UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

JOHN WILEY & SONS, LTD., and 

AMERICAN INSTITUTE OF PHYSICS,

Plaintiffs,

v.

MCDONNELL BOEHNEN HULBERT & 

BERGHOFF LLP, and JOHN DOE NOS.

1-10,

Defendants,

and

THE UNITED STATES PATENT AND

TRADEMARK OFFICE,

Proposed Intervening Defendant.

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12 C 1446

Judge Norgle

MEMORANDUM IN SUPPORT OF MOTION TO INTERVENE

OF THE UNITED STATES PATENT AND TRADEMARK OFFICE

Introduction

The United States Patent and Trademark Office (“USPTO”), subject to the policy 

direction of the Secretary of Commerce (see 35 U.S.C. § 1(a)), moves pursuant to Fed. R. Civ. P.

24 to enter an order granting it the right to intervene and to file the Answer and Counterclaim

attached as Exhibit A. This proposed intervention is for the limited purpose of asserting that 

copying and distribution of copyrighted non-patent literature (NPL) by defendants that is 

necessary and incidental to the filing and prosecution of a U.S. patent application, and/or the 

conduct of other USPTO proceedings concerning or relating to the scope or validity of any 

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issued U.S. Patent, is privileged and constitutes a fair use of such copyrighted works under 17 

U.S.C. § 107. 

Under Rule 24, the USPTO has three independent bases for such intervention: (1) 

intervention as a matter of right under Rule 24(a)(2) based on the USPTO’s interest in the case 

and impairment of its ability to protect that interest if denied the right to intervene; (2) 

permissive intervention by a government agency under Rule 24(b)(2)(A) and/or (B), because the 

USPTO advises the President and the Executive Branch on intellectual property matters, 

including the Copyright Act, which is the basis of the plaintiffs’ claim and the defendants’ 

anticipated defense, and because the USPTO administers the Patent Act and regulations under it, 

which are inextricably intertwined in the plaintiffs’ claims and part of the defendants’ anticipated 

defense; and (3) permissive intervention under Rule 24(b)(1)(B) because the United States has a 

claim or defense that shares with the main action a common question of law or fact.

The United States and the entire patent system instituted by Congress are at risk of 

serious harm if the USPTO is denied intervention in the instant case. If this Court grants the 

plaintiffs the relief they request—which would be a finding that the defendant patent prosecutors 

violated copyright law by copying certain materials and distributing them to the USPTO even 

though Patent Act regulations require this submittal—the result would likely cause significant 

delays in patent prosecution and significant negative impacts on the efficiency, quality, and cost 

effectiveness of the patent process. This would prove particularly detrimental because invention

and patent applications are at an all-time high and are only expected to increase in response to 

Congress’ recent major legislation, the America Invents Act of 2011, Pub. L. No. 112-29, aimed 

at promoting American innovation and enterprise. The requested relief would have a significant 

adverse effect not just on patent prosecution, but also patent infringement litigation, which often

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involves disputes over documents submitted (or not submitted) to the USPTO during patent 

prosecution. 

For these reasons, and as set forth more fully below, the government respectfully requests 

that it be permitted to intervene in the instant action. 

Background

On February 29, 2012, John Wiley & Sons, Ltd. and American Institute of Physics

(together, “plaintiffs”) filed the instant complaint against the law firm McDonnell Boehnen 

Hulbert & Berghoff LLP and John Doe Nos. 1-10, partners, associates and other employees of 

the firm (collectively, “defendants”). The plaintiffs claim copyright infringement under 17 

U.S.C. § 101 et seq., arising from the alleged unauthorized copying and/or distribution of the 

plaintiffs’ copyrighted works in connection with the defendants’ patent prosecution practices, 

including submissions to the USPTO. 

