## United States Court of Appeals for the Federal Circuit
2008-1368, -1396 BLACKBOARD, INC., Plaintiff-Cross Appellant,

v. DESIRE2LEARN INC., Defendant-Appellant.

------------------------------------ ----------------- ----------------- 2008-1548 BLACKBOARD, INC., Plaintiff-Appellant,

v. DESIRE2LEARN INC., Defendant-Appellee. Joel M. Freed and Michael S. Nadel , McDermott Will & Emery LLP, of Washington, DC, argued for plaintiff-cro ss appellant in appeal 2008-1368,-1396 and plai ntiff-appellant in appeal 2008-1548. Of counsel in appeal 2008-1368, -1396 was Natalia V. Blinkova

. Harold C. Wegner , Foley & Lardner LLP, of Washi ngton, DC, argued for defendantappellant in appeal 2008-1368, -1396. On the brief were George E. Quillin ; and Gregory S. Norrod , James D. Dasso , and Jonathan R. Spivey , of Chicago, Illinois. George E. Quillin , Foley & Lardner LLP, of Wash ington, DC, argued for defendantappellee in appeal 2008- 1548. With him on the brief were Gregory S. Norrod , James D. Dasso , Jonathan R. Spivey , and Jason A. Keener , of Chicago, Illinois. Of counsel was Harold C. Wegner , of Chicago, Illinois. Appealed from: United States District C ourt for the Eastern District of Texas Judge Ron Clark

## United States Court of Appeals for the Federal Circuit

2008-1368,-1396 BLACKBOARD, INC., Plaintiff-Cross Appellant,

v. DESIRE2LEARN, INC.,

Defendant-Appellant. Appeal from the United States District C ourt for the Eastern District of Texas in case no. 9:06-CV-155, Judge Ron Clark.

---------------------------------------------------------------------------------------------------------------

2008-1548 BLACKBOARD, INC., Plaintiff Appellant,

v. DESIRE2LEARN, INC.,

Defendant-Appellee.

Appeal from the United States District C ourt for the Eastern District of Texas in case no. 9:06-CV-155, Judge Ron Clark.

___________________________ DECIDED: July 27, 2009

___________________________2008-1368,-1396,-1548 2 Before BRYSON and MOORE, Circuit Judges , and CUDAHY, Senior Circuit Judge

. ∗ BRYSON, Circuit Judge

. Blackboard Inc. is the mark et leader in providing educ ational institutions with course management software t hat allows interaction between students and teachers over the Internet. Desire2Learn Inc. is Bl ackboard’s primary commercial competitor. This appeal arises from an action by Bla ckboard against Desire2Learn for infringement of Blackboard’s U.S. Patent No. 6,988,138 (“t he ’138 patent”), which claims an Internetbased educational support system and related methods. The ’138 patent is not the in ventors’ first work in the field of education-support software. In 1996, while they were coll ege students, several of the same inventors developed a software product called CourseInfo 1.5, which allowed for online management of information relating to individual courses. In the CourseInfo system, each course had its own webs ite, and students and instructors would log in to each course separately. In 1999, the inventors merged their company with Blackboard. Another prior art course management system, wh ich was available by 1997, is the Serf system, developed by a professor at the University of Delaware. Like CourseInfo 1.5, the Serf system provided a way for students and teachers to interact through the Internet. Upon issuance of the ’138 patent, Blackboar d filed an infringement action against Desire2Learn in the United States District Court for the Easter n District of Texas. After a Markman hearing, the district court ent ered partial summary judgment for

