Case: 1:12-cv-01446 Document #: 203 Filed: 09/16/13 Page 1 of 9 PageID #:3906
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`JOHN WILEY & SONS, LTD., AND )
`AMERICAN INSTITUTE OF PHYSICS,) No. 12 C 1446
` )
` Plaintiffs,
`)
` )
`)
`vs.
` ) Judge Charles R. Norgle, Sr.
`MCDONNELL BOEHNEN HULBERT
`)
`& BERGHOFF LLP, AND JOHN DOE ) Magistrate Judge Arlander Keys
`NOS. 1-10, )
`Defendants,
`)
` )
`and
` )
`THE UNITED STATES PATENT AND )
`TRADEMARK OFFICE,
`)
` )
` )
`)
`Intervening Defendant
`and Counterclaim Plaintiff. )
`
`)
`
`MEMORANDUM OPINION AND ORDER
`Defendants, McDonnell Boehnen Hulbert & Berghoff LLP
`("MBHB"), move pursuant to Fed. R. Civ. P. 37(a) to compel
`Plaintiffs, John Wiley & Sons, Ltd. (“Wiley”), and American
`Institute of Physics (“AIP”) (collectively, “Plaintiffs”), to
`produce documents that sufficiently respond to Requests for
`Production Nos. 75 and 76, and to fully respond to Interrogatory
`No. 17. For the reasons set forth below, Defendant’s motion to
`compel RFP Nos. 75 and 76 is granted, but is denied as to Inter.
`No. 17.
`
`Background
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`JOHN WILEY & SONS, LTD., AND )
`AMERICAN INSTITUTE OF PHYSICS,) No. 12 C 1446
` )
` Plaintiffs,
`)
` )
`)
`vs.
` ) Judge Charles R. Norgle, Sr.
`MCDONNELL BOEHNEN HULBERT
`)
`& BERGHOFF LLP, AND JOHN DOE ) Magistrate Judge Arlander Keys
`NOS. 1-10, )
`Defendants,
`)
` )
`and
` )
`THE UNITED STATES PATENT AND )
`TRADEMARK OFFICE,
`)
` )
` )
`)
`Intervening Defendant
`and Counterclaim Plaintiff. )
`
`)
`
`MEMORANDUM OPINION AND ORDER
`Defendants, McDonnell Boehnen Hulbert & Berghoff LLP
`("MBHB"), move pursuant to Fed. R. Civ. P. 37(a) to compel
`Plaintiffs, John Wiley & Sons, Ltd. (“Wiley”), and American
`Institute of Physics (“AIP”) (collectively, “Plaintiffs”), to
`produce documents that sufficiently respond to Requests for
`Production Nos. 75 and 76, and to fully respond to Interrogatory
`No. 17. For the reasons set forth below, Defendant’s motion to
`compel RFP Nos. 75 and 76 is granted, but is denied as to Inter.
`No. 17.
`
`Background
`
`
`
`Case: 1:12-cv-01446 Document #: 203 Filed: 09/16/13 Page 2 of 9 PageID #:3907
`
`This is a copyright infringement action. On October 17,
`2012, Plaintiffs commenced this action asserting that Defendants
`violated their copyrights in two scientific journal articles11 by
`submitting them without authorization to the United States Patent
`and Trademark Office (“PTO”). Defendants’ practice includes both
`prosecuting patents before the PTO, as well as counseling clients
`regarding a wide range of issues, such as assessing the validity
`of patents and lawfully avoiding patent infringement.
`Defendants’ main defense is fair use. Plaintiffs timely
`amended their claims, withdrawing the allegations relating solely
`to Defendants’ unauthorized submission of their copyrighted work
`to the PTO. (Am. Compl., at ¶ 1.) Instead, Plaintiffs now make
`a broader claim, which is that MBHB has illegally made use of
`their copyrighted articles in association with Defendants’ legal
`practice as a whole, such as its practice of counseling and
`litigation, “by making internal copies of those articles in
`connection with McDonnell’s for-profit patent practice...The
`internal copying has occurred...throughout McDonnell’s patent law
`
`11Plaintiff John Wiley & Sons, Ltd. has accused MBHB of
`
`infringing Raznikov, V., et al., “A new approach to data
`reduction and evaluation in high-resolution time-of-flight mass
`spectrometry using a time-to-digital convertor data-recording
`system,” Rapid Communications in Mass Spectrometry, vol. 15, No.
