, Denver, Colorado. 13 MR. SPIVEY: If I may, the simple thing is 13 MR. SPIVEY: If you would put up Defendant's 14 the document itself corroborates Dr. Hofstetter's 14 Exhibit 147. 15 testimony about the Serf system being in public use in 15 BY MR. SPIVEY: 16 1997; and the document, in fact, says that. 16 Q. Is this the paper that you presented at the AACRAO 17 THE COURT: Okay. All right. That's what 17 conference in 1997, sir? 18 I'm -- all right. So, you're going to get into that and 18 A. Well, this is the title page of the book that 19 then move on to something else? 19 AACRAO published based on the conference and containing 20 MR. SPIVEY: Absolutely. 20 the paper. So, what you're showing now is actually the 21 THE COURT: All right. 21 title page of the published book from the conference in 22 MR. SPIVEY: But I still have to get the 22 which my paper appeared. 23 document in itself, your Honor. 23 MR. SPIVEY: Can you go to -- I think it will 24 THE COURT: Okay. The date just struck me, 24 be maybe the fourth page in. There it is. 25 and it suddenly -- 25 Page 1726 Page 1728 1 MR. SPIVEY: Understood. 1 BY MR. SPIVEY: 2 THE COURT: That's why the question came up, 2 Q. Is that the article that you presented in 1997, 3 was why are we -- what did that have to do with 3 sir, at the AACRAO conference? 4 anything? 4 A. Yes. Yes, that's it. 5 All right. We're in recess, then, until 5 Q. And, Dr. Hofstetter, was the article that you 6 4:00. 6 talked about at the AACRAO conference -- was that 7 (Recess, 3:49 p.m. to 3:59 p.m.) 7 publicly available, sir? 8 (Open court, all parties present, jury 8 A. Yes. It was available as a handout at the 9 present.) 9 conference. I had copies of it available and passed it 10 THE COURT: Go ahead, counsel. 10 out to anyone who wanted a copy immediately after the 11 BY MR. SPIVEY: 11 presentation. 12 Q. Dr. Hofstetter, we put back up on the screen for 12 I created a Web site based on this paper 13 you Defendant's Exhibit 6. Do you recall authoring this 13 which is at www.udel -- UDEL, that stands for University 14 paper called the "Three Waves of the Serf Web-based 14 of Delaware -- .edu/serf, S-E-R-F. 15 Teaching and Learning Environment"? 15 And then the paper was published formally as 16 A. Yes. This was published in College & University 16 chapter 4 of this book -- of the book from AACRAO, that 17 Media Review. 17 AACRAO published shortly after the conference. 18 Q. Okay. Does this paper talk about the history of 18 Q. Now, the papers that you handed out, did people 19 when Serf was created and first used, sir? 19 that asked you for it have to pay for a copy of the 20 A. Yes, it does. It talks about the three waves, 20 paper? 21 again playing on this metaphor of "surf." The first 21 A. No. The paper was totally free. I believe there 22 wave was 1997. The second wave was 1998. The third 22 was a charge for the book, but the paper was free. 23 wave was 1999. 23 Q. And when you distributed and gave out copies of the 24 Q. And, Dr. Hofstetter, is that article a true and 24 article, did the recipients of those articles have to 25 accurate copy of the article that you drafted, sir? 25 sign a confidentiality agreement or anything like that, 70 (Pages 1725 to 1728) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1729 Page 1731 1 Dr. Hofstetter? 1 Q. Good to meet you. 2 A. No, they did not. I view this work as my 2 When Mr. Spivey asked you if you had spoken 3 contribution to the continuance of the scholarly 3 to counsel from both sides, I'm the counsel from our 4 enterprise, and I dedicate this work to the public. 4 side who you spoke to, right? 5 Q. Dr. Hofstetter, do you have any recollection of 5 A. Yes, that's correct. 6 whether the University of Delaware ever sold the Serf 6 Q. Okay. I just have a few questions for you today, 7 Version 1.0 system, sir? 7 sir. You've provided documentation and other 8 A. Yes. Yes. The University of Delaware did sell it 8 information to Desire2Learn's attorneys in this case; is 9 multiple times, beginning in the fall of 1997. We have 9 that right? 10 the financial records documenting those sales and the 10 A. No, that's not correct. 11 income therefrom. 11 Q. Did you sign a declaration -- 12 Q. Dr. Hofstetter, are you still actively developing 12 A. What do you mean by "other"? 13 and working on later Serf versions? 13 Q. Well, did you provide documentation to 14 A. Yes, I am. I'm actively working on Serf Version 5 14 Desire2Learn's attorneys? 15 and hoping to roll that out during the coming year or 15 A. I provided the attachments to my sworn declaration. 16 two. 16 Q. That's what I'm asking about. 17 Q. Dr. Hofstetter, are you being paid for your 17 A. Yes, I did -- I did provide those, yes. 18 testimony today, sir? 18 Q. Any other information that you provided to them? 19 A. I'm sorry. I couldn't hear that. 19 A. No. There's no other information. 20 Q. My question is: Are you being paid for your 20 Q. Now, you said that Serf still exists; is that 21 testimony today? 21 correct? 22 A. No, absolutely not. I'm not being paid at all. 22 A. Yes, absolutely. 23 I'm away from my family, my little autistic son. I am 23 Q. Did you provide them with a copy of your Serf 24 paying a fortune for a rental car -- 24 software? 25 THE COURT: Okay. Sir, sir, sir -- 25 A. No, I did not. Page 1730 Page 1732 1 THE WITNESS: I'm sorry. 1 Q. Did they ever ask for a version of the Serf 2 THE COURT: -- I know you can go on and on to 2 software? 3 show how -- 3 A. No, they did not. 4 THE WITNESS: I'm sorry. 4 Q. Do you still have the Serf 1.0 software that was 5 THE COURT: -- sorry we should all be for 5 available in 1997? 6 you. We don't need that right now. Okay? 6 A. Yes, I do. 7 THE WITNESS: Yes. Thank you, your Honor. 7 Q. So, if somebody wanted to look at it, if we wanted 8 I'm sorry. 8 to look at it today, you could bring it in here and show 9 THE COURT: You can answer the question. 9 us? 10 THE WITNESS: I apologize. 10 A. Well, to get it here today, I would need help from 11 THE COURT: Go ahead, counsel. 11 our campus. 12 BY MR. SPIVEY: 12 Q. I understand that but -- 13 Q. Dr. Hofstetter, have you talked to counsel for both 13 A. But it is available, yes. 14 sides during the time this litigation was going on, sir? 14 Q. Okay. Did you ever show it to anybody else from 15 A. I'm sorry. I was distracted. I... 15 Desire2Learn besides their attorneys? 16 Q. My question is: Have you talked to counsel for 16 A. I didn't show it to them. 17 both sides during the time this litigation was going on, 17 Q. Have you ever met Dr. Simmons, sir? 18 sir? 18 A. Yes. I met Dr. Simmons last night. 19 A. Yes, I have talked to counsel from both sides. 19 Q. And did you show Dr. Simmons the Serf 1.0 software? 20 MR. SPIVEY: Okay. Pass the witness. 20 A. No, I did not. 21 CROSS-EXAMINATION OF FRED HOFSTETTER 21 Q. What about any other versions of Serf? Did you 22 CALLED ON BEHALF OF THE DEFENDANT 22 show that to him? 23 BY MR. NADEL: 23 A. No. I have not shown him any versions of Serf, and 24 Q. Good morning, professor. I'm Michael Nadel. 24 we have not discussed Serf. 25 A. It's nice to meet you, Mr. Nadel. 25 Q. Is it possible to access Serf on the Internet? 71 (Pages 1729 to 1732) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1737 Page 1739 1 Q. It says "The Student Side of Serf," right? 1 letter tabs and one of them is Tab B. 2 A. Right. 2 A. Okay. Just a -- I'm sorry. Where are we going in 3 Q. Okay. And then flip ahead to page 130. And it 3 this binder? 4 says "The Instructor Side of Serf," right? 4 Q. Do you see the tab that says "D2L 44"? 5 A. Yes, uh-huh. That's correct. 5 A. Yes. 6 Q. So, if a student logged in, the student saw the 6 Q. Do you see there are some letter tabs behind that? 7 student side, right? 7 A. Yes, I do. 8 A. Yes, that's correct. 8 Q. Do you see Tab B? 9 Q. And if an instructor logged in, the instructor saw 9 A. Yes, I do. 10 the instructor side, right? 10 Q. Okay. You're familiar with this document, aren't 11 A. Well, that would depend on what view the instructor 11 you, sir? 12 chose because the instructor could role-play a student. 12 A. Yes, I am familiar with this. This is an email 13 Q. When the instructor logged in, before they did any 13 document regarding that first PBS-sponsored workshop of 14 role-playing, would they be seeing the instructor side 14 Serf. Yes. That was in January, yes. 15 or the student side? 15 Q. Okay. And you wrote this document, right? 16 A. Well, they would be seeing this control panel that 16 A. No, I did not. 17 you see at the bottom of page 130; and it gives them 17 Q. The part that says "Serf Instructor Workshop by 18 their choice, as you can see, of whether they want to be 18 Fred T. Hofstetter, University of Delaware"? 19 a student or an instructor. 19 A. Yes, I did write that part. 20 Q. Okay. Let's look at page 132. 132 says "The 20 Q. You wrote that part, okay. 21 System Side of Serf," right? 21 And this is a workshop for using Serf, right? 22 A. Yes. That's the sysadmin framework. 22 A. Yes, that's correct. 23 Q. So, to see these different sides of Serf, different 23 Q. Okay. And the first page is called "Getting 24 logins were required, right? 24 Started"; is that right? 25 A. Well, not entirely. When the -- you'll notice that 25 A. Yes, that's correct. Page 1738 Page 1740 1 there is a panel called "Change Levels." When a 1 Q. Okay. And Step 2 is "log on as an instructor"; is 2 sysadmin would choose either administrator or instructor 2 that right? 3 or assistant or student, their screen would change; and 3 A. Yes, that's correct. 4 they would get the control panel for that role. So, the 4 Q. Okay. And then if you look at the next few steps, 5 sysadmin was able to assume the roles of all the 5 am I correct in saying that the instructor does some 6 predefined roles beneath the sysadmin in the chain and 6 things like he inspects the syllabus and he looks at a 7 the administrator similarly was able to assume the roles 7 detailed index of the courses? Is that right? 8 and play the roles of those below them in the chain. 8 A. Yes, that's correct. 9 And at a small institution, the sysadmin could perform 9 Q. Okay. And then in Step 8 and 9, the instructor 10 all of the roles -- 10 creates a student; is that right? 11 Q. And we'll come back to that about the role 11 A. That's correct. 12 switching. But do I do want to ask you: If a student 12 Q. Okay. And then it says "Becoming a Student." Do 13 is logged in, they can't see any other side but the 13 you see that, sir? 14 student, can they? 14 A. Yes, I do. 15 A. That's correct. 15 Q. Okay. And then we get to Step 10. Can you read to 16 Q. You have to log out and then log back in as an 16 the jury the first sentence of Step 10? 17 instructor, right? 17 A. Yes. It says: "Click the Log Out button to log 18 A. Students don't have instructor logins. 18 out." 19 Q. If they did have an instructor login, they would 19 Q. So, you've told the user who was logged in as an 20 have to log out and then log back in with an instructor 20 instructor to log out; is that right? 21 login. 21 A. Yes, that's correct. 22 A. In the entire history of Serf, I have never been 22 Q. Okay. And then look at Step 11 and read to the 23 asked to create an instructor login for a student. 23 jury the first sentence of Step 11. 24 Q. Okay. Well, let's look at the tab here that's 24 A. It says: "Log on as the student you just created." 25 marked "D2L 44" and then behind that there are some 25 Q. So, now the instructor has created a student and he 73 (Pages 1737 to 1740) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1741 Page 1743 1 has logged on as the student; is that right? 1 right. 2 A. Yes. That's in order that the instructor can see 2 A. Sure. 3 how the student views the assignments, the grade book, 3 Q. We logged in as an instructor, and then we had to 4 et cetera. 4 log out. And then we had to log in as a student, and 5 Q. Right. So, for the instructor to see how the 5 then we had to log out. And then we had to log in as an 6 student views those things, your instruction was for the 6 instructor, and then we had to log out. And then we had 7 instructor to log out and then log back in as a student, 7 to log in as a student, and then we had to log out. And 8 right? 8 then finally, sir, we had to log back in as an 9 A. Well, that's in order -- not to view. If the -- if 9 instructor; is that right? 10 the instructor wants to see how to submit, then the 10 A. Yes. This is -- this is demonstrating to the 11 instructor needs to be logged on as a student. But if 11 instructor that only the student has access to the grade 12 the instructor wants to view, then the instructor 12 and the feedback that the instructor has provided to 13 doesn't need to log out. The instructor can use the 13 that student. 14 "view" option that I showed you earlier on the control 14 Q. Thank you. 15 panel. 15 A. The instructor can also see those things from the 16 Q. Right. But your instruction here was for the 16 instructor grade book. 17 instructor to log out, right? 17 Q. Right. I think we're going to -- 18 A. Yes, that's correct. 18 A. What this is demonstrating is -- 19 Q. And then log back in. 19 THE COURT: Sir, there's no question on the 20 A. Yes, that's correct. 20 floor right now. 21 Q. Okay. And then look at Step 18. What does Step 18 21 THE WITNESS: Okay, sorry. 22 say? 22 THE COURT: If you'll just answer the 23 A. It says: "Log out, then log back on as an 23 questions -- 24 instructor." 24 THE WITNESS: Yes, sir. 25 Q. And these student logins and the instructor logins, 25 THE COURT: -- the other attorneys will be Page 1742 Page 1744 1 these are different user names and passwords, right? 1 able to follow up. Okay? 2 A. Yes, they are. 2 THE WITNESS: Yes, sir, thank you. 3 Q. Okay. And after Step 18 we're using the grade 3 BY MR. NADEL: 4 book, correct? 4 Q. And we are going to follow up on that. Why don't 5 A. Yes. 5 we turn to Tab 5 in the binder, D2L 5. 6 Q. And Step 21 says: "Click the Grade Me option to 6 And you wrote this, professor, right? This 7 grade the individual assignment." Is that where the 7 is the manual for Serf 1.0? 8 instructor is grading the assignment? 8 A. This is the -- I mean, the first page I'm -- I'm 9 A. Yes. That's where the instructor is grading an 9 sorry. That's not what I'm seeing. What I'm seeing -- 10 individual assignment, yes. 10 you said it's D2L 5? 11 Q. Okay. And then look at Step 24 and read that one 11 Q. That's correct. 12 to the jury. 12 A. D2L 5 -- the first page is 101 Internet Literacy 13 A. It says: "Log out, then log back in as the student 13 Jumpstart, in the binder you gave me. 14 whose assignments you just graded." 14 Q. I must have given you a bad binder, sir; so, why 15 Q. Okay. And then the student does some things. 15 don't I give you mine. 16 You're logged in as the student now, right? 16 A. That's no problem. It reminds me of the room 17 A. That's correct. 17 numbering in our building. 18 Q. Okay. The student does some things, and then we 18 THE COURT: Okay. Sir, let's just focus on 19 come to Step 28. Can you read Step 28 to the jury? 19 the questions. Okay? 20 A. Yes. It says: "Log out, then log back on as an 20 MR. NADEL: May I approach, your Honor, to 21 instructor." 21 give the witness a better binder? 22 Q. Okay. So, we've gone through the first 28 steps of 22 THE COURT: You may. 23 the workshop, professor. 23 BY MR. NADEL: 24 A. Uh-huh. 24 Q. Here you go. 25 Q. Try to follow me here and tell me if I've got this 25 A. Thank you. 74 (Pages 1741 to 1744) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1749 Page 1751 1 you. 1 viewing through the eyes of a student. This is an 2 THE WITNESS: Okay. 2 administrator viewing through the eyes of a student. 3 THE COURT: Otherwise, we'll be here for 3 Q. Okay, fair enough. Could you read the last bullet? 4 days. 4 A. Yes. So, the last bullet in the first section or 5 THE WITNESS: All right. I -- okay. 5 the second section? 6 A. "When a user logs on, Serf checks the database to 6 Q. In the first section, the one that starts "To view 7 determine what role the user plays in the Serf 7 the complete syllabus." 8 hierarchy. When a student logs on, for example, Serf 8 A. Okay. It says: "To view the complete syllabus, 9 displays a very simple screen containing the student 9 click the Syllabus option. Since you are an 10 options. When a system administrator logs on, on the 10 administrator, Serf will print warnings at the end of 11 other hand, Serf displays a more comprehensive screen 11 the syllabus if the calendar has too few or too many 12 consisting of many more options. You should be happy to 12 dates on it; students never see these warnings." 13 know that when you log on as an instructor, you will get 13 Q. So, when it says "Viewing a Course Through the Eyes 14 a set of instructor options that have been specifically 14 of a Student," the administrator is actually seeing 15 designed to make the role of the instructor easy to 15 warnings that the student will never see. That's what 16 learn and pleasurable to fulfill." 16 this says, right? 17 BY MR. NADEL: 17 A. Yes. Those are warnings for the author. 18 Q. So, when a user logs on, the system looks to see 18 Q. Now, professor, you've got your own company called 19 what kind of role they have, right? 19 "Serfsoft"; is that right? 20 A. Yes. 20 A. It's a start-up company, yes. It's part of the 21 Q. And you see one thing as an administrator and one 21 University of Delaware's Technology Corporation. It's a 22 thing as an instructor. That's what this says, isn't 22 start-up under that. 23 it? 23 Q. Okay. And Serfsoft has a Web site, doesn't it? 24 A. Well, what happens is -- 24 A. Yes, it does. 25 Q. That's what this says, isn't it, sir? 25 Q. And you maintain that Web site, don't you? Page 1750 Page 1752 1 A. Can I take a minute to reflect on whether it says 1 A. Yes, I do. 2 that, or do you just want a quick "yes"? I mean, I'm 2 Q. And on the Web site, there is a place to click and 3 not sure. I don't want to slow things down, but I want 3 it's called "How do I purchase Serf?"; is that right? 4 to give accurate answers. 4 A. Yes, that's correct. 5 Q. Okay. I want to make sure you give accurate 5 Q. And if someone clicks on that "How do I purchase 6 answers, and you've been wanting to talk about switching 6 Serf?" they get a page called "Serf Pricing and Ordering 7 courses and seeing things through the eyes of the 7 Information"; is that right? 8 student. So, why don't we turn to page 41; and we'll 8 A. Yes, that's correct. 9 look at that. 9 Q. Is the Serf product that you're selling today like 10 A. Okay. Okay. Page 41 of -- 10 Blackboard and Desire2Learn in that a user can get all 11 Q. Of the page, same document that we're looking at. 11 their courses and all their roles with one user name and 12 A. Okay. 12 password, or is it like the 1997 technology? 13 THE COURT: And just for the record, counsel, 13 A. This isn't a yes or no. May I answer this without 14 you might state again which document it was. 14 a yes or no? I mean, to me, that's not a yes-or-no 15 MR. NADEL: For the record, sir, we're 15 question. 16 looking at Defendant's Exhibit 5; and this is page 41. 16 Q. Okay. Well, let me try to make it a yes-or-no 17 BY MR. NADEL: 17 question -- 18 Q. You've been talking about, sir, how an instructor 18 A. Then I can answer it. 19 can see the course through the eyes of a student. Is 19 Q. Let me try to make it a yes-or-no question. 20 this what you're referring to? 20 A. Okay. 21 A. Yes, that's correct. 21 Q. Is the technology that you're selling today like 22 Q. Could you please read the last bullet there under 22 Blackboard and Desire2Learn in that it has the 23 "Viewing a Course Through the Eyes of a Student"? 23 functionality that a single user can have all their 24 A. Well, let me just point out that we're in the 24 courses and all their roles using a single user name and 25 administrator guide and your question said instructor 25 password? 76 (Pages 1749 to 1752) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1753 Page 1755 1 A. Well, in practice, yes. We don't have students 1 A. Okay. 2 serving instructor roles. In practice the answer to 2 Q. And are you there, sir? 3 that is yes. You simply don't have -- I mean, I've 3 A. Yes, I am. 4 never had -- I have tens of thousands of students using 4 Q. I want to go back to the full paragraph there which 5 Serf, and I've never had a request to create an 5 is under your name with the University of Delaware. Can 6 instructor login for one of them. 6 you just read the -- I'll have the -- 7 Q. Okay. Then you've got a dog in this fight, don't 7 MR. SPIVEY: Can you blow that up? Right 8 you, sir? You would benefit personally if the 8 there. 9 technology that we're talking about today weren't 9 A. Yes. It says: "This workshop is presented as a 10 patented; isn't that right? 10 series of progressive exercises. As you work through 11 A. I don't believe so. The reason I didn't come -- 11 the following sequence of steps with your seminar 12 well, I don't want to -- I can explain more about that, 12 leader, you will learn how to log on as an instructor to 13 but I don't want to do so at the risk of giving too much 13 the Internet Literacy course, view the syllabus, use the 14 information. 14 CD-ROM option to play the 'Show-Me' movies from the 15 Q. Okay. 15 Internet Literacy CD, add students to the course roster, 16 A. Do you want to know why? 16 use the Serf grade book, register your email address, 17 Q. I'll leave it to the other side -- 17 modify the course to meet local needs, create a local 18 THE WITNESS: I'm sorry, your Honor. 18 version of the Serf Student Jumpstart pamphlet, and 19 BY MR. NADEL: 19 export final grades at the end of the course." 20 Q. -- to bring out why. 20 BY MR. SPIVEY: 21 THE COURT: Look, hold on. Now, sir, you are 21 Q. Sir, was it the purpose of the workshop to have 22 not being respectful to the court when you try to hem 22 somebody learn how to use the complete system, sir? 23 and haw around in front of the jury -- 23 A. Yes, that was the purpose. 