A New Jersey-based publishing company has filed copyright infringement lawsuits in federal courts in two states against law firms that submitted citations to or copies of copyrighted articles from scientific journals to the U.S. Patent and Trademark Office (USPTO) with their clients’ patent applications. John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12-01446 (U.S. Dist. Ct., N.D. Ill., filed February 29, 2012); Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, No. 12-00528 (U.S. Dist. Ct., D. Minn., filed February 29, 2012). Joining the publisher as plaintiff is the American Institute of Physics.
The litigation follows release of the January 19, 2012, position paper from USPTO’s Office of the General Counsel opining that (i) the inclusion of copies of patented scientific articles in the official file wrapper as part of the patent examination process constitutes fair or transformative use, and (ii) applicants submitting these articles with their applications are also protected under these doctrines. Further details about the position paper appear in Issue 28 of this Bulletin. The USPTO general counsel’s paper did not take a position on whether additional copies made “during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventor, or for the law firm’s future reference) qualify as fair use.”
The plaintiffs contend that “in connection with researching, filing and prosecuting certain patent applications,” the law firms made unauthorized copies of copyrighted articles from the plaintiffs’ journals. The infringing copies allegedly include “additional copies of the copyrighted works that defendants included or cited in their patent application to the [USPTO] . . . and copies of plaintiffs’ copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the [USPTO].” According to the complaint, the unauthorized “multiplication of copies” was made for internal use and for distribution outside the firms.
Alleging a single count of copyright infringement, the plaintiffs seek injunctive relief, “damages or defendants’ profits, or alternatively, at plaintiffs' election, statutory damages,” costs, and attorney’s fees. Each complaint cites two specific articles from three journals that were allegedly infringed.