Copyright Lawsuit against Patent Firms Continue: Firms Claim Fair Use and Copyright Misuse

John Wiley & Sons v. McDonnell Boehnen Hulbert & Berghoff (MBHB) (N.D. Ill.) (Complaint)

Earlier this year, Wiley sued the MBHB law firm for copyright infringement. The basis of the lawsuit stems from the firm’s compliance with its duty to inform the USPTO of information materially related to the cases that it is handling. See 37 C.F.R. 1.56. The complaint identifies two short scientific articles that the firm submitted to the USPTO:

  • Raznikov, V., et al., “A new approach to data reduction and evaluation in high resolution time-of-flight mass spectrometry using a time-to-digital convertor data recording system,” Rapid Communications in Mass Spectrometry, vol. 15, No. 8, pp. 570-578 (2001); and
  • Erchak, A., et al., “Enhanced coupling to vertical radiation using a two dimensional photonic crystal in a semiconductor light-emitting diode,” Applied Physics Letters, vol. 78, No. 5, pp. 563-565 (2001).

The crux of Wiley’s argument is that the firm infringed Wiley’s exclusive rights by submitting these documents to the USPTO as well as by allegedly sharing the articles with the inventors and storing a copy in the firm’s files. I contacted one of the authors – Nobel Laureate, Dr. Alan Heeger – from the parallel Schwegman case. Dr Heeger had not previously heard of the lawsuits. He had only two comments: (1) that the lawsuits seem “somewhat strange” and (2) that he is not receiving any royalties from the article.

More Background on the Case

The MBHB law firm has now filed its answer to the complaint – arguing that Wiley’s lawsuit is both troubling and disruptive to the operation of the US patent system.

Plaintiffs seek in this case to create unprecedented liability for law firms filing patent applications that would change long established practices in fulfilling legal obligations under the Patent Law and Regulations requiring patent practitioners to disclose prior art to the United States Patent and Trademark Office (“USPTO”). Such a result would undermine the Patent Office’s ability to get full disclosure of relevant prior art to the detriment of our patent system and, thus, to innovation in general. Fortunately, Plaintiffs’ claims are without merit.

The process of securing U.S. patents is dictated by complicated USPTO Rules and Federal regulations. Failure to comply with those Rules and Regulations could lead, among other things, to fraud on the USPTO and could jeopardize a patent’s scope, validity and enforceability. . . .

Now, Plaintiffs John Wiley & Sons, Ltd. and American Institute of Physics (“Plaintiffs”) attempt to introduce a costly new requirement into this long-standing practice. They seek to impose a requirement on those practicing patent prosecution to negotiate a license with the holder of the copyright in the journals before complying with the Patent Office’s prior art submission requirements. Plaintiffs’ misguided attempt to change established practice will only serve to undermine the full disclosure requirements of the USPTO and interfere with access to the constitutionally mandated patent system.

Because of the negative impact of claims such as the Plaintiffs’ on the patent system, and thus on its goal of encouraging innovation, the Patent Office has taken the unusual step of posting on its website a position paper from Bernard J. Knight, Jr., General Counsel of the USPTO, stating the USPTO’s position that copying and submitting non-patent literature (“NPL”) by patent applicants in order to satisfy the USPTO’s disclosure requirements is fair use. The official position paper addressed all four fair use factors and concluded that “we believe that it is a fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an [Information Disclosure Statement].” The General Counsel’s position was based in part on the fact that “the applicants here are not ‘exploiting’ the copyrighted work, and are instead merely submitting it, pursuant to a legal requirement, based on its factual, rather than its expressive, content [and] the use could be considered transformative.” The General Counsel also concluded that “there is no basis for concluding that the applicants submission of NPL to the USPTO has any significant negative impact on the market for the submitted NPL.”

Plaintiffs’ attempt to characterize MBHB’s alleged use of the scientific journal articles as anything but a legal, customary practice by attorneys to comply with their legal obligations during patent prosecution is unavailing. MBHB is being sued simply for following the requirements of the patent regulations. An adverse judgment against MBHB would harm not just MBHB, but all firms who practice in this area, and interfere with the federal government’s interest in promoting an inexpensive and efficient patent system whereby prior art is appropriately disclosed. Plaintiffs’ allegations, thus, fit squarely within the parameters of what the Copyright Act deems as a fair use. Accordingly, as a matter of law, Plaintiffs lack meritorious grounds for their copyright infringement suit.

The answer claims includes a number of defenses including fair use; copyright misuse; immunity under the Noerr-Pennington doctrine; and implied license.