24 THE WITNESS: I'm sorry, your Honor. 24 Q. When Serf 1.0 came out in 1997, sir, was a student 25 THE COURT: -- and try to hint that there 25 able to log in to Serf once and have access to all of Page 1754 Page 1756 1 might be other information that you would love to get 1 the courses that the student was enrolled in? 2 out if the mean old judge just wouldn't stop you from 2 A. Yes. 3 doing that. 3 Q. Thank you. 4 THE WITNESS: I'm not -- 4 MR. SPIVEY: No further questions, your 5 THE COURT: Now, sir, you are an educated 5 Honor. 6 man. You are a professor at a college. 6 RECROSS-EXAMINATION OF FRED HOFSTETTER 7 THE WITNESS: Yes, sir. 7 CALLED ON BEHALF OF THE DEFENDANT 8 THE COURT: Do not play games with me. 8 BY MR. NADEL: 9 Answer the questions. You've heard my rulings. 9 Q. Professor, are you familiar with a situation where 10 THE WITNESS: Yes, sir. Yes, sir, I 10 a single individual is both a teacher of one course and 11 understand. 11 a student of another course? 12 THE COURT: Go ahead, counsel. 12 A. We have never had that happen. 13 MR. NADEL: I'll pass the witness, your 13 Q. At the University of Delaware are there graduate 14 Honor. Thank you, sir. 14 students who are teaching assistants and also students 15 THE WITNESS: You're welcome. 15 in graduate-level courses? 16 REDIRECT EXAMINATION OF FRED HOFSTETTER 16 A. Yes, and we accommodate that by putting -- if a 17 CALLED ON BEHALF OF THE DEFENDANT 17 student -- if a teaching assistant is serving as a 18 BY MR. SPIVEY: 18 teaching assistant in a course, that teaching assistant 19 Q. Dr. Hofstetter, if I could just turn your attention 19 is put on the student roster for that course in Serf; 20 to -- I think it is Exhibit B in the binder that 20 and that's how the -- and by being placed on the student 21 Mr. Nadel gave you. 21 roster in Serf, that's how the teaching assistant 22 A. Exhibit B? 22 becomes associated with that course. 23 Q. Yes, sir. 23 Q. You're talking about having somebody who is a 24 A. Okay. I'm looking for it. So, this is D2L 44 B? 24 teaching assistant be associated as a student in the 25 Q. Yes, sir. 25 same course, right? 77 (Pages 1753 to 1756) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1777 Page 1779 1 Q. The jury's heard about the -- just heard about the 1 1990s? 2 Serf system. Does the Serf system show up on this? 2 A. Yes. In fact, as probably a lot of people 3 A. I do not see the Serf system on this list even 3 remember, the automatic teller machines began to become 4 though it was available at that time. 4 common in the 1970s. 5 Q. Now, the second point, sir, was that role-based 5 Q. And this, sir, also talks about using roles for 6 access control was well-known in the prior art; is that 6 medical systems for doctors, nurses, and clinicians. 7 right? 7 Was that also something that was being done in the 8 A. Absolutely. As you can tell from all of these 8 1990s? 9 documents and patents, there were numerous articles, 9 A. Yes. 10 patents, these type things on role-based access control 10 Q. And was it well known in the 1990s, sir? 11 as prior art. 11 A. Yes. 12 Q. And, sir, did you look at those documents and pull 12 Q. And it also talks about other things, like 13 out sections that you thought were particularly relevant 13 researchers and social workers. Were those uses also 14 to our discussion today? 14 known, sir? 15 A. Yes, I did. 15 A. Yes. 16 MR. DASSO: If we could go to the next slide, 16 MR. DASSO: Could you turn to the next one, 17 which is Exhibit 180. 17 Exhibit 140? 18 BY MR. DASSO: 18 THE COURT: All right. Counsel, we're going 19 Q. Could you tell the jury what Defendant's 19 to go ahead and break for the evening. 20 Exhibit 180 is? 20 Ladies and gentlemen, would any of you have a 21 A. Well, 180 was from a professional conference, a 21 problem, as we were doing last week, of being back here 22 computer security application conference. And it was 22 at 8:45 in the morning instead of 9:00? 23 published by three gentlemen at the National Institute 23 All right. We'll start at 8:45. Again, 24 of Standards and Technology. 24 please remember my instructions. Don't discuss the case 25 Q. And what was the date of Exhibit Number 180, sir? 25 with anybody. Don't let anybody discuss the case with Page 1778 Page 1780 1 A. Okay. The date of Exhibit 180, as we see up there, 1 you. Should anybody try to approach you or influence 2 was 1995. Let me -- I'm going to flip over to that so I 2 you or discuss the case with you, don't talk to them. 3 can see a little better. The date on Exhibit 180 was 3 Just get their name and report it to the court security 4 December 11th through 15th, 1995, the date of the 4 officer in the morning; and I'll see you here tomorrow 5 conference. 5 at 8:45. 6 MR. DASSO: And, sir, if we could go to the 6 (The jury exits the courtroom, 5:00 p.m.) 7 next slide. 7 THE COURT: Okay. Mr. Dasso, I thought you 8 BY MR. DASSO: 8 said something about you wanted to make an offer of 9 Q. Does Exhibit 180 talk about the idea of using roles 9 proof. Was there some other kind of items to be taken 10 in connection with computer systems? 10 up? The court reporter wants to know. If we're going 11 A. Yes. And as I mentioned, roles were very common; 11 to be here a long time, she wants a break. If it's a 12 and as it mentioned here, they can include the teller or 12 short time, we'll just go ahead and do it. 13 loan officer at a bank or the doctor, nurse, or 13 MR. DASSO: Your Honor, I think the primary 14 clinician in a hospital. And then the -- going on down, 14 thing that I wanted to raise at this point in time was 15 the doctors can include operations to perform diagnoses, 15 the issue of explaining my position with respect to 16 prescribe medicine, and other laboratory tests. The 16 Jeremy Auger's proposed testimony. 17 role of the researcher can be limited to gathering 17 THE COURT: Okay. Let's let the jurors get 18 anonymous clinical information for studies; and the role 18 out of the building or -- go ahead and just shut off the 19 of the social worker may be to review patient profiles 19 microphone. I think there is a switch there. You 20 to flag possible suicidal patients or determine possible 20 can -- 21 abuse cases. 21 MR. DASSO: Do that right here, your Honor? 22 Q. Sir, so, this document is talking about using roles 22 THE COURT: Right. The little green light 23 for tellers and loan officers in a bank; is that right? 23 went out? 24 A. Yes. 24 MR. DASSO: I believe so, your Honor. I can 25 Q. Is that something that was being used back in the 25 also step closer to the bench. 83 (Pages 1777 to 1780) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1809 Page 1811 1 Web, not with all these experts we've had here. 1 Exhibit 140. Can you tell the jury what Exhibit 140 is, 2 Now, I'll go ahead and take a look at this. 2 sir? 3 We went through something yesterday. I was willing to 3 A. Well, Exhibit 140 is from the National Institute of 4 take a look at that, as marginal as it was. But now 4 Standards and Technology National Computer Security 5 you're trying to expand it into much more. And it 5 Center; and it's an article on role-based access 6 certainly appears to the court you're just realizing, 6 controls. 7 gee, we could have done a whole lot better on 7 Q. We pulled a portion out, sir, that we believe is 8 cross-examination; and we're going to try that now. 8 relevant to the issues in this case. 9 That's my opinion on what's going on here; and, again, 9 A. Yes, it is. 10 it's based on what both parties have been doing 10 Q. And can you explain to the jury, sir, why this page 11 throughout this entire case. 11 or this section of the document is relevant to this 12 So, I'll take a look at that and make my 12 case? 13 final ruling; but that is -- since we don't have to deal 13 A. Yes, because the role-based access was very common 14 with it right now, I can probably look at it during a 14 at that time, well-known; and this is an example of an 15 break or probably at lunch depending on how the witness 15 article at that time talking about the role-based access 16 is going. 16 control. 17 What are the other issues? 17 Q. Now, sir, does -- I'm sorry. I didn't mean to 18 MR. NADEL: Second issue, your Honor, is that 18 interrupt. 19 we were informed at 7:00 this morning that Desire2Learn 19 A. Go ahead. 20 plans to recall Mr. Auger today. He was not on the list 20 Q. Do you see the reference right there to the roles 21 that was supplied last night, and we understood that the 21 in banks include teller, loan officer, and accountant in 22 court resolved this issue yesterday. 22 what we put up there? 23 THE COURT: Well, again, there can be an 23 A. Yes, I do. 24 offer of proof; but I don't see any basis for a recall 24 Q. And can you tell the jury, was that source of use 25 at this point. We can take that up, again, a little bit 25 of roles in a computer system well known back in the Page 1810 Page 1812 1 later. 1 1990s? 2 Anything else that -- 2 A. Absolutely. 3 MR. NADEL: No, your Honor. 3 Q. There's also reference to use of roles in the 4 THE COURT: Okay. Let's go ahead and bring 4 military systems -- for example, target analyst, 5 in the jury, and we'll continue on with this witness. 5 situation analyst, and traffic analyst. Do you see 6 (The jury enters the courtroom, 8:47 a.m.) 6 that, sir? 7 THE COURT: Good morning, ladies and 7 A. Yes, I do. 8 gentlemen. We're continuing on. 8 Q. And were those types of roles also well known in 9 You remember of course, sir, that you are 9 computer systems back in the 1990s? 10 still under oath. Doctor? 10 A. Yes, absolutely. 11 THE WITNESS: Yes, sir. 11 Q. Can you give the jury some examples of some of the 12 THE COURT: You remember, of course, you're 12 types of different systems, such as airline reservation 13 still under oath. 13 systems, that used roles back in 1990s? 14 THE WITNESS: Yes, sir. 14 A. Yes. All of your airline reservations, like the 15 THE COURT: Go ahead, counsel. 15 Saber System, which was developed in the 1970s and was 16 MR. DASSO: Your Honor -- 16 in the -- travel agents; and, of course, they had the 17 CONTINUED DIRECT EXAMINATION OF DICK SIMMONS 17 roles of the people at the American Airlines. You had 18 CALLED ON BEHALF OF THE DEFENDANT 18 the people at the travel agent; so, there were all kinds 19 BY MR. DASSO: 19 of roles for the airline reservation system. 20 Q. Dr. Simmons, you remember yesterday we were 20 Also, I mentioned yesterday that any 21 starting to talk about role or role-based control access 21 financial system has to have separation of duties, which 22 literature that was in the art back in the 1990s. Do 22 essentially means roles. And those are defined in the 23 you remember that topic generally? 23 software, in the software system. 24 A. Yes, I do. 24 Q. Now, sir, was the concept of predefined roles also 25 Q. We looked at one exhibit and were going on to 25 in the art back in the 1990s? 4 (Pages 1809 to 1812) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1813 Page 1815 1 A. Yes, it was. 1 teller to be able to switch its permissions and change 2 Q. And, sir, we have put up there Exhibit Number 181. 2 what information it has access to? 3 Do you have that? 3 A. Absolutely not. You would lose a little money if 4 A. I'm sure I do. Just a minute. Yes, right here. 4 you allowed everybody to change their permissions and 5 Q. Sir, can you tell the jury what Exhibit Number 181 5 duties. 6 is? 6 Q. And was that something that was known in the art 7 A. It is an article out of a computer magazine. 7 back in the 1990s, sir? 8 That's one of the IEEE journal-type magazines. 8 A. Yes. 9 Q. And was the computer magazine something that was 9 Q. We also pulled out a second exhibit, sir, talking 10 read and used by people in the computer science 10 about predefined roles for the 1990s. 11 profession back in the 1990s? 11 A. Yes. This is Exhibit Number 113. 12 A. Absolutely. It's in every library in the country, 12 Q. And, sir, who -- excuse me. Who authored 13 every technical library, all of the companies and their 13 Exhibit 113? 14 libraries -- type thing. 14 A. It was authored by John Barkley. And you may 15 Q. And, sir, this is an article on role-based access 15 remember he was one of the colleagues of some of the 16 control; is that correct? 16 inventors as part of the IMS project, and they worked 17 A. Yes, it is. As the title says there, role-based 17 together on the IMS project. 18 access control, published in '96. 18 Q. And was Mr. Barkley someone who wrote a fair number 19 Q. Thank you, sir. Sir, does this article talk about 19 of articles back in the 1990s about role-based access 20 the use of predefined or predetermined roles? 20 control? 21 A. Yes, it does. As we can see there that -- the 21 A. Yes, he did. He wrote articles, and he also had 22 role-permission relationships can be predefined. 22 patents on role-based access control. 23 Q. Sir, were there advantages known in the art back in 23 Q. And was he recognized as one of the experts in that 24 the 1990s to predefined roles? 24 field? 25 A. Yes. On a predefined role you can -- if you define 25 A. Yes. He was one of the experts in that field. Page 1814 Page 1816 1 it ahead of time, it's a lot cheaper and stuff for you 1 MR. DASSO: Could we go to the next page? 2 to administer because you don't have to worry about 2 3 changing it or the fact that it can change or stuff like 3 BY MR. DASSO: 4 that. So, there is an advantage to -- 4 Q. Sir, does Mr. Barkley's article talk about 5 MR. MORISSEAU: Objection, your Honor, 5 predefined roles and the use of predefined roles in 6 outside the scope of his report. 6 computer systems? 7 THE COURT: Overruled. 7 A. Yes. From the quote we see here, it says "RBAC" -- 8 BY MR. DASSO: 8 that's role-based access control -- "can be embedded in 9 Q. Go ahead, sir. 9 the operating systems or database systems, or 10 A. Yeah. That you can -- a big advantage of 10 implemented at the application level." 11 predefined roles, that you cannot change them, you 11 MR. DASSO: Now, sir, if we could go to the 12 cannot add them, you cannot delete them as they -- after 12 next slide. 13 they have been predefined. 13 BY MR. DASSO: 14 Q. And, sir, were there security advantages to having 14 Q. Was it also known in the art the idea that you 15 predefined roles, for example, in the bank situation, 15 could have a single login with multiple roles? 16 for auditing and other reasons? 16 A. Yes, that could. And what we have here is what we 17 A. Well, I would say yes, especially -- whenever you 17 call the Win patent, a gentleman named Win, et al, and 18 have what you call roles that are determined by law and 18 others. And as you see right there in the first line of 19 stuff like this -- like the doctor, the pharmacist, 19 the abstract, it says that "a single secure sign-on 20 physician in a hospital; or in a bank you have the 20 gives a user access to authorized Web resources, based 21 auditor and you have the customer, those type things, 21 on the user's role in the organization that controls the 22 that you definitely have to make sure that all of the 22 Web resources." 23 duties are separated that are performed by these 23 Q. So, that was something that was out in the art 24 different people, different roles. 24 before Blackboard filed for its patent; is that right, 25 Q. And, for example, sir, would you want in a bank a 25 sir? 5 (Pages 1813 to 1816) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1817 Page 1819 1 A. Yes, that is correct. 1 the jury here today? 2 Q. And if you look at the date of the Win patent, sir, 2 A. Yes. 3 what is the date of the Win patent? 3 MR. DASSO: Can we go to the next slide, 4 A. The date of the Win patent is February 12th, 1999. 4 please? 5 Q. Okay. And that was the date of the filing of the 5 BY MR. DASSO: 6 Blackboard patent? 6 Q. Sir, have you looked through the Serf guide and 7 A. That is correct. 7 determined whether it shows multiple predetermined 8 Q. Now, sir -- 8 roles? 9 MR. DASSO: Can we turn to the next slide? 9 A. Yes, it has predetermined roles and -- right there 10 BY MR. DASSO: 10 in the manual, as you'll see over there on the left-hand 11 Q. The first issue we're going to go through is the 11 side, it talks about five of them: Serf sysadmin, 12 issue of anticipation; is that right? 12 administrator, instructor, teaching assistant, and 13 A. Yes. 13 student. So, those are definitely predefined roles. 14 Q. And can you tell the jury what "anticipation" means 14 Q. And, so, those are different roles that are in the 15 in the patent law context or the patent context? 15 system, the Serf system; is that correct, sir? 16 A. Well, if you have someone that's essentially 16 A. Yes, it is. 17 already produced the patent, then that would be one in 17 MR. DASSO: Could we go to the next slide, 18 anticipation and that -- for example, it can have -- 18 please? 19 does not have to have identical terms. They just have 19 BY MR. DASSO: 20 to essentially be an equivalent piece of work. 20 Q. And did you hear Dr. Hofstetter's testimony 21 Q. And, sir, is the way to determine anticipation by 21 yesterday, sir? 22 going through the claims step-by-step? 22 A. Yes, I did. 23 A. Yes. Whenever you have a method-type claim, you 23 Q. And did you hear him testify that those roles were 24 have to go through every step of the method to prove 24 preassigned within the system? 25 infringement. 25 A. Yes. They were made in advance. They were not Page 1818 Page 1820 1 Q. And, sir, have you pulled out a couple of pieces of 1 added later, and they could not be deleted. 2 prior art that you believe anticipate the '138 patent? 2 Q. And is that the transcript citation down there, 3 A. Yes. We have that right -- 3 sir, at the bottom, bottom right-hand corner? 4 Q. Let's go to the first one. 4 A. You say the "transcript"? 5 A. The first one is Serf. And you heard the author of 5 Q. Yes. Is this a portion of a transcript from 6 the Serf talk yesterday. 6 yesterday's testimony that we're putting on the screen? 7 Q. Now, sir, let's first talk about whether the Serf 7 A. Yes, I... 8 was prior art under the definition you provided. 8 Q. And, sir, when you put together the reference to 9 A. Yes. 9 the users and Dr. Hofstetter's testimony, have you 10 Q. Did you establish, sir, that Serf was prior art? 10 reached a conclusion about whether claim 36A, the 11 A. Definitely. It was -- as we had mentioned 11 capability of having multiple predetermined roles, was 12 yesterday, it started working -- was put in use in 1997 12 met? 13 and, what we say here, last modified in '98; but it was 13 A. Yes. The -- 14 put in use in September of '97. 14 Q. And can you explain that conclusion to the jury, 15 Q. And this is a user manual we're going to go through 15 please? 16 in connection with your testimony; is that right, sir? 16 A. Well, the ones we just mentioned, the 36A requires 17 A. Yes, it is the user manual. 17 predetermined roles; and Mr. Hofstetter testified they 18 Q. And that, sir, was issued on January 22nd, 1998; is 18 have predetermined roles, which we listed in the other 19 that right? 19 slide. 20 A. That is correct. 20 MR. DASSO: Now if we could go to the next 21 Q. Now, sir, have you gone through the step-by-step 21 slide, please. 22 process comparing Serf and the user manual step-by-step 22 BY MR. DASSO: 23 to the claims that are at issue in this case? 23 Q. 36B1 and 2 talk about generating courses and course 24 A. Yes, we do. 24 files; is that right, sir? 25 Q. And are you prepared to present that analysis to 25 A. Yes, that is correct. 6 (Pages 1817 to 1820) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1821 Page 1823 1 Q. And have you looked at the Serf user manual to see 1 A. Yes. This is the panel that we talked about 2 if it discloses the step of generating course or course 2 earlier. This is a student panel, as it says here. And 3 files? 3 you can see the different -- what they call "options" 4 A. Yes, I have; and you can see that right there when 4 that are in that student panel. 5 it says that there are three kinds of assignments that 5 Q. And this indicates, sir -- how does this indicate 6 the instructor can insert on a syllabus. And for them a 6 that students were actually -- the idea of a 7 syllabus is the -- what I would call the "framework" for 7 predetermined student role was disclosed? 8 any course they teach. And any of their material they 8 A. Yes. Well, this basically tells the access and 9 set in the syllabus as a -- we see here, a Web Query, 9 control that the student role has. As you can see, like 10 Web Portfolio, or observational. 10 on the calendar, has a daily, weekly, monthly, can add 11 Q. And, so, sir, is it your understanding that you 11 events to the calendar, delete events, those type 12 were able to generate and transfer course files; and 12 things, a student can. It can inspect student grades. 13 that was disclosed in the Serf manual? 13 And, so, these are the role that the student can 14 A. Absolutely. 14 activate there. 15 Q. The next step, sir, also in 3B [sic], is the idea 15 Q. So, this -- at the bottom of the page, sir, do you 16 of allowing access to a course file. Have you looked 16 see "you are working on the course Internet literacy"? 17 through the Serf manual and seen whether that was 17 That's the screen that the student would see when he or 18 disclosed before the filing of the '138 patent? 18 she signs on? 19 A. Yes, I did; and it was disclosed. 19 A. Yes. 20 Q. Can you explain, sir, how this portion of the users 20 Q. And does that list the various points of access and 21 manual discloses that idea? 21 control that the student would have for that role? 22 A. Yeah. Well, we could see from the quote (reading) 22 A. Exactly. This describes the access and control the 23 when a user logs on, Serf checks the database to 23 student would have to the files. 