∗ The Honorable Richard D. Cudahy, Senior Circuit Judge, United States Court of Appeals for the Seventh Circuit, sitting by designation.2008-1368,-1396,-1548 3 Desire2Learn, holding claims 1- 35 of the patent invalid for indefiniteness. The court then conducted a jury trial that address ed whether Desire2Learn had infringed claims 36-38 of the patent; Desire2Learn asserted by way of defense that those claims were anticipated and would have been obvious in light of prior art that predated the patent’s priority date of 1999. An important issue at trial was whether the asserted claims of the ’138 patent required that a person using the claimed method be able to use a “single login” to access multiple courses and multiple roles in those courses. Blackboard touted its method as allowing a person to use a single l ogin to obtain access to all the courses of interest to that person and to obtain different levels of access to the course materials depending on that person’s role in each course. For example, Blackboard asserted that its claimed method would a llow a graduate student who was a student in one course and a teacher in another to use a single logi n to obtain access to both courses and to obtain access to the materials for each cour se according to the graduate student’s role in each. At trial, Blackboard took the position that the method of claims 36-38 required that the user have the capacity to access mu ltiple courses and multiple roles through a single login. Desire2Learn took the position that Blackboard’s claims did not require such access through a single login, and that the claims were therefore invalid in light of the prior art. The jury found that claims 36-38 were neither anticipated nor obvious, and that Desire2Learn had infringed those claims. Desire2Learn then filed motions for judgm ent as a matter of law (“JMOL”), contending that claims 36-38 were invalid for both anticipation and obviousness. The2008-1368,-1396,-1548 4 court denied the motions. In so doing, the court agreed with Blackboard that the asserted claims required that the recited method permit access to multiple courses and roles through a single login. In appeal No. 2008-1368, Desire2Learn argues t hat claims 36-38 are invalid in light of the prior art and that its system does not infringe those claims. In appeal No. 2008-1396, Blackboard cross-appeals from the district court’s ruling, on summary judgment, that claims 1-35 are indefinite. In a separate appeal, No. 2008-1548, Blackboard appeals from the dist rict court’s denial of an award of costs related to certain discovery expenses. I Desire2Learn argues that two prior art refe rences anticipate claims 36-38 as a matter of law. That argument turns on whet her those claims cont ain a “single login” limitation. Blackboard assert s that the “single login” feature is the ’138 patent’s essential improvement over t he prior art and is a part of every claim of the patent. According to Blackboard, under the prior ar t systems “[a] person could not be a student in one course and a teacher in another us ing one user name and password,” whereas the ’138 patent enables a person “to access all his roles in all his courses at once. With a single login and password, a person could be a student in one course and a teacher in another during one interacti on with the system.” Independent claim 36 provides: An [sic] method for providing on line education method [sic] for a community of users in a network based system comprising the steps of: a. establishing that each user is capable of having redefined [sic: “predefined”] characteristics indicati ve of multiple predetermined roles in the system and each role providing a level of access to and control of a plurality of course files;2008-1368,-1396,-1548 5 b. establishing a course to be offered online, comprising i. generating a set of course file s for use with teaching a course; ii. transferring the course files to a server computer for storage; and iii. allowing access to and control of the course files according to the established roles for the users according to step (a); c. providing a predetermined level of access and control over the network to the course files to users with an established role as a student user enrolled in the course; and d. providing a predetermined level of access and control over the network to the course files to users with an established role other than a student user enrolled in the course. Claims 37 and 38 add further limitati ons that are not the principal focus of this appeal. Claim 37 provides: The method of claim 36 wherein at leas t one of the course files comprises a course assignment, further comprising the steps of: e) the student user creat ing a student file in response to the course assignment; and f) the student user transferring the student file to the server computer. Claim 38 provides: The method of claim 37 further comprising the steps of: g) the instructor user accessing the student file from the server computer; h) the instructor user reviewing t he student file to determine compliance with the course assignment; and i) the instructor user assigning a grade to the st udent file as a function of the determination of compli ance with the course assignment. Blackboard makes several arguments in s upport of its contentio n that claims 36- 38 require a person using the claimed method to be able to access multiple roles in multiple courses using a single login. Firs t, Blackboard argues that the definition of the term “user” requires that acce ss to multiple roles in multiple courses be achievable through a single login. Bla ckboard’s argument is that the term “user” refers to an electronic user account, and t hat a user account is defi ned by a single user name and password combination; accordingly, for a “user” to be capable of “having predefined2008-1368,-1396,-1548 6 characteristics indicative of multiple predet ermined roles in the syste m” requires that the method allow access to multiple courses and roles through a single login. In support of its definitional argument, Bla ckboard points out that the specification sometimes uses the word “user” in a manner that appears to refer to the electronic representation of a per son in the system. The references to which Blackboard alludes employ a kind of shorthand, such as “Cr eate User” and “Manage User,” to describe the creation and manipulation of user entri es and accounts, not the creation and manipulation of “users” themselves. For ex ample, the “Create Us er” web page “allows creation of a user entry by entering personal information” and the “Manage User” web page “allows listing, modification, and/or remova l of users” once “a user is created.” ’138 patent, col. 27, ll. 14-26. Aside from those shorthand references, t he specification repeatedly employs the term “user” in its ordinary s ense to refer to an individual who uses the system. For example, the specification states: “Users (who may have one or several roles such as a student, instructor, teaching assistant (TA), or administrator) access and interact with education support system 100 via w eb browser 120.” ’138 patent, col. 7, ll. 58-61. See also, e.g. , id. , col. 3, ll. 26-28 (claimed system and me thods “allow users to interact with a computer network-based educ ation support system through means of a simplified, easy-to-use user interface”); id. , col. 3, ll. 43-46 (claimed syst em “allows multiple types of users to access the features of the system as a function of their predefined role within the framework of the system (e.g., student, teacher, administrator)”); id. , col. 4, ll. 19-20 (“The student user is provided with an access level to enable reading of course files associated with a course.”); id. , col. 5, ll. 39-46 (“[T]he st udent user creates a student2008-1368,-1396,-1548 7 file . . . . The instructor user accesses the student file . . . and the instructor user assigns a grade to the student file . . . .”). Thus, the specification makes clear that the word “user” refers to a flesh-and-blood per son and not an electroni c representation of that person. 1 In addition, the word “user” as employ ed in the claims is inconsistent with Blackboard’s interpretation of “user” as refe rring to a “user accoun t.” For example, claim 1 refers to a “community of users,” “user computers, ” and a “user of the system.” Id. , col. 30, ll. 19-22. Those uses clearly re fer to a person rather than to an account. The use of the term “user” in claims 36-38 therefore does not establish that a single electronic account must be capable of provid ing access to multiple roles and courses through a single login. Blackboard next contends that the phrase “capable of having predefined characteristics indicative of multiple pr edetermined roles in the system” in claim 36 requires that the claimed method include the “si ngle login” capacity. As support for that argument, Blackboard notes t hat “the specification descr ibes a user having the capability of assuming the ‘several’ or mu ltiply assigned roles in the system.” Blackboard also points out that the word “mixed” is used in the specif ication to indicate that a single user can have different ro les with respect to different courses. Blackboard’s argument is answered by a cl ose examination of the specification, which makes clear that the “single login” limit ation is not present in each of the patent’s claims. To begin with, the specification de scribes four embodiment s of the invention,