128 thoughts on “Copyright Lawsuit against Patent Firms Continue: Firms Claim Fair Use and Copyright Misuse

  1. As someone who works at a university technology transfer office this is very troubling and potentially very expensive. Our patent budget is already extremely limited and if we had to pay royalties for each journal article we submit we would have to cut back drastically on our patent filings.

  2. IBP,

    I have “been there” and I have expressed my opinion on the various threads as this issue arises.

    Most often, I am greeted with responses on how people feel the law should work. More often than not, there is a (unreasonable) carte blanche approach. But when pressed, these same people retreat into unsubstantiated edicts about how the four factors must turn out, without really taking an objective view of thoose factors – or even if those factors apply.

    This really is quite a simple matter. As an equitable matter, one cannot ignore the contracts that one signs up to. And by “one,” I mean both applicants and their representatives. Dealing with highly technical material, and the publishers that control much of that highly technical material, one learns to take the initiative on these matters. Showing respect to the copyright holder, acknowledging their legal position and working with them has always made it easy for me to meet my contractual obligations and my duty under 1.56.

    The lesson: don’t be p_ompous and expect the world to bend around you.

  3. Q: Why is this issue just being litigated now? IDS requirements and the explosion of references with IC law?

    It has been going on for a long time. Surely at least the larger GP firms, or the early IP boutiques, recognized this issue long ago, and have in-house memos on the topic…anybody here work on any of these memos/opinions?

    And if firms considered the issue, their subsequent actions have presumably been based upon their conclusions in the matter.

    I was at a large GP firm, not particularly in IP/patent, but I was not aware of any such in-house policy on this issue. Admittedly the patent practice there was small, but the firm was big, with lots of muscle. With everything going on there, I assume it just wasn’t sufficiently significant to merit the time. Strange, though, IMHO.

  4. If you understood what Communism was, you would hope, you would pray on your knees that one day we would become Communist.

  5. That is the only purpose of self-seeking patent lawyers.

    And quite decidely, that is not the right purpose to focus on.

    The purpose of the rights holders is to make money off of the controlled copies. That is the ONLY purpose (for the rightholder).

  6. The real purpose/market for these references is not to evidence the state of the art at the time of publication? I thought that was the ONLY purpose of such publications.

  7. has no meaningful impact on the real purpose/market for those references

    Except they very much have a meaningful impact because the entire business model is based on a controlled copy model (in order to legitimately fund various concerns, including further such arduous efforts).

    As 6 points out, by not becoming a customer, you are depriving the copyright holder of the very purpose/market of the reference.

    This is decidedly against fair use.

  8. I expect very few of them would say that they submit IDS art to “educate” the examiner.

    That’s because they don’t – references are submitted as evidence of the state of the art, not to make the examiner smarter about some particular technology. It’s like the difference between a hearsay statement being admitted to prove the truth of the statement or to prove the state of mind of the utterer.

    But I think that this is an argument FOR fair use – the use of references as evidence of the state of the prior art has no meaningful impact on the real purpose/market for those references.

  9. Hopefully if the open access movement truly gets established, then nonsense suits like this won’t even be contemplated.

  10. I thought you were the “equity” king, IANAE.

    Surely, if one party cannot bring suit at the time of the transgression, a court would look at the equitable nature and not rule favorably to the party pressing for copyright infringement when that party had not (at the time) performed what was required of it.

  11. “Do you still have trouble seeing what the benefit to the patentee is?”

    Yeah, I’m still struggling with how the patentee benefits from having the art not available in this way when he needs to disclose it to preserve the enforceability of his patent, but then later available when he’s being sued for copyright infringement.

    “Do you find it interesting that the Copyright Office can still demand a copy?”

    Demanding one isn’t the same as having one. If the reference is not actually disclosed to the examiner during the pendency of your application, no amount of non-patent-related obligations on the holder of some other right is going to help.

  12. 109 Smitty?

    “particular item”

    Try again. The othert rights in copyright are still very much in play. You really don’t understand the whole nature of copyright, do you?

    Try again.

  13. Way to go, Patently-O, another thread with busted comments.

    Top notch.

    You don’t see this over at the other quality patent blog.

  14. 109?

    Particular copy.

    Come on Smitty, get with it. No one is saying that the single particular copy can be disposed of.

    Are you even a lawyer Smitty?

  15. The original version of this post may have given the impression that the announcement was made by Harvard University. I am grateful to @Medicalskeptic for clarifying that the memorandum comes from the Faculty Advisory Council

  16. . I should be more than happy to allow rights holders to use the court system to take that which is not within their right to take

    Assuming facts not in evidence.

    Wheeeee!

  17. the use of EFS to cite NPLs does not harm the rights holders in the first place

    Assuming facts not in evidence.

