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MBHB Gets Wiley’s Financial Information

John Wiley & Sons v. McDonnell Boehnen Hulbert & Berghoff, Case No. 12-1446 (N.D. Ill. Sept. 16, 2013)(Keys)

In this case, John Wiley & Sons (“Wiley”), a leading publisher of scientific papers, sued McDonnell Boehnen Hulbert & Berghoff (“MBHB”) – a patent prosecution boutique firm in Chicago, over MBHB’s use of Wiley’s papers in its patent practice.  Wiley claims that MBHB must make unauthorized copies of its articles during its prosecution practice, because copies of the articles are submitted to the PTO, and copies must be maintained as part of MBHB’s prosecution file.  MBHB has countered with a number of defenses, including fair use, laches, and estoppel.

This order addresses discovery requests posed by MBHB.  In particular, it addresses a pair of requests for production and a single interrogatory.  The RFPs both dealt with the annual budget of Wiley’s technical, scientific and medical publishing division.  MBHB contended it required this information to support its fair use defense – in particular, MBHB contended the documents were vital to establish that its use of the articles in patent prosecution would not impact the market for those articles.  The Court agreed, and granted MBHB’s request.

Turning to the interrogatory, MBHB had propounded the following Rog:

Interrogatory No. 17: Provide the bases for the statement in the letter to Bradley J. Hulbert at MBHB from William Dunnegan, dated November 9, 2010, that: “The STM Publishers have recently reviewed the public records of your firm’s patent filings, and have found substantial evidence of unlicensed copying of their copyrighted material.”

Wiley contended that the requested information was privileged and irrelevant, and the Court agreed.  In particular, this interrogatory appears as if it were devised to uncover evidence for a counterclaim rather than to defend Wiley’s claim.


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