1 When the ’138 patent re fers to the electronic repres entation of the user in the specification, it typically uses the term “u ser account,” not the te rm “user” alone. See ’138 patent, col. 5, ll. 20-23; col. 22, ll. 3, 9; col. 26, line 23.2008-1368,-1396,-1548 8 only one of which is described as containing the “single log-in” feature. ’138 patent, col. 10, line 62, through col. 11, li ne 59. Another of the four embodiments is described as being “operated as a publicly available web si te on the Internet, that may be accessed by anyone”; it allows “anyone on the web [to] create a course, enroll in a public course, etc. . . . . This provides for widespread dissemination of tools and utilities that enable anyone to generate his own course that can be taken by virtually any student.” Id. , col. 11, ll. 51-59. That descripti on of the Internet-based embodi ment nowhere suggests that the embodiment necessarily incorporat es the “single log-in” feature. Perhaps the strongest evidence that the single login feature is not a required limitation of claim 36 is prov ided by an examination of the relationship between claim 1 of the ’138 patent and its dependent claims, claims 24 and 25. Claim 1 contains language that is identical to the language on whic h Blackboard relies in claim 36. Claim 1 provides, in part: A course-based system for providi ng to an educational community of users access to a plurality of online courses, comprising: a) a plurality of user comput ers, with each user computer being associated with a user of the syst em and with each user being capable of having predefined characteristics i ndicative of multiple predetermined roles in the system , each role . . . . Claims 24 and 25 depend from claim 1. They provide: 24. The system of claim 1 wherein a user is required to enter a login sequence into a user computer in or der to be provided with access to course files associated with that user.
25. The system of claim 24 wherei n the user is provided with access to all courses with which the user is associated after entry of the logon sequence. Claim 24 adds to claim 1 the requirement that the user enter a login sequence in order to obtain access to cour se files, and claim 25 adds the further requirement that,2008-1368,-1396,-1548 9 after a single login, the user be provided with access to all of the course files and courses with which that user is associated. Yet the single l ogin requirement is the very limitation that Blackboard a sserts is inherently contained in the phrase “capable of having predefined characteristics indicative of multiple predet ermined roles in the system” that appears in the claim from wh ich claim 25 depends. Thus, claim 1 cannot be construed to afford access to all courses with a single login without making claim 25 redundant. That is powerful evidence that clai m 36, which contains the same pertinent language as claim 1 (“capable of having predefined c haracteristics indicative of multiple predetermined roles in the system”), also does not require access to all courses with a single login. See Phillips v. AWH Corp. , 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”); Yoon Ja Kim v. ConAgra Foods, Inc. , 465 F.3d 1312, 1319 (Fed. Cir. 2006) (independent claim ordinarily does not include explicit limitat ions of a dependent claim); Versa Corp. v. Ag-Bag Int’l Ltd. , 392 F.3d 1325, 1330 (Fed. Cir. 2004) (independent claim should not be construed in a manner that renders dependent claim superfluous). Significantly, the specificati on states that a user “may be required to enter a login sequence into a user computer in order to be provided with access to course files associated with that user,” and it adds that in such a case , the user “is then provided with access to all courses with which the user is associated after entry of the logon sequence.” ’138 patent, col. 4, ll. 52-56. That passage tracks the language of claims 24 and 25, and it is introduced by the phrase “may be required,” which provides further2008-1368,-1396,-1548 10 support for Desire2Learn’s argument that the “single login” capacity is an optional feature of the claimed invent ion, not a limitation inherently found in all the claims. Blackboard’s third argument for why the claims require that a user have access to multiple courses through a single logi n is based on the language “according to the established roles for the users according to step (a),” which is found in step (b)(iii) of claim 36. The quoted language, however, does not support Blackboard’s argument. While claim 36 requires that the method be capable of assigning multiple roles to a single user, nothing in the cl aim requires each user to gain access to all of those multiple roles with a single login. To the c ontrary, the most natural reading of the claim language is that access and control is provided according to the various roles a user might have, not that the user must be able to obtain access to those multiple roles with a single login. Blackboard next invokes the prosecution history of the ’138 patent, and in particular the examiner’s somewhat cryp tic remarks in two interview summaries concerning the “multiple roles” limitation. Referring to the applicant’s distinction of two prior art references, the examiner stated t hat the references appeared not to “disclose multiple roles simultaneously associated wit h a particular system user,” and that “multiple roles for user(s) was emphasized as a potential distinguishing feature [of the application].” Contrary to Blackboard’s c haracterization, the examiner’s statements appear to refer to enabling users to have multip le roles rather than a single role. The comments do not appear to refer to the capabilit y of accessing these multiple roles after a single login. There is no dispute that the cl aims provide for multiple roles. Rather, the issue is whether those roles must be avail able after a single login. The examiner’s2008-1368,-1396,-1548 11 remarks did not even address this “single logi n” issue. Nor did the amendments that the applicants made