    Gee, this is a fun game.

  18. Why, when the act of making copies in this instance lies entirely within the fair use defense?

    Assuming facts not in evidence.

  19. I’d much rather exercise my fair use rights in submitting NPLs via EFS.

    Assuming facts not in evidence.

  20. You should. . . .
    deposit a copy before they sue you.

    Connect the dots. Do you still have trouble seeing what the benefit to the patentee is?

    Which exemptions do you find interesting? Do you find it interesting that the Copyright Office can still demand a copy?

  21. Would there be any difference if the statute authorized the taking of private vehicles for governmental purposes in an emergency? Would such a taking be compensatable in the court of claims as eminent domain compensation?

  22. Query: If a statute authorizes the making of copies for governmental purposes, is this an exception to the copyright laws, fair use, or is it an act of eminent domain for which the copyright owner must be compensated?

  23. And yet Poor Smitty wants others to provide legal basis for everything.

    He must be a teacher because he sure can’t do.

  24. Or you might consider the exclusivity of the exclusive right to be a constitutional matter, in which case the government doesn’t get to infringe at all.”

    Coming from IANAE, that made me laugh.

  25. Yeah, let’s toss on malpractice for making an argument you have no colorable hope of winning.

    Do you have any legal authority saying so?

  26. I’ve already pointed out that contracting away fair use rights means that asserting fair use in court would result in a breach of contract; it does not preclude one from actually asserting the defense.

    Yeah, let’s toss on malpractice for making an argument you have no colorable hope of winning.

    ASSert away.l

  27. But for Rule 56, the patent attorney wouldn’t have bought the first copy at the outset.

    That would be incorrect.

    You do not go out and buy a copy in order to meet the requirement of Rule 56 at the ooutset. There is no such affirmative need to go out and get.

  28. “The purpose of the submission is not the “arrangement of information”

    Funny you should choose the word “arrangement” there. According to the federal circuit, for a 102 “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim”. So, it literally is the “arrangement” that is important.

  29. In your response, the only things that you bring up are (1) the firm may have contracted away his fair use rights in purchasing the NPL; and (2) the firm is alleged to have made additional copies other than those submitted to the USPTO. I see nothing other than those two points repeated over and over.

    Regarding (1), I do not see that alleged anywhere in the complaint, so you are assuming facts not in evidence. But in any event, I’ve already pointed out that contracting away fair use rights means that asserting fair use in court would result in a breach of contract; it does not preclude one from actually asserting the defense.

    Regarding (2), you are assuming that the copy kept by the law firm is not the same copy that was legally purchased from the journal. How do you know that the copies kept by the law firm were not the originally licensed copies? How do you know that the copies sent to the USPTO were the unlicensed copies?

    As for copies made and sent to the client, that is probably the strongest claim that Wiley could bring. But I am interested in hearing the arguments that MBHB has against this claim.

  30. You would be dead wrong. There is no “trumping” of federal copyright law if you have agreed to give up a fair use right. You do know that you can give up that right, right?

    Do you have any legal authority saying so?

  31. Don’t know. Don’t care.

    You should. If there’s no deposit copy for whatever reason, the whole scheme of telling the PTO that “it’s in the government somewhere” falls apart.

    It’s in the link.

    Yes, they have to deposit a copy before they sue you for making a copy because there was no copy on deposit when you were required to file an IDS. I don’t see how that helps the patentee any.

    There are also some interesting exemptions from the requirement to deposit a copy. Don’t suppose you saw them? They’re in the link.

    You might consider the ability of the government to set its own penalty for infringing a special feature of being, well, the government.

    Or you might consider the exclusivity of the exclusive right to be a constitutional matter, in which case the government doesn’t get to infringe at all.

    How do you feel about the government infringing patents on its own terms? It’d do wonders for the cost of health care.

  32. Smitty,

    On the January 23 linked thread I provided, I discuss the topic of “teaching” and why it is a misnomer – and a dangerous one at that.

    See the last post on the thread at January 29, 2012 10:43 AM.

  33. Do the journals realize it?

    Don’t know. Don’t care.

    What if they don’t comply?

    It’s in the link. Please take the time to follow the link and read before you make comments. One such poster too lazy to do so is enough.

    violation of their sacred exclusive right?

    Perhaps. But as Ned Heller has posted, a different section of law covers infringing use by the government. You might consider the ability of the government to set its own penalty for infringing a special feature of being, well, the government. Perks.

  34. Most don’t realize that there is actually a law requiring submission of published works

    Do the journals realize it? What if they don’t comply? And in any event, would that submission authorize the government to make a copy in a situation where your copying would have been a violation of their sacred exclusive right?

