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

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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 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, 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

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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

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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: 

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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,

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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

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