to the claims during prosec ution clearly provide that the claimed method had to have the capacity to allow acce ss to multiple courses through a single login. The prosecution history thus does not provide support for Blackboard’s contention that the single login feature was a nec essary limitation of claims 36-38. Finally, Blackboard contends that Desi re2Learn waived the argument it is now making as to the proper construction of clai ms 36-38 and therefore ha s lost the right to challenge the validity of those claims on the ground that they do not incorporate a “single login” requirement. The question of waiv er is a difficult one in this case because Desire2Learn did not consistently and clearly present it s current argument about the absence of the “single login” requirement throughout the proceedings before the district court. Nonetheless, after clos e examination of the trial proceedings, we conclude that Desire2Learn made its present argument with sufficient time liness and clarity that it should not be charged with having waived its validity challenge; for the reasons set forth in more detail below, we therefore reject Blackboard’s several waiver arguments. Blackboard argues that the position Desire2Learn’s counsel took during a colloquy at the Markman hearing was inconsistent with Desire2Learn’s current position, and that Desire2Learn should t herefore be charged with having waived its argument as to the “single login” limitation. While it is true that Desire2Learn’ s counsel at one point in the Markman hearing took a position different from the position Desire2Learn later took at trial, the trial court did not rely on Desire2Learn’s position in construing the claim, but instead construed the claim language in a manner di fferent from the construction proposed by either party.2008-1368,-1396,-1548 12 The dispute at trial over the “single l ogin” issue arose from the trial court’s construction of the term “user.” In an or der entered shortly befor e trial, the court rejected both parties’ proposed constructions of that term. Bl ackboard proposed that “user” be defined to mean “the user’s ident ity or account in the system,” while Desire2Learn proposed that “user” be defined to mean “a physical user that interacts with the system.” The court defined the term to mean “a person who interacts with the system and who accesses the system by l ogging on with a user name and password, and then keys in information.” At trial, Blackboard’s expert testified that under the cour t’s definition, “a physical person is going to access the system by logging on with a si ngle user name and password.” Desire2Learn object ed that a single login was not part of the court’s construction. Later, Desir e2Learn objected again when the exper t testified that the ’138 patent “provid[es] the mechanism by which a single user can have multiple roles in multiple courses on a single logon.” On rebuttal, Blackboard’s expert again testif ied that the court’ s definition of the term “user” required that a user be able to obtain access to multiple courses with a single login. Desire2Learn again objected, arguing that Blackboard was improperly “taking the court’s construction and now c onfining it to a single user name and password when the court’s construction does not do that.” The trial court overruled the objection and allowed the testimony. U nder the circumstances, we believe Desire2Learn made its position on t hat issue clear sufficiently in time to not mislead its adversary or the court, and that c ounsel’s remarks at the Markman hearing did not waive that argument.2008-1368,-1396,-1548 13 Blackboard separately argues that De sire2Learn waived its “single login” argument by acquiescing in the trial court’s instruction in response to a question from the jury at trial. The event s at trial developed as follows: During deliberations, the jury sent the court a question in which it asked, “In your definition, does using ‘a’ user name and password = single logon?” Counsel for De sire2Learn urged the court to respond to the jurors’ question by telling them that a singl e login capacity was not required by claim 36. Counsel for Blackboard ar gued that the court should tell t he jurors that single login capacity was required. The court resisted altering the instructions that had already been given and proposed to instruct the jury that it should consult the instructions the court had already provided. At that point, Desire2Learn suggested a minor modification in the court’s instruction, which the court dec lined to accept. The court then instructed the jury as follows: “The court has provided def initions that you must use. Please refer to the jury instructions for guidance as to t he meaning of words that are not specifically defined.” Although Blackboard argues that Desire2Learn waived its validity arguments by acquiescing in the substance of the c ourt’s answer to the jury’s question, we disagree. Desire2Learn made its legal posit ion with respect to the “single login” requirement sufficiently clear to the trial c ourt, and the trial court m ade clear that it was not going to instruct the jury in a ccordance with Desire2Learn’s position. Desire2Learn’s subsequent further minor sugges tion regarding the court’s answer to the jury’s question did not constitute an abandonment of its previously stated substantive objection. After the jury returned its verdict, whic h included a finding that claim 36 was not invalid, Desire2Learn filed a motion for JMOL . The court denied the motion. In so2008-1368,-1396,-1548 14 doing, the court made clear that it interpreted claim 36 as incorporating a “single login” limitation, i.e., the capacity to access multiple courses and role s through a single login. The court explained: The remainder of step (a) of Claim 36 describes allowing that “person” with that “user name and password” to have “multiple roles” with access to “a plurality of course files.” This is what Blackboard described as giving a single user access to multiple role s and multiple courses with a single login. We do not interpret the sequence of event s surrounding the jury’s question and the court’s JMOL decision as constituting a waiv er of Desire2Learn’s position with respect to the “single login” issue or its right to challenge the jury’s verdict in a post-trial JMOL motion. Desire2Learn made its legal positi on with respect to the “single login” requirement sufficiently clear to the trial c ourt, and the trial court, in its JMOL opinion, made it clear that it reje cted Desire2Learn’s position. We therefore reject Bla ckboard’s argument that Desi re2Learn waived its right to challenge the construction of claims 36-38 of the ’138 patent. On the merits, we hold that those claims do not contai n a “single login” limitation and that the district court’s contrary interpretation of the claim language in its JMOL ruling was error.