  35. SiasfTMWIM,

    If true, then all the more reason for Smitty to read the previous threads, as I was explicit in my conversation with that poster and addressed each of that poster’s questions/assertions in fine detail.

    If not true, Smitty should still review the previous threads, regardless of whether he thinks it is too much work. He might learn something if he approaches the subject matter with an open mind. Doing what you think needs to be done, but still not seeing just how incorrect you are is not a good sign.

    For at least a start Smitty, I recommend the March 2 thread, particularly my reply at Mar 05, 2012 at 12:42 PM.

    If Dennis could fix the “show more comments” link, there were other items you should pay attention to.

  36. JC, just in case I missed it, what statute authorizes the making of copies without compensation to the copyright owners in this situation. Or is it that the courts have rule this to be fair use?

  37. Alas, if the government only used it for that purpose, the government might be clear (the applicant might even be clear).

    But that argument reaches neither the government’s wanton copying of the reference for non-examination purposes, nor the applicant’s mutliple copying for other purposes.

  38. Whatever the “usual” agreements say, I can assure you that they don’t affect whether the fair use doctrine can be asserted in court

    You would be dead wrong. There is no “trumping” of federal copyright law if you have agreed to give up a fair use right. You do know that you can give up that right, right?

    Try pulling your head out of your @_ss and read one of those actual agreements instead of loudly proclaiming CASE CLOSED.

  39. but it does require obtaining a copy

    But your legally obtained copy is not iin question, it it the exra copies in question.

    Again, you have a dead argument on the agency angle.

  40. I think a relevant, related argument would be the situation where a witness + documents are subpoened (subpoena duces tecum) for litigation related matters. No copyright license must be obtained in this situation. Its a government proceeding. Much like the patent prosecution process. The purpose of the submission is not the “arrangement of information” in the journals, which is what copyright protects, but rather the transmission of ideas therein for purposes of determining whether a claim’s scope is permissible in light of the prior art.

  41. When you take a away a defense, you not only NOT alter the underlying first action of copyright infringement, you make it much more likely that THAT cause will be sustained.

    You do recognize that the defense is in answer to the alleged infraction, right?

    Yes. So is the First Sale Doctrine (i.e., § 109), and last I checked, the notes to § 109 state that a contract limiting a user’s first sale rights may be enforceable by an action for breach of contract, but not by an action for copyright infringement.

    As to fair use rights contracted away to begin with, you don’t seem to have much experience working with controlled content material and its usual agreements (or haven’t bothered before actually understanding the typical terms of agreement on that material). So like a patent attorney, thinking you live in your own special world where the rest of the rules and laws don’t pertain to you.

    Whatever the “usual” agreements say, I can assure you that they don’t affect whether the fair use doctrine can be asserted in court. If you think that such a contract precludes me from asserting a fair use defense, then you think that state contract law trumps federal copyright law. If so, I can assure you that you are wrong.

  42. and haven’t been required to submit the entire work since before that.

    You might want to check out the link provided by anon (the copyright law and related circular). Most don’t realize that there is actually a law requiring submission of published works (and all technical journals associated with this thread fall into that category).

  43. 37 CFR 1.98 may not require “copying” but it does require obtaining a copy.

    Look, I understand that the argument has some holes, but maybe the attorneys at MBHB can patch them up.

  44. Well, there’s your problem.

    You haven’t been required to register a work for copyright protection since 1976 or so, and haven’t been required to submit the entire work since before that. With that in mind, odds are the Copyright Office doesn’t have a copy of the document.

  45. I see that labor intensive for other people is OK, but labor intensive for you is not.

    Other people know where to look. I don’t. Instead of having me go in blindly, I think it would be the least time consuming to have someone else point out what s/he thinks I should understand.

    You really are a prima donna, aren’t you? Not surprising as your view of other people’s rights that so happen to make your life “burdensome” should just be disbanded.

    Right, that’s my problem. I should be more than happy to allow rights holders to use the court system to take that which is not within their right to take.

    Don’t be Fn lazy and do your own groundwork.

    I’ve done the ground work that I believed needed to be done. Other people think I need to do more, but they don’t explain what more needs to be done. They just say “Read this”. Well, I’ve read it. Tell me what I’m missing.

  46. Smitty,

    A big so what? All that passage says is that there may be contract claims in addition to IP claims. It does not say what you think it does.

    I will join in Poor Smitty and ask you to actually make an argument, even if that is too onerous or too much effort on your part.

    Don’t be a lazy stuck up prima donna. At least be a hardworking stuck up prima donna.