24 determine what role he plays in the Serf hierarchy; and, 24 Q. And now, sir, did you look at 36D, which talks 25 so, that's where -- the role, of course, is where you 25 about use of a predetermined nonstudent role? Page 1822 Page 1824 1 get the access and control of the files. 1 A. Correct. The nonstudent in this case would be -- I 2 And "When a student logs in, for example, 2 think this is the instructor. It should say -- yeah, 3 Serf displays a very simple screen containing the 3 right there, the instructor logs on. And if you look at 4 student options." And we'll see that screen shortly in 4 the instructor access and control, comparing it with the 5 one of the next slides. 5 student, you'll see it's different. The brief edit, 6 And the Serf displays a more comprehensive 6 index, et cetera, edit style, some of those things, that 7 screen consisting of many more for the administrator, a 7 you have more ability for the instructor to modify and 8 much more comprehensive screen, which we will see. 8 change things. 9 Q. Okay, sir. Could you maybe talk into the 9 Q. Now, sir, you understand that Blackboard is also 10 microphone? At least it's hard for me to hear you when 10 asserting claims 37 and 38 in this case; is that right? 11 you're talking. I don't know if the jury can hear you 11 A. Yes, I understand that. 12 or not. 12 Q. And for claims 37 and 38, do you have to meet all 13 A. Yes, okay. I'll try to make it where folks can 13 of the steps of claim 36 and some additional steps? 14 hear. 14 A. Yes. 36 is what you call an "independent claim," 15 Q. If you could talk into the microphone and direct 15 and 37 is a "dependent claim." And, so, 37 says that 16 your comments to the jury so they can hear you and 16 you have to meet all the criteria for 36, as it says 17 understand you. 17 there, the method of claim 36, wherein at least one of 18 Now, have you looked at claim 36C, sir? 18 the course files comprises a course assignment. And 19 A. Yes. 19 then it goes on to say that the student -- in addition, 20 Q. And that deals with the idea of actually using a 20 "the student user creating a student file in response to 21 predetermined student role; is that right? 21 the course assignment." So, you have to fulfill 36, 22 A. That is correct. This is that panel we were 22 which we had already looked at, plus 37, the part we had 23 talking about earlier. 23 up there. 24 Q. Again, sir, could you direct your comments into the 24 Q. And we've already looked at whether or not this 25 microphone so the jury could -- 25 Serf manual disclosed each of the steps in 36. Did you 7 (Pages 1821 to 1824) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1825 Page 1827 1 also look at whether it discloses the additional steps 1 Q. And does the portion that you pulled out of the 2 that are in 37? 2 user manual disclose the idea of an instructor accessing 3 A. Yes, I did. 3 a student file? 4 Q. Do we have up on the screen, sir, the reference to 4 A. That is correct. 5 37E, which is the additional step of "the student user 5 Q. Can you explain that answer to the jury, please? 6 creating a student file"? 6 A. Yeah. As we see in the highlighted, "to assign a 7 A. Yes, that is correct. 7 grade for a student assignment...If the student has 8 Q. And can you explain to the jury how that's 8 submitted an assignment that is waiting to be graded, a 9 disclosed in the Serf course manual? 9 Grade Me link will appear in the Grade column" so the 10 A. Well, by looking at the manual -- and you can see 10 instructor knows he has to grade the assignment. 11 the highlighted part here in the manual, that "There are 11 Q. Did you do the same analysis for 38H, sir? 12 three kinds of assignments that an instructor can insert 12 A. Yeah. 38H -- and the H part says "the instructor 13 on a syllabus." 13 user reviewing the student file to determine compliance 14 Q. Again, sir, if you could talk into the microphone. 14 with the course assignment"; and as we see there in the 15 A. Yes. A Web Query and a Web Portfolio, et cetera. 15 highlighted part, "for a Web portfolio assignment, Serf 16 Q. And then 37F, did you also look at that one, sir, 16 will provide you with the URL" -- and the URL is a 17 the idea of a student user transmitting the student's 17 Uniform Resource Locater. The words don't help you 18 file to the course serve -- to the server computer? 18 much, but that is actually the link that takes you right 19 A. Yes, I did. And this, of course, has a -- is F, 19 to the file -- "of the student's work." 20 and the preamble part is still there on the other one. 20 Q. The final claim term is 38I, sir. Have you 21 And it says -- and F says that "the student user 21 performed the same analysis on 38I? 22 transferring the student file to the server computer" 22 A. Yes. And the I part says "the instructor user 23 and it talks about the assignment options where "There's 23 assigning a grade to the student file as a function of 24 a 'submit' button where you'll use to submit 24 the determination of compliance with the course 25 assignments." So, the "submit" button allows students 25 assignment." And -- Page 1826 Page 1828 1 to submit their assignment. 1 Q. Is that also disclosed in the Serf manual, sir? 2 Q. So, this talks about hitting a "submit" button. 2 A. Yes, this is from the Serf manual as it shows 3 What happens when you hit that "submit" button in the 3 there. 4 Serf system? 4 Q. And, sir, have you prepared some charts summarizing 5 A. The assignment that the student has been working 5 your conclusions with respect to whether or not the Serf 6 on, it can -- essentially it submits it at that point. 6 product and the Serf manual comply with each of the 7 Q. Is it transferred actually to the server computer, 7 elements of the claims? 8 sir? 8 A. Yes. 9 A. It's what, now? 9 MR. DASSO: Go to the next slide, please. 10 Q. Is it transferred to the server computer? 10 BY MR. DASSO: 11 A. Well, you could say yes, that -- when you say 11 Q. This is claim 36, sir, that the jury has heard a 12 "transferred," in some cases they have a linkage to the 12 lot about already; and let's just go through each of the 13 student's assignment and -- you asked me whether it 13 steps. First step, "establishing that each user is 14 actually transfers. If they have the linkage, it's 14 capable of having predefined characteristics indicative 15 equivalent to a transfer. 15 of multiple predetermined roles in the system." Do you 16 Q. Now, sir, did you understand that both -- have you 16 see that, sir? 17 reached an opinion about whether both of the steps in 17 A. Yes, I do. 18 claim 37 were disclosed by this Serf user manual? 18 Q. And have you reached a conclusion about whether the 19 A. Yes, I -- I have; and they were disclosed. 19 Serf manual discloses that concept? 20 Q. Now, did you also look at claim 37 -- 38? 20 A. Yes, it does disclose the concept. 21 A. Yes. Well, you say -- 38, you mean? 21 Q. And, sir, the next item talks about the step of 22 Q. Yes. 22 establishing a course online to be offered. Have you 23 A. Yes. 38G? And the key part here is the part -- 23 reached a conclusion about whether the Serf manual 24 the G part that says "the instructor user accessing the 24 discloses that step? 25 student file from the server computer." 25 A. Yes, I have. 8 (Pages 1825 to 1828) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1837 Page 1839 1 "anticipation"? 1 Q. And do you exceed that definition, sir? 2 A. Well, the obviousness is -- really says that if it 2 A. Yes. 3 is obvious to someone who is skilled in the art, which 3 Q. And does the idea of obviousness allow you to 4 is defined by the judge to be -- as we see here on the 4 combine ideas from different pieces of prior art that 5 screen, is the definition: "Someone with the equivalent 5 were in the -- 6 of a four-year degree from an accredited institution, 6 A. Yes. We can look at the prior art and see what's 7 (usually denoted in this country as a BS degree)" -- 7 out there. And if you can combine them to someone who 8 bachelor of science -- "in the field of computer science 8 is what we call here of ordinary skill in the art, then 9 or related field, and between two and three years of 9 it is obvious. 10 applications programming experience." And then the -- 10 Q. Now, sir, is there a couple of combinations or a 11 or the "experience and technical training may substitute 11 couple of different pieces of prior art that you wanted 12 for the educational requirements, while advanced degrees 12 to bring to the jury's attention on this point? 13 may substitute for some of the experience." 13 A. Yes, there are, which we will in the next slides 14 In other words, if you have more experience, 14 here. 15 you don't have to have as many degrees and this type 15 Q. Sir, did you first look at the issue of combining 16 thing. 16 the role-based access control literature that we talked 17 Q. Let's make this point a little simpler, if we can, 17 about with the course management systems that we already 18 sir. Under the patent law does it have to be obvious to 18 know are well known in the art? 19 someone like me who has no technical training? 19 A. Yes, I did. And as we see here, the role-based 20 A. Right. It has to be obvious to someone who works 20 access control is multiple predetermined roles and 21 in the field, in other words, not just anybody. 21 predefined access and control. 22 Q. Okay. And, sir, has the judge told us who it has 22 And the course management system had the 23 to be obvious to? 23 students and instructors, courses, assignments. So, 24 A. Yes, he has, which is what we just went through. 24 that was Serf and CourseInfo and RBAC is the role-based 25 Q. And does the person it has to be obvious to be 25 access control. Page 1838 Page 1840 1 someone that's got a computer science degree from an 1 Q. And, sir -- so, the ideas -- all the ideas that 2 institution? 2 were in the '138 patent, were those all disclosed in 3 A. Well, computer science or equivalent. 3 these two different areas? 4 Q. And do they have to have not only a computer 4 A. Yes. 5 science degree but also some time in the field? 5 Q. And if you were someone of ordinary skill in the 6 A. Yes. 6 art and you combined those two sets of ideas, what would 7 Q. And, sir, are you someone who has had the 7 you have gotten? 8 equivalent of a four-year degree from an accredited 8 A. You would have essentially gotten a patent right 9 institution in the field of computer science? 9 there, the '138 patent. So, if you combine the two, you 10 A. The -- what? I have a degree in computer science. 10 end up with the '138 and -- type thing. 11 Well, the one thing we say here is the four-year degree 11 Q. Now, sir, was the literature on the role-based 12 denoted in the -- computer science or in a related 12 access controls that we went over before the Patent 13 field. Mine is in a related field. Electrical 13 Office when it reviewed this patent? 14 engineering is my bachelor's. My PhD is in computer 14 A. It's my understanding that the art was not before 15 information science. 15 the Patent Office. 16 Q. So, just so we're clear, you have a four-year 16 Q. And, sir, was the course management systems, the 17 degree in electrical engineering plus graduate degrees 17 list of the course management systems that we saw from 18 in computer science; is that right? 18 Blackboard's business plan or the Serf or the ILN 1.5, 19 A. That is correct, plus many years of experience in 19 were they before the Patent and Trademark Office? 20 industry. 20 A. No, they were not. 21 Q. And -- 21 Q. And, so, did the Patent and Trademark Office have a 22 A. Which is -- 22 chance to determine whether or not the '138 patent was 23 Q. And, so, do you meet the definition of someone of 23 obvious in light of those two pieces of evidence? 24 ordinary skill in the art? 24 A. No, they did not. 25 A. Yes, I do. 25 Q. Now, sir, have you also looked at another -- I'm 11 (Pages 1837 to 1840) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1841 Page 1843 1 sorry. Have you looked at whether or not someone in the 1 mechanism is provided by the security environment and by 2 art would have had a reason to put those two pieces 2 the IMS object." 3 together? 3 Q. And, sir -- 4 A. Yes, I did. 4 MR. DASSO: Next slide, please. 5 Q. And we talked about the IMS specification. Does 5 BY MR. DASSO: 6 that provide some information on that point? 6 Q. Does the IMS specification also disclose or suggest 7 A. Yes, it would. 7 the idea of having users able to use different roles in 8 Q. And, sir, let's first look at whether the IMS 8 different courses? 9 specification was prior art. Do you believe that it 9 A. Yes, it does. Our good friends here, the Biology 10 qualified as prior art, sir? 10 101 group with Mary Clark where she was a -- I think a 11 A. Yes, I did. From the Griffin trial testimony the 11 student in one course and a biology study group was -- 12 other day that the jury heard. And he said that it was 12 Mary plays a role of group leader. So, she was a 13 released to the public on or about the date indicated on 13 student in one and group leader in the other; so, a -- 14 the first page of the specification, which is over here 14 different roles. 15 on the left. And that was April 29th, 1998. 15 Q. So, was that concept and the idea of using that 16 Q. So, was the date that this was publicly released 16 concept for computer systems -- course management 17 more than a year before the first patent was filed for 17 systems, was that part of the art back before the 18 by Blackboard or its inventors? 18 Blackboard patent was filed for? 19 A. Yes, it was. 19 A. Yes. 20 Q. And under that definition, sir, did it qualify as 20 Q. And then finally, sir, is their idea of a single 21 prior art? 21 user log-on -- 22 A. Yes, it did qualify as prior art. 22 A. That was -- 23 MR. DASSO: Now if we could go to the next 23 Q. Was that something that was disclosed or suggested 24 slide, sir. 24 in the IMS patent [sic]? 25 25 A. That was disclosed and suggested in the IMS Page 1842 Page 1844 1 BY MR. DASSO: 1 specifications. 2 Q. Does the IMS .05 [sic] specification suggest or 2 Q. I think I said patent, and I think I misspoke. We 3 disclose the idea of combining these two references? 3 were talking about the IMS specification in your last 4 MR. MORISSEAU: Objection, your Honor. 4 answer; isn't that right, sir? 5 Outside the scope of the report. 5 A. That is the -- right. It was in the IMS 6 THE COURT: Overruled. 6 specification. 7 A. Yes, it did. It says, as we see here from that 7 Q. Now, sir, was there another -- we're going to go on 8 specification document, the part we have highlighted 8 to another obviousness combination; is that right? 9 there: (reading) The IMS security services uses 9 A. Yes. 10 R.B.A.C., role-based access control model designed by 10 Q. And this obviousness combination starts with the 11 the National Institute Of Standards. Access control to 11 Cook patent. Do you see that, sir? 12 IMS objects using the -- 12 A. Yes. This is very interesting. This one hits 13 BY MR. DASSO: 13 prior art. I think this was recognized by the Patent 14 Q. Sir, if you could talk into the microphone and talk 14 Office, and it was a "agent-based instruction system and 15 to the jury if you could, please. 15 method." And the Patent Office made a ruling on this. 16 A. Okay. Yeah. 16 Q. And, sir, could you tell the jury what the, quote, 17 Q. Sir, is the idea of combining those two things, is 17 "Cook patent" covers? 18 that part of the IMS specification? 18 A. Well, it was basically an instructors management 19 A. Yes, it was. 19 system. 20 Q. And can you tell the jury how this language up here 20 Q. And, sir, was the -- 21 talking about that shows that it was part of the 21 A. Which is on a -- you can say a CMS, instruction 22 specification? 22 management system. Sometimes they're used 23 A. Yes. Well, we're quoting from the specification 23 interchangeably. 24 and the -- as we say continuing on the same there, "the 24 Q. And, sir, what was the date of the Cook patent? 25 access control to the IMS objects using the NIST RBAC 25 A. The date on the Cook patent, as we see here on the 12 (Pages 1841 to 1844) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1845 Page 1847 1 slide, was March 16th, 1998. 1 case it says: (reading) Claims 1 through 46 are 2 Q. And, sir, was that date -- the filing date of the 2 rejected under -- we'll just say "the law" because you 3 Cook patent -- more than one year before the filing date 3 see all the numbers and letters there -- as being 4 of any Blackboard patent? 4 anticipated by Cook, et al, patent. So, that is your 5 A. Yes, it was more than one year before that filing 5 anticipation; and the Patent Office said it was 6 date. 6 anticipated. 7 Q. And then, sir, do you see down there there is an 7 Q. And, sir, again would you remind the jury what 8 abstract from the Cook patent? 8 "anticipated" means? 9 A. Yes, I do. 9 A. "Anticipated" says that there is another system 10 Q. And could you just read in the first sentence of 10 that anticipated all the things they are claiming, in 11 that abstract for us? 11 this case the Cook patent. 12 A. Yeah. It says, "This invention relates to a system 12 Q. Okay. And, sir, was this the end of the road in 13 and method for interactive, adaptive, and individualized 13 the Patent Office? 14 computer-assisted instruction." 14 A. You say the end of the road? No. 15 Q. And is that consistent with your description as 15 Q. Okay. 16 essentially an instruction management system or a course 16 A. No, because the work -- this is an interactive type 17 management system? 17 thing of dealing with the Patent Office. So, Blackboard 18 A. Yes. 18 would give their side of the story, which they did; and 19 Q. Now, sir, you mentioned that the Patent and 19 it's shown here. And it says -- so, they basically 20 Trademark Office looked at the Cook patent; is that 20 revised the claim; and it says it was discussed to 21 right? 21 obviate rejections based on Cook. Multiple roles for 22 A. They did. As we see here. 22 multiple users was emphasized as a potential 23 Q. And, sir, this is Defendant's Exhibit 104, which is 23 distinguishing feature, to distinguish it different from 24 part of the prosecution history? 24 the Cook patent. And the provision for the usage of 25 A. Yes. Yes. 25 these roles for file access was discussed, et cetera. Page 1846 Page 1848 1 Q. And that's a term the jury's heard before, but can 1 Q. So, Blackboard distinguished the Cook patent based 2 you tell them what the "prosecution history" means? 2 upon this idea of multiple roles; is that right? 3 A. Well, from the time they file the patent until it's 3 A. That is correct. 4 finally granted, there's a lot of interaction between 4 Q. Now, sir, have you looked to see whether or not the 5 the court [sic] and the people filing; and, so, they 5 art showed the idea of multiple roles, whether that was 6 have a running history of this. And this is the 6 already part of the art? 7 prosecution history. And in this case it's from the 7 A. For the -- you say the multiple roles? 8 year 2000 until the time that the patent was granted in 8 Q. Yes, sir. Was that idea already part of the art 9 2006. 9 back in the 1990s? 10 Q. So, the prosecution history basically memorializes 10 A. Yes. 11 this back and forth between the applicant and the Patent 11 Q. And, sir, we talked about the Win patent earlier. 12 and Trademark Office? 12 Does the Win patent, sir, talk about this idea of 13 A. Absolutely. 13 multiple roles? 14 Q. And, sir, did the -- 14 A. In the case -- well, multiple roles with what they 15 MR. DASSO: Next slide, please, also from 15 call a single login. 16 Exhibit 104. 16 Q. So, that idea, the distinguishing factor by 17 BY MR. DASSO: 17 Blackboard, is that in the Win patent; or is it not in 18 Q. Did the Patent and Trademark Office initially take 18 the Win patent? 19 any action with respect to the '138 patent, which is the 19 A. It is in the Win patent within -- the date on the 20 patent held by Blackboard now -- did they initially take 20 Win patent is February 12th, 1999. 21 any action in the prosecution -- 21 Q. Okay. Again, sir, if you could talk into the 22 A. Yes, they did. We see here on this slide. I had 22 microphone so the jury can hear you rather than -- 23 said the claims 1 through 46 -- at this time in the 23 A. Yes. 24 prosecution history there were 46 claims. Later they 24 Q. Sorry about that. I just want to make sure -- 25 whittled it down to 44, the 1 through 44. But in this 25 A. Unfortunately, when I turn over to look at the 13 (Pages 1845 to 1848) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1849 Page 1851 1 screen, I miss the microphone. But I'll do my best to 1 in just a second. But have you prepared a slide that 2 shape up here. 2 summarizes briefly your points on this? 3 Q. By the way, have you ever testified as an expert 3 A. Yes. You know, in my opinion, it is invalid for 4 before? 4 the reasons we mention here. It was anticipated by the 5 A. No. 5 Serf and CourseInfo. And it was obvious, a different 6 Q. Okay. So, you're not used to doing this. 6 criteria. And when you actually have the motivation to 7 A. No, not -- well, but I'll -- we'll move along here. 7 combine them, you take the IMS.5 specification, the Serf 8 Q. Okay. Fair enough. 8 or CourseInfo, CourseInfo 1.5. And another obvious, as 9 A. I'm in good shape. 9 we've shown, is a combination of the Cook and Win 10 Q. That's what I'm here for, is to make sure we remind 10 patent. 11 you and keep a good record and to make sure that the 11 Q. Okay. Sir, if we could go to the next item; and 12 jury can hear you. 12 that is, have you also looked at the issue of 13 A. Yes. And I'll continue to try to do the 13 infringement as well as the issue of invalidity? 