IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

JOHN WILEY & SONS, LTD., ) 

AMERICAN INSTITUTE OF PHYSICS, )

)

 Plaintiffs, )

 )

 -against- ) 12 C 1446

 )

MCDONNELL BOEHNEN HULBERT ) Judge 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’ RESPONSE TO DEFENDANT’S STATEMENT

OF ADDITIONAL UNDISPUTED MATERIAL FACTS

Pursuant to Rule 56.1 of the Local Rules of the United States District 

Court for the Northern District of Illinois and Rule 56 of the Federal Rules of Civil 

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

(collectively the "Publishers") respectfully respond to the statement of additional 

undisputed material facts of defendant McDonnell Boehnen Hulbert & Berghoff LLP 

("McDonnell" or "MBHB") as follows. 

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Many of McDonnell's statements of additional facts are not material to the 

Publishers’ motion, and by responding to those statements, the Publishers do not 

concede the materiality of them.

1. MBHB has existed as a law firm since 1996. (M. Thymian Decl. ¶ 2, 

filed concurrently herewith.) 

Response

2. Throughout its existence, MBHB’s law practice has been devoted to 

intellectual property matters, including patent litigation, prosecuting patent applications, 

and general intellectual property counseling. (M. Thymian Decl. at ¶ 2.) 

: Admit.

Response: Admit. 

3. MBHB has never conducted scientific, technical, or medical 

research. (M. Thymian Decl. at ¶ 2.) 

Response

4. Federal rules and regulations require MBHB in conjunction with 

prosecuting patent applications to file with the United States Patent and Trademark 

Office (“PTO”) copies of all known, noncumulative prior art that could be material to the 

patentability of the claimed invention. (M. Thymian Decl. at ¶ 3; 37 C.F.R. § 1.56(a), 

attached as Exhibit A to B. Irwin Decl., filed concurrently herewith.) 

: Denied. While McDonnell may not have conducted empirical 

research, it has conducted literature research in these areas. (M. Thymian Decl. at ¶ 5)

Response

5. 37 C.F.R. § 1.56(a) reads: “Each individual associated with the 

filing and prosecution of a patent application has a duty of candor and good faith in 

dealing with the Office, which includes a duty to disclose to the Office all information 

known to that individual to be material to patentability as defined in this section.” (37 

C.F.R. § 1.56(a).) 

: Admit. 

Response

6. The requirement to file with the PTO copies of material prior art in 

conjunction with prosecuting patent applications has been in effect since 1984. 

(Revision of Patent Practice, Wednesday, January 4, 1984, attached as Exhibit B to B. 

Irwin Decl.) 

: Admit.

Response: Admit. 

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7. 37 C.F.R. § 1.98 states that an information disclosure statement 

filed in conjunction with prosecuting a patent application shall include a legible copy of: 

“Each publication or that portion which caused it to be listed, other than U.S. patents 

and U.S. patent application publications unless required by the Office.” (37 C.F.R. § 

1.98(a)(2)(ii), attached as Exhibit A to B. Irwin Decl.) 

Response

8. MBHB has developed its patent prosecution practice based on the 

understanding and belief that its uses of non-patent literature scientific journal articles 

done in conjunction with prosecuting patent applications are noninfringing uses of the 

articles. (M. Thymian Decl. at ¶ 4.) 

: Admit. 

Response: Object. The declaration cited does not contain a sufficient 

foundation to demonstrate that Mr. Thymian has personal knowledge of these practices. 

While McDonnell developed or started to develop its business practices in 1996 (M. 

Thymian Decl. at ¶¶ 2, 3 and 4.), Mr. Thymian was not admitted to the bar until 1998. 

http://www.martindale.com/Marcus-J-Thymian/907050-lawyer.htm (last visited 

November 26, 2012).

9. Plaintiffs’ Complaint filed February 29, 2012, states, “[i]n connection 

with researching, filing and prosecuting certain patent applications, McDonnell made 

and/or distributed to the United States Patent and Trademark office (“PTO”), and 

perhaps others, unauthorized copies of copyrighted articles form [sic] plaintiffs’ 

journals.” (Compl. at ¶ 14, D.E. 1.) 

Response

10. Plaintiffs’ Amended Complaint states, “this amended complaint 

does not aver that the Unauthorized Copying includes (i) making such copies of a 

copyrighted work for submission to the PTO as may be required by the rules and 

regulations of the PTO, (ii) transmitting such copies to the PTO, or (iii) making an 

archival copy of that work transmitted to the PTO for defendants’ internal file to 

document what has been transmitted.” (Am. Compl. at ¶ 1, D.E. 34.) 

: Admit, except that the Publishers state that the quoted 

sentence omits the words "including but not limited to those identified on Schedule A.". 

