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John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff Llp

United States District Court, Seventh Circuit

June 7, 2013



ARLANDER KEYS, Magistrate Judge.

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 fully respond to Interrogatory Nos. 2, 6, and 9, and to produce documents responsive to RFP Nos. 13, 31, 33, 40, 42, 43, 47, 49, 51, 53, 54, 58-62, and 65. MBHB also moves pursuant to Rule 36(a)(6) to deem admitted or provide proper responses to RFA Nos. 5-12 and 59-63, as well as RFA Nos. 34 and 35 to Wiley and Nos. 38 and 39 to AIP.


On October 17, 2012, Plaintiffs commenced this action asserting that Defendants violated their copyrights in two scientific journal articles[11] 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 ΒΆ 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 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.

On February 12, 2013, the Court granted in part and denied in part a motion to compel that Plaintiffs filed on October 17, 2012. At that time, the Court 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.

Now, 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) that 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 Norgle. However, on May 31, 2013, this Court denied Defendant's motion to stay discovery. Now, Defendant's current motion to compel opines that Plaintiffs have refused to produce relevant and critical discovery including: complete responses to interrogatories, production of documents related to Defendant's fair use, laches, and estoppel affirmative defenses, requests related to Plaintiffs' damages claim, as well as proper responses to many of MBHB's requests for admission. Plaintiffs object, requesting that the Court deny the motion to compel, arguing that the requests are either privileged, irrelevant, or have already been satisfied. For the reasons set forth below, the Court grants Defendants motion in part, and denies Defendants motion in part.


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., 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).

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 492, 496 (7th Cir. 1996). 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 the instant motion addresses deficiencies in Plaintiffs' response to both MBHB's first and second set of discovery requests. The Court agrees that some deficiencies exist which warrant remedy, but does not concur with all that MBHB outlines. Therefore, the Court will address each request in turn.

I. Interrogatory Nos. 2, 6, and 9

Interrogatory No. 2 seeks information related to Plaintiffs' investigation into MBHB's alleged infringement:

Identify all circumstances relating to John Wiley discovering MBHB's use of the Raznikov Article, including how John Wiley discovered that MBHB had submitted the Raznikov Article to the USPTO; who made the decision to investigate MBHB's submission of any Work or Works allegedly owned or exclusively licensed by John Wiley; who conducted the investigation; how John Wiley conducted its investigation; when the investigation began; when John Wiley learned of MBHB's use of the Raznikov Article; whether John Wiley's investigation was part of a broader investigation for uses of the Raznikov Article and/or other Works to which John Wiley alleges it owns or is exclusively licensed by MBHB, other law firms, attorneys, patent applicants, and/or other people or entities; the identification of the person or persons most knowledgeable thereof; and the identification of all documents relating or referring thereto.

(Ex. 1.)

Defendant argues that Plaintiffs' response to this interrogatory is incomplete, while Plaintiffs make attorney-client privilege and work-product immunity objections. The Court finds Plaintiffs' contention correct, as the information solicited calls for information developed in anticipation for litigation. ...

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