IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

JOHN WILEY & SONS, LTD., AND ) 

AMERICAN INSTITUTE OF PHYSICS, )

)

 Plaintiffs, )

 )

 -against- ) 12 C 1446

 )

MCDONNELL BOEHNEN HULBERT ) Hon. Charles R. Norgle

& BERGHOFF LLP, AND JOHN DOE )

NOS. 1-10, ) 

 )

 Defendants, ) 

)

 -and- )

)

THE UNITED STATES PATENT AND )

TRADEMARK OFFICE, )

)

 Intervening Defendant and )

 Counterclaim Plaintiff. )

PLAINTIFFS’ MOTION TO COMPEL

FURTHER RESPONSES TO INTERROGATORIES

AND PRODUCTION OF DOCUMENTS

Plaintiffs John Wiley & Sons, Ltd., and American Institute of Physics 

(collectively, the "Publishers") move pursuant to Fed. R. Civ. P. 37(a) to compel 

defendant McDonnell Boehnen Hulbert & Berghoff LLP ("McDonnell") (i) to fully respond 

to interrogatories 1 and 2, and (ii) to produce documents in response to document

requests 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, and 18. 

Preliminary Statement 

The Publishers commenced this action asserting that McDonnell infringed 

their copyrights in scientific articles by making internal copies of those articles in 

connection with McDonnell's law practice. McDonnell's practice includes both 

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counseling clients and prosecuting patents before the PTO. The evidence of 

McDonnell's infringing acts of copying is almost exclusively within McDonnell's control. 

The Publishers therefore need discovery from McDonnell to establish their case. 

In an attempt to limit its liability for making infringing copies, McDonnell 

has improperly limited its interrogatory responses, and its document search, to 

McDonnell's patent prosecution practice. It has refused to provide any information 

concerning copies made in the course of its patent counseling practice. For example, if 

McDonnell has made an unauthorized copy of a copyrighted article for the purpose of 

advising a client concerning, for example, whether its product infringes a patent, 

McDonnell has refused to disclose that fact and refused to produce the relevant 

documents evidencing that unauthorized copy. Allowing McDonnell to so limit its 

discovery obligations by mischaracterizing the Publishers' claims may allow McDonnell 

to determine its own liability for copyright infringement.

THE COURT SHOULD COMPEL MCDONNELL TO DISCLOSE THE EVIDENCE

Argument

OF ITS COPYING OF THE COPYRIGHTED ARTICLES THROUGHOUT ITS

PRACTICE, NOT SIMPLY IN ITS PATENT PROSECUTION PRACTICE

The most basic inquiry in this action is: how many unauthorized copies did 

McDonnell make of the two copyrighted articles that are currently the subject of this 

action, and in what circumstances did McDonnell make them? Because these acts of 

copying occurred behind closed doors at McDonnell, the answers to these questions 

are almost exclusively within the control of McDonnell. 

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A.

To determine the number of unauthorized copies that McDonnell made of 

the relevant articles, the Publishers served interrogatories and document requests. 

The Publishers Have Properly Sought McDonnell's Evidence Of Copying. 

The Publishers' 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 McDonnell’s copying of the Raznikov and Erchak Articles. 

"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. 

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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 license to copy, the Erchak 

Article." (McGarry Dec. Ex. C at 6-15.)

B. McDonnell Has Objected To Providing The Responsive Discovery.

In its supplemental responses of September 18, 2012, to the Publishers' 

interrogatories, McDonnell has objected to disclosing all of the copies of these 

copyrighted works that McDonnell has made. McDonnell's objections to interrogatories 

1 and 2 each provide:

"MBHB objects to this Interrogatory because the request to 'Describe in 

detail the circumstances' is undefined, ambiguous, and vague. MBHB 

further objects to this Interrogatory as overly broad and unduly 

burdensome to the extent it seeks information relating to each Copy of the 

Raznikov [or Erchak] Article 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. MBHB 

further objects to this Interrogatory as seeking information protected by 

attorney-client privilege and/or work product immunity." (McGarry Dec. Ex. 

B. at 4-6 (emphasis added).)

McDonnell's objections to document request 5, for example, provide: 

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"MBHB specifically objects to this Request as seeking information 

protected by attorney client privilege and the work-product doctrine. MBHB 

further objects to this Request because the term 'circumstances' is vague 

and ambiguous.

Subject to its general and specific objections, MBHB is aware that it cited 

the Raznikov Article in conjunction with an information disclosure 

statement ('IDS') submitted to the United States Patent and Trademark 

Office ('USPTO') dated October 30, 2008, for U.S. Patent Application 

Serial No. 10/887,138 ('the ’138 Application') and in conjunction with an 

IDS dated April 7, 2009, for U.S. Patent Application Serial No. 11/396,328 

(' the ’328 Application'). MBHB will produce responsive, non-privileged 

documents relating to prosecuting these patent applications to the extent 

such documents in its possession, custody or control exist and are located 

after a reasonable search. MBHB objects to this request to the extent it 

seeks documents beyond those related to its prosecution of the ’138 and 

’328 Applications." (McGarry Dec. Ex. C at 6.)

C. McDonnell's Objections Are Improper.

McDonnell's objections to the interrogatories and document requests fall 

within two categories: (1) objections that are boilerplate, and (2) objections that 

mischaracterize the Publishers' claims, thereby rendering (in McDonnell's view) the bulk 

of its information and documents non-responsive. 

1.

a.

The Court Should Overrule McDonnell's Boilerplate Objections.

Objections To Interrogatories

The term "Describe in detail" is defined in plaintiffs' interrogatories as "to 

set forth with the level of detail that you would rely upon at the trial of this action."

(McGarry Dec. at ¶ 2.) McDonnell therefore cannot reasonably object that this request 

is undefined. 