Response

11. In their Amended Complaint, Plaintiffs state “unauthorized copying 

and/or distribution of Plaintiffs’ copyrighted works by a law firm, and its professionals, in 

: Admit. 

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connection with their scientific, technical and medical research on behalf of themselves 

and their clients, so that both may reap a profit.” (Am. Compl. at ¶ 1, D.E. 34.) 

Response

12. In their Amended Complaint, Plaintiffs state, “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.” (Am. Compl. at ¶ 14, D.E. 34.) 

: Admit.

Response

13. In their memorandum in support of their motion for summary 

judgment on MBHB’s laches affirmative defense, Plaintiffs state that MBHB has 

infringed their copyrights of two journal articles “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 practice, and is not limited to 

McDonnell’s patent prosecution practice.” (Mem. Supp. Pls.’ Mot. Summ. J. at 1–2, D.E. 

42.) 

: Admit. 

Response: Admit. 

14. MBHB has sought discovery from Plaintiffs related to MBHB’s 

laches affirmative defense. (B. Irwin Decl. at ¶ 6; MBHB’s First Set of Interrogs. to Pl. 

John Wiley & Sons, Ltd., Interrogs. Nos. 2 and 3, attached as Exhibit E to B. Irwin Decl.; 

MBHB’s First Set of Interrogs. to Pl. American Institute of Physics, Interrogs. Nos. 2 and 

3, attached as Exhibit F to B. Irwin Decl.) 

Response

15. Plaintiffs have objected to MBHB’s discovery requests related to 

MBHB’s laches affirmative defense on relevancy grounds. (B. Irwin Decl. at ¶ 6; Pl. 

John Wiley & Sons, Ltd.’s Supp. Interrog. Responses, attached as Exhibit C to B. Irwin 

Decl.; Pl. American Institute of Physics’ Supp. Interrog. Responses, attached as Exhibit 

D to B. Irwin Decl.) 

: Admit. 

Response

16. MBHB has sought discovery from Plaintiffs related to its estoppel 

and fair use affirmative defenses, but because discovery is in its early stages and 

Plaintiffs have objected to many of these requests, MBHB has not yet obtained its 

requested discovery. (B. Irwin Decl. ¶¶ 4–6.) 

: Admit. 

Response: Admit. 

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17. As of November 8, 2012, the only documents produced in this case 

have been 18 pages of documents from Plaintiffs relating to their alleged ownership of 

the copyrights to the Raznikov and Erchak Articles, and no depositions have taken 

place. (B. Irwin Decl. at ¶ 7.) 

Response

18. In MBHB’s initial set of interrogatories to John Wiley & Sons, Ltd. 

(“Wiley”), Interrogatory No. 1 stated: “State John Wiley’s complete bases for its 

copyright infringement claim against MBHB. In Your response, identify all supporting 

facts or observations, all supporting documents or items of evidence, and all individuals 

with knowledge of any supporting facts or observations. For each and every such fact, 

observation, document, and item of evidence, set forth the method or manner by which 

You obtained knowledge of this information, setting forth names, dates, times, places, 

and any other details that relate to the manner in which You obtained such knowledge.” 

(MBHB’s First Set of Interrogs. to Pl. John Wiley & Sons, Ltd., Interrog. No. 1, attached 

as Exhibit E to B. Irwin Decl.) 

: Admit. 

Response: Admit.

19. MBHB served the same interrogatory as that set forth in the 

previous paragraph on Plaintiff American Institute of Physics (“AIP”), but directed to AIP. 

(MBHB’s First Set of Interrogs. to Pl. American Institute of Physics, Interrog. No. 1, 

attached as Exhibit F to B. Irwin Decl.) 

Response

20. In its supplemental response to Interrogatory No. 1 in MBHB’s First 

Set of Interrogatories, Wiley stated (in part), “McDonnell thereafter submitted copies of 

the Raznikov Article in connection with at least two patent applications. McDonnell 

thereafter submitted copies of the Raznikov Article in connection with at least two patent 

applications. [sic] McDonnell has admitted that certain [of] its attorneys and/or 

employees made additional copies of the Raznikov Article.” (Pl. John Wiley & Sons, 

Ltd.’s Supp. Interrog. Responses, Response to Interrog. No. 1, attached as Exhibit C to 

B. Irwin Decl.) 

: Admit. 

Response

21. In its supplemental response to Interrogatory No. 1 in MBHB’s First 

Set of Interrogatories, AIP stated (in part), “McDonnell thereafter submitted copies of the 

Erchak Article in connection with at least three patent applications. McDonnell thereafter 

: Admit, except Wiley did not repeat the sentence "McDonnell 

thereafter submitted copies of the Raznikov Article in connection with at least two patent 

applications." 