  47. I see that labor intensive for other people is OK, but labor intensive for you is not.

    You really are a prima donna, aren’t you? Not surprising as your view of other people’s rights that so happen to make your life “burdensome” should just be disbanded.

    Don’t be Fn lazy and do your own groundwork.

  48. “We note that the authorized nature of the sale to Quanta does not necessarily limit LGE’s other contract rights. LGE’s complaint does not include a breach-of-contract claim, and we express no opinion on whether contract damages might be available even though exhaustion operates to eliminate patent damages. See Keeler v. Standard Folding Bed Co., 157 U. S. 659, 666 (1895) (“Whether a patentee may protect himself and his assignees by special contracts brought home to the purchasers is not a question before us, and upon which we express no opinion. It is, however, obvious that such a question would arise as a question of contract, and not as one under the inherent meaning and effect of the patent laws”).”

    Quanta v. LG, 555 U.S. ____, slip op. at 18, n. 7 (2008).

  49. I think that anon has asked you twice now to read the other threads Smitty.

    If you have a problem with reading what has already been posted, why would anyone bother trying to post something again? Especially when you seem capable of only seeing what you want to see.

  50. Sure, if you happen to somehow know that the PTO has a record copy of that particular reference.

    I think you missed the explicit point that the one hand of the government (the Copyright Office) has what the other hand of the government (the Patent Office) wants.

    That’s what you get when you are in a hurry and don’t read properly.

  51. I think that misrepresents their views.

    And you are surprised? Why? Misrepresentationis what IANAE does. It’s the only reason he ever leaves his tower.

  52. Harvard can’t afford journal subscriptions????

    link to occamstypewriter.org

    This is astonishing. Harvard is one of the best and one of the wealthiest universities in the world. But last week its Faculty Advisory Council* announced that it can no longer afford to maintain its subscriptions to academic journals.

    The announcement was made online by the Council as a message to the academic staff at the university. I have taken the liberty of quoting it in full below.

    The message is notable since it bears out many of the factors — in terms of costs — that have been highlighted by the Elsevier boycott (though no particular publisher is mentioned in the communiqué).

    Perhaps this announcement is simply part of a negotiating strategy (one would expect Harvard librarians to be a clever bunch). But, be that as it may, what is particularly striking is the advice offered to staff regarding what they can do to help the situation, which chimes with what I and many others have been arguing as pathways to bolstering open access publishing (and was writing about only yesterday). To pick out just two key phrases (with my emphases in bold):

    Consider submitting articles to open-access journals, or to ones that have reasonable, sustainable subscription costs; move prestige to open access.

    If on the editorial board of a journal involved, determine if it can be published as open access material, or independently from publishers that practice pricing described above. If not, consider resigning.

  53. Assuming this is even a good argument — which sounds more like a rehash of the fair use — that would save only the one copy submitted to the PTO. It wouldn’t address copies for files, copies distributed to inventors, etc. that the Wiley complaint addresses.

  54. That’s because what you have asked is labor intensive. Instead of sending me on a fishing expedition, why don’t you explain to me what you want me to understand?

  55. Why don’t you explain it to me instead? I’ve read Rule 56 numerous times. What other rationale is there for Rule 56 other than to inform the examiner as to what is in the prior art? What the heck is the purpose of an IDS other than to put relevant prior art in the hands of the examiner, thereby educating the examiner as to the state of the prior art?

  56. Except that’s a dead argument because no one instructed the agent to do said copying. Point blank, copying is not required to comply with the Office requirements.

  57. I would argue that in “copying” the publication, the law firm is acting as an agent of the USPTO, so the USPTO may be liable for infringement but not the law firm.

  58. If you read the Wiley complaint, the ones submitted to the patent office aren’t the infringement. I think they may concede fair use on those copies. However, they complain about the distribution of other “unauthorized” copies where fair use is not so obvious. Copies sent to inventors, copies in an attorney file, scans of originals, and on and on. Moreover, the complaint even alleges that the firms “charged” for copies.

  59. (3) the copies are being submitted to the USPTO for educational use (i.e., teaching), which is a noted exception in § 107;

    Is your position that any copying and distribution of a predominantly factual work counts as teaching, or are there any limits to that? What’s to stop me from standing on the street corner and handing out free copies of journal articles to anyone who signs a release saying that they wouldn’t have paid for that particular journal?

    If you asked patent applicants and their agents, outside the context of this discussion, I expect very few of them would say that they submit IDS art to “educate” the examiner.

  60. The “government check its own records” option seems to be a rather elegant solution.

    Sure, if you happen to somehow know that the PTO has a record copy of that particular reference. Which the copyright holder presumptively does not license for such a purpose. What luck for you, if they happen to already have such a copy for each of the thousand references in your IDS.