The defendant law firm files and prosecutes United States patent applications on behalf 

of its clients. In order to comply with USPTO regulations and to promote efficient, effective 

patent review, patent applicants are required to disclose to the USPTO information material to 

the patentability of their inventions. See 37 C.F.R. § 1.56 (requiring applicants to submit all 

known information “material to patentability”); 37 C.F.R. § 1.98 (specifically requiring 

submission of “[a] legible copy of . . . [e]ach publication or that portion which caused it to be 

listed” on the applicant’s information disclosure statement). This mandatory disclosure includes 

submission to the USPTO of copies of “prior art” materials in the form of published articles (i.e., 

NPL). NPL provides invaluable guidance to the USPTO and the public as to whether an 

invention is in fact patentable. It is vital to the patent examination process that the examiners

and the public have all available evidence related to patentability, including relevant copyrighted 

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articles. One critical use of NPL is to determine whether the invention already is in the public 

domain and thus not patentable.

The plaintiffs publish scientific, technical, and medical journals, consisting primarily of 

peer-reviewed articles, and either own or exclusively license the copyrights to these articles. 

They assert that in connection with researching, filing, and prosecuting certain patent 

applications, the defendants “made and/or distributed to the [USPTO], and perhaps others, 

unauthorized copies of copyrighted articles from plaintiffs’ journals.” Compl. ¶ 14. The 

plaintiffs assert that the defendants made copies of the plaintiffs’ copyrighted works and

included or cited them in their patent applications, and also made copies of copyrighted works 

that the defendants considered in connection with the applications, but did not ultimately cite or 

provide to the USPTO. Compl. ¶ 15. 

In sum, the plaintiffs allege that the defendants infringed upon the plaintiffs’ copyrights

by making unauthorized copies of copyrighted works for internal use in the preparation of patent 

applications and for submittal to the USPTO, and that the defendants made a profit as a result of 

the infringement. The United States requests intervention to show that certain of the plaintiffs’ 

claims are not supportable because the use of copyrighted material in connection with patent 

applications under the Patent Act constitutes “fair use.1

 1 Specifically, as set forth in the attached pleading, the USPTO alleges that the fair use defense 

applies to “the copying of copyrighted NPL and distribution thereof, which copying and/or 

distribution is necessary and incidental to the filing and prosecution of a U.S. patent application 

and/or the conduct of other USPTO proceedings concerning or relating to the scope or validity of 

any issued U.S. Patent, including copies of NPL actually submitted to the USPTO and copies of 

NPL initially considered but ultimately rejected for inclusion in submissions to the USPTO, by 

or at the direction of patent applicants, patentees, patent challengers and/or their representatives, 

such as defendant McDonnell.” See, e.g., First Proposed Defense.

”

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Statement of Interest

The government seeks to intervene in this action on behalf of the USPTO. The USPTO

has a paramount interest in ensuring that patent applicants can and do disclose the documents

necessary to determine whether a proposed patent should be granted. This Court’s ultimate 

decisions regarding the transactions at issue in this suit—the copying of copyrighted articles for 

the purpose of patent research and examination before the USPTO—may have far-reaching 

effects on the USPTO’s patent operations and its ability to carry out its statutory mandate. If the 

plaintiffs obtain the relief they seek, would likely have a significant negative impact on the 

USPTO’s ability to effectively and efficiently carry out its mission and its obligations as imposed 

by Congress. 

Argument

First, the USPTO can intervene as a matter of right under Rule 24(a)(2) based on its 

critical interest in the subject matter of the case and the impediment to protecting that interest if 

denied the right to intervene. The plaintiffs’ requested relief would significantly impair the 

USPTO’s ability to carry out its core statutory functions. Second, the United States has an 

independent basis for permissive intervention under Rule 24(b)(2)(A) and/or (B) because the 

USPTO is a government agency that (1) advises the President and the entire Executive Branch 

on intellectual property matters, including the Copyright Act, which is the basis for the plaintiffs’

claim, and (2) administers the Patent Act and regulations thereunder (37 C.F.R. §§ 1.56 and 

1.98), which are inextricably intertwined in the plaintiffs’ claims and part of the defendants’ 

anticipated defense. And finally, the United States has an additional basis for permissive 

intervention under Rule 24(b)(1)(B) because the United States has a claim or defense that shares 

with the main action a common question of law or fact.

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I. The USPTO Has A Right To Intervene Under Rule 24(a).

Federal Rule of Civil Procedure 24(a)(2) reads:

(a) Intervention of Right. On timely motion, the court must permit anyone to 

intervene who: 

* * *

(2) claims an interest relating to the property or transaction that is the subject 

of the action, and is so situated that disposing of the action may as a practical 

matter impair or impede the movant’s ability to protect its interest, unless 

existing parties adequately represent that interest.

