John Wiley & Sons, Ltd. et al

Filing 145

MEMORANDUM Opinion and Order. Signed by the Honorable Arlander Keys on 6/7/2013. (ac, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
JOHN WILEY & SONS, LTD., AND )
AMERICAN INSTITUTE OF PHYSICS,)
)
Plaintiffs,
)
)
vs.
)
MCDONNELL BOEHNEN HULBERT
)
& BERGHOFF LLP, AND JOHN DOE )
NOS. 1-10,
)
Defendants,
)
)
and
)
THE UNITED STATES PATENT AND )
TRADEMARK OFFICE,
)
)
)
Intervening Defendant
)
and Counterclaim Plaintiff.
)

No. 12 C 1446

)
Judge Charles R. Norgle, Sr.
Magistrate Judge Arlander Keys

)

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
fully respond to Interrogatory Nos. 2, 6, and 9, and to produce
documents responsive to RFP Nos. 13, 31, 33, 40, 42, 43, 47, 49,
51, 53, 54, 58-62, and 65.

MBHB also moves pursuant to Rule

36(a)(6) to deem admitted or provide proper responses to RFA Nos.
5-12 and 59-63, as well as RFA Nos. 34 and 35 to Wiley and Nos.
38 and 39 to AIP.
Background

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.

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
practice, and is not limited to McDonnell’s patent prosecution
11

Plaintiff 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 twodimensional 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”).
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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.
On February 12, 2013, the Court granted in part and denied
in part a motion to compel that Plaintiffs filed on October 17,
2012. At that time, the Court 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.
Now, 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) that 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
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judgment motion on Defendant’s laches affirmative defense, which
is still pending before Judge Norgle.

However, on May 31, 2013,

this Court denied Defendant’s motion to stay discovery.
Now, Defendant’s current motion to compel opines that
Plaintiffs have refused to produce relevant and critical
discovery including: complete responses to interrogatories,
production of documents related to Defendant’s fair use, laches,
and estoppel affirmative defenses, requests related to
Plaintiffs’ damages claim, as well as proper responses to many of
MBHB’s requests for admission.

Plaintiffs object, requesting

that the Court deny the motion to compel, arguing that the
requests are either privileged, irrelevant, or have already been
satisfied.

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
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the arguments of the parties.

See, e.g., Spears v. City of

Indianapolis, 74 F.3d 153, 158 (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 492, 496 (7th Cir. 1996).

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 the instant motion addresses
deficiencies in Plaintiffs’ response to both MBHB’s first and
second set of discovery requests.

The Court agrees that some

deficiencies exist which warrant remedy, but does not concur with
all that MBHB outlines.

Therefore, the Court will address each

request in turn.
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I. Interrogatory Nos. 2, 6, and 9
Interrogatory No. 2 seeks information related to Plaintiffs’
investigation into MBHB’s alleged infringement:
Identify all circumstances relating to John Wiley
discovering MBHB’s use of the Raznikov Article,
including how John Wiley discovered that MBHB had
submitted the Raznikov Article to the USPTO; who made
the decision to investigate MBHB’s submission of any
Work or Works allegedly owned or exclusively licensed
by John Wiley; who conducted the investigation; how
John Wiley conducted its investigation; when the
investigation began; when John Wiley learned of MBHB’s
use of the Raznikov Article; whether John Wiley’s
investigation was part of a broader investigation for
uses of the Raznikov Article and/or other Works to
which John Wiley alleges it owns or is exclusively
licensed by MBHB, other law firms, attorneys, patent
applicants, and/or other people or entities; the
identification of the person or persons most
knowledgeable thereof; and the identification of all
documents relating or referring thereto.
(Ex. 1.)
Defendant argues that Plaintiffs’ response to this
interrogatory is incomplete, while Plaintiffs make attorneyclient privilege and work-product immunity objections.

The

Court finds Plaintiffs’ contention correct, as the information
solicited calls for information developed in anticipation for
litigation.

Therefore, the Court denies Defendant’s motion to

compel production of Interrogatory No. 2.
Interrogatory No. 6 seeks information related to Defendant’s
fair use defense, it asks Plaintiffs to:
Identify all entities and/or services through which
MBHB could obtain a license to copy, distribute, or
otherwise use digital and/or paper copies of John Wiley
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Works, individually or collectively, in connection with
activities related to prosecuting patent applications,
from January 2006 to the present, broken down by year,
and state the scope of such a license; the cost of such
a license; whether MBHB could obtain this license
through a Web site, through the mail, over the phone,
or by other means; the length of time it would take
MBHB to acquire this license from the time it requests
the license; and whether any conditions would exist
that would lead to MBHB being denied the license it
seeks.
(Ex. 1, MBHB’s First Set of Interrogs.)
Defendant explains that, after extensive meet-and-confers,
Plaintiffs agreed to provide information in response to this
interrogatory regarding the entities through which MBHB could
acquire a license to copy or distribute Plaintiffs’ works, not
the entities from which MBHB could purchase licensed copies of
the works, however, they have yet to do so.

(See Ex. 6, Oct.