    Also, your prior awareness must still be traceable to terms of a contract agreement (for any item under restricted access).

    That statement is so ridiculous I shouldn’t even have to address it, but you get moody when I don’t comment on the obvious, so here goes.

    The applicant could have read someone else’s copy without copying it. Someone else could have referred him to the article and given him the gist of it, and made it sound very material. He could have an illegal copy. Someone could have sent him a copy, such that it was not the applicant doing the copying and he’s not a party to any license. Or my favorite option – he has a copy in a format he can’t submit to the PTO, with a license that explicitly forbids making additional copies for submission to the PTO.

  61. Ad hominem well deserved. You say you are an attorney, yet you use the moniker of “an examiner?”. I can see where your priorities lie.

  62. Cf. Quanta Computer v. LG.

    Sigh.

    Cf.? Quanta does not support your contention. In the least.

    If you are going to make an argument, make it.

  63. Yes, new old people will be there to take their place, but those new old people aren’t fed in the head like the old batch.

  64. “6, Does the PTO pay the copyright owner for the copies it make and sends to the applicant? ”

    I don’t think so, I’m not sure, but we generally pay for a blanket license to the bigger journals and as to the smaller ones… meh.

    I’ll tell you what I personally do, I get the article up on my screen and then by hook or by crook get that article in pdf format to send out. And I can tell you right now, it’s been by crook on occasion. The office knows there are difficulties in this area on occasion, but so long as the journals are practically unresponsive in selling articles then there isn’t much we can do about it.

  65. “I can’t tell if this is snark or not, but I can assure you that any pictures in the Erchak ref were included to illustrate facts, not show off the skills of the photographer.”

    Regardless, they’re still very creative, and some of them were DRAWN, not photographed.

    “Patent attorneys are not the primary consumers of scientific journals”

    Right! They’re the primary PIRATES! ARRRGGGGHHH!

    “and Rule 56 was not promulgated to enrich copyright holders.”

    So wut?

    “By submitting copies of NPLs to the USPTO, a patent attorney is not competing with John Wiley and his ilk for customers.”

    Yeah, they’re avoiding becoming a customer.

    “But for Rule 56, the patent attorney wouldn’t have bought the first copy at the outset.”

    Maybe, maybe not. The copyright maximalist law doesn’t care.

    JOIN US! ABOLITION!

  66. even if it were alleged, contracting away fair use rights does not turn what would be fair use into actionable copyright infringement.

    Poor and clueless.

    When you take a away a defense, you not only NOT alter the underlying first action of copyright infringement, you make it much more likely that THAT cause will be sustained.

    You do recognize that the defense is in answer to the alleged infraction, right?

    As to fair use rights contracted away to begin with, you don’t seem to have much experience working with controlled content material and its usual agreements (or haven’t bothered before actually understanding the typical terms of agreement on that material). So like a patent attorney, thinking you live in your own special world where the rest of the rules and laws don’t pertain to you.

  67. I agree with 6 here. You may have factors #2 and #3, but may lose on #1 and #4. There is a market for the articles, or they wouldn’t be for sale. Simple as that. For professional societies, the money made from selling copies of articles is often their largest source of income, far surpassing that of membership dues. And, these professional societies tend to publish the most cited non-patent prior art submitted, at least in certain art areas, such as electrical engineering and computer science. In other words, these professional societies are in the business of publishing technical articles, and this publishing is often the biggest part of their business.

    And, I think obviously, if there is a market for the articles, forcing the copyright owners to give them away free would adversely affect the market and the value of the works. After all, if the articles are not free, then people will have to buy copies in order to read them, and that will increase the potential market for the articles.

    I don’t see why this all is an issue. On several occasions, I have submitted books as prior art, and paid for at least two copies of the books – one for the USPTO and one for the files. Sure, we might have been able to get by with not keeping a copy for our records, but don’t think that anyone ever contemplated not paying for the copies that were submitted with the applications.

    So, why are submitting articles in PDF format any different from submitting bound books? The copyright issues should be similar, if not identical.

  68. You ask “What is missing?

    You clearly have not done what I have asked – visit and read the points made in discussion.

    Come back when you have completed the task. Your belligerence is uncalled for.

  69. Except when it does not. Like the explicit facts of the case where the only legal copies are controlled copies that come with contracted terms of surrendered fair use.

    And where do you see those facts alleged? Hmm? I certainly don’t see them alleged in any of Wiley’s complaints thus far. Sounds like you are making stuff up to support a narrative.

