Lawsuit Challenging Use of Articles In Patent Filings Will Move Forward

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Two publishers of scientific journals adequately pled a claim by alleging that a law firm's submission to the Patent and Trademark Office of journal articles as prior art references to support patent applications constitutes copyright infringement, the U.S. District Court for the District of Minnesota ruled July 2 (American Institute of Physics v. Schwegman Lundberg & Woessner P.A., D. Minn., No. 0:12-cv-00528-RHK-JJK, 7/2/12).

The court acknowledged that handing a document to a public agency may not be a distribution to the public under the Copyright Act. However, it said the issue had not been sufficiently addressed in the case to date, and it invited the patent prosecutors, Schwegman Lundberg & Woessner P.A., to argue that issue again as the case proceeds.

Schwegman filed a response on the merits July 20 and signaled its intent to continue with that argument. The firm asserted defenses including fair use as well.

The court also agreed July 11 to allow the PTO to intervene. The agency has yet to file a brief.

Publishers Target Minneapolis Firm.

Schwegman is a Minneapolis-based law firm specializing in intellectual property law.

American Institute of Physics and John Wiley & Sons Inc. filed a complaint against the firm in federal court in Minnesota, alleging that, in the process of prosecuting a patent application, the firm infringed the copyright of articles that appeared in API and Wiley journals(42 PTD, 3/5/12). For example, two articles cited by AIP and Wiley as infringed are listed as “other references” in a patent (8,213,212) on “Methods of making quantum dot films,” issued July 3.

“In connection with researching, filing and prosecuting certain patent applications, Schwegman made and/or distributed to the United States Patent and Trademark Office ('PTO'), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs' journals,” according to the complaint. Ten John Doe defendants--Schwegman employees--are listed as defendants because of alleged “internal” copies of the articles.

“Defendants are prosecuting patents for the profit of themselves and their clients and are using Plaintiffs' Copyrights as part of that profit-making activity without due compensation to plaintiffs,” the AIP and Wiley contended.

Schwegman moved to dismiss (78 PTD, 4/24/12).

Complaint Adequately Pled.

Judge Richard H. Kyle denied the motion.

Schwegman relied on recent U.S. Supreme Court decisions in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), in contending that the publishers were required but failed to establish each element of copyright infringement: (1) ownership of a valid copyright, and (2) copying of original elements of the copyrighted work.

Kyle first said that the high court's cases and Eighth Circuit precedents “do[] not mean that a plaintiff must expressly plead facts to support the elements of a claim in the complaint. Rather, a plaintiff may rely upon plausible inferences from the well-pleaded facts to state a claim for relief.”

As to the first element, the court ruled that it was not necessary to identify specific copyright registrations to show ownership. The publishers identified appropriate certificates for the journals containing the two articles used as examples in the complaint and alleged that they own copyrights to the articles contained in the journals, the court said. “This is sufficient to satisfy the pre-registration requirement vis-a-vis the articles,” referring to Section 411(a) of the Copyright Act.

As to copying, the court rejected Schwegman's argument that AIP and Wiley were required to identify “the who, what, when, where, and how” of the alleged infringing acts. The court said that such details apply to asserting fraud under Fed. R. Civ. P. 9(b), “[b]ut no similar requirement exists for copyright plaintiffs, who are constrained only by Federal Rule of Civil Procedure 8(a)(2), requiring 'a short and plain statement of the claim showing that the pleader is entitled to relief.' … [T]hey need not suffuse their Complaint with details regarding when, or the precise manner in which, such copying occurred.”

Further, the court said, there is no requirement that copyright infringement plaintiffs identify copying events that occurred within three years of the complaint and thus met the Copyright Act's statute of limitations in Section 507. The burden for pleading and proving an improper complaint under Section 507 is on the defendant claiming an affirmative defense, the court said.

As to the alleged internal copies, the court again ruled in favor of the publishers: “It can reasonably be inferred that Defendants internally copied the articles in question before submitting them to the PTO as part of the challenged patent applications-- indeed, the Court finds it particularly implausible that a law firm would fail to make at least one copy of a patent application before filing it.”

Distribution an Issue, But Not Enough to Stop Case.

Finally, the court addressed Schwegman's argument that the distribution to the PTO is not “to the public,” as required under Section 106(3).

“There may be merit to this argument,” the court said. “Some courts have held that a limited distribution to a government agency does not constitute 'publication' under the copyright laws.”

The court cited multiple court decisions, including WPOW Inc. v. MRLJ Enterprises, 584 F. Supp. 132, 222 USPQ 502 (D.D.C. 1984). That case featured the filing of a copyrighted engineering report to the Federal Communications Commission, and the district court there held that the filing did not constitute publication under the Copyright Act.

“The problem, however, is that Defendants only casually mentioned this issue in their opening brief, arguing in one sentence--in the midst of the Twombly argument, and without citation to any authority,” the court said. The plaintiffs have thus not had an adequate opportunity to address the argument, the court concluded.

“Moreover, none of the cases now cited by Defendants expressly held that the PTO is not 'the public' under §106(3),” the court added.

“For these reasons, the Court cannot determine, at this juncture, that Plaintiffs' public-distribution claim fails as a matter of law,” the court said in finally deciding to deny the motion. “Defendants may renew this argument, with appropriate support, at a later stage of this case.”

PTO Intervenes; Schwegman Responds.

Kyle granted the PTO's motion to intervene July 11. The agency, represented by Erika R. Mozangue of the U.S. Attorney's Office in Minneapolis, has yet to file its proposed answer and counterclaim in intervention.

Schwegman filed its answer July 20. “Schwegman denies that providing art to the Patent Office is distribution to the public within the meaning of Section 106 of the Copyright Act, 17 U.S.C. §106,” according to the firm's response. It also adds defenses including fair use, waiver, laches, estoppel, and acquiescence.

Laura Scileppi of Dunnegan & Scileppi, New York, represents AIP. Michelle Kreidler Dove of Bassford Remele, Minneapolis, represents Wiley. Devan V. Padmanabhan of Winthrop & Weinstine, Minneapolis, represents Schwegman.

By Tony Dutra  


Opinion at http://pub.bna.com/ptcj/120528Jul2.pdf

Complaint at http://pub.bna.com/ptcj/120528Complaint1.pdf

Answer at http://pub.bna.com/ptcj/120528Answer1.pdf