4, 2012, letter from B. Irwin to W. Dunnegan; see also Ex. 7 at
Supp. Resp. to Interrog. No. 4.)

The Court orders that this

information be produced.
Interrogatory No. 9 seeks information related to the
manner in which Plaintiffs receive royalties from the Copyright
Clearance Center (“CCC”):
Describe with particularity how royalty or other
payments to John Wiley are calculated or determined
when CCC grants licenses that permit the copy and/or
distribution of Your Works. Include in Your response
what percentage of the licensing revenue CCC provides
to You when Your Works are encompassed by any license
granted by CCC and what percentage CCC retains, and
whether this percentage changes by the type of license
and/or the Works covered by the license.
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(Ex. 9, MBHB’s Second Set of Interrogs.)
MBHB argues that Plaintiffs’ responses to Interrogatory
No. 9 is also insufficient.

Plaintiffs answer by citing to

numerous documents in their responses.
to MBHB’s Second Set of Interrogs.)

(Ex. 12, Pls.’ Resps.

However, after a review of

exhibits both sealed and not, the Court finds that none of the
documents contain the specifically requested information
regarding how CCC calculates its royalty payments.

The Court

finds this information to be relevant to a consideration of
damages, and any concern over confidentiality is ameliorated by
the Protective Order entered in this case, which specifically
contemplates the production of “Highly Confidential”
information.

(See Dkt. #76.)

Plaintiffs additionally argue that production would be
unreasonably burdensome, involving more than 680,000 pages of
documents.

However, a party objecting to the production of

relevant information on the ground that it is unduly burdensome
has the burden “to show why a discovery request is improper.
See Rule 34(b); Gile v. United Airlines, Inc., 95 F.3d 492, 495
(7th Cir. 1996). In re Sulfuric Acid Antitrust Litigation, 231
F.R.D. 331, 337 (N.D. Ill. 2005).

“That burden cannot be met

by a reflexive invocation of ‘the same baseless, often abused
litany’ that the requested discovery is ‘vague, ambiguous,
overly broad, unduly burdensome’ or that it is ‘neither
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relevant nor reasonably calculated to lead to the discovery of
admissible evidence.’”

Burkybile v. Mitsubishi Motors Corp.,

2006 WL 2325506 at *6 (N.D. Ill. Aug. 2, 2006)(quoting Swift v.
First USA Bank, 1999 WL 1212561 (N.D. Ill. Dec. 15, 1999)).
Litigation of this kind regularly involves a high volume of
information, and Plaintiffs have failed to prove how that alone
is improper, especially given the relevancy of the information
requested.

Therefore, the Court orders a complete response to

Interrogatory No. 9.
II. RFP Nos. 13, 31, 33, 40, 42, 43, 47, 49, 51, 53, 54, 58-62,
and 65.
MBHB argues that the requests for production made are
“tailored toward relevant and non-privileged documents,” (Def.’s
Memo at 15, Dkt. 82).

However, the Court finds that Plaintiffs

have provided persuasive arguments against production of several
RFPs, including RFP Nos. 40, 42, 43, and 65.

Plaintiffs object

to all further requests for production, but specifically contends
that the following four RFPs are unreasonable and/or unwarranted
at this point of discovery:
•RFP No. 40: All Documents examined as a possible or
actual source of information for John Wiley’s responses
to MBHB’s interrogatories, including
the First Set of Interrogatories, served concurrently
here with, and any subsequent interrogatories.
•RFP No. 42: To the extent not encompassed by other
Requests, all Documents that John Wiley believes refute

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or contradict MBHB’s affirmative defenses set forth in
MBHB’s Answer filed on April 19, 2012, in this action.
•RFP No. 43: All Documents, including internal
memoranda and all Communications between John Wiley and
any third parties concerning (a) this litigation;
and/or (b) the subject matter of this litigation.
•RFP No. 65: All Documents that John Wiley has been
asked to identify, or that John Wiley has identified,
described, or referred to, in its responses to MBHB’s
Second Set of Interrogatories, served concurrently
herewith.
(Exs. 2 & 10.)

Regarding RFP No. 40, the Court agrees that if the
Plaintiffs looked at a document and determined it did not contain
any responsive information, they should not be compelled to
produce anything further than the documents they already
produced, as identified in their interrogatory responses.
Regarding RFP No. 42, the Court agrees that, at this point in the
litigation, where the facts and legal theories upon which MBHB
bases its affirmative defenses of laches and estoppel are not
thoroughly defined, Plaintiffs need not respond further.

Also,

because Plaintiffs will not be able to use the documents at trial
unless they provide them to MBHB now, there is no issue.
Finally, with regard to Nos. 43 and 65, the Court finds No. 43
overly broad and likely largely irrelevant, and No. 65 to have
been satisfied.

Therefore, the Court grants Defendant’s request

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to compel RFP Nos. 13, 31, 33, 47, 49, 51, 53, 54, and 58-62, but
denies Defendant’s RFP Nos. 40, 42, 43, and 65.
III. RFA Nos. 5-12 and 59-63, RFA Nos. 34 and 35 to Wiley and
Nos. 38 and 39 to AIP.
Lastly, MBHB argues that Plaintiffs have failed to respond
to numerous requests for admission, and requests the Court to now
compel RFA Nos. 5-12 and 59-63, RFA Nos. 34 and 35 to Wiley and
Nos. 38 and 39 to AIP.