The Seventh Circuit has held that to have a right to intervene under Rule 24(a)(2), a party 

must “(1) make timely application, (2) have an interest relating to the subject matter of the 

action, (3) be at risk that that interest will be impaired, ‘as a practical matter,’ by the action’s 

disposition and (4) lack adequate representation of the interest by the existing parties.” See, e.g.,

Nissei Sangyo Am., Ltd. v. United States, 31 F.3d 435, 438 (7th Cir. 1994) (citation omitted). In 

addition, “Rule 24 should be liberally construed in favor of potential intervenors.” See iWork 

Software, LLC v. Corporate Express, Inc., 2003 WL 22494851, at *1 (N.D. Ill. Nov. 4, 2003). 

The United States’ request to intervene meets each of these criteria as discussed below.

A. This Application Is Timely.

The United States’ motion and proposed pleading are timely filed. The timeliness 

requirement of an intervention of right does not impose “a precise time limit,” but instead is 

based on a reasonableness test. See Nissei, 31 F.3d at 438. Factors to be considered are the 

potential intervenors’ diligence in learning of the suit and any prejudice to the parties caused by 

any delay. See People Who Care v. Rockford Bd. Of Educ., 68 F.3d 172, 175 (7th Cir. 1995); see 

also Nissei, 31 F.3d at 438 (prejudice inquiry is not whether the case will be more difficult for 

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the defendant to defend on the merits, but whether the delay itself causes prejudice sufficient to 

justify denying the right of an intervening party to litigate their claim). 

The United States learned of this action shortly after the plaintiffs filed their complaint on 

February 29, 2012 and swiftly moved to file its motion and proposed pleading very early on in 

the litigation process. The docket indicates that no discovery or preliminary scheduling has 

taken place. For these reasons, there is no risk of timing prejudice to the plaintiffs. See Nissei, 

31 F.3d at 439 (intervention timely where intervenor filed motion three months after learning of 

suit); Clorox Co. v. S.C. Johnson & Son, Inc., 627 F. Supp. 2d 954, 961 (E.D. Wis. 2009) 

(intervention timely where motion to intervene was filed just over a month after suit commenced 

and was the first substantive issue before the court). Thus, this motion is timely.

B. The USPTO Has an Interest Related to the Transactions.

A party seeking to establish a protectable interest for the purpose of intervention must 

show that it has a direct, significant, and legally protectable interest. See Solid Waste Agency of 

N. Cook Cnty. v. U.S. Army Corps of Engineers, 101 F.3d 503, 506 (7th Cir. 1996). The USPTO

has a substantial interest in the transactions that are the subject of this action: the copying and 

submission to the USPTO of copyrighted materials that occurs in connection with the routine

researching, filing, and prosecuting of patent applications under patent statutes. A person 

preparing and submitting a patent application must identify and disclose all known information

that will assist a patent examiner in determining whether to grant a patent. See 37 C.F.R. § 1.56. 

This information is critical to the patent examination function; often, the examiner relies on this 

information in determining that the claimed invention fails to meet the statutory requirements 

and is thus not patentable, or that the patent claims must be narrowed in order for a patent to 

issue. Conversely, in cases where the examiner determines that the invention is patentable in 

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spite of the submitted information, the fact that the examiner considered the information in 

granting the patent frequently plays an important role in subsequent litigation or reexamination 

proceedings that challenge the validity of the patent. 

While the USPTO is expressly interested in the defendants’ specific transactions, its 

interests extend much more broadly in scope. The USPTO seeks to provide a fair and expedient 

examination process to all parties involved in the patent application process, including the

inventors, their agents, and their attorneys, and including the defendants in this case. Because a 

ruling holding these defendants liable for copyright infringement could become a precedent for 

other patent applicants, the USPTO has a strong interest in supporting the defendants’ position in 

this case. 

Further, the USPTO also has a stake in this action because the requested relief could lead 

to claims against it for merely carrying out the dictates of patent statutes. While the USPTO 

asserts that certain specific2

C. Disposition of This Matter May Impair or Impede the USPTO’s

Ability to Protect Its Interest.

uses, copying, and distribution of copyrighted materials for purposes 

of patent prosecution by the defendants constitutes ‘fair use’ under the Copyright Act, 17 U.S.C. 