14 microphone. 14 A. That is correct. 15 Q. Okay, good. Thank you, sir. 15 Q. And let's start by talking about what does the 16 Now, sir, have you looked at the idea of 16 patent -- the claims of the patent 36 through 38 cover. 17 combining the Cook patent and the Win patent? 17 Okay? 18 A. Yes. Under the obvious part, they say the -- they 18 A. Yes. 19 can be combined, the two patents; and they show that the 19 Q. And, sir, does the claims cover course management 20 patent was obvious. You take the Cook patent and the 20 systems -- all systems? 21 Win patent and combine them and we have patent '138 that 21 A. No. 22 we're dealing with. That's the Blackboard patent. 22 Q. Can you tell the jury why not? 23 Q. And again, sir, we're talking about obvious to 23 A. Well, you say does it claim. They were -- they did 24 someone skilled in the art -- 24 not invent the course management systems because, as we 25 A. Yes. 25 have seen, there was a lot of them around. And, so, Page 1850 Page 1852 1 Q. -- rather than someone who is not skilled in the 1 they couldn't have invented course management systems. 2 art? 2 Q. Sir, did the invention -- was the invention all 3 A. Obvious to someone skilled in the art is correct. 3 multiple courses? 4 Q. And, sir, what were the ideas or the things that 4 A. No, because these other systems we looked at had 5 were shown in the Cook patent? 5 multiple courses. 6 A. The -- well, the Cook patent, we had the online 6 Q. Was the invention individual roles like student 7 instruction system and method, course files, and 7 roles, instructor roles, and administrator roles? 8 assignments and grades, as we see there. 8 A. Absolutely not. 9 Q. And then Blackboard distinguished that from their 9 Q. And, sir, was the idea of multiple roles the 10 system on the sole idea of multiple roles; is that 10 invention? 11 right? 11 A. No. 12 A. Yes. 12 Q. Sir, we talked about -- 13 Q. And what does the Win patent show -- or what does 13 MR. DASSO: The next slide, Mark, please. 14 the Win patent show was back in the art at that time? 14 BY MR. DASSO: 15 A. Well, it shows the role-based access control along 15 Q. We talked about the claim of the patent being the 16 with multiple roles single login. 16 deed. Do you remember that coming up again and again 17 Q. And, sir, was the Win patent before the 17 during the course of this trial? 18 Patent Office at the time? 18 A. Yes. 19 A. No, it was not. 19 Q. And what does the deed -- what does the legal 20 Q. And did the Patent Office ever have a chance to 20 document that describes Blackboard's claimed invention, 21 look at the Cook patent in combination with the Win 21 what does it say the invention was? 22 patent before they issued the '138 patent? 22 A. Well, I think you're talking about the claims of 23 A. No. They saw the Cook patent, but they did not see 23 the invention are the ones that we have been talking 24 it in combination with the Win patent. 24 about here in this trial; and those are the claims 36, 25 Q. Sir, have you -- we're going to go on infringement 25 37, and 38. And we have 36 here on the screen with some 14 (Pages 1849 to 1852) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1873 Page 1875 1 developed, does that satisfy a method claim? 1 And Dr. Jones answered: "Yes, they do." 2 A. Absolutely not. 2 Q. Sir, let me break this up a little bit. First of 3 Q. What do you have to do, sir, to prove that a method 3 all, do you understand, sir, that there is hosted and 4 has been infringed upon? 4 nonhosted? 5 A. Well, you have to look at all the steps that are 5 A. Yes. 6 defined in the method and make sure that they have all 6 Q. Okay. And for -- can you explain to the jury the 7 been performed. 7 difference between "hosted" and "nonhosted" clients for 8 Q. Now, sir, you put a couple bullets up here. One is 8 D2L? 9 specific instances. Did Dr. Jones in his testimony or 9 A. Yes. A smaller university a lot of times does not 10 Blackboard elsewhere in its case go through any specific 10 have the staff to host the servers for a system like 11 client and show for any specific client how each step of 11 this; so, they would like the vendor to host it. And 12 claim 36 was met? 12 Desire2Learn does host for some of its customers, and 13 A. No, they did not. They did not -- to my knowledge, 13 the hosting is done in Canada. 14 they did not even do one. 14 Q. And, sir, is this Dr. Jones' testimony up on the 15 Q. Did they even try and go through any single client 15 screen from his trial testimony, sir? 16 to show how each step of the claim was met? 16 A. Yes. 17 A. No, they did not. 17 Q. And is he -- does he give the opinion that all of 18 Q. Now, sir, one of the issues here is that all steps 18 the conditions giving rise to infringement for hosted 19 have to take place after the issuance of a patent. Is 19 clients are met within D2L's facilities? 20 that right, sir? 20 A. Well, what he says there, he says the question: 21 A. That is correct. 21 "It's your opinion that all of the conditions giving 22 Q. And, again, is there any -- was that shown by 22 rise to infringement are met within D2L's facilities? 23 Blackboard that any specific client had all steps after 23 And Dr. Jones says: "Essentially." 24 the patent was issued in January of 2006? 24 And then you say: "And you understand, sir, 25 A. No. 25 that D2L's facility is located in Canada; isn't that Page 1874 Page 1876 1 Q. And finally, sir, all those steps of a method 1 right? 2 claim, do those have to take place in the United States? 2 And Dr. Jones says: "I do understand that, 3 A. Yes. For a U.S. patent, they have to be in the 3 yes." 4 United States. 4 Q. And, sir, if you put those two concepts together, 5 Q. And why is that, sir? 5 where is any infringement taking place? 6 A. Patent law, I guess. 6 A. Where are the what, now? 7 Q. Is this a United States patent? 7 Q. Where are any of these steps taking place? 8 A. It's a U.S. patent; so, it has to be infringed in 8 A. Well, they're taking place in Canada. 9 the U.S. Other countries have their patents and patent 9 Q. Now, sir, we talked about the timing of the 10 law. 10 different steps. Remember that, sir, as one of your 11 Q. And, sir, was there any effort by Blackboard to go 11 opinions? 12 through and show that each step for any specific client 12 A. Yes. And this chart shows the steps that -- if you 13 was performed in the United States? 13 have a Step A, Step B, Step C, and Step D. and if one 14 A. No. They did not go through and show that even one 14 step happens before the date of the patent issuance, 15 were all performed in the U.S. 15 then there is no infringement. 16 Q. Now, sir, let's look at the evidence with respect 16 Q. And, sir, does Dr. Jones provide the opinion in his 17 to a couple of these items in more detail. Was there 17 trial testimony that Step A is met upon installation? 18 evidence in the record about whether certain things take 18 A. Yes, he did. As we see here, he said: "And 19 place outside of the United States? 19 'capable' means you're able or have the ability to do 20 A. Well, from the -- yes, there was. If we look here 20 it; isn't that right?" 21 at Dr. Jones' testimony that was here in the room, the 21 And Dr. Jones says yes. 22 question: "And under a hosting situation, when D2L 22 "And it doesn't require that you actually use 23 purchases -- D2L supplies all of the hardware and 23 that capability" -- 24 software required to run for the system; isn't that 24 Q. Sir, if you could talk into the microphone. 25 right?" 25 A. Yes. 20 (Pages 1873 to 1876) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1877 Page 1879 1 And he said: "And it doesn't require that 1 multiple roles, as you understand Dr. Jones' opinion, 2 you actually use that capability, does it?" 2 sir, who makes a system or allows a user to have the 3 And Dr. Jones says: "That's correct." 3 capability of having multiple roles? 4 "And it's your view, sir, that the D2L 4 A. The capability of multiple roles is done by 5 system, because it has the capability to have a user 5 Desire2Learn. 6 with multiple roles, satisfies 36A and that it's not 6 Q. And can you explain that answer to the jury, sir? 7 necessary to have a user actually enroll in the multiple 7 A. That they are the ones that put the system 8 roles; isn't that right?" 8 together, developed the software that has that 9 And he says: "That the use of the system 9 capability. 10 satisfies Step A of claim 36 and that you don't actually 10 Q. And, sir, we're going to color code these. I'm 11 have to have a user enrolled in more than one role to 11 going to use blue for Desire2Learn. Okay, sir? 12 have that capability. That's correct." 12 A. Sure. Right. So, blue is Desire2Learn. 13 Q. My point, sir, is do you read Dr. Jones' testimony 13 Q. And then the next step, sir, talks about course 14 as saying installation is when claim 36A is met, in his 14 files and generating course files; is that right? 15 opinion? 15 A. Yes, that is correct. 16 A. Right. Dr. Jones says at the time of installation 16 Q. And does the patent tell us who is the entity that 17 is when 36A occurs. 17 generates course files? 18 Q. And, sir, then there's also -- it is true, is it 18 A. The entity that generates course files, of course, 19 not, that most of the installations of the clients that 19 is the instructor. 20 we're talking about took place before the issuance of 20 Q. And we're looking here at one section of the 21 the patent? 21 patent, sir; is that right? 22 A. Absolutely. I think you heard that in the 22 A. Yes. 23 testimony of all the ones they had enforced before the 23 Q. And what does that say about who generates course 24 year 2000, that those were before the issuance of the 24 files? 25 patent. 25 MR. DASSO: And this is, your Honor, the '138 Page 1878 Page 1880 1 Q. And, sir, Dr. Jones also says that when you upgrade 1 patent at Column 5, 31 through 37. 2 the system, that there is -- 36A is met; is that right? 2 A. Yes. That is a correct quote. 3 A. That's what he says, but he is absolutely incorrect 3 BY MR. DASSO: 4 there. 4 Q. And this says, sir, that the instructor user is 5 Q. And can you tell the jury why? 5 generating a set of course files; is that right? 6 A. Yeah. When you upgrade the software in 6 A. That is correct. 7 Desire2Learn, you put patches in. You don't reload the 7 Q. And, sir, is there another section of the patent 8 whole thing. There are no -- no roles are added on 8 that I think we have pulled out? 9 these changes. It's my understanding no roles have ever 9 A. Yes. 10 been added; so, you don't infringe the patent with 10 Q. And this is the '138 patent at Column 12, lines 11 11 updates basically. 11 through 13; is that right? 12 Q. Do the upgrades that have been done by Desire2Learn 12 A. Yes, that is correct. 13 after the issuance of the patent -- did they affect in 13 Q. And does that also indicate who is doing the -- 14 any way the roles, sample roles, or role categories? 14 generating the course files? 15 A. No. That's what I mentioned, that the updates they 15 A. It is the instructors. 16 have done have not affected the roles in any way. 16 Q. And, sir, then we go back to the claim. Who's 17 Q. And, so, sir, in your opinion, do the updates meet 17 doing B? 18 claim 36A? 18 A. Instructors. 19 A. The updates would not meet 36A. 19 Q. And we'll color them yellow. Okay? 20 Q. Now, sir, let me talk about your third item with 20 A. Yes. Different entity. 21 respect to direct literal infringement; and that is 21 Q. Then, sir, are C and D, talking about providing a 22 whether one person takes each of these steps. Okay? 22 predetermined level of access and control to the users 23 A. Yes. Let's go through that. 23 for both a student and a nonstudent. In the hosted 24 Q. And, sir, with respect to A, establishing that the 24 situation, who provides access or doesn't provide 25 system -- or that each user is capable of having 25 access? 21 (Pages 1877 to 1880) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1881 Page 1883 1 A. The hosted access would be provided by Desire2Learn 1 Q. Okay. And, so, can we color that one in for the 2 in Canada. 2 color of the student, which will be red. 3 Q. Can you explain why you say that Desire2Learn is 3 And then finally, sir, who is taking those 4 the one doing the providing or not providing? 4 steps? 5 A. Well, earlier you had asked me about the difference 5 A. Okay. In this case, as the claim says, the 6 between hosted and nonhosted. The hosted means 6 instructor would be taking this. 7 Desire2Learn is hosting it, and the user can actually 7 Q. And I think we used yellow for the instructor 8 host their own. They can have their own server. And, 8 before? 9 so, if they have their own server that would be 9 A. Yes. We used it before; so, we'll use it again. 10 possibly -- if it's a U.S. school, the server would be 10 Q. When we go through these steps, we see a lot of 11 in the U.S. If Desire2Learn hosts it, they host it from 11 different colors. What does that mean to you, and what 12 Canada. 12 should it mean to the jury? 13 Q. So, if it's a hosted situation, who's doing C and 13 A. Well, what it means to me is there is not a single 14 D, as you understand Dr. Jones' opinion? 14 entity performing all those steps, as the jury can 15 A. Well, C and D -- 15 clearly see by stepping through in different colors. 16 Q. Again, sir, I'm focusing on just who's doing it. 16 Q. And do you understand, sir, that that's a 17 Who's doing C and D in the hosted situation, as you 17 requirement in order to prove infringement in this case? 18 understand Dr. Jones' testimony? 18 A. Yes, that is a requirement for direct infringement, 19 A. In the hosting situation, it would be the one doing 19 is for a single entity to have to perform all of the 20 the hosting, whether it -- 20 steps. 21 Q. And is that Desire2Learn? 21 Q. And is that because this is a method claim? 22 A. Desire2Learn. 22 A. Yes. 23 Q. And in the nonhosted situation, sir, who is doing 23 Q. Now, sir, let me go to the issue of joint 24 C and D as you understand Dr. Jones' testimony? 24 infringement, which is our next slide. And the issue of 25 A. Well, it would be the university. But I would call 25 joint infringement is the idea that different entities, Page 1882 Page 1884 1 that -- you say "nonhosting." It's just a "local 1 if there're under direction and control, can satisfy the 2 hosting," I'd call it -- 2 steps; is that right? 3 Q. Okay. 3 A. Correct, that if an entity is under your direction 4 A. -- versus a hosting of -- 4 and control, then they can contribute to the joint 5 Q. And, so, sir, this could be two different entities 5 infringement. 6 doing this, depending upon that? 6 Q. Sir, is there any evidence in this record that D2L 7 A. That is correct, two different entities, not the 7 controls the instructors? 8 same entities. 8 A. There is no evidence that Desire2Learn controls the 9 Q. We're going to use blue, which is the same color as 9 instructors, and I'll guarantee you they don't. No 10 Desire2Learn and then green for the university. Okay? 10 evidence that Desire2Learn controls students. And then 11 A. Yes. 11 no evidence that Desire2Learn even controls the schools. 12 Q. And then, sir, if we could go to -- does this chart 12 Q. Then, sir, do you remember Dr. Jones talked about 13 show, sir, that different people are performing 13 the doctrine of equivalents; is that right? 14 different steps? 14 A. Yes. 15 A. That is correct. There is not a single entity 15 Q. And the doctrine of equivalents says if you don't 16 performing all those steps. 16 do the exact same thing under the claim, then doing 17 Q. And then if we can go to claims 36 and 37, if our 17 something that's equivalent, under certain 18 computer would cooperate -- I mean, 37 and 38. 18 circumstances, that can be infringement. 19 A. Yes. 19 A. That's correct, that if they're equivalent, it 20 Q. Does 37 indicate in the claim language itself who 20 could be infringement. 21 is taking those steps? 21 Q. And, sir, does Dr. Jones' equivalence analysis come 22 A. Well, if we look there at 37, you will notice it 22 down to basically equating the idea of postdetermined 23 says: (reading) The student user creating files and 23 roles with predetermine roles? 24 student user transferring files. So, that would be the 24 A. Yeah. This is the amazing thing. He talked about 25 student. 25 predetermined, but he never talked about postdetermined. 22 (Pages 1881 to 1884) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1941 Page 1943 1 A. Hi, there. 1 Q. And you see that this is the Blackboard case study 2 Q. Hello. 2 from Computerworld? 3 Do you remember a lot of testimony in this 3 A. I actually don't see the word "case study," but I'm 4 case so far about Blackboard receiving a Smithsonian 4 just glancing. But it does talk about Blackboard 5 award? 5 receiving the Smithsonian award. 6 A. Yes, I do. 6 THE COURT: Perhaps, counsel, you might 7 Q. And more correctly it's a Computerworld Smithsonian 7 direct him to page 2 under "success" where it -- just to 8 award; is that correct? 8 speed things up. That's where the case study starts. 9 A. I'm actually not familiar with the full name of it, 9 MR. KEENER: Thank you, your Honor. 10 but that certainly could be the full name. 10 BY MR. KEENER: 11 Q. You've seen the medallion? 11 Q. Do you see "Blackboard online education"? This is 12 A. Yes, I have. It was hanging in our lobby for a 12 referring to Blackboard? 13 number of years now. 13 A. Yes, this is referring to Blackboard. 14 Q. And the first word is Computerworld? 14 Q. And that's your company? 15 A. Again, I -- I don't know if I've stared close 15 A. It's not my company but I'm one of the co-founders 16 enough to remember the full name, but that certainly 16 and also the CEO of Blackboard. 17 could be the full name of the award. 17 Q. Thank you. 18 Q. And Blackboard received that award in 2000? 18 If you'd turn to the second page, do you see 19 A. I do believe that that is correct. 19 the section under "originality"? 20 Q. Do you know how many other companies received a 20 A. Yes, I do. 21 Computerworld Smithsonian award in the year 2000? 21 Q. Do you see the last sentence under "originality"? 22 A. I know that it was -- I know that it was across 22 A. Yes, I see that sentence. 23 almost all the states and actually I think over 20 23 Q. Let me know if I read this correctly. "The 24 countries, but I don't know the specific number of 24 company's technology roots were formed, prior to the 25 awards that were given out. 25 merger, by the company's work as primary technical Page 1942 Page 1944 1 Q. Does over 400 sound about right? 1 contractor to the EDUCAUSE IMS project, a powerful 2 A. I couldn't comment specifically on what the number 2 industry standards coalition, where we helped create an 3 would be. If that's something you have, then that could 3 industry-standard architecture for online learning 4 be. 4 technologies." Did I read that correctly? 5 Q. Well, many awards were given out that year, weren't 5 A. Yes. 6 they? 6 Q. And that's referring to the work Blackboard did for 7 A. I do believe the Smithsonian gives out more than 7 the IMS project, isn't it? 8 one of the awards. 8 A. Yes, it does seem to be referring to the work that 9 Q. Is it your understanding that the award is given 9 we did for IMS. 10 out based on a case study? 10 Q. Can we turn to the last page of the exhibit, under 11 A. You know, I -- I don't actually have an 11 the "Difficulty" section? Are you there? 12 understanding of the criteria behind the award. 12 A. Yes. 13 Blackboard actually receives a number of awards during 13 Q. Do you see that this section talks about the three 14 the year. We've just been very fortunate that way. But 14 obstacles that Blackboard overcame? 15 I don't know the specific background of probably almost 15 A. Yes. 16 any of the awards at this point; although, I remember 16 Q. And there is a technical one, a financial one, and 17 being told that we won the award and being very excited 17 an academic one? 18 about it. 18 A. Yes. 19 MR. KEENER: Your Honor, may I approach with 19 Q. And the first one, the technical one, was that 20 Defendant's Exhibit 661? 20 Blackboard had to create software that any faculty 21 THE COURT: You may. 21 member could use without programming knowledge? 22 BY MR. KEENER: 22 A. That certainly was one of the challenges that we 23 Q. Do you have in front of you Defendant's 23 were facing at the time. The Internet was new. For 24 Exhibit 661? 24 teachers to be able to put their course material online, 25 A. Yes, I do. 25 we needed to make sure that they could do so without 37 (Pages 1941 to 1944) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 1945 Page 1947 1 having to know any of the technical difficulty around 1 Q. And the same is true for the words "multiple roles" 2 computer programming. So, that was, you know, one of 2 and "multiple predetermined roles"? 3 the things that we focused on. 3 A. Again, I don't think that the case study gets that 4 Q. So, the technical difficulty doesn't say anything 4 specific. I would need to look through it to verify it, 5 about single login, does it? 5 but I'll certainly agree if you say that those words 6 A. No, that sentence doesn't say anything about a 6 don't appear in it. 7 single logon. 7 Q. And the award, you said, was given out in 2000? 8 Q. The technical difficulties solved doesn't say 8 A. It's been hanging in our lobby for a number of 9 anything about multiple roles with multiple courses, 9 years and I certainly remember when I was told that we 10 does it? 10 were the recipient of the award and I remember the 11 A. I think it's a rather short description. 