The fact that McDonnell made copies of copyrighted articles does not 

represent either an attorney-client communication or work in anticipation of litigation. 

McDonnell has no basis for an objection in this respect. 

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b.

For each request, McDonnell has objected because of the "attorney client 

privilege and the work product doctrine." (McGarry Dec. Ex. C.) This objection has no 

merit. The document requests seek evidence that the copyrighted materials have been 

copied. The document requests do not seek evidence of either any confidential 

attorney-client communication or any materials prepared in anticipation of litigation. 

Objections To Document Requests

McDonnell has objected on the ground that the word "circumstances" is 

vague and ambiguous. (Id.

McDonnell has objected on the ground that a request for disclosure of 

evidence of "each" copy is unduly burdensome. (

) This objection has no merit. McDonnell has not attempted 

to provide any responsive documents concerning its copying.

Id.

2. The Court Should Overrule McDonnell's Objections 

Based Upon McDonnell's Mischaracterization

) However, each copy that 

McDonnell made (except the two specific copies excluded from the amended complaint) 

is alleged to be an infringement. An objection based upon an unreasonable burden will 

be meritless, unless McDonnell admits that substantial additional unauthorized copying 

occurred. 

Of The Scope Of The Publishers' Copyright Claim.

McDonnell has objected to disclosing all information or documents 

concerning its unauthorized copying of the articles that are the subject of this case by 

mischaracterizing the Publishers' claim as limited to copies involved in McDonnell's 

patent prosecution practice. McDonnell expressly refuses to provide information 

responsive to the interrogatories unless "such copying occurred in connection with the 

allegedly infringing activities." (McGarry Dec. Ex. B. at 4-6 (emphasis added).) Further, 

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in response to each of the document requests, McDonnell has stated what it objects to 

the extent it seeks "documents beyond those related to its prosecution of

Whether McDonnell likes it or not, the amended complaint defines the 

Publishers' claim, and that claim is not limited to unauthorized copies that McDonnell 

made in the course of its patent prosecution practice. Rather, the Publishers' claim 

involves any copy made in McDonnell's law practice. The amended complaint provides: 

" certain patent 

applications. (McGarry Dec. Ex. C (emphasis added).) In its September 5, 2012 letter

to counsel for plaintiffs, counsel for McDonnell stated: "The amended complaint is a 

transparent attempt to transform this case from one about using non-patent literature in 

the course of prosecuting patent applications into one about a litany of other uses of 

these works, without an factual basis to assert such conduct took place." (McGarry 

Dec. Ex. D at 4.) 

"13. McDonnell is engaged in the practice of law. On its website, 

McDonnell states 'we know high-technology industries, and we know the 

law. We work with our clients to provide them with the benefit of our 

extensive knowledge and experience, so that they can rest assured that 

their technology assets are protected.' Among other things, McDonnell 

holds itself out as practicing 'intellectual property law,' which includes 

copyright law. 

14. Upon information and belief, McDonnell has engaged in 

Unauthorized Copying with respect to copyrighted articles from plaintiffs' 

journals, including but not limited to the articles identified on Schedule A. 

[the Publishers] cannot know the full extent of defendants' Unauthorized 

Copying without discovery." (Dkt. No. 34 at ¶¶ 13-14.)

 

McDonnell's other activities, about which McDonnell refuses to provide 

any information whatsoever concerning its unauthorized copying, include counseling

clients with respect to a broad variety of patent matters. McDonnell's website provides:

"Our attorneys provide patent prosecution and counseling services in a 

wide range of technical areas, including biotechnology, business methods, 

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chemical, computing, electrical, mechanical and materials, 

pharmaceuticals and diagnostics, and telecommunications. Our broad 

patent litigation experience in enforcement and defense gives us an 

advantage in prosecution situations. We understand all sides of the issues 

that our clients face, so we are always ready to aggressively pursue and 

defend their rights.

At MBHB, our attorneys have unparalleled prosecution experience and 

technical knowledge." (http://www.mbhb.com/prosecution/ (Last checked 

October 15, 2012)(emphasis added).)

These counseling services would include (i) evaluating potential inventions 

that clients present, only to determine that they are not patentable, (ii) advising clients 

how to lawfully avoid infringement by designing around existing patents, (iii) assessing 

the validity of patents, for the purpose of allowing their clients to practice the subject 

matter of invalid patents, (iv) giving opinions as to whether an existing product infringes 

a patent, and (v) determining whether the client's interests would be best served by 

maintaining otherwise patentable subject matter as a trade secret. These counseling 

services would not involve filing or prosecuting patent applications. 

Accordingly, a decision allowing McDonnell to withhold evidence of copying 

unless it "occurred in connection with the allegedly infringing activities" (McGarry Dec. 

Ex. B at 4-6) would allow McDonnell to selectively withhold evidence that in itself 

creates prima facie evidence of copyright infringement. Such a decision may allow 

McDonnell to determine its own liability for copyright infringement. 

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For the reasons set forth above, the Publishers respectfully request that 

the Court compel McDonnell to fully answer Interrogatories 1 and 2, and to produce 

documents responsive to document requests numbered 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 

16, and 18. 

Conclusion

Dated: October 17, 2012 Respectfully submitted,

/s/ Annette M. McGarry

Annette M. McGarry (#6205751)

amm@mcgarryllc.com

Marianne C. Holzhall (#6204057)

mch@mcgarryllc.com

McGarry & McGarry, LLC

120 North LaSalle Street, Suite 1100

Chicago, IL 60602

(312) 345-4600

/s/ William Dunnegan

William Dunnegan (Pro Hac Vice)

Laura Scileppi (Pro Hac Vice) 

Dunnegan & Scileppi LLC

350 Fifth Avenue

New York, New York 10118

(212) 332-8300

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