§ 107 (see attached Answer, Defense and Counterclaim), the plaintiffs assert the opposite. The 

United States proposes to assert a counterclaim for declaratory judgment against the 

defendants—a form of relief available only to parties. As such, it is imperative that the United 

States be permitted to intervene to protect the USPTO’s interest with respect to its own actions, 

as well as third-party actions taken in compliance with USPTO regulations. 

Disposition of this matter has the potential to severely impede the USPTO’s ability to 

carry out its core statutory mission – the review and approval of patent applications. The 

 2 See, e.g. ̧United States’ Proposed First Defense.

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existence of an “impairment” under Rule 24(a) depends on whether a ruling would foreclose the 

intervenor’s rights in subsequent proceedings, as measured by the general standards of stare 

decisis. See Zurich Capital Mkts. Inc. v. Coglianese, 236 F.R.D. 379, 386 (N.D. Ill. 2006). If 

this Court were to hold that the defendants committed copyright infringement by submitting 

copyrighted documents to the USPTO for the purpose of review in connection with patent 

applications, the ruling could broadly affect countless pending and future applications and 

handcuff the USPTO’s ability to request and receive relevant NPL as required by statute. Such a

ruling could impose burdensome transaction costs that would likely impose considerable delays 

and costs on patent prosecution at a time when Congress, through the America Invents Act of 

2011, is encouraging increased American invention and calling on the USPTO to reduce the 

backlog of patent applications. Such a ruling would also significantly impair the ability of the 

USPTO to enforce the requirement under the Patent Act that applicants to submit vital nonpatent literature with their applications.

A ruling in favor of the plaintiffs could result in applicants simply not submitting certain

required information in connection with their patent applications. If an applicant declines to 

submit all of the materials necessary and required for a patent examiner to conduct a complete 

and informed review of the proposed patent, it seriously impairs the patent examiner’s ability to 

accurately determine whether a patent should be granted. As a result, patent quality would 

suffer, patent pendency rates would increase (because examiners would be less-equipped to 

evaluate applications and encounter more barriers to decision making), and the USPTO’s ability 

to fulfill its statutory role as an engine of innovation and economic growth would be 

compromised. Such a ruling likely would also drive up the costs and risks of subsequent patent 

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litigation, which often involves questions about a patent applicant’s decision not to submit 

allegedly “material information,” including NPL, to the USPTO. 

D. The USPTO’s Interest Is Not Adequately Represented by the Existing 

Parties.

The existing defendants to this action cannot be expected to adequately represent the 

USPTO’s interest. As indicated above, the USPTO’s interest extends far beyond the particular 

transactions here. Because of the broad scope of the government’s interest, it is conceivable that 

there could be a divergence in litigation or settlement strategies. For example, the USPTO

would not settle the narrow case at the expense of the national patent system. If not admitted as 

an intervenor, the USPTO’s significant interest in the subject matter of this action will not be 

represented.

For all these reasons, the USPTO should be permitted to intervene as of right under Rule 

24(a)(2).

II. The USPTO Should Be Allowed Permissive Intervention Under Rule 24(b)(2) as 

a Government Agency.

The United States also has a right to permissively intervene under Rule 24(b)(2). See 

Bible Way Church of Our Lord Jesus Christ World Wide, Inc. v. Showell, 260 F.R.D. 1, 4 

(D.D.C. 2009) (church could intervene both as of right and permissively in trademark action 

against the officers of the intervenor church, where the church’s counterclaims were identical to 

those raised by officers and intervention would promote judicial efficiency and consistency). 

Rule 24(b)(2) states as follows:

(b) Permissive Intervention.

* * *

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(2) By a Government Officer or Agency. On timely motion, the court may 

permit a federal or state government officer or agency to intervene if a party’s 

claim or defense is based on: 

(A) a statute or executive order administered by the officer or agency; or 

(B) any regulation, order, requirement, or agreement issued or made under 

the statute or executive order. 

