Charge of Copyright Infringement in PTO Prior Art Disclosure Suffers Another Blow

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By Tony Dutra  

Claims that downloading, copying, distributing, and storing technical journal articles in association with disclosure of prior art to the Patent and Trademark Office constitute copyright infringement suffered a setback July 30, according to a report and recommendation by a magistrate judge of the U.S. District Court for the District of Minnesota (Am. Inst. of Physics v. Schwegman Lundberg & Woessner P.A., D. Minn., No. 0:12-cv-00528-RHK-JJK, 7/30/13).

Magistrate Judge Jeffrey J. Keyes recommended that the court grant Schwegman Lundberg & Woessner P.A.'s motion for summary judgment that the alleged infringement is fair use under 17 U.S.C. § 107.

After detailed review of how all four fair use factors came out in the law firm's favor, Keyes added a statement on the public benefit associated with the Intellectual Property Clause of the Constitution that highlighted this rare case where copyright and patent issues conflict:  

Schwegman's use of the Articles facilitates the complete disclosure required in the patent-application process, assisting patent examiners in determining whether applications for patent protection should be granted, and, consequently, fulfilling the very same purpose of promoting science and the arts that the Copyright Act was intended to accomplish.  



One of Four Lawsuits Filed

The American Institute of Physics and John Wiley & Sons Ltd. filed copyright infringement lawsuits in four jurisdictions against law four firms. The plaintiffs allege that the copies of journal articles made and submitted as a part of each firm's information disclosure obligation for new patent applications infringe the copyrights of the publishers.

The original complaint in the instant case charged Minneapolis-based Schwegman with copyright infringement in terms of its internal use and in submitting them to the Patent and Trademark Office. Judge Richard H. Kyle denied a motion to dismiss July 2, 2012.

As in the other three cases, the PTO intervened to defend the practice of submitting articles as prior art. The office has argued that the copying and distribution of the documents should be allowed as “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.”

The publishers filed an amended complaint on Oct. 3 that eliminated charges related to the submissions to the PTO. The PTO filed an answer nevertheless, in support of Schwegman.

To identify the documents that it will file for any one patent application, Schwegman will receive relevant articles through multiple sources. The PTO's “Private PAIR” system may have documents on cases to which Schwegman has access. Others may be attachments to email messages sent by third parties and even more result from general searches through the internet. Since each document is then placed in Schwegman's electronic document management system, that system may also be a source when later filed applications are being processed.

The publishers claim copyright infringements in the downloading, copying, distribution via email, and storage.

Schwegman moved for summary judgment on four grounds, including that the alleged infringement constitutes fair use under 17 U.S.C. §107.

Keyes conducted a hearing on the motion June 25 and issued this report and recommendations a month later.

'Evidentiary Character' Differs From Original Purpose

First, Keyes rejected the publishers' attempt to disassociate Schwegman's use from its actions as a patent prosecution firm, as there was no evidence of the law firm's use unrelated to those actions.

He then proceeded with a detailed analysis of the four fair use factors, and used Schwegman's purpose to weigh in the law firm's favor on each.

Thus, for the first factor--the purpose and character of use--Keyes focused on the “evidentiary character” of Schwegman's uses of the copyrighted works. He likened the PTO-related use to that in cases finding fair use when documents were copied for submission as evidence in judicial proceedings, Healthcare Advocates Inc. v. Harding, Earley, Follmer & Frailey, 497 F. Supp. 2d 627 (E.D. Pa. 2007), and Bond v. Blum, 317 F.3d 385, 65 U.S.P.Q.2d 1601 (4th Cir. 2003).

As to Schwegman's storage of documents, Keyes further distinguished American Geophysical Union v. Texaco Inc., 60 F.3d 913, 35 U.S.P.Q.2d 1513 (2d Cir. 1994), which featured one scientist storing copyrighted journal articles so that others in the same company would not have to pay for separate subscriptions.

“This case is not Texaco,” he said. “Here, there is no evidence that would allow a reasonable jury to conclude that Schwegman is similarly maintaining mini-research libraries so that it can avoid paying for separate licenses for each of its lawyers, thereby superseding the original purpose of the Articles.”

Fourth Factor Follows Accordingly

Keyes turned to the fourth Section 107 factor next--the effect on the market for the publishers' articles. Schwegman argued that patent lawyers are not within the traditional market for the journals--academics, researchers, engineers, etc.--and the magistrate judge agreed.

Of course, he said, the publishers do not get the revenues from the patent firms they are seeking here. “But this is not the sort of negative effect on the market that weighs heavily against a finding of fair use,” he said. “If it were, then the market factor would always weigh in favor of the copyright holder and render the analysis of this factor meaningless.”

He noted the close relationship between the first and fourth factors in cases such as this. Since “Schwegman used the Articles for a purpose that was different than, and not superseding of, the original purpose for which the Articles were created…, Schwegman's copying falls outside any traditional, reasonable, or likely to be developed market.”

Once again, that purpose distinguished Texaco, Keyes said, as the use there by other scientists “impacted a traditional and likely market” while “evidentiary use” here would not “exploit that originally intended audience for the works.”

No Help to Publishers in Other Two Factors

The third factor--the nature of the copyrighted work--worked against the publishers because of the highly technical nature of the articles.

Keyes quoted from Texaco that, “[t]hough scientists surely employ creativity and originality to develop ideas and obtain facts and thereafter to convey the ideas and facts in scholarly articles, it is primarily the ideas and facts themselves that are of value to other scientists in their research.”

And earlier in the report he said, “the facts and ideas reflected in the Articles are of use to Schwegman, not the Articles' copyrightable manner of expression.”

Finally, even though Schwegman copied the entire works, Keyes found that the third factor--the amount and substantiality of the portion used in relation to the work as a whole--favored fair use as well. Again, this finding fell in line with that of the first factor, as Keys said the focus is on “whether the extent of … copying is consistent with or more than necessary to further the purpose and character of the use,” quoting Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d 132, 142, 47 U.S.P.Q.2d 1321 (2d Cir. 1998).

William I. Dunnegan of Dunnegan & Scileppi, New York, represented the plaintiffs. Devan V. Padmanabhan of Winthrop & Weinstine, Minneapolis, represented Schwegman. PTO Associate Solicitor Benjamin T. Hickman represented the PTO, Alexandria, Va., as intervenors.

One Other Case Still Active

Dunnegan & Scileppi is also lead counsel in the three other cases in different courts featuring the same plaintiffs but with different law firms as defendants (85 PTCJ 934, 4/19/13).

The plaintiffs dismissed their claim in one case two months after filing the complaint and before seeing the response from the defendants. John Wiley & Sons Inc. v. Hovey Williams LLP, No. 5:12-cv-04041-RDR-KGS (D. Kan. June 22, 2012).

American Institute of Physics v. Winstead P.C., No. 3:12-cv-01230 (N.D. Tex.), is now likely going against the publishers. In a record of a May 22 hearing, Judge Barbara M. G. Lynn of the U.S. District Court for the Northern District of Texas said, “based on the current factual record, Defendants are entitled to the fair use defense under 17 U.S.C. §107 as a matter of law.” She has not yet published an opinion to that effect, though, as the parties have filed additional briefs related to Winstead's motion to dismiss.

The third case is still in litigation. John Wiley & Sons Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 1:12-cv-01446 (N.D. Ill.). The complaint was filed Feb. 29, 2012. The PTO intervened and filed an answer and counterclaim, which was followed by an amended complaint on July 13, 2012. The most recent action of note was a June 7 opinion related to a motion to compel the plaintiffs to comply with a discovery request.


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