John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. June 7, 2013) (Keys, Mag. J.).

Judge Keys granted in part defendant MBHB’s motion to compel document production and request for admission responses in this copyright case involving alleged infringement based upon MBHB’s use of two scientific articles before the U.S. Patent & Trademark Office and more generally in its legal practice.  MBHB sought discovery to prove that the accused conduct would not impact plaintiff’s market (for MBHB’s fair use defense) and that plaintiff knew about similar conduct and delayed unreasonably in acting to remedy it.  Of particular interest, the Court held as follows:

  • Information regarding plaintiffs’ investigation into MBHB’s accused acts was protected by privilege and/or work product immunity.
  • Plaintiff was to identify the entities from which MBHB could have received a license to the asserted works, at least in part because plaintiff had previously agreed to produce them.
  • Plaintiff was required to respond to requests for admissions regarding whether or not plaintiff used particular search terms on the Patent Office’s PAIR database as part of its pre-filing investigation. The information was held to be merely factual and, therefore, not privileged.