    So…

    You either have a legal copy (with strings that bind your fair use defense), or you have an illegal copy that carries no fair use defense.

    Wrong. Even if one were to contract away a fair use defense, that does not turn what would ordinarily be considered fair use into copyright infringement. The remedy there is through state contract law, not federal copyright law. Cf. Quanta Computer v. LG.

    A more classic case of “Heads I win and tails you lose” cannot be found.

    Only because you fabricated the fact pattern.

  70. Further, the applicant is under no duty to teach the Office anything. I see – once again – that that misnomer is being bandied about. Let’s put that to a stop before the error propagates.

    Then what the heck is Rule 56 for? To give patent attorneys and their staff busy-work?

  71. Where were the “actual questions on the facts of the case” explored in detail? The only facts of any import regarding the cause of action were items 14 and 15 of the Complaint.

    14. In connection with researching, filing and prosecuting certain patent applications, McDonnell made and/or distributed to the United States Patent and Trademark Office (“PTO”), and perhaps others, unauthorized copies of copyrighted articles from plaintiffs’ journals … Such unauthorized copies were used for the commercial benefit of defendants and their clients.

    15. Upon information and belief, defendants made (a) additional copies of the copyrighted works that defendants included or cited in their patent applications to the PTO, including those identified on Schedule A, and (b) copies of plaintiffs’ copyrighted works that defendants considered in connection with those applications, but did not ultimately cite or provide to the PTO. Plaintiffs cannot know the full extent of defendants’ copying without discovery. Apart from the copying of plaintiffs’ works accompanying the patent filings described above, this internal copying infringes plaintiffs’ copyrights.

    I see nothing there that was not addressed by my posts. What is missing?

    And if you’re going to bring up some cockamamie story about how fair use rights were contracted away, (1) I don’t see that alleged in the complaint, and (2) even if it were alleged, contracting away fair use rights does not turn what would be fair use into actionable copyright infringement. If the law firms did contract away their fair use rights to the NPLs through some contract of adhesion (which very well may be unconscionable), then violating that contract results in a breach of contract, not infringement. And I don’t see anything other than copyright infringement alleged in the complaint.

  72. IANAE,

    I see you have neglected to comment on my favorite option. The “government check its own records” option seems to be a rather elegant solution.

    Also, your prior awareness must still be traceable to terms of a contract agreement (for any item under restricted access). Are you saying that any such contract agreements can be willfully ignored because it is convenient for one party to do so at a later date? I don’t see your legal foundation for this (yet).

  73. Ned,

    I see. I misunderstood your comment.

    I think that if Wiley is successful at this first stage, that the government will have its day in court (Mr. Knight’s memo notwithstanding). As indicated on the linked threads, I do not put much faith in the memo – it’s factor analysis is rather weak, and not all of the governments’ actions can be justified by the examination rationale. Distribution to third parties can in no way be brought under the proffered reasons for 1.56 (examination). The Office in no way seeks to even limit the copying to any type of material portion of a restricted NPL item.

    Further, the applicant is under no duty to teach the Office anything. I see – once again – that that misnomer is being bandied about. Let’s put that to a stop before the error propagates.

  74. Smitty,

    See the link wherein the atual questions on the facts of the case were explored in greater detail.

    Your cursory declarations, while more developed – and actually touch upon the factors – than the previous poster, simpy will not do and are in essence barely more than the “CASE CLOSED” pronouncements of the earlier poster.

  75. Except when it does not. Like the explicit facts of the case where the only legal copies are controlled copies that come with contracted terms of surrendered fair use.

    So…

    You either have a legal copy (with strings that bind your fair use defense), or you have an illegal copy that carries no fair use defense.

    A more classic case of “Heads I win and tails you lose” cannot be found.

    Thanks for playing.

  76. That’s an odd thing I have noted in your world. All these old people. The funny thing is that by the time the current crop of old people die off, other people have become old in their place. You need a carusal and a rejuvenation program.

    Now run.

  77. “(1) the act of making copies of NPLs for submission to the USPTO is not of a commercial nature;”

    No, but the nature of the filing is in furtherance of a commercial natured endeavor, aka filing for a patent.

    Doesn’t matter. The applicant is not selling NPLs to other people, and the USPTO would not buy them otherwise.

    “(2) the content of the NPLs are predominantly factual and display very little artistic expression”

    Are you for real? Page 2 of the Erchak ref is chock full of pics which are very creative and artistic that I presume are all by the author.

    I can’t tell if this is snark or not, but I can assure you that any pictures in the Erchak ref were included to illustrate facts, not show off the skills of the photographer.