11 ceremony that we held receiving the award and the 12 Obviously, the product that we were building encompassed 12 celebration afterwards. But I really don't remember 13 a lot more than just making it easy for teachers to put 13 specifically the year; although, I do believe it was 14 course material online. I think this is really more of 14 right around 2000. 15 an abbreviation. But no, it does not say that 15 Q. And this was Blackboard had filed its initial 16 specifically. 16 application for a patent; is that right? 17 Q. But the case study which the award is based on 17 A. Well, 2000 would be after the initial application 18 describes a technical problem that was faced as that of 18 filing timeline, yes. 19 putting course materials online and the difficulty of 19 Q. And nowhere in Defendant's Exhibit 661 does it 20 professors in doing that without programming knowledge? 20 mention that there's any patent application pending; is 21 A. We were building an enterprise-class product. 21 that correct? 22 There were actually hundreds of difficulties that we 22 A. No. And, again, I'm not sure it would be 23 faced. I don't know if I would specifically say that 23 appropriate to mention an application for a patent 24 that was the most difficult challenge that we faced. 24 pending. We hadn't received a patent yet. If we had 25 Certainly that was one of the imperatives that we had. 25 received it, I believe that certainly would have been Page 1946 Page 1948 1 You know, one of the big focuses was making it so easy 1 one of the things highlighted in this. Although, again, 2 to use; but there was a number of scalability 2 I'm not sure who wrote this. So, this could have been 3 challenges, a number of things we had to make sure were 3 certainly someone on the Blackboard marketing team; or 4 right about the architecture. 4 it could have the Smithsonian Institute just writing a 5 When you're building an enterprise product, a 5 summary of the company that they decided to bestow this 6 lot goes into it. I mean, this is a pretty abbreviated 6 great award onto. So, I'm not exactly sure who wrote 7 summary; so, I don't think we got it all down into that 7 all of this language. 8 sentence. But I'm actually not sure that we even wrote 8 MR. KEENER: Pass the witness, your Honor. 9 this sentence. I don't -- this text isn't familiar to 9 CROSS-EXAMINATION OF MICHAEL CHASEN 10 me outside of this document; and I'm not sure whether 10 CALLED ON BEHALF OF THE DEFENDANT 11 Blackboard wrote it or someone else wrote it, to be 11 BY MR. MORISSEAU: 12 honest with you. 12 Q. Now, sir, this exhibit that's before you, this case 13 Q. Have you seen this document before, Mr. Chasen? 13 study, does it make any mention on why the technology is 14 A. I saw it yesterday for the very first time. 14 so important? 15 Q. In this section on "Difficulty," does it discuss 15 A. One of the reasons why I think that we were given 16 anywhere -- it doesn't discuss anywhere the idea of a 16 this -- 17 single login, does it? 17 THE COURT: Okay. He asked if the case study 18 A. No, I don't think that we got that technical or 18 mentions it. Let's -- let's focus on the exact 19 we'll -- I mean, it's just not that technical or 19 question. 20 descriptive in this section of the case study. 20 THE WITNESS: Sure. 21 Q. In fact, in the entire Defendant's Exhibit 661, the 21 A. In the section actually titled "Importance," it 22 words "single login" don't appear anywhere, right? 22 does talk about the fact that "in the early 1990s no 23 A. I would need to look at it more closely, but I will 23 suitable technology existed that can provide a scalable 24 take your word for it that that may not be specifically 24 and easy-to-use product." 25 called out in the Smithsonian case study on our product. 25 And as we talked about back in the beginning, 38 (Pages 1945 to 1948) Christina L. Bickham, RMR, CRR 409/654-2891
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1973 1975 1 time. We were primarily competing in Ontario, which is 1 for teaching and learning is centered around the brand 2 a province in Canada; and there wasn't much competition 2 that they have built. That's why those students select 3 with Blackboard at that particular time. It was more 3 those schools in the first place, as well as all the 4 along the lines of Virtual University, which was one of 4 individualized programs within. 5 the key products back then. 5 And, so, to be able to push that control from 6 Q. Now, sir, you talked with the jury about your work 6 a centralized model to the decentralized model was 7 at the University of Guelph -- and just so we're all 7 essentially important while still maintaining the 8 clear, this is G-U-E-L-P-H, right? 8 benefit of being able to have one implementation instead 9 A. Yes. I should be specific. It wasn't work with 9 of, you know, dozens. And, so, immediately they saved a 10 the whole campus. It was with a small office called the 10 tremendous amount on hardware, for example. 11 Office of Open Learning. 11 Q. And, sir, did your success at the University of 12 Q. Okay. And, sir, you considered that work to be one 12 Wisconsin depend upon the use of sample roles or default 13 of your first big breaks as a company; is that right? 13 roles or whatever you want to call them in your system? 14 A. Yes, it was. 14 A. No. 15 Q. Did you have another big break in 2003? 15 Q. Did you even have sample roles or default roles 16 A. Yes. 16 back then? 17 Q. Can you tell the jury about that? 17 A. We did not have sample roles or default roles back 18 A. We won a contract with the University of Wisconsin 18 then. 19 system, which is a consortium of about 26 campuses in 19 Q. And you were still able to Win that contract. 20 Wisconsin. And it was the first time a university 20 A. Yes. 21 system -- from what I understand -- and I'm not sure if 21 Q. Sir, in 2003 did you have any success with an 22 this is true or not. But from what I understand, it was 22 entity known as Columbia College? 23 the first time the university system selected a common 23 A. Yes, we did. 24 platform to implement for all campuses within their 24 Q. And can you tell the jury what Columbia College is, 25 university environment. 25 please? 1974 1976 1 Q. Now, sir, did your new organizational structure, or 1 A. Columbia College is -- it's a small college in 2 org structure, that you talked about feature in any way 2 Missouri that supports primarily the armed forces. So, 3 in your success at the University of Wisconsin? 3 they train people in the military from pretty much every 4 A. I think it was the critical factor for the 4 base throughout the U.S. and primarily through distance 5 University of Wisconsin system, because in their case, 5 education. So, they train about 30,000 people a year. 6 you know, they didn't want to have one institution 6 Q. And, sir, did you make a successful pitch at 7 controlling the environment for everybody. They wanted 7 Columbia College in 2003, as well? 8 to very much allow each of the individual campuses to 8 A. Yes. 9 have what I refer to as their own autonomy, their own 9 Q. And again, what were the key factors that led to 10 ability to control, their own implementations, if you 10 your success at Columbia College? 11 will, but to do that in a centralized manner so that 11 A. I think our willingness to listen to what their 12 they could save a lot of money on hardware. 12 needs were and be able to deliver on what they wanted in 13 Q. And how did your organizational structure allow the 13 terms of a solution. So, all the little features and 14 University of Wisconsin system to implement that goal? 14 the little functionality as well as the ability for us 15 A. So, what our technology allows them to do is 15 to -- instead of charging for every, you know, minor 16 implement our technology on one set of computers but, 16 upgrade -- being able to give them, you know, free 17 yet, be able to serve up different Web sites for 17 ongoing service for things like minor changes to the 18 different campuses. 18 application. 19 So, the University of Wisconsin Madison, 19 Q. And, sir, did your success at Columbia College 20 which has colors red and white, would have a different 20 depend in any way upon use of sample roles or default 21 look and feel than the University of Wisconsin 21 roles again, or whatever we want to call them? 22 Milwaukee, which would have -- I believe it's yellow and 22 A. Not at all. 23 black is their colors. You know, just little things 23 Q. Did you even have them at that point in time? 24 like that mean a world of difference in a university 24 A. No, we did not. 25 environment because, you know, their whole environment 25 Q. Now, sir, also in 2003 did you have success with
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1977 1979 1 another big Midwestern institution? 1 Q. And that's a letter from Blackboard's lawyers to 2 A. Yes, the state of Minnesota. So, Minnesota State 2 the Department of Justice; is that right? 3 College is the university. So, it's -- I believe it's 3 A. That's correct. 4 about 54 campuses across the state of Minnesota, 4 Q. And, sir, there is a section in this letter that 5 selected a common platform for their 725,000 students. 5 references the Ohio State contract on page 10; is that 6 Q. And, sir, again -- I don't want to go through all 6 right? 7 the details; but did that success in 2003 with the 7 A. I believe so. 8 University of Minnesota depend in any way on the fact 8 MR. DASSO: If we could go to that, Mark, 9 that you had sample roles or didn't have sample roles? 9 please. 10 A. No. 10 BY MR. DASSO: 11 Q. Did you even have sample roles back then? 11 Q. Can you see that there, sir? 12 A. No, we did not. 12 A. I do see it. 13 Q. Now, sir, turning your attention forward in time to 13 Q. And do you see the reaction of Blackboard when you 14 June of 2004, did you make some presentations to the 14 obtained Ohio State was Mr. Chasen writing: (reading) 15 Ohio State University? 15 Jeez, why can't we beat these guys? 16 A. Yes, we did. 16 A. Yes, I see that. 17 Q. And were you successful at that, sir? 17 Q. And do you see that the reference there also is 18 A. Yes, we were. 18 that (reading) these guys, D2L, have momentum, 19 Q. And can you tell the jury why you were successful 19 particularly in the Midwest and particularly with the 20 with Ohio State University? 20 Big Ten schools. This makes Iowa even that much more 21 A. I think it was a number of factors, again, for the 21 important. We simply have to figure out a way to Win 22 Ohio State University. They actually did a full 22 that one. 23 analysis of the systems that were competing so they -- I 23 Do you see that, sir? 24 think short-listed it down to about four vendors and 24 A. I do see that. 25 then selected us from that short list. 25 Q. Now, sir, right around this time, in June of 2004, 1978 1980 1 And they based the decision a lot on 1 did Blackboard become a public company? 2 usability of the system -- so, how easy is it for 2 A. I believe it was -- was it around June 18th? 3 faculty to understand how to use it, how easy is it for 3 Q. Okay. And, sir, did you receive a phone call from 4 students to use, how easy is it for us to train 4 Mr. Chasen shortly after that? 5 people -- them to train people, I should say -- how easy 5 A. I believe it was the day afterwards. 6 is it for people to just jump into using the application 6 Q. And can you tell the jury what was said during the 7 instead of having to go through a big, I guess, 7 course of that phone call between you and Mr. Chasen? 8 transition hurdle, if you will. 8 A. Mr. Chasen said this is the first -- "You're the 9 And then I think for that particular 9 first person I'm phoning after getting our IPO. Let's 10 university, service and support and a really sound 10 talk about opportunities to merge companies." 11 architecture, which means the base foundation of the 11 Q. And what did you understand Mr. Chasen to -- what 12 application which would allow them to grow in the 12 subject did you understand Mr. Chasen to be introducing 13 future, was very important. 13 when he called you and said those statements? 14 And maybe finally -- and there are probably a 14 A. I think he was interested in acquiring us with his 15 lot of others; but one of the other key things is they 15 IPO money that he had raised. 16 wanted to brand it to Carmen, which is their valley cry 16 Q. And can you tell the jury what your response to 17 for Carmen, Ohio. I'm not sure if you watch football, 17 that telephone call was, please? 18 but you'd probably hear it a few times. 18 A. I think in short, and paraphrasing a little, it 19 Q. Okay, sir. Is it at this point that Blackboard 19 was, you know, we're not interested in selling to you no 20 started to take notice of you as a company? 20 matter how much money you have in your bank account. 21 A. I think it was reasonably prior to that; but, yes, 21 Q. Now, sir, turning your attention ahead to November 22 they certainly paid attention to us at this point. 22 of 2004, was there, in fact, some competition between 23 Q. Sir, you've seen, as you've sat through the course 23 Blackboard and you with respect to the University of 24 of this trial, Defendant's Exhibit 224; is that right? 24 Iowa? 25 A. I do remember that, yes. 25 A. There was, indeed.
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1981 1983 1 Q. And, sir, were you successful in that competition? 1 A. I do see that. 2 A. We were. 2 Q. There is nothing in there, sir, about default roles 3 Q. Can you tell the jury why you were successful in 3 or sample roles or anything, is there? 4 that competition? 4 A. No. 5 A. I think there's been numerous reasons why we were 5 Q. Now, sir, let me turn your attention ahead to 6 successful. One of them is called the "Chuck paradox." 6 February of 2005. Did you have another time where you 7 It was named after one of the professors, basically 7 crossed paths with Blackboard around the University of 8 solving a problem of very easy-to-use technology with 8 Oklahoma? 9 all of the functionality that they were looking for. 9 A. I think -- yes. 10 So, they wanted a really what they call "rich 10 Q. And were you successful also with the University of 11 pedagogical tool set" with a lot of easy-to-use 11 Oklahoma? 12 functionality. 12 A. Yes, we were. 13 Q. And, sir, did your success at the University of 13 Q. And did you understand that, sir, Blackboard was so 14 Iowa depend in any way upon your use of sample roles or 14 desperate to keep that business they were willing to 15 default roles? 15 give them a free year to stop it? 16 A. No, it did not. 16 A. This trial is the first time I've ever heard of 17 Q. Did that come up at any point in time in your 17 that. 18 discussions with the University of Iowa? 18 Q. And again, sir, why were you successful at the 19 A. No, it didn't. 19 University of Oklahoma? 20 Q. And, sir, again we're turning back to Defendant's 20 A. I think in that particular case, I think they 21 Exhibit 224. There is a reference in that department to 21 really focused a lot on reliability of the application. 22 the Department of Justice. Do you see that? 22 I think they had experienced some significant downtime. 23 A. I do see that. 23 Q. And, sir, did that success at Oklahoma have 24 Q. And they indicate that they have spent significant 24 anything to do with those roles? 25 time and resources in competing for the business and 25 A. No, it did not. 1982 1984 1 that it took on special significance in the way of the 1 Q. Turning your attention forward again, sir, to April 2 Ohio State University loss? 2 of 2005 -- 3 A. I do see that. 3 MR. DASSO: And I think it's a page ahead, 4 MR. DASSO: If we could go to the next page, 4 Mark. 5 Mark, please. 5 BY MR. DASSO: 6 BY MR. DASSO: 6 Q. And you see down there at the bottom, sir, the 7 Q. And then it continues on to the next page, sir. 7 Adventist Distance Education Consortium and Loma Linda 8 And I don't want to read through the whole thing, but do 8 University. Do you see that? 9 you see where it's talking about Blackboard noting that 9 A. I do see that. 10 D2L was perceived to have a totally new architecture 10 Q. And that was another time that you crossed paths 11 while Blackboard is perceived to be a first-generation 11 with Blackboard; is that right? 12 product loaded with new features? 12 A. That is correct. 13 A. I do see that. 13 Q. And were you successful with that, sir? 14 Q. And do you have an understanding of what is meant 14 A. We were. 15 by the reference to a "totally new architecture"? Is 15 MR. DASSO: Go to the next page, Mark, 16 that something you were selling in the marketplace? 16 please, and blow up the top there. 17 A. I think it's referring to our organizational 17 BY MR. DASSO: 18 structures. 18 Q. And do you remember some discussion with Mr. McLeod 19 Q. And did you, in fact, sell that to customers as one 19 yesterday -- I think it was yesterday. The trial days 20 of the key features or key aspects of your system? 20 are kind of all going together. But do you remember the 21 A. Absolutely, especially for universities like Iowa 21 discussion with Mr. McLeod about who was more expensive, 22 that had very complex organizational structures. 22 Blackboard or D2L? 23 Q. And then, sir, you also see there is a reference in 23 A. Yes, I do remember that. 24 the quoted section by Mr. Todd Gibby about the lack of 24 Q. And there was some question about what you factor 25 support and the architecture being the deciding factors. 25 in and everything like that?
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2005 2007 1 Q. Okay. Now, one of the opinions that he expressed 1 and forth, records of interviews, all that material. 2 was that the Blackboard patent is invalid; is that 2 Q. Now, if you could, doctor, we're going to make sure 3 right? 3 that you have Plaintiff's Exhibit 2, a copy of the file 4 A. Yes, I heard that. 4 history for the Blackboard patent. We've seen this 5 Q. And he also expressed the opinion that Desire2Learn 5 before briefly, but I'd like to just take a few moments 6 has not infringed the Blackboard patent. 6 to look back at that. 7 A. Yes. 7 MR. BRIGHT: And if we could have Plaintiff's 8 Q. Okay. And the third opinion he gave was about the 8 Exhibit 2 brought up on the screen. 9 Desire2Learn software modification; is that right? 9 BY MR. BRIGHT: 10 A. That's right. 10 Q. Doctor, can you tell us just what this is? 11 Q. Do you agree with any of the opinions that 11 A. This is the first page of the file history saying 12 Dr. Simmons gave? 12 this is -- and the rest of it explains what the actual 13 A. No, I don't agree with those opinions. 13 file history is. 14 Q. Okay. Let's start with his first opinion that the 14 MR. BRIGHT: Okay. Now let's go to the page 15 Blackboard patent is invalid. Can you just briefly 15 5023318. 16 summarize, if you would, your conclusion on that 16 A. Okay. 17 question? 17 BY MR. BRIGHT: 18 A. Yes. My conclusion is that the prior art 18 Q. Now, doctor, can you tell us what you see at that 19 references that he showed don't anticipate the 19 page? 20 Blackboard patent and that the combinations that he 20 A. This page is an interview summary between the 21 showed us don't make the invention obvious. 21 Patent Office and the inventors. This is where the 22 Q. And, so, is it your conclusion, doctor, that the 22 Patent Office fills in the summary of their discussion 23 Blackboard patent is, indeed, valid? 23 with the inventors in the meeting. 24 A. Yes. 24 Q. Okay. And can you just tell us what happened -- 25 Q. Okay. Now, what did you do -- you told us about 25 what that interview was? 2006 2008 1 all that you did in your infringement investigation in 1 A. Yes. Here the inventors are explaining or 2 this case. Can you just summarize, if you would, what 2 discussing with the examiners why they believe their 3 you did on the validity question? 3 patent, or their application, should be granted; and 4 A. Sure. Again, I started with the patent and 4 they're differentiating it against one of the patents 5 examined that. I looked at the file history, which 5 that they cited for the examiner to examine. In this 6 included the provisional applications that Blackboard 6 case it's what we referred to in shorthand as the "Cook 7 submitted. Then I looked at the prior art references, 7 patent." 8 the material that Desire2Learn said applies to the 8 Q. Okay. Can you just tell us what was discussed at 9 patent; and I read all of those. And I compared those 9 the interview? 10 against the patent, and then I wrote my reports. 10 A. Sure. The key reason, the key differentiation here 11 Q. And what did you conclude in your reports, doctor? 11 that is being cited by the examiner is the fact that the 12 A. I should say I also read Dr. Simmons' report first. 12 multiple roles idea, this idea of -- that we've been 13 But I concluded that the Blackboard patent was valid. 13 talking about for a user to have multiple roles is the 14 Q. Okay. So, you looked at everything that 14 key distinguishing feature, also using those roles to 15 Dr. Simmons told you about and all of his opinions; and 15 control the level of access and control to course files, 16 you just simply disagreed. 16 as well. 17 A. That's correct. 17 Q. Okay. Now we have it on the screen, doctor. Can 18 Q. Okay. Let's talk about why you disagreed. You 18 you just -- 19 said one of the things that you looked at was the 19 MR. BRIGHT: Can we highlight the multiple 20 Blackboard patent file history. Can you remind us what 20 roles words there? 21 that is? 21 A. Yeah. There we have the multiple roles for user 22 A. Yes. That's the record of communication between 22 being emphasized as potential distinguishing feature. 23 Blackboard and -- or the inventors and the Patent 23 So, this is what Blackboard was pointing out to the 24 Office -- so, the original provisional application, the 24 Patent Office during that meeting, was this is the heart 25 materials that went with that, letters that went back 25 of our invention.