Plaintiffs object to certain RFAs as

irrelevant and seeking information protected by the work product
doctrine. The RFA’s include:
•RFA No. 5: John Wiley conducted a pre-filing
investigation prior to filing the Complaint in this
matter.
•RFA No. 6: John Wiley searched the PAIR Database as
part of its pre-filing investigation prior to filing
the Complaint in this matter.
•RFA No. 7: John Wiley used “McDonnell Boehnen Hulbert
& Berghoff LLP” and derivations of MBHB’s name as
search terms in the PAIR Database as part of its prefiling investigation prior to filing the Complaint in
this matter.
•RFA No. 8: John Wiley used “Raznikov” as a search term
in the PAIR Database as part of its pre-filing
investigation prior to filing the Complaint in this
matter.
•RFA No. 9: John Wiley used “Rapid Communications in
Mass Spectrometry” and derivations of the journal’s
title as search terms in the PAIR Database as part of
its pre-filing investigation prior to filing the
Complaint in this matter.
•RFA No. 10: John Wiley used “McDonnell Boehnen Hulbert
& Berghoff LLP” and derivations of MBHB’s name as
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search terms in Internet search engines (e.g., Google)
as part of its pre-filing investigation prior to filing
the Complaint in this matter.
•RFA No. 11: John Wiley used “Raznikov” as a search
term in Internet Search engines (i.e., Google) as part
of its pre-filing investigation prior to filing the
Complaint in this matter.
•RFA No. 12: John Wiley used “Rapid Communications in
Mass Spectrometry” and derivations of the journal’s
title as search terms in Internet search engines (e.g.,
Google) as part of its pre-filing investigation prior
to filing the Complaint in this matter.
•RFA No. 59: John Wiley discussed MBHB with CCC
employees or representatives prior to filing its
Complaint.
•RFA No. 60: John Wiley did not discuss MBHB with CCC
employees or representatives prior to filing its
complaint.
•RFA No. 61: John Wiley discussed with CCC employees or
representatives uses of non-patent literature by law
firms and attorneys prior to filing its Complaint.
•RFA No. 62: John Wiley discussed with CCC how a
copyright infringement suit against law firms or
attorneys could help create or expand a licensing
market for scientific journal
articles prior to filing its Complaint.

(Ex. 3; Ex. 11, MBHB’s Second Set of RFAs.)
•RFA No. 34 to Wiley: The Raznikov Article is factual
in nature.
•RFA No. 35 to Wiley: The Raznikov Article is not
factual in nature.
•RFA No. 38 to AIP: The Erchak Article is factual in
nature.
•RFA No. 39 to AIP: The Erchak Article is not factual
in nature.
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(Ex. 3, MBHB’s First Set of RFAs.)
With regard to Plaintiffs’ privilege objection to the first
grouping of RFAs above, the Court finds that MBHB drafted the
RFAs so that answering “admit” or “deny” does not raise an
inference that reveals information which violates the
privilege.

See Itex, Inc. v. Workrite Uniform Co., 2011 WL

1224920, at *2 (N.D. Ill. Mar. 31, 2011).

Pursuant to Rule

36(a)(4), litigants have five options when responding to
requests to admit: (1) admit; (2) deny; (3) admit in part and
deny in part; (4) respond that they are unable to admit or
deny; or (5) object.

F.R.C.P. 36(a)(4).

For each of these

RFAs, a proper response would only reveal the underlying facts,
which are not protected as work product. Id. at *1.

The RFAs

ask about the existence of communications or searches.

This is

non-privileged information that would have to be disclosed on a
privilege log.

Therefore, pursuant to Rule 36(a)(6), the Court

orders Plaintiffs to make a proper response to each.
With regard to the two RFAs to Wiley and the two to AIP,
MBHB argues that they are not ambiguous, and that Plaintiffs’
claim otherwise is baseless.

The Court finds Plaintiffs’

general objection of ambiguity unavailing.

The RFAs are clear,

therefore Wiley and AIP are ordered to make proper responses to
each of the two RFAs directed to them.
Conclusion
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For the reasons set forth above, Defendant’s motion to
compel is granted in part, and denied in part.

Accordingly,

MBHB’s motion to compel is granted as to Interrogatory Nos. 6 and
9, but denied as to No. 2, and granted as to the production of
documents responsive to RFP Nos. 13, 31, 33, 47, 49, 51, 53, 54,
and 58-62.

The Court denies MBHB’s RFP Nos. 40, 42, 43, and 65.

Additionally, the Court orders Plaintiffs to admit or provide
proper responses to RFA Nos. 5-12 and 59-63, as well as RFA Nos.
34 and 35 to Wiley and Nos. 38 and 39 to AIP.

Dated: June 7, 2013
E N T E R E D:

_____________________________
MAGISTRATE JUDGE ARLANDER KEYS
UNITED STATES DISTRICT COURT

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