John Wiley & Sons, Ltd. et al

Filing 78

MEMORANDUM Opinion and Order. Signed by the Honorable Arlander Keys on 2/12/2013. (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 Norgle
Magistrate Judge Arlander Keys

MEMORANDUM OPINION AND ORDER
Plaintiffs John Wiley & Sons, Ltd., and American Institute
of Physics (collectively, “Plaintiffs”) move pursuant to Fed. R.
Civ. P. 37(a) to compel Defendants McDonnell Boehnen Hulbert &
Berghoff LLP ("MBHB") to fully respond to Interrogatories 1 and
2, and to produce documents in response to document requests 5,
6, 7, 8, 9, 10, 11, 12, 13, 14, 16, and 18.
Background
On October 17, 2012, Plaintiffs commenced this action
asserting that Defendants violated their copyrights in two

scientific journal articles1 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 patient practice...The
internal copying has occurred...throughout McDonnell’s patent law
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

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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 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”).

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its patent counseling practice.
Defendants filed a response opposing Plaintiffs’ motion to
compel based upon relevance, undue burden, and because two orders
in related actions are pending: American Institute of Physics et
al v. Schwegman, in the United States District Court for the
District of Minnesota, and American Institute of Physics et al v.
Winstead PC, in the United States District Court for the Northern
District of Texas.

Defendants argue that Plaintiffs have no

basis, beyond mere speculation, for their assertion that MBHB
used their articles outside of its prosecution practice.
Moreover, Defendants maintain that it is unreasonably burdensome
to demand that MBHB search for any possible use of these two
articles in any of the numerous other legal matters handled by
the law firm, deeming it a “fishing expedition”.

Finally,

Defendants encourage the Court to follow suit with the two other
courts which have similar matters pending, and either deny
Plaintiffs the discovery they seek or limit it substantially.
Although the Court agrees with Defendants that a pure
fishing expedition is unjust, the Court finds that, given the
scope of Plaintiffs amended claims for copyright infringement,
the information and documents Plaintiffs seek to compel are
relevant to the claims in this action.

The amended complaint is

no longer limited to MBHB’s patent prosecution practice, but now
includes all of MBHB’s law practice.

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As burdensome as that makes

compliance with discovery for MBHB, nonetheless, Plaintiffs have
a right to a reasonable search of relevant information as it
relates to their newly amended claims.

What must be defined at

this juncture, however, is what a “reasonable” search entails.
Defendants underscore that Plaintiffs have filed similar
infringement cases that are currently pending in other courts,
however, the Court notes that, in both instances, the courts have
not denied Plaintiffs the type of discovery they seek, but
instead aimed to determine reasonable parameters, as will the
Court herein.
In an e-mail dated November 26, 2012, Defendants attempted
to negotiate a discovery proposal with Plaintiffs, offering to
commence a broader search into other areas of its practice than
before as outlined below:
1. Search the firm’s electronic document management
system for any copies of the articles besides those
already disclosed;
2. Search the index of the firm’s off-site document
storage for references to the articles, and if such
references are found, retrieve the boxes of these files
and search them manually;
3. Send a memo to the firm’s attorneys, law clerks, and
technical advisors, asking them if they remember making
any copies of or otherwise using the articles, and if
they do recall such use, to let the firm know so these
uses can be investigated further; and
4. Search the computer hard drives and relevant paper
files of Tom Fairhall and Richard Machonkin—the two
attorneys already identified as having used the
articles in prosecuting certain patent applications—for
any uses of the articles other than those already
identified.
November 26, 2012 E-mail from B. Irwin of Kirkland and Ellis LLP
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to W. Dunnegan of Dunnegan and Scileppi LLC (attached as Exhibit
C to Defendants’ Response).

Plaintiffs rejected MBHB’s search

proposal, writing that, “[w]e are reluctant to agree that,
regardless of the outcome of the search you propose, we cannot
seek a follow-up search.” (See Nov. 28, 2012, W. Dunnegan e-mail
to B. Irwin, attached as Exhibit D.)

On December 14, 2012, both

parties appeared before the Court for oral argument on the
matter.

Defendants’ main concern was that Plaintiffs would

continue to expand their search upon the non-retrieval of the
information they seek.

Conversely, Plaintiffs argue that a

follow-up search is unnecessary provided that, in addition to the
search that MBHB has already proposed, they are also granted
access to search the local hard drives of every lawyer (and
his/her secretary if need be) in MBHB’s office.
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©, 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).

A party objecting to the production of relevant information
on the ground that it is unduly burdensome has the burden to
prove the extent of that burden.

Burkybile v. Mitsubishi Motors

Corp., 2006 WL 2325506 at *6 (N.D. Ill. Aug. 2, 2006)(“If the
party from whom the documents are requested objects to their
production, that party 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 relevant nor reasonably calculated to lead to the
discovery of admissible evidence.’”

Burkybile at *6 (quoting

Swift v. First USA Bank, 1999 WL 1212561 (N.D. Ill. Dec. 15,
1999)).

Where the party from whom the documents are requested

objects to the request, the party seeking the request may move

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for an order to compel production.

Gile, 95 F.3d at 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.”)
Here the parties have reached an impasse on the parameters
of the search that is necessitated by Plaintiffs’ amended
complaint.