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2009 2011 1 BY MR. BRIGHT: 1 laying out the Background of the Invention so this will 2 Q. Okay. Now, so, Blackboard was distinguishing its 2 put their invention into context. They're saying here's 3 invention from the prior art on the basis of this 3 the situation; and then in the remainder of the patent 4 multiple roles idea? 4 when they describe the invention, they're going to say 5 A. Yes. 5 and this is what we did. 6 Q. Do you see any reference there, doctor, to the 6 BY MR. BRIGHT: 7 words "predetermined" or "predefined"? 7 Q. Okay. And can you just briefly summarize the 8 A. No. There's no reference to that there. 8 problems of the old way? 9 Q. And what conclusion do you draw from that? 9 A. Sure. The problem in the old way was that a single 10 A. That the key distinguishing feature and the heart 10 user, if that user wanted to be an instructor in one 11 of the invention as we've been talking about is the idea 11 course and a student in another, that user needed to 12 for a single user to have access to all the roles in all 12 have two different logins, two different user names or 13 their classes. 13 sign-ins, as we saw in, for example, the Serf system or 14 Q. Okay. And then what became claim 36 that we've 14 in the CourseInfo 1.5, the old version of what Dan Cane 15 been looking at in this case, was it amended to include 15 invented. That's the old way. 16 this feature? 16 Q. Okay. And, so, I just want to emphasize that 17 A. Yes, it was. 17 point. In all of the prior art that Dr. Simmons talked 18 Q. Okay. And was it amended to include additional 18 about, was that the old way or the new way? 19 language, as well? 19 A. That was the old way. The inventors described 20 A. Yeah. What happened was the inventors came back 20 the -- or knew about the old way. The prior art is the 21 with clarifying amendments, just making it clearer when 21 old way, that CourseInfo 1.5 and Serf, that's the old 22 they wrote out the claims to the patent examiner here's 22 way. 23 what our invention is. So, they had laid out all these 23 Q. Let's look at the new way. Remind ourselves 24 things prior to this; but the patent -- they needed to 24 that -- of this invention. Let's go to Column 4, 25 make them clearer to the examiner. So, they made what 25 lines 52 through 63. 2010 2012 1 they call "clarifying amendments." 1 A. So, here in the patent the inventors are talking 2 Q. Okay. And now let's go to the Blackboard patent. 2 about a user being required to enter a login sequence -- 3 Does the Blackboard patent describe what the old way was 3 so, we see that up there. And once they do that, 4 and then what the new way was with this invention, 4 they're going to gain access to all of their course 5 doctor? 5 files associated with that user. 6 A. Sure. As we talked about last week, the inventors 6 Q. Okay. And in the context of this patent, doctor, 7 lay out in the Background of the Invention section, 7 does the user, through a single login, get access to all 8 where they talk about the current state, they're 8 of their roles and all of their courses? 9 describing the old way there. And then in the remainder 9 A. Sure. If you continue down a little bit where they 10 of the patent, the invention, where they describe it in 10 talk about the Web page with a plurality of -- basically 11 the specifications and the drawings and the claims, 11 meaning a bunch of course hyperlinks, they'll have 12 that's the new way. So, the inventors said here's the 12 them -- each of the courses in which they are 13 way things are now; here's the new way. 13 enrolled -- go down a little bit further -- each course 14 Q. Okay. So, let's look at Column 2, lines 49 through 14 that the user has been enrolled in -- I think we're on 15 56. Okay. And do you see where it begins "In existing 15 the wrong page. 16 networks" at the top there? 16 There we go. Okay. So, the user gets a Web 17 MR. BRIGHT: Let's go ahead and highlight 17 page that has a plurality of course hyperlinks; and then 18 that. 18 each one of those hyperlinks is going to be associated 19 A. So, yes, we see up here talking about as we showed 19 with a course in which the user is enrolled as either an 20 last week -- or as I showed last week, existing systems. 20 instructor or student. So, they're getting access 21 The student is going to have to log onto multiple 21 through a single login to all of their roles in all of 22 networks; and then the inventors talk more here about 22 their courses; and they're calling out an example here 23 what they're going to be seeing, grade information, exam 23 of where the user sees courses whether they are an 24 materials. They are describing here's what had to be 24 instructor or a student. 25 done at this point, here's the problem. And they're 25 Q. Okay. And then we saw Figure 5. Let's go to
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2017 2019 1 login. That's what I think is contrary to the court's 1 take him on cross to point out to the jury the other 2 claim construction, which is -- 2 way. In the final analysis I don't think it makes a 3 THE COURT: Well, except that "a" -- I mean, 3 whole lot of difference, but maybe it does. 4 this request for the additional construction came up a 4 MR. SPIVEY: Thank you, your Honor. 5 little late. I mean, both experts have had their chance 5 THE COURT: Okay. 6 to look at it and I don't think I've denied either one 6 MR. SPIVEY: I'll take the opportunity -- 7 of them and both sides have used it. It would be a 7 THE COURT: If I'm missing something, tell 8 little difficult when we're talking about "a" and there 8 me, because, believe me, I -- just in case you're 9 is a pretty standard rule. "A" can mean one, or it can 9 wondering, I've spent some time thinking about these 10 mean more than one. It's the indefinite article 10 constructions and how it works out. This is -- in this 11 different than normal English grammar where it would 11 particular case, the evidence I've heard has had -- 12 probably just mean one -- that an expert can't say that 12 there's been a lot of evidence in this case now that 13 that can mean one. 13 it's focused in on the issues that, you know, gives one 14 Now, on cross-examination he can probably be 14 things to think about, how is this going to play out. 15 forced to admit that it could mean more than one. But 15 So, I have been thinking about that; but I don't see how 16 that's what "a" means. I mean, it's the common, 16 you and I are really saying anything much different. 17 ordinary sense of the word as understood by one skilled 17 MR. SPIVEY: I think, your Honor, the problem 18 in the art. And I don't see what's wrong with asking 18 I was having with Dr. Jones' testimony is it was 19 him that question when you can cross-examine to the 19 equating the single login with the court's construction 20 contrary and point out that it could mean more than one. 20 instead of leaving open the possibility that it would 21 I mean, are you -- I want to be very sure I 21 cover multiple logins, as well. 22 understand you. 22 THE COURT: Okay. All right. As long as I 23 MR. SPIVEY: Right. 23 don't hear him say that's the only possible way to 24 THE COURT: You're not arguing that that 24 construe it; and because, you know, that can be brought 25 could not be read as allowing for just one per student. 25 up on cross or whatever, we'll leave it where it is as 2018 2020 1 MR. SPIVEY: I think, your Honor, you hit the 1 it is now. Okay? 2 point exactly. The trouble I'm having here is that 2 And we've got about five minutes for recess; 3 Dr. Jones is opining that it means a single login, and 3 so, we're in recess. 4 the court is absolutely right that the indefinite 4 (Recess, 2:40 p.m. to 2:50 p.m.) 5 article "a" could mean one or more. And that's not what 5 (Open court, all parties present, jury 6 he's opining -- 6 present.) 7 THE COURT: Well, if I heard him say, for 7 THE COURT: You may continue, Mr. Bright. 8 example, that can only mean a single login, I think I 8 BY MR. BRIGHT: 9 would have to correct him upon -- and I'm sure you would 9 Q. Now, doctor, before the break we were looking at 10 object. So far what I've heard him say is that that 10 Judge Clark's definition for the term "user." Does 11 means a single login. I think it's also true it could 11 claim 36 use the word "user"? 12 mean -- under standard patent parlance, as they say, it 12 A. Yes, it does. 13 could mean in some situations more than one. But that's 13 Q. Okay. In what context does claim 36 use the word 14 almost common sense. 14 "user"? What's it say about a user? 15 Someone could have several -- I don't know 15 A. It's talking about -- for example, in the preamble 16 why they would, except maybe for budgetary purposes. 16 talking about a community of users in 36A -- it's 17 When you're instructing in one department you use one 17 talking about a user being assigned to multiple roles. 18 login; so, your computer time is charged to Department 18 If you look up here, you can see "establishing each user 19 A. And then later on, when you're over in the other 19 is capable of having predefined characteristics 20 department, it gets charged over there. I don't know if 20 indicative of multiple predetermined roles in the 21 computer time is even that expensive anymore. It was 21 system" and then speaks of what those roles can do. 22 when I was young. 22 Q. Okay. So, claim 36 itself tells us that each user 23 But I think we agree that it can mean one; it 23 is capable of having predefined characteristics 24 can mean more than one. I haven't heard him say it can 24 indicative of multiple predetermined roles in the 25 only mean more than one, and you're obviously free to 25 system?
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2021 2023 1 A. That's correct. And we have a construction from 1 That's what I talked about in my presentation was "set 2 the judge for that, as well. 2 in advance within the system." 3 Q. Okay. So, let's look back at Judge Clark's 3 Q. Okay. Let's just tie that up, if we can. What is 4 definition of what a "user" is. Okay. Now, doctor, can 4 your understanding of how Judge Clark has defined the 5 you tell us how you factored in Judge Clark's definition 5 term "predetermined"? 6 of "user"? 6 A. My understanding is that he's telling us that means 7 A. I applied Judge Clark's definition in each of the 7 set in advance within the system. 8 claims in which the word "user" appeared. We're 8 Q. Do you see the words "hardcoded" at all in 9 talking -- as we said before, we're talking about a user 9 Judge Clark's definition, doctor? 10 logging in with a user name and password and then 10 A. No. It's just that it has to be set in advance 11 getting access to all of the roles and all of the 11 within the system, not hardcoded. 12 courses; and that's describing 36A. 12 Q. Do you see the word "permanent" in Judge Clark's 13 Q. So, with the claim itself and then Judge Clark's 13 definition here, doctor? 14 definition of the term "user," you have that a user, by 14 A. No. There's no implication here that it has to be 15 logging on with a user name and password, gets access to 15 permanent or that it can't ever be changed. 16 all of their roles in all of their courses? 16 Q. Do you see any indication here, doctor, that the 17 A. That's correct. 17 roles that are set in advance within the system cannot 18 Q. Now, is that different from the prior art, doctor? 18 be deleted? 19 A. Yes, it is. The prior art that we talked about 19 A. No. There's no indication of adding or deleting 20 before, the CourseInfo 1.5 and Serf, those systems, a 20 being required here or that they can't be -- the judge 21 user had to have a login for each one of the roles. So, 21 has told us to interpret predetermined as set in advance 22 for example, in Serf, as we saw from Professor 22 within the system, and that's how I interpreted it. 23 Hofstetter, if a user wanted to be a student in one 23 Q. Now, we've heard a lot about flexibility, as well. 24 course and an instructor in another, that user was going 24 Does the Blackboard patent talk about flexibility? 25 to require two separate logins. That was the old way 25 A. Certainly. As I showed you last week, the 2022 2024 1 that Mr. Cane talked about and Mr. Gilfus talked about. 1 Blackboard patent describes, for example, how the 2 The patent describes the new way. 2 permissions associated with roles can be changed. 3 Q. And the new way is a user logs on with a user name 3 If we look at -- 4 and password and gets access to all of their roles in 4 Q. Let's go ahead and go to Plaintiff's Exhibit 1, the 5 all of their courses? 5 Blackboard patent; and we're going to look at Column 12. 6 A. That's correct. 6 A. It is on the bottom right. 7 Q. And that's the new way in this invention? 7 Q. Specifically lines 61 through 63. 8 A. Yes, it is. That's the new way in the Blackboard 8 MR. BRIGHT: Let's go ahead and highlight the 9 patent. 9 sentence: "The system administrator may control 10 Q. I also wanted to look at Judge Clark's other 10 security permissions and enable/disable features for 11 definition that he gave us; and maybe we can provide 11 numerous user roles." Do you see that, doctor? 12 some clarity there for those, as well. 12 A. Yes. This is what I talked about last week, a 13 MR. BRIGHT: Let's go to Slide 2 if we can. 13 feature of the Blackboard patent, the system, is that it 14 BY MR. BRIGHT: 14 has flexibility, that it allows for the permissions 15 Q. Now, doctor, we heard a lot about the predetermined 15 associated with roles to be modified, to be changed. 16 roles in Step A of claim 36. Do you see that phrase 16 And here we see added and -- or enable/disable, added 17 there, "predetermined roles"? 17 and deleted. We're not talking about hardcoded or 18 A. Yes, I do. 18 permanent or anything like that. 19 Q. Okay. And has Judge Clark given us a definition 19 Q. And all that we have is that the roles have to be 20 for this Step A of claim 36? 20 set in advance within the system according to 21 A. Yes. The judge has told us for the highlighted 21 Judge Clark's definition? 22 part of the claim we should use this definition down 22 A. That's correct. 23 here: "Establishing that discrete roles and their 23 Q. Now let's take a look again at claim 36 itself 24 associated characteristics to which a user can be 24 again and focus on what we call the preamble, the very 25 multiply assigned are set in advance within the system." 25 first part of the claim.
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2029 2031 1 Biology 101 and one login to be a student in Advanced 1 teaching assistant, or student. They're going to be one 2 Biology. 2 of those things. 3 Q. Now, is that the old way, doctor? 3 As Professor Hofstetter said, to be a 4 A. That's the old way just as we've been talking about 4 teaching assistant, a single user name and password is 5 in the Background of the Invention and just like, for 5 associated or assigned to exactly one user type. So, 6 example, Dan Cane described when he was talking about 6 when Dr. Hofstetter said it would take two separate 7 the state-of-the-art at the time. 7 logins, what he's saying is that if I'm assigned -- say, 8 Q. Now, I just want to clear this up, doctor. What 8 "markj" is my user name and I'm assigned to be a 9 you heard from Dr. Simmons, were there any surprises 9 student, I can't go and be assigned to another user 10 there about what he talked about? 10 title. I can only be assigned to one role. 11 A. No, there weren't. We each had our opinions in our 11 Q. Okay. And again, is that the old way, doctor? 12 reports long ago. 12 A. That's exactly the old way. 13 Q. So, you were prepared to talk about all of these 13 Q. So, let's talk about your conclusions on the 14 questions of validity today? 14 question of anticipation with respect to the Serf 15 A. Yes. I've seen all these references that we've 15 reference. 16 been discussing. 16 MR. BRIGHT: Let's go to Slide 26 if we can. 17 Q. Okay. And what was your conclusion, even before 17 BY MR. BRIGHT: 18 today, having seen all of Dr. Simmons' opinions and his 18 Q. Can you tell us what your conclusions are here, 19 reports and studied all the materials, the references? 19 doctor? The question is whether or not, first, Step A 20 A. My conclusion was, for example, in the case of 20 is in Serf. 21 Serf, that Serf did not anticipate claims 36 through 38; 21 A. Yes. Step A is not in Serf. As I said, Serf 22 and that was my conclusion for all of the other papers 22 doesn't allow a user on a single login to be assigned to 23 and publications that Desire2Learn sent to me. 23 multiple roles. So, that's the old way. That doesn't 24 Q. And did you also draw the conclusion that nothing 24 anticipate claim 36A. 25 that you were shown or seen invalidates the Blackboard 25 Q. So, Serf doesn't allow a user by logging in through 2030 2032 1 patent? 1 a user name and password to get to all of their roles in 2 A. That's correct, as I said on the first day I 2 all of their courses? 3 testified. 3 A. That's correct. 4 Q. And does Dr. Hofstetter's testimony confirm your 4 Q. And did Dr. Hofstetter confirm that for us during 5 conclusion? 5 this trial? 6 A. Absolutely. 6 A. Yes, he did. 7 Q. Okay. And can you just tell us what that is again? 7 Q. Now let's go to Step B 3. What is your conclusion 8 A. Sure. My conclusion is that Serf doesn't 8 about that? 9 anticipate claim 36 of the '138 patent. It doesn't do 9 A. Again, since B 3 is according to Step A and talks 10 that because a single user can't have access to all 10 about the roles of the users according to Step A, that 11 their roles upon a single login. They need to log in 11 if Dr. Hofstetter -- or if Serf isn't doing Step A, then 12 twice to do that. 12 it can't be doing logically B 3. 13 Q. Would you like to take a look at Serf itself, 13 Q. And then what about Steps C and D? 14 doctor? 14 A. So, again, C and D are talking about roles in the 15 A. Sure. Let's look at the user manual for Serf. 15 context of the patent, in the specification, and the 16 Q. So, we're looking at now Defendant's Exhibit 5? 16 context of 36A. In that case C and D are also not going 17 MR. BRIGHT: Let's go to page 2, and if we 17 to be anticipated by the Serf user guide. 18 can blow up from "Overview" through bullet point 5. 18 Q. And you reviewed all the Serf materials in this 19 BY MR. BRIGHT: 19 case including the ones identified by Dr. Simmons during 20 Q. Now, do you see there it says there are five kinds 20 his testimony? 21 of users in Serf, doctor? 21 A. Yes, I did. 22 A. Yes. So, what it's telling us is there are 22 Q. And did you find that those materials -- any of 23 different -- each user has a user type or five kinds of 23 those materials anticipate Blackboard patent claims 36 24 users. And the types of users are laid out here. A 24 through 38? 25 user is a Serf sysadmin, an administrator, instructor, 25 A. Not at all.
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2033 2035 1 Q. Let's go to claims 37 and 38, Slide 27. And just, 1 A. Yes. 2 if you would, quickly tell us what your conclusion is 2 Q. Now let's go to Defendant's Exhibit 4. And these 3 about Serf with respect to these claims and the basis. 3 pages are not numbered, but it's the fourth page of the 4 A. Sure. 36 -- I'm sorry. 37 depends on claim 36. 4 document. And let's go to the section "Generating Your 5 So, if 36 isn't disclosed or anticipated by Serf, then 5 CourseSite." Let's highlight the sentence that says: 6 37 cannot be disclosed. 6 "The system administrator at your institution will 7 Same thing -- or anticipated. 7 provide you with the appropriate URL for course creation 8 The same thing is true for 38. If 37 -- 38 8 or if you decide to have CourseInfo host your course 9 depends on 37; so, if 37 isn't anticipated, then 38 9 then we will provide you with the appropriate URL." Do 10 cannot be anticipated, either. That's how it works with 10 you see that, doctor? 11 these dependent claims. 11 A. Yes. What this is talking about is a course has a 12 Q. So, doctor, can you just please wrap up your 12 specific URL in CourseInfo 1.5. So, each course -- as 13 conclusion about the question of anticipation and Serf? 13 Mr. Cane talked about earlier, each course is by itself. 14 A. Certainly. Serf does not anticipate claims 36 14 So, you need a separate URL for each course in 15 through 38 of the Blackboard patent. 15 CourseInfo 1.5. A user login name gets access to one 16 Q. And did you also study, doctor, the CourseInfo 1.5 16 role in one course. 17 product? 17 Q. And that was the old way again, doctor? 18 A. Yes, I did. That's the product that Dan Cane 18 A. Yes. 19 described as the old way, the predecessor to CourseInfo 19 Q. Let's go to -- 20 2.0. 20 MR. BRIGHT: It's the page Bates 21 Q. Okay. So, you were here for Mr. Cane's testimony, 21 Numbers BB2410507. 22 doctor? 22 BY MR. BRIGHT: 23 A. Yes, I was. 23 Q. And while we're waiting for that, doctor, if you 24 Q. Okay. And he talked about CourseInfo 1.5 as being, 24 could look at that in your binder. 25 you know, the old way of doing things; is that right? 25 MR. BRIGHT: Let's go up and blow up the 2034 2036 1 A. That's correct. 1 first two paragraphs on that page. And in the first 2 Q. Okay. And then he talked about CourseInfo 2.0. 2 paragraph let's highlight the sentence: "Four distinct 3 A. Yes. 3 accounts can be created here: student, teacher's 4 Q. Can you tell us -- remind us what he said about 4 assistant, professor, and administrator." 5 that. 5 A. Right. So, what's being described here, again, is 6 A. So, he was explaining that in CourseInfo 1.5, that 6 the old way. Each user account -- an account has a user 7 a user only was assigned to one role. So, if a user was 7 name and password. Each account is one type of user. 8 a student, they had to get a different ID -- a different 8 In this case the user types are student, teacher's 9 user ID if they wanted to be a different type of user. 9 assistant, professor of, and administrator. If a user 10 That was the old way. So, on a single login you didn't 10 wanted to be more than one type of user, they had to 11 get access to all of your roles and all of your courses 11 have different logins, different user names and 12 in the old way. 12 passwords. 13 Q. And did you hear Dr. Simmons' testimony about 13 BY MR. BRIGHT: 14 CourseInfo 1.5? 14 Q. Okay. And then looking at the next section, 15 A. Yes, I did. 15 "Creating a new user," do you see that? Do you see the 16 Q. Okay. And did you hear him testify that CourseInfo 16 first sentence that says: "Let's create a new user 17 1.5 anticipates claims 36, 37, and 38? 17 account for your site"? 18 A. Yes, I did. 18 A. Yes. 19 Q. And do you agree? 19 Q. Can you tell us how that factors into your 20 A. I don't agree. CourseInfo 1.5 is the old way. 20 opinions? 21 That's what's described in the Background of the 21 A. Yes. Here again we're talking about one account 22 Invention. 36 through 38 are the new way. That's what 22 for one site. So, each site that a user wants -- or 23 the patent was about. 23 each course will have its own site and a user has to 24 Q. Would you like to show us some portions of the 24 have a login for that particular site. 25 CourseInfo 1.5 manual? 25 Q. And that was the old way, doctor?
