John Wiley & Sons, Ltd. et al

Filing 176

MEMORANDUM Opinion and Order. Signed by the Honorable Arlander Keys on 6/24/2013. (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
Currently before the Court is Plaintiffs’ motion to
clarify its June 7, 2013 Order [Dkt. #145] insofar as it compels
the production of documents in response to RFP Nos. 13, 311, 33,
47, 49, 51, 53, 54, and 58-62.

Specifically, Plaintiffs request

that the Court clarify the Order as to whether it intended to
limit these 13 requests for production to the two copyrighted
scientific articles at issue.

Indeed, the Court’s order intended

for production to be compelled as it relates to the Articles at
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Plaintiffs’ motion title does not include RFP No. 31, however it is clear
from Plaintiffs’ argument that it was intended for No. 31 to be included for
clarification as well.

issue.

Any works beyond the scope of relating to the two

Articles would be overly broad and unduly burdensome to produce.
Defendants made document requests using the term “works” and
defined that term in a way that was extremely broad, encompassing
every copyrighted work that Plaintiffs have ever published, many
of which are entirely different from the scientific Articles.
Thus, they are to be limited to documents, articles, journals,
communications, etc. that relate to the two scientific Articles
that are the subject of this action, not all of the works that
Plaintiffs have ever published.

Regarding RFP Nos. 51 and 53

specifically, because both parties address these two RFPs
extensively, the Court makes clear that the communications
requested therein should be produced if they either relate to the
two Articles specifically, or are closely related to scientific
articles which are much like those of the two Articles at issue.

Accordingly, the Court grants Plaintiffs’ request to clarify
RFP Nos. 13, 31, 33, 47, 49, 51, 53, 54, and 58-62, and limits
the 11 RFPs to the two works that are the subject of this action,
and regarding RFP Nos. 51 and 53, the Court orders production of
any communication that relates to the Articles or is of a kind of
scientific article akin to the Articles at issue.

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Dated: June 24, 2013
E N T E R E D:

_____________________________
MAGISTRATE JUDGE ARLANDER KEYS
UNITED STATES DISTRICT COURT

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