II Desire2Learn argues that if claims 36-38 of the ’138 patent do not require that a person using the claimed method be able to a ccess multiple roles in multiple courses using a single login, then the claims are anticipated and rendered obvious by two references in the prior art, CourseInfo 1.5 and Serf. At the outset, Blackboard argues that Desire2Learn waived its right to file a JMOL motion as to obviousness because it fa iled to make a suffici ent motion for JMOL2008-1368,-1396,-1548 15 during trial to preserve its right to ma ke a JMOL motion after trial. See Fed. R. Civ. P. 50(a). Curiously, Blackboard argued in its brief that De sire2Learn waived its obviousness argument, but it did not argue t hat the waiver applied to Desire2Learn’s anticipation argument, even though Desire2Learn’s motions with respect to both issues were essentially identical. In any even t, we hold that under governing Fifth Circuit precedents Desire2Learn’s Rule 50(a) moti ons on both anticipation and obviousness were sufficient to preserve Desire2Learn’s ri ght to make a JMOL motion after trial. Rule 50(a)(2) requires the moving party, when moving for JMOL before the case is submitted to the jury, to “specify the judgment sought and the la w and the facts that entitle the movant to the judgment.” In this case, Desire2Learn made its motion under Rule 50(a) for judgment on both anticipation and obviousness, but immediately after counsel stated the subject matter of each mo tion, the district court responded, “I will take that under—I will reserve my ruling on that” (as to anticipation), and “I will reserve my ruling on that” (as to obviousness). Although Desire2Learn’s motions were cursor y, the context in which the motions were made, including the dist rict judge’s prompt statement that he would take both motions under advisement, make clear that no more was necessary to serve the purposes of Rule 50(a), i.e., to alert the court to the party’s legal position and to put the opposing party on notice of the moving party’s position as to the insufficiency of the evidence. See MacArthur v. Univ. of Tex. Health Ctr. , 45 F.3d 890, 897 (5th Cir. 1995). That is particularly true in light of the Fifth Circuit’s practi ce of liberally construing the rule. See Navigant Consulting, Inc. v. Wilkinson , 508 F.3d 277, 288-89 (5th Cir. 2007). The motion in this case was made shortl y after an extended discussion of the evidence2008-1368,-1396,-1548 16 relating to anticipation and obvi ousness, and it is clear from the context that neither the court nor Blackboard’s attorneys needed any more enlightenment about Desire2Learn’s position on those issues. See Guilbeau v. W.W. Henry Co. , 85 F.3d 1149, 1160-61 (5th Cir. 1996). On the merits, we agree with Desire2Lear n that claims 36-38, as properly construed, are invalid for anticipation as a ma tter of law by CourseIn fo 1.5 and Serf. As Desire2Learn points out, Blackboard’s trial ex pert identified only one difference between the system and methods of the ’ 138 patent and the prior art systems, the “single login”: Q. Now, is that different from the prior art, doctor? A. Yes, it is. The prior art that we talked about before, the CourseInfo 1.5 and Serf, those systems, a user had to have a login for each one of the roles. So, for example, in Serf, as we saw from [its inventor], if a user wanted to be a student in one course and an instructor in another, that user was going to require two separate l ogins. That was the old way . . . . The patent describes the new way. Q. And the new way is a user logs on with a user name and password and gets access to all of their roles in all of their courses? A. That’s correct. Q. And that’s the new way in this invention? A. Yes, it is. That’s the new way in the Blackboard patent. The expert added that he concluded that Serf did not teach all the steps of claim 36 because the “single login” featur e was not present in Serf. Blackboard asserts that in addition to t he absence of a “single login” capacity, there is another difference betw een the prior art systems and the patent claims at issue. According to Blackboard, the prior art refer ences do not allow a user to have access to “multiply assigned” roles, such as that of a student and a non-studen t, as required by steps (c) and (d) of claim 36. The district court construed the phrase “establishing that each user is capable of having predefined c haracteristics indicative of multiple predetermined roles in the system” to mean “e stablishing that discrete roles and their2008-1368,-1396,-1548 17 associated characteristics to which a user can be multiply assigned are set in advance within the system.” That cons truction requires the capability to assign multiple roles to a single user. The prior art systems clearly enable that capability; fo r example, under the prior art systems a single us er can create two accounts, one as an instructor and another as a student. The Serf Administrator Guide also discl oses that users who are assigned to the roles of student and non-student have access to and control over course files. Blackboard’s only argument for why the discussi on in the Serf guide does not anticipate claim 36 is that Serf does not teach that mu