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2037 2039 1 A. Yes, it was. 1 and the information before the Patent Office included 2 MR. BRIGHT: Let's go to the first page in 2 role-based access control? 3 this CourseInfo 1.5 manual, Defendant's Exhibit 4. And 3 A. Yes. When we -- as we'll look at in a minute, we 4 let's blow up the top where it begins "user type." And 4 were talking about the Cook patent a few minutes ago. 5 let's highlight the first sentence: "User type 5 The Cook patent describes the use of role-based access 6 specifies the level of access for this user." Can you 6 control. 7 tell us how this factors into your opinion, doctor? 7 MR. BRIGHT: Let's go to Slide 30. 8 A. Yes. This is telling us that a particular user 8 BY MR. BRIGHT: 9 will have one user type. They're not going to have 9 Q. Now, doctor, here we have a slide; and it's titled 10 multiple ones. It's not possible in the system for them 10 "CMS and RBAC Considered by Patent Office." Do you see 11 to be assigned to multiple roles. They'll get exactly 11 that? 12 one user type. So, either student, professor, or 12 A. Yes. 13 teacher's assistant in this screen. 13 Q. Okay. Can you tell us what CMS stands for? 14 Q. And, again, was that the old way, doctor? 14 A. Course management system, and then RBAC is 15 A. Yes, it was. 15 role-based access control. 16 Q. And have you reviewed and listened to all of 16 Q. Okay. Now, can you tell us what we're seeing on 17 Dr. Simmons' opinions about everything that he's come 17 the left here and identify it for the record? 18 forward with CourseInfo 1.5? 18 A. Yes. This is an excerpt of the Background of the 19 A. Yes, I have. 19 Invention section that we've been looking at. It should 20 Q. And what have you concluded? 20 say '138 patent. And it's from Column 2, lines 49 21 A. I've concluded that CourseInfo 1.5 is the old way. 21 through 56. Again, it's summarizing the old way. This 22 It doesn't anticipate claims 36 through 38. 22 is part of the application that Blackboard put into the 23 Q. Now let's turn to your opinions that the Blackboard 23 Patent Office. 24 patent claims are not obvious. 24 Over here (indicating) is what we're 25 A. All right. 25 referring to in shorthand as the Cook patent or the 463 2038 2040 1 Q. Did you hear Dr. Simmons testify that the 1 patent -- 2 combination of existing course management systems and 2 Q. Let me just actually -- 3 role-based access control rendered the Blackboard patent 3 A. Okay. 4 claims obvious? 4 Q. I think our slide is incorrect. That's actually 5 A. Yes, I did. 5 Plaintiff's Exhibit 463, the Cook patent that was of 6 Q. Do you agree? 6 record before the Patent Office; and we're looking at 7 A. No, I don't. 7 Column 45, lines 7 through 20. 8 Q. Why not? 8 A. Okay. 9 A. I don't believe they were obvious, and I'll outline 9 Q. Go ahead. 10 the reasons as we go forth here. 10 A. This is a patent that Blackboard submitted for the 11 Q. Now, did you consider the scope and content of the 11 prior art, for the Patent Office to consider to say this 12 prior art? 12 and the Background of the Invention, what we're telling 13 A. Yes. By that -- when looking at obviousness, one 13 you here, this is what we think describes the current 14 of the things that I needed to look at was to look at 14 situation. 15 the scope, what was the prior art, what was available, 15 Q. Now, before you continue, earlier we looked at the 16 and what was in it. That's what he's saying by scope 16 interview summary; and that was a paper in the patent 17 and content of the prior art. 17 file history while the Patent Office was examining the 18 Q. Okay. Now, did you -- having looked at the file 18 Blackboard patent application where there was a meeting 19 history, doctor, did you find that the existing course 19 between at least some of the inventors and the examiner 20 management systems were described to the Patent Office 20 at the Patent Office? 21 during the patent application? 21 A. Yes. 22 A. Sure. As I've talked about before, the Background 22 Q. And did they discuss this Cook patent, this 23 of the Invention section itself describes the 23 Plaintiff's Exhibit 463 that we have on the right-hand 24 state of the art at the time. It describes the old way. 24 side of your slide? 25 Q. Okay. And did you find that the patent application 25 A. Yes. And we looked at before that interview
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2045 2047 1 A. Sure. When I'm talking about similarities, what I 1 were multiple course management systems around at that 2 mean there is we look at the prior art -- and, yes, in 2 time from some of the Blackboard documents. They list 3 the prior art there are course management systems and 3 the different competitors in the field at about the time 4 there may be features such as a chat tool or different 4 of the invention. So, there were certainly many others 5 ways of changing the colors of the Web screen, all kinds 5 competing with them. 6 of features that may be in the prior art that are also 6 Those products, however, failed to meet that 7 described in the patent. 7 need. They weren't adopted wide scale on campuses 8 Q. And were those similarities enough to invalidate 8 because they weren't scalable. They didn't have this 9 the Blackboard patent claims, doctor? 9 enabling feature, this capability for a single user to 10 A. No. It's the distinction that needs to be focused 10 have access to all of their roles in all of their 11 on, just like in the interview with the examiner, the 11 courses on a single login. That played a huge role in 12 examiner and the inventors focused on how the invention 12 making -- or allowing Blackboard's products to scale 13 is different from the prior art. So, there can be 13 onto these campus-wide systems where the others weren't 14 plenty of similarities; but it's the differences that 14 able to do that. 15 distinguish it and make it an invention. 15 Q. And can you just explain what you mean by "scale"? 16 Q. And can you just tell us and remind us what those 16 A. Okay. So, by "scale," I mean that when they 17 differences were and what your conclusion is about 17 install and deploy the system, that it doesn't work in 18 those? 18 just one class at a university; it works in all of the 19 A. Sure. The difference -- and we saw the key aspect 19 classes in the university for a large number of users. 20 that the inventors came up with was the capability on a 20 It's not too hard to administer. There's not hundreds 21 single login for a user to have access to all of their 21 of calls from users "I forgot one of my ten passwords," 22 roles in all of their courses. That's the primary 22 that it scales properly. 23 distinguishing feature between the invention and the 23 Q. Let's go to the next factor you considered, the 24 prior art, the old way. 24 commercial success of the invention. How did that 25 Q. Now, did you also consider secondary considerations 25 impact your opinion? 2046 2048 1 or objective indications of nonobviousness? 1 A. We've seen testimony from -- again, from the 2 A. Yes, I did. So, when doing the obviousness 2 inventors that -- as well as other evidence that 3 analysis to determine whether a patent or an invention 3 Blackboard has been commercially successful on a large 4 is obvious or not, secondary considerations have to be 4 scale using this invention. My examination of their 5 considered. And we'll get into those in a second, but 5 product shows that this feature permeates -- it's in 6 that's part of determining whether an invention is 6 many, many of the source code files. It permeates the 7 obvious or not obvious. 7 system and is the reason for this scalability. 8 Q. Now we've put up a slide, our next slide, 24; and 8 Q. How about the next factor, copying of the invention 9 it's listed there, "secondary considerations," doctor. 9 by others in the field? Did you factor this in? 10 Did you consider these? 10 A. I looked at this, and I have not seen evidence that 11 A. Yes, I did. 11 Desire2Learn, for example, directly copied source code 12 Q. Okay. Can you take us through and tell us what you 12 from Blackboard. So, this feature is neutral in my 13 considered and how it impacted your opinions? 13 analysis. 14 A. Okay. Turning to the first of these 14 Q. Okay. And that's based on the evidence you've 15 considerations, "a long-felt and unmet need in the art." 15 heard here at trial? 16 We heard testimony from Mr. Cane and Mr. Gilfus that 16 A. That's correct. 17 course management systems at that time were being 17 Q. Now, how about the next factor, whether the 18 adopted on a course-by-course basis, but they weren't 18 invention was contrary to the accepted wisdom of the 19 being adopted wholesale by universities. They weren't 19 prior art? 20 taking off at that point. But there was clearly a need 20 A. Well, looking at this one, I considered two aspects 21 and a demand for it, as we'll talk about it in a little 21 of this. One was the conventional wisdom at the time of 22 bit more about what kind of demand there was for it. 22 these different course management systems. They were 23 Q. So, let's talk about the next factor, "The failure 23 all coming up with new features that I talked about a 24 of others to achieve the results of the invention." 24 little bit earlier, perhaps, like I said, a better drop 25 A. Again, at the time we've seen evidence that there 25 box or a better chat room or another way to set the
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Page 2069 Page 2071 1 Q. Okay. I want to bring your attention to 1 report? 2 specifically -- I think it is 111 on the list that's by 2 A. Yes, I recall that one specifically. 3 D.R. Kuhn and Jay Barkley. Do you see that, sir? 3 Q. Okay. So, all of these patents were known with 4 A. That's Exhibit 111? 4 regard to role-based access control. And did all of 5 Q. Yes, sir. 5 those patents apply to security -- computer security, 6 A. Yes, I do. 6 sir? 7 Q. Yes, 111. 7 A. Role-based access control falls into the field of 8 And do you remember reading the article with 8 computer security, yes. 9 regard to implementation of role-based access control in 9 Q. So, your testimony today is that all of the patents 10 multilevel secure systems, sir? 10 that you reviewed with regard to when you were rebutting 11 A. Yes, I do. 11 Dr. Simmons' invalidity analysis, all of that was 12 Q. And isn't it true, sir, that role-based access 12 applicable to just computer security, sir? 13 controls were well-known in the prior art prior to the 13 A. I believe in those patents they talk about examples 14 invention, sir? 14 from banking and from the medical industry as examples, 15 A. They were well-known in the field of computer 15 yes. 16 security. Absolutely. 16 Q. So, there are other examples other than just 17 Q. And isn't it true that role-based access controls 17 computer security, sir; is that correct? 18 were also well-known in other areas other than computer 18 A. As I said, role-based access control is a form of 19 security? 19 computer security which then gets applied to fields; and 20 A. I would say they had been applied to other areas. 20 I believe the examples I recall specifically are banking 21 Computer security is applied to lots of areas. 21 and the medical field, yes. 22 Role-based access control itself had been applied to 22 Q. But there were other fields that were also 23 some of those areas. I don't know if it was well-known 23 discussed in those patents; is that correct, sir? 24 in banking because I'm not an expert on banking. 24 A. There may very well be, yes. 25 Q. Okay. Is part of your analysis in Dr. Simmons' 25 Q. Now, Dr. Jones, you and Mr. Bright discussed the Page 2070 Page 2072 1 report -- can you have an opportunity to look at 1 court's construction for predetermined roles. Do you 2 Defendant's Exhibit 112, which is another article -- I 2 recall that, sir? 3 mean, another patent which is the 6202066 patent by 3 A. Yes, I do. 4 J. Barkley, et al? Did you have an opportunity to 4 Q. And you provided testimony to the jury that the 5 review that, sir? 5 court defined predetermined roles as being roles set in 6 A. I believe so if that was cited in his report. By 6 advance of the system. Do you recall that, sir? 7 the patent number I can't go off the top of my head. 7 A. I think that's the gist of the construction. I 8 The other one, I recognize the title specifically. 8 recall saying that, yes. 9 Q. Okay. And there was Defendant's Exhibit 186 which 9 Q. And the set in advance is -- would you agree, sir, 10 is a system and method to provide secure navigation to 10 that it is there for a reason? 11 resources on the Internet; and that again, sir, is 11 A. I'm sorry. I didn't hear the last word. 12 another patent that is the 6,381,579 patent. Do you 12 Q. Would you agree, sir, that the set in advance is 13 recall reviewing that patent, sir? 13 there for a reason, sir? 14 A. Yes, I recall that one specifically. 14 A. Absolutely. It's our understanding of 15 Q. And Defendant's Exhibit 187, sir, which is another 15 "predetermined" and "predefined." 16 patent in the role-based access control field that's 16 Q. And do you agree, sir, that the "set in advance" 17 U.S. patent 6,430,549. Do you recall reviewing that 17 means that it is there before the system is installed, 18 patent, sir, as part of your analysis of Dr. Simmons' 18 sir? 19 invalidity report? 19 A. Not necessarily, no. 20 A. I believe so. If it was in his report, it was in 20 Q. And why is that, sir? 21 my report. 21 A. It doesn't say "set before installation." It says 22 Q. And another patent here is Defendant's Exhibit 145, 22 "set in advance." 23 which is the U.S. patent 6,453,353, which is the Win, 23 Q. So, what would it have to be in advance of, sir, if 24 et al, patent. Do you recall reviewing the Win patent 24 it's not before installation? 25 as part of your analysis in rebutting Dr. Simmons' 25 A. I think one example of that is that it's set in 69 (Pages 2069 to 2072) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 2330 Page 2332 1 disclosing any such information? 1 Q. And how is that? 2 "ANSWER: I don't recall disclosing any 2 A. What was your question, sir? 3 specific information." 3 Q. Why do you feel like you complied? 4 Was that your answer at the time, sir? 4 A. I turned over the information I had, the manuals, 5 A. That was my answer at the time, sir. 5 the product, the information, the screenshots, 6 Q. Do you recall disclosing any specifics about 6 everything I had on CourseInfo 2.0; and I can 7 CourseInfo ILN 1.5 to your attorneys prosecuting the 7 confidently answer the question that when I was asked is 8 '138 patent? 8 there anything out there like this, my answer was no. 9 A. Yes, sir. I probably -- though I can't recall -- 9 Q. Do you think that course management systems like 10 well, I can't recall specifically; though, I likely 10 your ILN 1.5 are disclosed in the patent? 11 would have turned over all the information I had related 11 A. I believe they're disclosed in the background of 12 to the products we were working on. 12 the patent. We were talking about what has been 13 Q. If the prosecuting attorney said he never received 13 referred to now in the case of this trial as the "old 14 any information from you, would he be wrong -- 14 way." So, yes, I believe in the Background of the 15 A. Yes, he -- 15 Invention we did disclose what products like ILN 1.5 or 16 Q. -- about CourseInfo 1.5? 16 WebCT and others were doing at the time. 17 A. I can't recall specifically, but I would find that 17 Q. When you say products like ILN 1.5, would that 18 highly unprobable. 18 include other competitors of ILN 1.5 at that time? 19 Q. As you sit here, sir, you do not recall turning 19 A. Yes, sir, it would. 20 over CourseInfo 1.5 to the attorneys prosecuting the 20 Q. If I showed you a page from the patent that was 21 '138 patent, do you, sir? 21 actually issued and the Background of the Invention, 22 A. No, sir, I can't make that claim. 22 would you be able to pinpoint the area where you think 23 Q. The standard you personally used to determine what 23 the disclosure of products -- CMS products like the 24 to turn over to the attorneys prosecuting the patent, 24 ILN 1.5 is disclosed? 25 wasn't it whether the piece of prior art disclosed the 25 A. I could, sir. Page 2331 Page 2333 1 entire invention? 1 MR. HEARTFIELD: Could I approach? 2 A. Having re-read my deposition, I believe that's the 2 THE COURT: You may. 3 answer I gave before; but I don't agree with that. 3 BY MR. HEARTFIELD: 4 MR. KEENER: Pass the witness, your Honor. 4 Q. So, this is Plaintiff's Exhibit 1, I believe; and 5 CROSS-EXAMINATION OF DANIEL CANE 5 I'm showing you the background section. 6 CALLED ON BEHALF OF THE DEFENDANT 6 A. Okay, sir. 7 BY MR. HEARTFIELD: 7 Q. And if you could call it out by column and 8 Q. Mr. Cane, what is your understanding of why you are 8 line/page. 9 here testifying again in this court? 9 A. Starting in Column 2, approximately line 31, the 10 A. My understanding is that I have been accused of 10 paragraph reads -- would you like me to read it, sir? 11 holding information back from the Patent Office. 11 Q. Sure. 12 Q. Did you intentionally deceive and hold back 12 A. "Further, many educational institutions have 13 information from the Patent Office when you filed your 13 existing or legacy network-based systems which students 14 application? 14 access to obtain various types of information, e.g." -- 15 A. No, sir, I did not. 15 THE COURT: Hold on. 16 Q. At the time of this application, what was your 16 Is there a note from the jury? 17 understanding of your duty to disclose? Tell us again. 17 COURT SECURITY OFFICER: Yes, sir. 18 A. I understood I had a duty to disclose information, 18 THE COURT: Okay. All right. We have Jury 19 both to my attorneys, as they were preparing the patent 19 Note Number 3: "In your definition, does using 'a' user 20 to help them understand the background and what it is we 20 name and password equal single logon?" 21 were inventing, as well as answer the question that was 21 It's interesting because there are so many 22 put to me as is there anything else like this in the 22 academics and other people around the country who 23 industry. And my answer to that was no. 23 criticize the jurors of the Eastern District of Texas 24 Q. Do you feel like you complied with that duty? 24 for their inability to understand anything; and it's 25 A. Yes, sir, I do. 25 been my experience that in the patent cases I've had, 39 (Pages 2330 to 2333) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 2334 Page 2336 1 the juries focus right in on key issues. 1 along that line. It's my understanding of questions 2 Well, let me hear from plaintiff. Again, 2 from juries you've got to be very careful about giving 3 I'll read out the question again: "In your definition 3 them new instructions, especially ones that are comments 4 does using 'a' user name and password equal" -- and 4 on the weight of the evidence or comments on other 5 that's with an equal sign -- "single logon?" 5 things. 6 Any suggested response from plaintiff? 6 I mean, there's no point in having gone 7 MR. NADEL: We have a couple suggestions, 7 through a lengthy trial like this and then putting in 8 your Honor. The first would be "yes." 8 something that winds up tossing it out for either side. 9 THE COURT: Now let's go into ones that will 9 That makes no sense at all. 10 be accepted by the Court of Appeals. 10 Mr. Morisseau, do you have any thoughts on 11 MR. NADEL: Your Honor, I think one that 11 this? 12 might be accepted by the Court of Appeals is that the 12 MR. MORISSEAU: Your Honor, what you just 13 court has construed the claims; and the jury has to 13 stated generally seems acceptable. If you could repeat 14 apply the plain and ordinary meaning to those 14 it, because I think we're all kind of thinking on our 15 constructions. 15 feet here -- 16 THE COURT: Let me hear from defendant. 16 THE COURT: Well so, am I except that I'm 17 MR. SPIVEY: Your Honor, obviously we 17 sitting down. 18 disagree with that. And I would point out that the 18 Mr. Dasso? 19 patent itself in certain claims mentions a login 19 MR. DASSO: Yeah. I would like to hear it 20 sequence. So, just under the rule of claim 20 repeated, as well, your Honor. 21 differentiation, that that would be different than any 21 THE COURT: Okay. 22 construction that would be applied to claim 36, that "a" 22 MR. DASSO: I understand the court's concern 23 user name and password would now include a single login 23 about giving new instructions in the -- 24 because the actual login sequence is -- 24 THE COURT: All right. 25 THE COURT: Well, okay. But, Mr. Spivey, 25 MR. DASSO: -- middle of a jury's Page 2335 Page 2337 1 what we're talking about is the proper response to a 1 deliberation. 2 question from a jury after instructions have already 2 THE COURT: I am considering: "The court has 3 been given. 3 provided definitions which you are to use. Please refer 4 MR. SPIVEY: Understood, your Honor. 4 to all of the other jury instructions for additional 5 THE COURT: Do you have any other 5 information as to construction of the claim terms." 6 suggestions, Mr. Spivey? 6 MR. DASSO: I guess, your Honor, the first 7 MR. SPIVEY: Oh, yes, your Honor. As I 7 part of it -- I understand the reference to the other 8 suggested earlier, the use of the indefinite article "a" 8 instructions. I'm not sure what -- 9 prior to that means that it has more than one -- could 9 THE COURT: Well, what I'm referring to is, 10 be one or more and is not -- so, it wouldn't equate a 10 for example, on the first page there is a -- of the jury 11 single login to the use of "a" user name and "a" 11 instructions there is a provision: "When words are used 12 password. 12 in these instructions in a sense that varies from the 13 MR. NADEL: And we believe your Honor dealt 13 meaning commonly understood, you are given a proper 14 with that in his comments after the jury left this 14 legal definition, which you are bound to accept in place 15 morning. 15 of any other meaning." 16 THE COURT: I think the problem that we're 16 And then later in the instructions, on 17 dealing with -- and perhaps more experienced counsel 17 page 6: "It is my duty as judge to explain what some of 18 need to step on up. We're dealing with a question from 18 the words used in the patent claims mean. Attached as 19 the jury. You run into all kinds of problems making 19 Appendix A to this charge is the test of the claims of 20 untoward comments or trying to provide new evidence or 20 the patent-in-suit. In each claim, I have set in bold 21 new claim constructions. 21 the terms which I have defined for you. The definitions 22 I am thinking something along the line of 22 appear following the claims in Appendix A. These are 23 "The court has provided definitions which you are to 23 the same definitions I provided in the juror notebooks. 24 use. Please refer to all of the jury instructions for 24 You must accept as correct the definitions contained in 25 additional information as to construction," or something 25 Appendix A." 40 (Pages 2334 to 2337) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 2338 Page 2340 1 And then in the next paragraph it says: "The 1 THE COURT: Sure. 2 claim language I have not defined for you in Appendix A 2 All right. Taking a look at -- and this is 3 is to be given its ordinary and accustomed meaning as 3 Federal Jury Practice Instruction, Sixth Edition by 4 understood by one of ordinary skill in the art, in the 4 O'Malley, et al. It refers, of course, to the dangers 5 context of the patent specification and prosecution 5 of focusing the jury on particular facts; and there are 6 history." 6 some cases to that effect. It also points out the duty 7 And then, of course, one might argue easily 7 of the court to answer the questions in a way that is 8 that -- and I think this is generally the law -- all of 8 helpful and clears away difficulties. 9 the instructions together are what is to guide the jury. 9 And, so, what I think I will do is then put 10 They're not supposed to pick out just one, which is why 10 the court -- I'm sorry. The question is: "In your 11 I'm reluctant to focus them -- unless I can get an 11 definition does using 'a'" -- with a little underline on 12 agreement -- to focus them in on one particular 12 it -- "user name and password equal" -- which is with an 13 paragraph of the jury instructions, which is why in 13 equal sign, not the word "equal" -- "single logon?" "In 14 these situations I generally say something along the 14 your definition does using 'a' user name and password 15 lines of "Please refer to all of the jury instructions." 