As Plaintiffs suggest, the most basic inquiry in this

action is: how many unauthorized copies did MBHB make of the two
copyrighted articles, and in what circumstances were they made?
In order to determine those answers, Plaintiffs propounded the
following interrogatories and document requests:
Interrogatories 1 and 2 provide:
"1. For each Copy of the Raznikov Article that McDonnell
ever had in its possession, custody or control, Describe in
detail the circumstances in which McDonnell made a Copy of that
article and/or distributed a Copy of it to any Person outside
of McDonnell.
2. For each Copy of the Erchak Article that McDonnell ever
had in its possession, custody or control, Describe in detail
the circumstances in which McDonnell made a Copy of that
article and/or distributed a Copy of it to any Person outside
of McDonnell."
(McGarry Dec. Ex. A at 4-5.)
Document requests 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16,
and 18 concern the extent of MBHB’s copying of the articles:
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"5. Documents sufficient to identify the circumstances
under which McDonnell obtained its first Copy of the Raznikov
Article.
6. Documents sufficient to identify the circumstances
under which McDonnell obtained any subsequent Copy of the
Raznikov Article, other than by copying a Copy already within
its possession, custody or control.
7. Documents sufficient to identify each Copy of the
Raznikov Article that McDonnell made prior to November 9, 2010.
8. Documents sufficient to identify each Copy of the
Raznikov Article that McDonnell distributed to any Person
outside McDonnell prior to November 9, 2010.
9. Documents sufficient to identify each attorney, patent
agent, or other Person affiliated with McDonnell who had
possession, custody or control of a Copy of the Raznikov
Article at any time prior to November 9, 2010.
10. Documents sufficient to identify the circumstances
under which McDonnell obtained its first Copy of the Erchak
Article.
11. Documents sufficient to identify the circumstances
under which McDonnell obtained any subsequent Copy of the
Erchak Article, other than by copying a Copy already within its
possession, custody or control.
12. Documents sufficient to identify each Copy of the
Erchak Article that McDonnell made prior to November 9, 2010.
13. Documents sufficient to identify each Copy of the
Erchak Article that McDonnell distributed to any Person outside
McDonnell prior to November 9, 2010.
14. Documents sufficient to identify each attorney, patent
agent, or other Person affiliated with McDonnell who had
possession, custody or control of a Copy of the Erchak Article
at any time prior to November 9, 2010. . . .
16. Documents sufficient to identify each individual who
obtained on behalf of McDonnell any licensed Copy of, or a
license to copy, the Raznikov Article. . . .
18. Documents sufficient to identify each individual who
obtained on behalf of McDonnell any licensed Copy of, or a
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license to copy, the Erchak Article."
(McGarry Dec. Ex. C at 6-15.)
Initially, Defendants objected to providing the responsive
discovery, arguing that the terms used are undefined,
ambiguous, and vague. MBHB further objected to the
interrogatories as overly broad and unduly burdensome to the
extent it seeks information relating to each copy of the
articles MBHB ever had in its possession, custody, or control
without regard to time, and without regard to whether such
copying occurred in connection with the allegedly infringing
activities.

Moreover, MBHB objected to the interrogatories as

seeking information protected by the attorney-client privilege
and/or work product doctrine. The Court finds all of
Defendants’ contentions equally unavailing.

Aside from the

boilerplate declarations that the language utilized is vague
and that providing such responsive discovery is unduly
burdensome, Defendants do not provide any proof as to how or
why Plaintiffs request is improper.

With regard to the

attorney client privilege and work product doctrine, the Court
finds that the documents requested seek neither evidence of
confidential attorney-client communication nor any materials
prepared in anticipation of litigation.
In an effort to resolve Plaintiffs’ motion without the
Courts’ intervention, Defendants later made a proposal to
conduct a broader search of its files for any use of the
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articles, however still not to Plaintiffs’ satisfaction.
Plaintiffs maintain that discovery which involves a search of
the network and local electronic files of MBHB’s attorneys,
patent agents, paralegals, and secretaries for copies of the
two articles and any reference to them is necessary and
reasonable.

The Court disagrees.

In a similar vein as both the Winstead and Schwegman
courts wherein infringement actions are pending, the Court
finds that, with the scope of Plaintiffs’ amended complaint
widening, so is the need for expanded discovery. (In Schwegan,
Judge Keyes explained in his order to Defendants that “you are
going to have to do more internal investigation so that you
find out and are able to provide more information...”) (In
Winstead, Judge Lynn delineated certain limited interrogatories
that plaintiff could serve on defendants)

Herein, however, the

Court finds the parameters sought by Plaintiffs to be
disproportionate to the previous good faith belief articulated
of wherein they allege infringement lies.

Moreover, the Court

finds a search of every hard drive at MBHB to be unduly
burdensome.

Therefore, the Court grants Plaintiffs’ request to

compel Interrogatories 1 and 2 but denies Plaintiffs’ document
requests numbered 9, 14, 16, and 18.

The Court finds that,

with regard to those documents, Defendants must meet the
parameters of the proposed search they offered, but need not go
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beyond that.

Specifically, Defendants need not search the hard

drives of every lawyer, paralegal, law clerk, technical
advisor, or secretary of the MBHB firm, unless and until in
responding to MBHB’s memo, an employee recalls making copies or
otherwise using the articles.

That would then be grounds for

further investigation.
Conclusion
For the reasons set forth above, Plaintiffs’ motion to
compel is granted in part, and denied in part. Accordingly,
Plaintiffs’ motion to compel is granted as to Interrogatories 1
and 2, and as to documents responsive to numbers 5,6, 7, 8, 10,
11, 12, 13, 15.

The motion to compel is otherwise denied.

Dated: February 12, 2013
ENTER:

________________________
ARLANDER KEYS
United States Magistrate Judge

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