IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

JOHN WILEY & SONS, LTD., AND )

AMERICAN INSTITUTE OF PHYSICS,)

)

 Plaintiffs, ) No. 12 C 1446

)

vs. )

) Judge Charles Norgle

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

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

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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

1

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. As burdensome as that makes

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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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