ltiple courses are “available during a single access.” As we have held, however, clai m 36 does not contain a “single login” limitation. Therefore, Serf’s teaching that a single user can access multiple roles, even if it required the user to do so through separate logins, anticipates claim 36 of the ’138 patent. CourseInfo 1.5 also anticipates claim 36. CourseInfo provided “multiply assigned” roles by allowing a student or an in structor to create different logins for different courses. Although it required separate logins, CourseInfo allowed a user to have access to multiple courses and multiple roles. There was nothing to prevent a single user from entering the system as an instructor in one course and a student in another. The users would be a ssigned discrete roles that were set in advance, thus satisfying all the limitations of claim 36. With respect to the limitations of steps (c) and (d) of claim 36, the CourseInfo manual specifically demonstr ates how to predetermine a level of access and control2008-1368,-1396,-1548 18 both for student and non-student us ers. For example, the manual specifies that “a professor will have access to the overall grade book while the student will not.” The inventors of the ’138 patent conceded at trial that in CourseInfo both instructor and student users could perform t he limitations describ ed in dependent claims 37 and 38, thus meeting those claims’ limitations. Claim 37 adds the requirement that the student user create a student file in response to the course assignment and transfer the student file to the serv er computer. Claim 38 adds the requirement that the instructor user access the student file from the server com puter, review the student file to determine compliance with the course a ssignment, and assign a gr ade to the student file. One of the inventors of CourseInfo and the ’138 patent acknowledged that the additional limitations found in claims 37 and 38 were performed by the CourseInfo prior
art: Q. Isn’t it true . . . that CourseInfo IL N 1.5 allowed a user to put any files, such as an assignment file, in a particular area throughout the system? A. Yes. The CourseInfo 1.5 product allowed the instructor to place in a document or an assignment, as you sa id, anywhere within specific areas, not any area, within the system. Q. And isn’t it true that CourseInfo ILN 1.5 allowed the creation of a new document, say a student was responding to a test that was posted up by an instructor? A. Yes, it did allow for that capability. Q. And isn’t it true that CourseInfo ILN 1.5 allowed the user, after responding to the test, to then post that answer back to the file area such that the instructor could view it? A. Yes, it did have that capability, as well. Q. And isn’t it true that CourseInfo ILN 1.5 then allowed the instructor to grade the student’s responses to the test? A. Yes, I believe it did have that functionality. In an effort to support the judgment in its favor, Blackboard relies on the district court’s observation that Desi re2Learn’s expert witness on invalidity was ineffective at2008-1368,-1396,-1548 19 trial. Based on the court’s observation, Blackboard contends that the jury was entitled to ignore the expert’s testimony in its entirety. However, it is not necessary to rely on the testimony of Desire2Learn’ s witness to conclude that claims 36-38 are invalid. Instead, once the claims are properly construed, the conc lusion of anticipation is dictated by the testimony of Blackboard’ s own witnesses and the documentary evidence that was presented to the jury. Based on t hat evidence, and in t he absence of a “single login” requirement in claims 36- 38, it is clear that the prior art contains every limitation of those claims. III In its cross-appeal, Blackboard challenges the district court’s ruling that claims 1- 35 of the ’138 patent are invalid for indefinit eness. The district court held that the specification contained insufficient structur e to support one of the means-plus-function limitations found in claim 1 and, by incorpor ation, in dependent clai ms 2-35. Blackboard does not contest the district court’s ruling that claims 1-35 all rise and fall together. Limitation (b) of claim 1 contains four “means-plus-function” clauses. It provides: b) a server computer in communica tion with each of the user computers over a network, the server computer comprising: means for storing a plurality of dat a files associated with a course, means for assigning a level of acce ss to and control of each data file based on a user of the system’s predetermined role in a course; means for determining whether acce ss to a data file associated with the course is authorized; means for allowing access to and cont rol of the data file associated with the course if author ization is granted based on the access level of the user of the system. Because that limitati on is written in “means-plus-func tion” form, it covers only “the corresponding structure . . . described in the specification and equivalents thereof.” 35 U.S.C. § 112, ¶ 6.2008-1368,-1396,-1548 20 Before the district court, Blackboard asse rted that the structure that performs the recited “means for assigning” function is “a server computer with an access control manager and equivalents thereo f.” On appeal, Blackboard again argues that the structure that performs that recited function is the server computer’s software feature known as the “access control manager” or “ACM.” The entirety of the description of the access control manager in the specificati on is contained in a single paragraph, which reads as follows: Access control manager 151 creates an access control list (ACL) for one or more subsystems in response to a request from a subsystem to have its resources protected through adherenc e to an ACL. Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectivel y interact with the system (e.g. access web pages, upload or download files, view grade information) while preserving confidentiality of information. The district court found the disclosure of structure described in that paragraph to be inadequate to satisfy section 112, paragraph 6, as it failed to descri be “how the levels themselves are assigned to the data files in the first place.” It is well settled that “if one employs means-plus-function language in a claim, one must set forth in the s pecification an adequate disclosure showing what is meant by that language.” In re Donaldson Co. , 16 F.3d 1189, 1195 (Fed. Cir . 1994) (en banc). If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the pat entee will have “failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112,” which renders the claim invalid for indefiniteness. Id. As an example of the oper ation of the access control manager, Blackboard explains that2008-1368,-1396,-1548 21 the access control manager assigns an access and control level for the quiz file based on a user’s course role by creating an access control list. The access control list created by t he access control manager associates user roles with the levels for course data files. For example, it might provide that teachers c an create, view, and edit a quiz, while students can only submit a completed quiz. But that is not a description of structure; what the pat ent calls the “access control manager” is simply an abstraction that descri bes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that perfo rms a recited function. But how it does so is left undisclosed. The specification contains no description of the structure or the process that the access control manager uses to perform the “assigning” function. Nor has Blackboard ever suggested that the “access control m anager” represents a particular structure defined other than as any struct ure that performs the recited function. In fact, before the district court, counsel for Blackboard defined the term “access control manager” in precisely those terms. He stated, “We s uggest that the corresponding structure for [the function of assigning a level of access to and control of each data file] is the access control manager. That’s not really a revolutionary thought. The access control manager manages access control.” Counsel al so stated of the access control manager that “the name of it pretty much describes w hat it does. It assigns a level of access to and control of a user’s role in a course.” Blackboard’s expert made clear that he did not regard the term “access control manager” as limited even to software. He stated, “Although the access manager in Figure 1 is descr ibed as software, there is nothing in the ’138 patent specification that would limit the perform ance of the access manager’s functions to software; one of ordinary skill in the art would know that hardware could be2008-1368,-1396,-1548 22 used.” In other words, the access contro l manager, according to Blackboard, is any computer-related device or program that performs the function of access control. In Aristocrat Technologies Australia Pty Ltd. v. International Game Technology , 521 F.3d 1328, 1331 (Fed. Cir. 2008), we addressed the question whether a general reference to “a standard microprocesso r-based gaming machine with appropriate programming” constituted a sufficient discl osure of structure to support a claimed function in a means-plus-function claim. We concluded that it did not. First, we explained that “[t]he point of the requirement that the patentee disclose particular structure in the specificati on and that the scope of the patent claims be limited to that structure and its equivalents is to av oid pure functional claiming.” Id. at 1333. Without so limiting a claim, we noted, “the patentee has not paid the price but is attempting to claim in functional terms unbounded by any referenc e to structure in the specification.” Id. (citations omitted). We then applied thos e teachings to the pat entee’s assertion that a reference to a general purpos e computer could satisfy t hat standard. We noted that “any general purpose computer must be programmed” and poi nted out that relying on such general structure is equivalent to sa ying “that the function is performed by a computer that is capable of performing the function.” Id. at 1334. We also considered and rejected the patentee’s assertion that language describing when the computer would perform the function at issue constituted a sufficient descripti on of the structure for performing the function. Such language, we explained, “describes an outcome, not a means for achieving that outcome.” Id. In Net MoneyIN, Inc. v. VeriSign, Inc. , 545 F.3d 1359 (Fed. Cir. 2008), we again addressed a patentee’s argument that reference to a computer provides sufficient2008-1368,-1396,-1548 23 structure for a claim drafted in means -plus-function form. In Net MoneyIN , the computer was not a general purpose com puter; the patentee contended that the reference to a “bank computer” provided sufficient structure to support the function of “generating an authorization indicia in response to queries containing a customer account number and amount.” Id. at 1365. The patentee ar gued that “a person skilled in the art would know that such a computer would be programm ed to compare account data and amount data to those data structures and gener ate an authorization indicia if credit were available.” Id. at 1366-67. We rejected that argument and explained that when a computer is referenced as support for a function in a means -plus-function claim, there must be some explanation of how the computer performs the claimed function: To avoid purely functional claimi ng in cases involving computerimplemented inventions, we have consis tently required t hat the structure disclosed in the specification be mo re than simply a general purpose computer or microprocessor. Bec ause general purpose computers can be programmed to perform very different ta sks in very different ways, simply disclosing a computer as the struct ure designated to perform a particular function does not limit the scope of the claim to the corresponding structure, material, or acts that perform the function, as required by section 112 paragraph 6. Thus, in a means-plus-function claim in which the disclosed structure is a computer , or microprocessor, programmed to carry out an algorithm, the disclosed st ructure is not the general purpose computer, but rather the specia l purpose computer programmed to perform the disclosed algorithm. Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function. Id. at 1367 (citations omitted). Because there was no disclosed algorithm in that case, we held that the claims were invalid for lack of a sufficient recitati on of structure. Id. ; see also Finisar Corp. v. DirecTV Group, Inc. , 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) (“Simply reciting ‘software’ without providi ng some detail about the means to accomplish the function is not enough.”).2008-1368,-1396,-1548 24 Blackboard argues that the spec ification in this case co ntains more disclosure of the structure that performs the access contro l functions than did the specifications in Aristocrat and Net MoneyIN . It points to the sentence in the specification that states, “Education support system 100 provides multiple levels of access restrictions to enable different types of users to effectively in teract with the system (e.g. access web pages, upload or download files, view grade informati on) while preserving confidentiality of information.” ’138 patent, col. 9, ll. 40-45. That sentence, however, merely states that the access control manager enables different ty pes of users to inte ract with the system in a manner that preserves confidentiality (i.e., it works as intended). Like the specification in Aristocrat , that language “simply descr ibes the function to be performed.” 521 F.3d at 1334. It says not hing about how the access control manager ensures that those functions are perform ed. As such, the language “describes an outcome, not a means for achieving that outcome.” Aristrocrat , 521 F.3d at 1334. Blackboard argues that the process of putting together control lists through software is well known to a person of ordi nary skill in the art because access control lists “have been around for a long time and every one of ordinary skill in the field of this invention would know how to construc t one given the understanding conveyed in the specification about the entry of files into the system, and which roles have access to which types of files.” That argument, however, conflates t he definiteness requirement of section 112, paragraphs 2 and 6, and the enabl ement requirement of section 112, paragraph 1. The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the spec ification contains2008-1368,-1396,-1548 25 a sufficiently precise description of the “co rresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function. Blackboard’s argument that a person skill ed in the art could readily fashion a computer-based means for performing the “assigning” function is the same as the argument that we rejected in Medical Instrumentation & Diagnostics Corp. v. Elekta AB , 344 F.3d 1205 (Fed. Cir. 2003). T here, the patentee sought to overcome a finding of indefiniteness by relying on expert testimony that a software pr ogrammer with ordinary skill in the pertinent art woul d be aware of programs that could be used to perform the recited function. The court explained, how ever, that the expert’ s testimony was not directed at the correct inquiry. The court stated: The correct inquiry is to look at the disclosure of the patent and determine if one of skill in t he art would have understood that disclosure to encompass software for digital-to-d igital conversion and been able to implement such a program, not simply whether one of skill in the art would have been able to write such a software program. . . . It is not proper to look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent. 344 F.3d at 1212 (emphasis in original). Blackboard’s argument also parallels t he argument that was rejected in Net MoneyIN , i.e., that the recitation of structur e was sufficient because a person skilled in the art would know how to program a bank computer to generat e “an authorization indicia.” 545 F.3d at 1367. A patentee cannot avoid providing s pecificity as to structure simply because someone of ordinar y skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a2008-1368,-1396,-1548 26 function. See Atmel Corp. v. Information Storage Devices, Inc. , 198 F.3d 1374, 1380 (Fed. Cir. 1999) (“considerati on of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing suffici ent structure in the specification”). That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in “means-plus-function” form must disclose the particular structure that is us ed to perform the recited function. By failing to describe the means by which the access control manager will create an access control list, Blackboard has attempted to capture any possible means for achieving that end. Section 112, paragraph 6, is intended to prevent such pure functional claiming. Aristocrat , 521 F.3d at 1333. We thus agree with the district court that the ’138 patent discloses insufficient structure to perform t he function of “assigning a level of access to and control of each data file based on a user of the system’s pr edetermined role in a course.” IV In summary, we affirm the district court’s decision that claims 1-35 are invalid as indefinite. Because we hold that under the proper constructi on of claim 36, claims 36- 38 are anticipated as a matter of law, we reve rse the district cour t’s failure to grant JMOL on that issue. We do not reach Desi re2Learn’s assertion that claims 36-38 are obvious. We also do not address the parties’ contentions with respect to infringement of those claims. Based on our rulings in appeals No. 2008-1368 and 2008-1396, Blackboard’s appeal in No. 2008-1548, which per tains to the award of costs in the district court, is dismissed as moot. Each party shall bear its own costs for these appeals.2008-1368,-1396,-1548 27 AFFIRMED IN PART, REVERSED IN PART, and DISMISSED IN PART

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