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submitted copies of the Erchak Article in connection with at least three patent 

applications. [sic] McDonnell has admitted that certain of its attorneys and/or 

employees made additional copies of the Erchak Article.” (Pl. American Institute of 

Physics’ Supp. Interrog. Responses, Response to Interrog. No. 1, attached as Exhibit D 

to B. Irwin Decl.) 

Response

22. In response to Plaintiffs’ interrogatory No. 6, MBHB stated, “Yet 

Plaintiffs waited until February 29, 2012, to file their infringement claims against MBHB.

This constitutes an unreasonable delay which has prejudiced MBHB because MBHB 

has developed its lawful patent prosecution practice based on the understanding and 

belief that its uses of non-patent literature scientific journal articles done in conjunction

with prosecuting patent applications are noninfringing uses.” (Def. MBHB’s Second 

Supp. Responses to Pls.’ First Set of Interrogs., Response to Interrog. No. 6, attached 

as Exhibit G to B. Irwin Decl.) 

: Admit, except AIP did not repeat the sentence "McDonnell 

thereafter submitted copies of the Erchak Article in connection with at least three patent 

applications."

Response: Admit that the quoted portion appears in MBHB’s response 

to Plaintiff’s interrogatory No. 6. Object to the substance of the interrogatory response 

as an unsupported conclusion of fact upon which the person verifying the interrogatory

response had no personal knowledge.

23. Plaintiffs’ delay in filing their copyright infringement claim has 

substantially prejudiced MBHB. (Def. MBHB’s Second Supp. Responses to Pls.’ First 

Set of Interrogs., Response to Interrog. No. 6, attached as Exhibit G. to B. Irwin Decl.; 

M. Thymian Decl. at ¶ 7.) 

Response

24. MBHB has developed practices for using scientific journal articles 

while prosecuting patent applications with the understanding that these are noninfringing fair uses. (M. Thymian Decl. at ¶ 4.) 

: Object. This is a conclusion of law and not a statement of 

fact.

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Response: Object. The declaration cited does not contain a sufficient 

foundation to demonstrate that Mr. Thymian has personal knowledge of these practices. 

While McDonnell developed or started to develop its business practices in 1996 (M. 

Thymian Decl. at ¶¶ 2, 3 and 4.), Mr. Thymian was not admitted to the bar until 1998. 

http://www.martindale.com/Marcus-J-Thymian/907050-lawyer.htm (last visited 

November 26, 2012).

25. If MBHB was required to alter fundamentally the well-established 

way it uses scientific journal articles in its practice, this could require additional training, 

implementation of new systems, and other alterations to their business which would 

consume both time and money. (M. Thymian Decl. at ¶ 7.) 

Response

26. MBHB pled the following affirmative defenses in its answer to 

Plaintiffs’ Amended Complaint: non-infringement, fair use, Noerr-Pennington immunity, 

non-public distribution and display, laches, estoppel, waiver, license, statute of 

limitations, first sale, copyright misuse, unclean hands, lack of actual damages, lack of 

statutory damages, and lack of willfulness. (Def.’s Answer Am. Compl. at 9–11, D.E. 

36). 

: Object. The declaration cited does not contain a sufficient 

foundation to support its speculation or demonstrate that Mr. Thymian has personal

knowledge of these practices. While McDonnell developed or started to develop its 

business practices in 1996 (M. Thymian Decl. at ¶ 2, 3 and 4.), Mr. Thymian was not 

admitted to the bar until 1998. http://www.martindale.com/Marcus-J-Thymian/907050-

lawyer.htm (last visited November 26, 2012). The only effect of an adverse decision on 

McDonnell's future business practices would be the need to acquire a license to copy 

the copyrighted articles that it in fact copies. (M. Thymian Decl. at ¶ 8)

Response

27. At the October 19, 2012, hearing on Plaintiffs’ motion to compel, 

Plaintiffs’ counsel stated, “We have asked them two sets of interrogatories.” (Tr. of Oct. 

19, 2012, Mot. Hr’g, at 5:14, attached as Exhibit H to B. Irwin Decl.) 

: Admit. 

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Response

28. Plaintiffs have served only a single set of interrogatories on MBHB. 

(B. Irwin Decl. at ¶ 8.) 

: Admit.

Response

29. Plaintiffs seek equitable relief in this case, including an injunction, 

disgorgement of MBHB’s profits, and costs and attorneys’ fees. (Am. Compl. at 7, D.E. 

34.) 

: Admit. McDonnell supplied original and supplemental

responses to interrogatories. 

Response: Denied. The amended complaint of the Publishers seeks 

actual, or alternatively statutory damages, and injunctive relief. If the Court determines 

that the affirmative defense of laches is relevant only to the Publishers' request for

injunctive relief, the Publishers will withdraw their request for injunctive relief. 

Dated: November 27, 2012

Respectfully submitted,

/s/ Marianne C. Holzhall

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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