The U.S. Patent and Trademark Office (USPTO) has filed a motion to intervene, and an answer and counterclaim, in litigation brought by scientific-journal publishers against a law firm for alleged copyright infringement involving articles on prior art copied and submitted with its clients’ patent applications. John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12-C-1446 (U.S. Dist. Ct., N.D. Ill., E. Div., motion filed June 12, 2012). Details about this case and similar litigation filed in a federal court in Minnesota appear in Issue 31 of this Bulletin.  

USPTO maintains that copying non-patent literature (NPL) and distributing it as “necessary and incidental to the filing and prosecution of a U.S. patent application . . . constitutes a fair use of such copyrighted works under 17 U.S.C. § 107, and therefore is not an infringement of copyright.” According to USPTO, such use is necessary under federal law, serves the public interest and “has been part of the patent examination process since the Patent Act of 1836 conditioned the granting of patents only if the alleged invention was not previously ‘described in any printed publication.’”  

In its counterclaim, USPTO seeks a declaration that “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, constitutes a fair use of such copyrighted works . . . and therefore is not an infringement of copyright.” USPTO also asks the court to dismiss the claims with prejudice.  

Meanwhile, the journal publishers have filed a memorandum in opposition to a motion to dismiss filed in the copyright infringement suit pending in Minnesota. Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, No. 12 Civ. 528 (RHK-JJK) (U.S. Dist. Ct., D. Minn., memorandum filed June 5, 2012). The publishers contend that they have not failed to state a claim and they have met the pleading standard established under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009). While they state that it was not necessary for them to attach copies of copyright registration certificates to their complaint to properly plead copyright ownership, they attach such certificates to their memorandum.  

The publishers also argue that it is reasonable for the court to infer from their complaint that when the law firms submitted copyrighted articles with their patent applications to USPTO they also “made additional copies . . . for their internal use,” and they “copied other copyrighted works of the Publishers [in] connection with Patent Application No. 12/395/592 and their patent prosecution practice generally, but did not ultimately cite or provide those to [USPTO].” According to the publishers, they were not required to plead “the precise time of the copying and the individuals who participated in it, because that copying occurred behind closed doors at Schwegman.” The publishers further argue that they properly alleged “a distribution to the public” by stating in their complaint that “defendants delivered an unauthorized copy of plaintiffs’ copyrighted articles to [USPTO]. That delivery . . . constitutes a ‘public’ distribution of that copy within the meaning of 17 U.S.C. § 106(3).”  

The memorandum concludes by contending that the lawsuit is timely because the statute of limitations began to run not when the copying occurred, but when the “infringing acts of copying” became publicly available, i.e., when the articles were submitted on or about November 17, 2010, and became a public record.