Rule 24(b) gives district courts wide discretion to grant permissive intervention. See 

Griffith v. University Hosp., L.L.C., 249 F.3d 658, 661-62 (7th Cir. 2001) (stating that “Rule 

24(b) vests district courts with ‘considerable discretion’ when deciding whether to permit 

intervention by third parties seeking to protect their interests in a particular action”). Courts have 

used this discretion to grant intervention to government officers or agencies. See Group Health 

Inc. v. Blue Cross Ass’n, 587 F. Supp. 887, 892 (S.D.N.Y. 1984) (HHS permitted to intervene

where outcome of action could affect complex administrative framework governing Medicare 

reimbursements and where action was in its early phases and intervention was not likely to cause 

significant delay); see also Coffey v. Comm’r of Internal Revenue, 663 F.3d 947, 951 (8th Cir. 

2011) (U.S. Virgin Islands “administered” an economic development plan at issue in case 

between the IRS and an individual where the plan exempted residents from certain income tax). 

The Seventh Circuit has indicated that where permissive intervention is sought, the 

requester must demonstrate that it has independent jurisdiction. Here, the USPTO seeks to 

intervene to address claims under the Copyright Act, and related to the Patent Act and its 

regulations, and so has the same independent basis for jurisdiction as the plaintiffs, 28 U.S.C. §§ 

1331 and 1338. 

Rule 24(b)(3), which applies to all permissive intervention under Rule 24(b), requires 

courts to “consider whether the intervention will unduly delay or prejudice the adjudication of 

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the original parties’ rights.” As set forth above in the discussion on timeliness, permitting the 

United States to intervene would not prejudice the parties, see discussion supra, part I.A., nor 

would it delay the litigation. At this very early stage of litigation, the USPTO’s entrance into the 

litigation could not cause any conceivable delay, particularly considering that no substantive 

action has taken place beyond the filing of the initial complaint and answer. 

As demonstrated below, the USPTO has two independent bases to permissively intervene 

under Rule 24(b)(2) based on the USPTO’s statutory powers and duties (1) to advise the 

Executive Branch concerning the Copyright Act, and (2) to administer the Patent Act and 

regulations promulgated under it. For the reasons set forth below, permissive intervention is 

appropriate and in the interest of both justice and judicial efficiency.

A. Permissive Intervention Based on the USPTO’s Powers and Duties Concerning

Copyright Law.

Under Rule 24(b)(2), a government agency has the permissive right to intervene if “a 

party’s claim or defense is based on: (A) a statute or executive order administered by the 

agency.” The plaintiffs claim that the defendants violated the Copyright Act by copying and 

distributing copyrighted works in connection with researching, filing, and prosecuting patent 

applications. According to statute, the USPTO advises the President and the entire Executive 

Branch of the federal government concerning intellectual property law, which includes the 

Copyright Act. Pursuant to 35 U.S.C. § 2(b)(8) & (9), the USPTO “shall advise the President, 

through the Secretary of Commerce, on national and certain international intellectual property 

policy issues,” and “shall advise Federal departments and agencies on matters of intellectual 

property policy in the United States and intellectual property protection in other countries.” 35 

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U.S.C. § 2(b)(8) & (9). These statutory provisions support the USPTO’s motion for permissive 

intervention.3

B. Permissive Intervention Based on the Administration of the Patent Act

As set forth above, Rule 24(b)(1) extends to government agencies the permissive right to 

intervene where a party’s claim or defense is based on (A) a statute administered by the agency, 

or (B) any regulation under the statute administered by the agency. Directly at issue in this case 

is the administration of the Patent Act, including regulations promulgated thereunder by the 

USPTO, pursuant to which the defendants allegedly copied and distributed the plaintiffs’ 

copyrighted property. The Patent Act set forth the requirements for obtaining a patent in 35 

U.S.C. §§ 102 and 103. To assist in determining whether applications comply with the statutory 

directives in §§ 102 and 103, the USPTO has promulgated 37 C.F.R. §§ 1.56, covering “Patents, 

Trademarks and Copyrights.” See 35 U.S.C. § 2(b) (the USPTO may establish regulations not 

inconsistent with law that shall facilitate and expedite the processing of patent applications). 

Section 1.56 imposes a “duty to disclose to the Office all information known to that individual to 

be material to patentability.”