15 equal single logon?" 16 Now, if you can agree that I should 16 My proposed response would be that the court 17 specifically direct them to the instructions on page 1 17 has provided the definitions that you are to use. 18 and page 6 that I mentioned, which specifically talk 18 Please refer to the jury instructions for information as 19 about interpretation, I'd be glad to do that. 19 to the meaning of words which are not specifically 20 MR. DASSO: Well, your Honor, I have just the 20 defined. 21 opposite concern. I think that's emphasizing the idea 21 MR. DASSO: Again, your Honor, my concern is 22 that there is some other place in the instructions that 22 with the second sentence. You know, I think that 23 they can find the answer -- 23 suggests that they can find the answer elsewhere; and I 24 THE COURT: Well -- 24 think that -- I have a real concern that focusing them 25 MR. DASSO: -- is problematic. 25 on another part of the instructions is going to lead Page 2339 Page 2341 1 THE COURT: The answers as to those two 1 them to the conclusion that "a" means a single login. 2 places are basic -- well, let me hear from you, 2 And we talked about before how under patent law 3 Mr. Morisseau. I could just focus them in on page 1 and 3 generally "a" means one or more. 4 page -- what is it? -- page 6 there that kind of tells 4 THE COURT: Well, the problem is that is how 5 them the general rules about how to interpret words. 5 someone writing a patent would use the word. I was not 6 MR. MORISSEAU: Your Honor, I think actually 6 writing a patent; I was defining terms for jurors. I've 7 your more general approach at this stage -- if there is 7 seen no authority for the proposition that when I use 8 another note that comes back, perhaps that's the time to 8 the word "a," I'm meaning -- I used the word "a" to mean 9 start specifically pointing out things. But I 9 one or more than one. That is very specialized, some 10 understand the court saying that specifically pointing 10 might say arcane, patent parlance; and I wasn't writing 11 out things might create a problem in the record. 11 the claim. 12 As I understand the court, the court just 12 The Blackboard people wrote the claim in the 13 wants to say in a very general sense look at the 13 first place. If they use the word "a," that's how it is 14 instructions. Am I understanding the court correctly? 14 to be interpreted. And if I was interpreting the word 15 THE COURT: Well, reminding them that -- I've 15 "a" for a jury, I would tell them that. But now I'm 16 tried to give them the instructions in how to do this in 16 trying to write these jury instructions in as clear, 17 the instructions in the first place. That was the 17 plain, ordinary English as I can. So, I don't think 18 purpose of that wording. 18 that's actually a correct instruction to give them. 19 Let me write this down. 19 And I went through, at the end, that while we 20 MR. DASSO: Your Honor? 20 had that colloquy yesterday, in my mind it was more of a 21 THE COURT: All right. Let me just -- I've 21 theoretical question that it seemed kind of odd, which 22 made a slight change here. Let me read it out, and I'll 22 way do we do it. But I don't think there is any real 23 ask for your comments. 23 question -- jury instructions in plain, ordinary 24 MR. DASSO: Your Honor, could I hear the 24 language unless there is otherwise a special meaning 25 question again, too, please? 25 given. 41 (Pages 2338 to 2341) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 2342 Page 2344 1 And my point about more than one was, as a 1 THE COURT: Which are? 2 matter of common sense, I could think of a reason that a 2 MR. DASSO: I think it improperly focuses 3 university might give different instructors more than 3 them on other points of the instruction. I think that 4 one identity simply for tracking if they still -- if 4 it suggests a construction that the -- a view of the 5 costs are still a concern like they used to be back in 5 court's claim that I think is inconsistent with what was 6 the Seventies when I took my first computer course. 6 meant, and I would just recommend -- again, our 7 It may be that -- I mean, we haven't even 7 suggestion was to use just the first sentence. 8 heard from any of the professors. It may be that that 8 THE COURT: Okay. I will overrule those 9 stuff is so cheap now they don't even bother. I can 9 objections. We can have a copy made. All right. 10 remember in the Seventies it was -- you had limited time 10 She'll go ahead and deliver that to the jury; and we can 11 on that computer. There was only one for the university 11 continue on, then. 12 in some places. 12 MR. DASSO: Thank you, your Honor. 13 So, I am not going to define this as patent 13 THE COURT: Mr. Heartfield. 14 parlance because it's my definition. 14 MR. HEARTFIELD: Thank you, your Honor. 15 MR. DASSO: My objection, your Honor, then 15 BY MR. HEARTFIELD: 16 will be that we don't do the second sentence, just the 16 Q. Mr. Cane, you were directing us to the background 17 first sentence. 17 section of the patent that was issued where you believed 18 THE COURT: Well, that -- unfortunately, I 18 that the ILN 1.5 is disclosed. Could you continue with 19 don't think that helps them at all. I've provided 19 the column and line numbers? 20 definitions for them. They know that. That's what 20 A. Yes. That would be Column 2. We can jump to 21 they're asking about. 21 line 43, the sentence beginning "typically." 22 Mr. Morisseau, let me hear from you. Again, 22 Q. And read that into the record, please. 23 my proposed response would be: The court has provided 23 A. "Typically, a student must access different 24 definitions that you are to use. Please refer to the 24 locations or Web pages of an institution's network for 25 jury instructions for information as to the meaning of 25 each datum she wishes to inspect. Further, a student Page 2343 Page 2345 1 words that are not specifically defined. 1 may have to log on to multiple networks in order to 2 MR. MORISSEAU: Your Honor, that's 2 access different items of data. For example, a student 3 acceptable. We'd like a chance just to look at it. 3 may wish to view his financial aid status before 4 THE COURT: Well, certainly. 4 registering for an upcoming course or semester. In 5 MR. MORISSEAU: But that's acceptable. 5 existing networks, the student will have to traverse 6 THE COURT: And what specific objection would 6 multiple Web pages and possibly log on to multiple 7 you have, Mr. Dasso; or what other wording would you 7 networks in order to access his current financial aid 8 suggest, given, of course, the law dealing with this 8 status, assess that information, and then register 9 issue? 9 online taking into account his particular information. 10 MR. DASSO: Your Honor, I think I've 10 Many similar situations are commonplace involving access 11 articulated my objection. My suggestion would be we 11 to grading information, class schedule, exam materials, 12 just use the first sentence. 12 student group meetings, and other such information." 13 THE COURT: Okay. The response I have 13 Q. And what line did you stop at? 14 written here is: "The court has provided definitions 14 A. I stopped at line 56. 15 that you must use. Please refer to the jury 15 Q. Okay, thank you. 16 instructions for guidance as to the meaning of words 16 At the time that you filed your application, 17 that are not specifically defined." 17 did you believe that you had described the invention as 18 Counsel will now have an opportunity to 18 you described it during the trial? 19 examine the question and my written answer. 19 A. Yes, I believe so. 20 Okay. I've made the "S" a little more clear 20 Q. Okay. And did you at any time try to hide 21 on the word "as." Any objection from plaintiff? 21 information from the Patent Office? 22 MR. MORISSEAU: None. 22 A. No, sir. 23 THE COURT: From defendant? 23 Q. This was your first patent, though, correct? 24 MR. DASSO: Your Honor, yes, we object to the 24 A. Yes, sir. 25 second sentence for the reason we articulated yesterday. 25 Q. Okay. And did you and the other inventors get 42 (Pages 2342 to 2345) Christina L. Bickham, RMR, CRR 409/654-2891
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Page 2487 Page 2489 1 not preclude infringement on that system claim. But 1 then went through the effort -- although, neither side 2 that was a system claim; and, again, that's kind of 2 made a really good effort to distinguish that for the 3 going back to the Decca Limited analysis. 3 jury -- and came up with what this court presumes was a 4 This is a method claim, and the NTP court was 4 ruling based on the evidence and based upon the 5 quite clear in stating that each of the steps had to be 5 credibility of those witnesses. 6 actually performed in the United States. So, we have a 6 I guess another way of putting it, I can go 7 question, then, as to was there proof of that; and we 7 through their -- I mean, my listening to the witnesses 8 had testimony by Dr. Jones that, yes, these various 8 and the record, I think that there was evidence on both 9 steps were performed. We had Desire2Learn coming back 9 sides; but there was evidence of specific acts of 10 and saying no, it was all -- that certain of the steps 10 infringement being committed in this country. There was 11 were all performed at the -- in Canada. And, in 11 evidence that, at least in some occasions, all steps 12 particular, they pointed to Step 36A, establishing that 12 were performed in the United States. There was evidence 13 each user is capable. And there was evidence from 13 of the inducement, and the instruction I gave was fairly 14 certain witnesses that the installations occurred from 14 strong on that -- plaintiffs objected to it -- 15 the computer in Canada. On the other hand, that assumes 15 instructions that were expected to be followed or power 16 that the jury believed those particular witnesses. 16 to control, which actually may be a little stronger than 17 And we also had other testimony that came up 17 the cases require; but the jurors had that instruction. 18 through Ms. Dekker, I believe, on deposition talking 18 And on that basis the manuals and instructions that were 19 about some of these steps being done in the United 19 given -- hard to say that those weren't expected to be 20 States and then Ms. Frigula saying that the Desire2Learn 20 followed. 21 does not generate course files during installation. 21 And here's where we get, I think, a little 22 Well, if -- and that gets into, of course, the arguments 22 bit into part of the credibility problem that D2L had -- 23 dealing with Step 36B1. 23 is they start off trying to say that, well, the default 24 And I guess in the end that -- I'm sure you 24 roles weren't really the same as -- maybe they weren't 25 will -- on appeal, if it gets there, both sides can 25 default roles, they were sample roles. But in the end Page 2488 Page 2490 1 point to evidence brought out by various witnesses of 1 it finally came down to an admission that, yes, 2 steps being performed in Canada or not being performed 2 "default" meant "sample" and these were all the same 3 in Canada; and it comes down to basically which were 3 thing. But those roles were being performed. And if 4 convincing and which convinced the jury. You simply 4 you start off a system saying here's your three default 5 can't just take the statements of the president or CEO 5 roles, you can run it and you can change it later on, 6 of Desire2Learn and say, well, that's the only evidence 6 that doesn't mean that that's proof that those steps 7 we had. We also had evidence going the other way. 7 aren't being performed. 8 Now, it was quite clear, however -- or could 8 The other thing that came out was the 9 have been quite clear -- let me back that up. 9 discussion over set in advance within the system, and 10 There was a strong debate, however, of the 10 there were discussions -- or there was some evidence by 11 difference between hosted systems and nonhosted systems. 11 Desire2Learn of a change in November. But on the other 12 There wasn't a good effort to explain which were which 12 hand, there was also evidence from Dr. Jones, which 13 other than in Plaintiff's Exhibit 145, the answers to 13 really wasn't rebutted, that when you looked at the 14 interrogatories, which had that chart attached to it. 14 source code, those default roles were still there. And 15 But that does show that there were, in fact, a number of 15 there was evidence by some of the D2L witnesses that 16 clients of Desire2Learn which were not hosted in Canada. 16 them, or something like them, were there but they could 17 And the presumption is that the jury read and 17 be changed. 18 followed the instructions. And they were instructed 18 And the fact that someone can change some of 19 very carefully that all the steps had to be performed 19 these is kind of like when you pull down the print menu 20 and all the steps had to be performed in this country, 20 on many word processing programs, you have a menu there; 21 and the result of their verdict -- especially on 21 and you can change do you want one page, do you want two 22 damages -- was much lower than what the plaintiffs had 22 pages, do you want three pages. But it's set in the 23 presented in total numbers. And I think the presumption 23 system. You can't ask for one and a half pages unless 24 has to be they read those instructions -- which had, I 24 you know how to do coding. I mean, there is that 25 believe, the law correctly stated in that regard -- and 25 problem there in terms of -- the evidence was not 20 (Pages 2487 to 2490) Christina L. Bickham, RMR, CRR 409/654-2891
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EXHIBIT B Case 9:06-cv-00155-RHC Document 369-3 Filed 03/24/2008 Page 2 of 5 Damages: Desire2Learn Must Compensate Blackboard For Every Contract
Desire2Learn’s 75 Contracts
19 Lost Profit Contracts 56 Lost Royalty Contracts
Lost Profits Royalty Payments 1 2
1 + 2 Total Damages
7 Case 9:06-cv-00155-RHC Document 369-3 Filed 03/24/2008 Page 3 of 5 Total Lost Profits
Client Lost Profits
ADEC $584,992 AL State DOE $266,769 Columbia College $355,624 e4TN $188,783 Elgin $251,829 Int’l Society $170,722 Maryland State DOE $282,729 Maryville University $193,441 MS Virtual $265,096 Monmouth $355,393 Rochester Institute $385,674 South Dakota BOR $1,411,022 Temple College $182,464 Tennessee BOR $7,339,120 U. of Iowa $329,033 U. of Arizona $275,381 U. of West Florida $149,220 W. Virginia $859,331 WK Health $1,608,748 $15,455,375
19 Case 9:06-cv-00155-RHC Document 369-3 Filed 03/24/2008 Page 4 of 5 Blackboard’s Reasonable Royalty Damages on Desire2Learn’s 56 Remaining Contracts
Royalty Base $ 6,540,929
Royalty Rate x 25%
Royalty Damages = $ 1,635,232
33 Case 9:06-cv-00155-RHC Document 369-3 Filed 03/24/2008 Page 5 of 5 Damages: Desire2Learn Must Compensate Blackboard For Every Contract
Desire2Learn’s 75 Contracts
19 Lost Profit Contracts 56 Lost Royalty Contracts
Lost Profits Royalty Payments
1 15,455,375 1,635,232 2 1 + 2 Total Damages 17,090,607
34 Case 9:06-cv-00155-RHC Document 369-4 Filed 03/24/2008 Page 1 of 1
EXHIBIT C (FILED SEPARATELY UNDER SEAL) Case 9:06-cv-00155-RHC Document 369-5 Filed 03/24/2008 Page 1 of 3
EXHIBIT D Case 9:06-cv-00155-RHC Document 369-5 Filed 03/24/2008 Page 2 of 3
FEDERAL RESERVE statistical release
H.15 (519) SELECTED INTEREST RATES For use at 2:30 p.m. Eastern Time Yields in percent per annum March 17, 2008 2008 2008 2008 2008 2008 Week Ending 2008 Instruments Mar 10 Mar 11 Mar 12 Mar 13 Mar 14 Mar 14 Mar 7 Feb
Federal funds (effective)1 2 3 2.99 2.95 2.97 2.98 2.99 2.97 3.00 2.98 Commercial Paper3 4 5 Nonfinancial 1-month 2.60 2.55 2.53 2.22 2.46 2.47 2.69 2.90 2-month 2.56 2.57 2.31 2.30 2.45 2.44 2.64 2.75 3-month 2.52 2.53 n.a. 2.26 n.a. 2.44 2.60 2.72 Financial 1-month 2.81 2.79 2.69 2.61 2.59 2.70 2.87 3.00 2-month 2.82 2.73 2.75 2.74 2.66 2.74 2.86 2.95 3-month 2.84 2.72 2.97 2.80 2.66 2.80 2.92 3.03 CDs (secondary market)3 6 1-month 2.91 2.87 2.87 2.78 2.76 2.84 3.04 3.11 3-month 2.84 2.85 2.84 2.78 2.74 2.81 2.94 3.06 6-month 2.78 2.75 2.77 2.82 2.66 2.76 2.82 2.99 Eurodollar deposits (London)3 7 1-month 2.95 2.90 2.90 2.80 2.70 2.85 3.08 3.17 3-month 2.90 2.90 2.90 2.85 2.80 2.87 3.04 3.12 6-month 2.80 2.80 2.80 2.80 2.70 2.78 2.93 3.05 Bank prime loan2 3 8 6.00 6.00 6.00 6.00 6.00 6.00 6.00 6.00 Discount window primary credit2 9 3.50 3.50 3.50 3.50 3.50 3.50 3.50 3.50 U.S. government securities Treasury bills (secondary market)3 4 4-week 1.66 1.80 1.67 1.55 1.18 1.57 1.86 2.23 3-month 1.33 1.45 1.45 1.33 1.16 1.34 1.52 2.12 6-month 1.42 1.60 1.53 1.47 1.29 1.46 1.66 2.04 Treasury constant maturities Nominal10 1-month 1.63 1.82 1.68 1.56 1.20 1.58 1.86 2.27 3-month 1.35 1.48 1.48 1.35 1.18 1.37 1.55 2.17 6-month 1.45 1.64 1.56 1.50 1.32 1.49 1.70 2.10 1-year 1.46 1.67 1.58 1.54 1.37 1.52 1.66 2.05 2-year 1.47 1.74 1.63 1.63 1.47 1.59 1.60 1.97 3-year 1.67 1.93 1.81 1.84 1.65 1.78 1.83 2.19 5-year 2.37 2.61 2.49 2.53 2.37 2.47 2.51 2.78 7-year 2.84 3.04 2.93 2.99 2.84 2.93 3.00 3.21 10-year 3.46 3.60 3.49 3.56 3.44 3.51 3.61 3.74 20-year 4.39 4.48 4.35 4.42 4.30 4.39 4.48 4.49 30-year 4.45 4.53 4.40 4.47 4.35 4.44 4.53 4.52 Inflation indexed11 5-year 0.01 0.20 0.12 0.15 0.12 0.12 0.17 0.65 7-year 0.55 0.69 0.59 0.68 0.64 0.63 0.74 1.09 10-year 0.90 1.05 0.95 1.05 1.01 0.99 1.09 1.41 20-year 1.60 1.69 1.58 1.70 1.63 1.64 1.74 1.87 Inflation-indexed long-term average12 1.60 1.68 1.57 1.69 1.63 1.63 1.75 1.87 Interest rate swaps13 1-year 2.47 2.54 2.51 2.39 2.31 2.44 2.55 2.69 2-year 2.55 2.67 2.62 2.44 2.39 2.53 2.60 2.78 3-year 2.86 2.99 2.93 2.75 2.71 2.85 2.90 3.06 4-year 3.20 3.32 3.24 3.08 3.04 3.17 3.22 3.35 5-year 3.48 3.60 3.50 3.35 3.30 3.45 3.50 3.61 7-year 3.93 4.02 3.91 3.78 3.71 3.87 3.94 4.01 10-year 4.34 4.42 4.29 4.19 4.12 4.27 4.37 4.41 30-year 4.96 5.00 4.90 4.78 4.74 4.88 4.99 4.99 Corporate bonds Moody’s seasoned Aaa14 5.50 5.63 5.49 5.53 5.48 5.53 5.54 5.53 Baa 6.89 6.99 6.88 6.95 6.86 6.91 6.89 6.82 State & local bonds15 4.94 4.94 4.92 4.64 Conventional mortgages16 6.13 6.13 6.03 5.92
See overleaf for footnotes. n.a. Not available. Case 9:06-cv-00155-RHC Document 369-5 Filed 03/24/2008 Page 3 of 3 Footnotes
1. The daily effective federal funds rate is a weighted average of rates on brokered trades. 2. Weekly figures are averages of 7 calendar days ending on Wednesday of the current week; monthly figures include each calendar day in the month. 3. Annualized using a 360-day year or bank interest. 4. On a discount basis. 5. Interest rates interpolated from data on certain commercial paper trades settled by The Depository Trust Company. The trades represent sales of commercial paper by dealers or direct issuers to investors (that is, the offer side). The 1-, 2-, and 3-month rates are equivalent to the 30-, 60-, and 90-day dates reported on the Board’s Commercial Paper Web page (www.federalreserve.gov/releases/cp/). 6. An average of dealer bid rates on nationally traded certificates of deposit. 7. Bid rates for Eurodollar deposits collected around 9:30 a.m. Eastern time. 8. Rate posted by a majority of top 25 (by assets in domestic offices) insured U.S.-chartered commercial banks. Prime is one of several base rates used by banks to price short-term business loans. 9. The rate charged for discounts made and advances extended under the Federal Reserve’s primary credit discount window program, which became effective January 9, 2003. This rate replaces that for adjustment credit, which was discontinued after January 8, 2003. For further information, see www.federalreserve.gov/boarddocs/press/bcreg/2002/200210312/default.htm. The rate reported is that for the Federal Reserve Bank of New York. Historical series for the rate on adjustment credit as well as the rate on primary credit are available at www.federalreserve.gov/releases/h15/data.htm. 10. Yields on actively traded non-inflation-indexed issues adjusted to constant maturities. The 30-year Treasury constant maturity series was discontinued on February 18, 2002, and reintroduced on February 9, 2006. From February 18, 2002, to February 9, 2006, the U.S. Treasury published a factor for adjusting the daily nominal 20-year constant maturity in order to estimate a 30-year nominal rate. The historical adjustment factor can be found at www.treas.gov/offices/domestic-finance/debt-management/interest-rate/ltcompositeindex historical.shtml. Source: U.S. Treasury. 11. Yields on Treasury inflation protected securities (TIPS) adjusted to constant maturities. Source: U.S. Treasury. Additional information on both nominal and inflation-indexed yields may be found at www.treas.gov/offices/domestic-finance/debt-management/interest-rate/index.html. 12. Based on the unweighted average bid yields for all TIPS with remaining terms to maturity of more than 10 years. 13. International Swaps and Derivatives Association (ISDA R ) mid-market par swap rates. Rates are for a Fixed Rate Payer in return for receiving three month LIBOR, and are based on rates collected at 11:00 a.m. Eastern time by Garban Intercapital plc and published on Reuters Page ISDAFIX R 1. ISDAFIX is a registered service mark of ISDA. Source: Reuters Limited. 14. Moody’s Aaa rates through December 6, 2001, are averages of Aaa utility and Aaa industrial bond rates. As of December 7, 2001, these rates are averages of Aaa industrial bonds only. 15. Bond Buyer Index, general obligation, 20 years to maturity, mixed quality; Thursday quotations. 16. Contract interest rates on commitments for fixed-rate first mortgages. Source: FHLMC.
Note: Weekly and monthly figures on this release, as well as annual figures available on the Board’s historical H.15 web site (see below), are averages of business days unless otherwise noted.
Current and historical H.15 data are available on the Federal Reserve Board’s web site (www.federalreserve.gov/). For information about individual copies or subscriptions, contact Publications Services at the Federal Reserve Board (phone 202-452-3244, fax 202-728-5886). For paid electronic access to current and historical data, call STAT-USA at 1-800-782-8872 or 202-482-1986.
Description of the Treasury Nominal and Inflation-Indexed Constant Maturity Series
Yields on Treasury nominal securities at “constant maturity” are interpolated by the U.S. Treasury from the daily yield curve for non-inflation-indexed Treasury securities. This curve, which relates the yield on a security to its time to maturity, is based on the closing market bid yields on actively traded Treasury securities in the over-the-counter market. These market yields are calculated from composites of quotations obtained by the Federal Reserve Bank of New York. The constant maturity yield values are read from the yield curve at fixed maturities, currently 1, 3, and 6 months and 1, 2, 3, 5, 7, 10, 20, and 30 years. This method provides a yield for a 10-year maturity, for example, even if no outstanding security has exactly 10 years remaining to maturity. Similarly, yields on inflation-indexed securities at “constant maturity” are interpolated from the daily yield curve for Treasury inflation protected securities in the over-the-counter market. The inflation-indexed constant maturity yields are read from this yield curve at fixed maturities, currently 5, 7, 10, and 20 years. Case 9:06-cv-00155-RHC Document 369-6 Filed 03/24/2008 Page 1 of 2
EXHIBIT E Case 9:06-cv-00155-RHC Document 369-6 Filed 03/24/2008 Page 2 of 2 Case 9:06-cv-00155-RHC Document 369-7 Filed 03/24/2008 Page 1 of 1
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS LUFKIN DIVISION
Blackboard Inc., ) ) Plaintiff, ) ) vs. ) Case No. 9:06 CV 155 ) Desire2Learn Inc., ) ) Defendant. ) ) )
ORDER GRANTING DEFENDANT’S POSTVERDICT MOTION FOR JUDGMENT AS A MATTER OF LAW
Pending before this Court is Defendant, Desire2Learn’s Motion For Judgment as a Matter of Law and Motion for a New Trial. Having considered the Motion, the Court finds that it is well-taken. Therefore, it is hereby ORDERED that Desire2Learn’s Motion For Judgment as a
Matter of Law is GRANTED and that claims 1-35 and 36-38 of U.S. Patent No. 6,988,138 (“the
’138 Patent”) are hereby declared invalid and Desire2Learn is adjudged not to infringe claims
36-38 of the ’138 Patent.