The law firm that was sued for copying and disseminating copyrighted articles from scientific journals for submission with its clients’ patent applications to the U.S. Patent and Trademark Office (USPTO) has filed its response to the copyright infringement claims. John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12-CV-01446 (U.S. Dist. Ct., N.D. Ill., E. Div., pleading filed April 19, 2012). Additional information about the lawsuit appears in Issue 31 of this Bulletin. Among other matters, the response notes that USPTO’s position paper characterizes copying and submitting non-patent literature to satisfy the office’s disclosure requirements as “fair use.” It also contends that an adverse judgment would “interfere with the federal government’s interest in promoting an inexpensive and efficient patent system whereby prior art is appropriately disclosed.”  

Specifically, the law firm “denies that it has made or distributed unauthorized copies of copyrighted articles from plaintiffs’ journals,” while admitting to the disclosure of non-patent literature to USPTO “as part of its legal obligation to file an Information Disclosure Statement with the Patent Office in conjunction with filing and prosecuting a patent application.” The firm denies outright making (i) additional copies of copyrighted works that were either cited in patent applications or ultimately not cited, or (ii) unauthorized copies for internal use or distribution outside the firm. The complaint also alleged that the firm “charged its clients for the copies it has made of plaintiffs’ copyrighted works, and thereby made a direct profit as a result of its infringement,” and the firm denies this allegation as well.  

Among the firm’s affirmative defenses are fair use; immunity from liability under the Noerr-Pennington doctrine, which protects actions related to petitioning government; laches; estoppel; waiver; license or implied license to use the articles; and the “first sale doctrine,” which allows non-infringing uses of alleged copyrighted works after they have been legally acquired.