`8, pp. 570–78 (2001) (the “Raznikov Article”). Plaintiff American
`Institute of Physics has accused MBHB of infringing Erchak, A.,
`et al., “Enhanced coupling to vertical radiation using a two-
`dimensional photonic crystal in a semiconductor light-emitting
`diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563–65
`(2001) (the “Erchak Article”) (collectively, “the articles”).
`
`2
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`practice, and is not limited to McDonnell’s patent prosecution
`practice.” (Pls.’ Mot. Summ. J. p.42 at 1-2.) Thus, the amended
`complaint is not limited to MBHB’s patent prosecution, but
`includes all of MBHB’s law practice, including but not limited to
`its patent counseling practice.
`The Court has already made clear that discovery will not be
`used as a fishing expedition, but because the parties had reached
`an impasse on the parameters of the search that was necessitated
`by Plaintiffs’ amended complaint, the Court approved a reasonable
`new search for the Articles’ use. MBHB conducted the search
`approved by the Court, and discovered no additional uses of the
`Articles beyond those previously disclosed to Plaintiffs.
`MBHB contends that Plaintiffs’ claims are barred by at least
`fair use, laches, and estoppel. To prove these affirmative
`defenses, MBHB intends to establish, among other things, that:
`(1) conduct hypothesized by Plaintiffs would not materially
`impact the market for Plaintiffs’ works (a factor in a fair use
`analysis); and (2) Plaintiffs were aware of law firms engaging in
`acts such as those they now accuse MBHB of doing, but did nothing
`to address these uses for an unreasonable length of time. MBHB
`also argues that it needs information on Plaintiffs’ licensing
`and profits to address damages.
`Plaintiffs filed a summary judgment motion on Defendant’s
`laches affirmative defense, which is still pending before Judge
`
`3
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`Norgle. Now, Defendant’s current motion argues that MBHB is
`entitled to targeted documents responsive to RFP Nos. 75 and 76,
`which are relevant to MBHB’s fair use defense, and to a response
`to Interrogatory No. 17, which seeks information relevant to
`MBHB’s copyright misuse defense. MBHB additionally argues that
`this information is necessary for MBHB to prepare for the
`remaining depositions of Wiley’s witnesses. Plaintiff contends
`that MBHB’s motion should be denied, as it already has Wiley’s
`budgetary information necessary for its fair use defense, and
`that the information sought via Interrogatory No. 17 is
`irrelevant and privileged. For the reasons set forth below, the
`Court grants Defendants motion in part, and denies Defendants
`motion in part.
`
`Discussion
`The district court exercises significant discretion in
`ruling on a motion to compel. The district court may grant or
`deny the motion in whole or in part, and similar to ruling on a
`request for a protective order under Rule 26(c), the district
`court may fashion a ruling appropriate for the circumstances of
`the case. Fed. R. Civ. P. 37(a)(4)(B), (c). Thus, a district
`court is not limited to either compelling or not compelling a
`discovery request; in making its ruling, a district court should
`independently determine the proper course of discovery based upon
`the arguments of the parties. See, e.g., Gile v. United
`
`4
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`Airlines, Inc., 95 F.3d 492, 496 (7th Cir. 1996). Courts have
`discretion to limit the extent of discovery after considering
`“[if] the burden or expense of the proposed discovery outweighs
`its likely benefit...the importance of the issues at stake in the
`action, and the importance of the discovery in resolving the
`issues.” Fed. R. Civ. P. 26(b)(2)(c)(iii).
`Where the party from whom the documents are requested
`objects to the request, the party seeking the request may move
`for an order to compel production. Gile v. United Airlines,
`Inc., 95 F.3d 496. The Seventh Circuit, however, has often
`warned that “discovery is not to be used as a fishing
`expedition.” E.E.O.C. v. Harvey L. Walner & Associates, 91 F.3d
`963, 971–972 (7th Cir. 1996). Accord Brenneman v. Knight, 297
`Fed.Appx. 534, 538, 2008 WL 4748516, 2 (7th Cir. 2008) (“But
`requiring the staff to conduct a fishing expedition, particularly
`of the magnitude Brenneman requested, would have imposed too
`great a burden.”)
`Defendants argue that Wiley’s cumulative and relevancy
`objections are baseless, and that MBHB is entitled to the
`information it seeks. The Court will address each request in
`turn.
`I. MBHB’s Request for Production Nos. 75 and 76.
`MBHB served two RFP’s on Wiley seeking budgetary
`information:
`
`5
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`RFP No. 75: For each of the years from 2006 to
`present, the annual budgets of John Wiley’s
`scientific, technical, and medical publishing
`division presented to John Wiley’s finance
`department, as testified to by Ms. Elfenbein
`in her June 11, 2013, deposition.