Section 1.56 directs that information material to patentability be submitted to the USPTO 

in the manner prescribed by §§ 1.97 and 1.98. Section 1.98 specifically requires applicants to 

submit “[a] legible copy of . . . [e]ach publication or that portion which caused it to be listed” on 

the applicant’s information disclosure statement. The USPTO is the primary administrator of all 

 3 The USPTO’s powers with respect to copyright matters are shared with the Register of 

Copyrights, who advises Congress, the judiciary, and , along with the USPTO, federal agencies,

on national and international issues relating to copyright. See 35 U.S.C. § 2(c)(3) & (5) 

(providing that nothing in subsection (b) shall “derogate from the duties and functions of the 

Register of Copyrights” and that the USPTO Director shall “consult with the Register of 

Copyrights on all copyright and related matters”); 17 U.S.C. § 701 (enumerating the functions 

and duties of the Register of Copyrights). 

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patent regulations, including 37 C.F.R. §§ 1.56 and 1.98, which are an inescapable part of this 

litigation, and which support defendants’ anticipated defense. As such, the United States should 

be granted permissive intervention under Rule 24(b)(2)(A) and/or (B). 

III. The USPTO May Also Permissively Intervene Under Rule 24(b)(1).

In addition to the permissive intervention granted to government agencies under Rule 

24(b)(2) discussed above, Rule 24(b)(1) provides a separate and further basis for permissive 

intervention here. Rule 24(b)(1) allows permissive intervention to any party that can 

demonstrate a claim or defense that shares a common question of law or fact with the main 

action. Rule 24(b)(1)(B) provides: 

(b) Permissive Intervention.

(1) In General. On timely motion, the court may permit anyone to intervene 

who: 

* * *

(B) has a claim or defense that shares with the main action a common 

question of law or fact. 

The USPTO seeks resolution of the same question of law as the parties to this case: 

whether the copying and submission of copyrighted documents to the USPTO for the purpose of

preparing and filing patent applications is permitted under the Copyright Act. See Rivers v. 

Califano, 86 F.R.D. 41, 44 (S.D.N.Y. 1980) (intervention granted where intervenors’ claims 

were nearly identical to those of named plaintiffs, indicating a common question of law and 

fact); see also Bond v. Ultreras, 585 F.3d 1061, 1070 (7th Cir. 2009) (Rule 24(b) intervention 

based on “common question of law or fact” is interpreted broadly). Further, the United States’ 

Proposed pleading sets forth an affirmative defense and a counterclaim based on “fair use” under 

the Copyright Act, a defense that the defendants will unquestionably raise. 

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Where cases involve common questions of law or fact, permitting intervention will 

promote the just and efficient conduct of litigation. See Shea v. Angulo, 19 F.3d 343, 349 (7th 

Cir. 1994) (intervention is a procedural device meant to promote efficiency in the resolution of 

legal disputes by consolidating related legal questions in a single lawsuit). The United States 

wishes to litigate the same legal issue that this Court will resolve here. Intervention will be 

efficient for the federal judicial system and should be granted. As indicated above, intervention 

would neither unduly delay nor prejudice the parties. Thus, permissive intervention should be 

granted under Rule 24(b)(1).

Conclusion

The USPTO respectfully requests that this court grant its Motion to Intervene in the 

instant proceeding and accept its Answer, Affirmative Defense and Counterclaim.

Respectfully submitted,

PATRICK J. FITZGERALD

United States Attorney

By: s/ Katherine E. Beaumont 

 KATHERINE E. BEAUMONT

 Assistant United States Attorney

 219 South Dearborn Street

 Chicago, Illinois 60604

 (312) 353-4088

 katherine.beaumont@usdoj.gov

JOHN FARGO

Director, Intellectual Property Staff

Commercial Litigation Branch

Civil Division

Department of Justice

Washington, D.C. 20530

(202) 514-7223

John.fargo@usdoj.gov

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BERNARD J. KNIGHT, JR.

General Counsel

RAYMOND T. CHEN

Solicitor

THOMAS W. KRAUSE

THOMAS L. CASAGRANDE

Associate Solicitors

United States Patent and Trademark Office

Madison Building East, Room 10B20

600 Dulany Street

Alexandria, Virginia 22314

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