`RFP No. 76: For each of the years from 2006 to
`present, the final budgets as they pertain to
`John Wiley’s scientific, technical, and
`medical publishing division presented to John
`Wiley’s finance department, as testified to by
`Ms. Elfenbein in her June 11, 2013,
`deposition.
`MBHB argues that the documents responsive to RFP Nos. 75 and 76
`(the internal financial reports of Wiley’s scientific,
`technical, and medical (“STM”) group), are relevant to MBHB’s
`fair use defense and have yet to be produced. Wiley does not
`dispute these facts, but instead contends that the relevant
`information contained within the financial documents is already
`available and contained within Wiley’s public annual reports.
`MBHB counters that Wiley’s argument ignores the wealth of
`information in the internal financial documents not found in the
`public annual reports. The Court agrees and finds Plaintiff’s
`attempt to diminish the requested reports as predictions, and
`assert their production as cumulative, unavailing.
`The budgets were prepared by Wiley’s Senior Vice President
`for International Development, with input from a combination of
`individuals with different responsibilities upon which Wiley
`relies on to make its annual business decisions. (D.I. 190,
`
`6
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`Exhibit 1 at 32:10–21.) Thus, these are important documents for
`Wiley’s STM group, which explains why the STM group creates these
`budgets and financial reports each year. Plaintiffs argue that
`“actual gross revenue and operating income” provided in its
`annual reports is Sufficient information for the fourth fair use
`factor analysis. (D.I. 193 at 3.) The Court disagrees, as MBHB
`has underscored how the information provided in the annual report
`“identifies no operating costs, does not allocate “shared” costs
`to the STM business, and identifies no revenue expense drivers,
`which are all available in the budgets requested. (See D.I. 193
`at 6–7.)” Defs.’ Reply, at 5 (Dkt. 200). Thus, the annual
`reports do not provide vital information about the STM group —
`the division that would actually suffer market harm — which MBHB
`needs to analyze the fourth fair use factor. Accordingly, The
`Court orders complete production of both RFP Nos. 75 and 76.
`
`II. MBHB’s Interrogatory No.17
`Next, MBHB requests that this Court order Wiley to respond
`to the following interrogatory:
`Interrogatory No. 17: Provide the bases for the
`statement in the letter to Bradley J. Hulbert at
`MBHB from William Dunnegan, dated November 9, 2010,
`that:
`“The STM Publishers have recently reviewed the
`public records of your firm’s patent filings, and
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`have found substantial evidence of unlicensed
`copying of their copyrighted material.”
`MBHB argues that this information is relevant to its copyright
`misuse defense, as it will demonstrate that Wiley was “using its
`intellectual property to strong-arm law firms into
`licenses based on no evidence of infringement whatsoever.”
`Defs.’ Mot., at 7 (Dkt. 190). Conversely, Wiley argues that this
`request is untimely, irrelevant, and is “nothing more than
`McDonnell’s attempt to buy more time and a renewed attempt to
`invade the plaintiffs’ work product privilege.” Pls.’ Op., at 5
`(Dkt. 193).
`Either way, a party making a claim of copyright infringement
`does not equate to copyright misuse. The copyright misuse
`defense involves using the "monopoly" of a copyright to obtain
`rights outside the scope of those granted by the Copyright Act.
`See Arista Records, Inc. v. Flea World, Inc., 356 F. Supp.2d 411,
`428 (D.N.J. 2005) ("Moreover, case law suggests that the defense
`of copyright misuse 'has rarely been upheld as a defense to a
`claim of copyright infringement.' Lexmark Int'l, Inc. v. Static
`Control Components, Inc., 253 F.Supp.2d 943, 965 (E.D.Ky.2003),
`vacated on other grounds , 387 F.3d 522 (6th Cir.2004).”).
`Plaintiff did not assert anything other than copyright
`infringement, which is well within their statutory rights, and
`MBHB has not provided evidence of Wiley using the monopoly of its
`
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`copyright to obtain unfair rights. Therefore, the Court denies
`MBHB’s request for production pursuant to Inter. No. 17.
`
`Conclusion
`For the reasons set forth above, Defendant’s motion to
`compel [Dkt. #189] is granted in part, and denied in part.
`Accordingly, MBHB’s motion to compel is granted as to RFP. Nos.
`75 and 76, but denied as to Inter. No. 17.
`
`Dated: September 16, 2013
` E N T E R E D:
`
`_____________________________
` MAGISTRATE JUDGE ARLANDER KEYS
` UNITED STATES DISTRICT COURT
`
`9
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