    “(3) the copies are being submitted to the USPTO for educational use (i.e., teaching), which is a noted exception in § 107; ”

    Perhaps. Seems more to me like they’re being submitted to avoid fraud on the office.

    That is not the putative reason for Rule 56. Rule 56 exists to give the Examiner every opportunity to learn and understand the prior art during examination.

    “(4) the act of making such copies does not affect the potential market for the NPLs”

    How can you say that with a straight face? If all the people filing on patents have to pay for copies of their refs then that market will do nothing but grow as the numbers of apps filed grows. Potentially this market could grow nigh infinitely save for the infringement.

    Horse s***. Patent attorneys are not the primary consumers of scientific journals, and Rule 56 was not promulgated to enrich copyright holders. By submitting copies of NPLs to the USPTO, a patent attorney is not competing with John Wiley and his ilk for customers. But for Rule 56, the patent attorney wouldn’t have bought the first copy at the outset.

  78. I’ll tell you what I would do, I would tell the PTO the situation in a paper and request that the examiner provide a copy. And I’d be nice about it so he’d probably do it.

  79. “(1) the act of making copies of NPLs for submission to the USPTO is not of a commercial nature;”

    No, but the nature of the filing is in furtherance of a commercial natured endeavor, aka filing for a patent.

    “(2) the content of the NPLs are predominantly factual and display very little artistic expression”

    Are you for real? Page 2 of the Erchak ref is chock full of pics which are very creative and artistic that I presume are all by the author.

    “(3) the copies are being submitted to the USPTO for educational use (i.e., teaching), which is a noted exception in § 107; ”

    Perhaps. Seems more to me like they’re being submitted to avoid fraud on the office.

    “(4) the act of making such copies does not affect the potential market for the NPLs”

    How can you say that with a straight face? If all the people filing on patents have to pay for copies of their refs then that market will do nothing but grow as the numbers of apps filed grows. Potentially this market could grow nigh infinitely save for the infringement.

    Why not just revel in being a pirate? Say ARRRRGGGGHHHH and get on with it.

  80. Maybe makes sense given the APA requirements of having a publicly available “full record” or proceedings leading to the patent.

    Lolz on that. You really think “the full record” is currently available regarding quality control actions or pre appeal board ongoings?

  81. Even as between competing constitutional protections, the patent side seems a loser seeing as there is an “easy” fix: get a license to make copies.

    Why, when the act of making copies in this instance lies entirely within the fair use defense?

  82. Don’t need to tell John Wiley anything. It is you that is on the wrong side of this issue.

    That’s why you are “poor.”

    Why, because you say so?

    The law is on my side, sir. Feel free to peruse § 107 of the Copyright Act. Then tell me how submitting copies of NPLs to the USPTO is not fair use. Last I checked, (1) the act of making copies of NPLs for submission to the USPTO is not of a commercial nature; (2) the content of the NPLs are predominantly factual and display very little artistic expression; (3) the copies are being submitted to the USPTO for educational use (i.e., teaching), which is a noted exception in § 107; and (4) the act of making such copies does not affect the potential market for the NPLs.

  83. Here is GC Bernard Knight’s statement:

    /media/docs/2012/01/USPTOPositiononFairUse_of_CopiesofNPLMadeinPatentExamination.pdf

    I see no mention in it of 28 USC 1498(b). It is as if the declared policy of paying copyright owners for copies made on behalf of the government did not exist.

    Poor job, there, Mr. Knight.

    This is why the court should ask the government, meaning the Justice Dept., to clarify the government’s position. Mr. Knight’s memo should be de-posted in the meantime.

  84. The differenc in your past arguments is to “who” maintains control of the right.

    We do not need a nanny-state, thank you.

  85. IANAE, identify the NPL in the IDS, and state in your cover letter that the NPL copyright holder was contacted and refused to grant you a license to copy the reference for submission to the PTO.

    The government could then obtain a copy through eminent domain and pay the copyright owner his RR.

  86. So the defense to infringement is essentially “we’ve been doing it all along, so excuse the infringement?” Err… okay.

    Even as between competing constitutional protections, the patent side seems a loser seeing as there is an “easy” fix: get a license to make copies.

  87. ” You can’t even get enough signatures to ban softwarte patents.”

    How many “signatures” do we need to “ban” software patents? “We” certainly got enough signatures to demand a statement from the gov in a petition. Of course, they completely ignored the issue prior to their “we take these things seriously” post.

  88. The examination and grant of a patent is not going to a public interest. It is going to a private interest and the government has no basis for such an action.

    Put down the crackpipe, Mr. Wiley.

  89. How would you go about un-knowing of an article? Probably the same way you’d avoid infringement of the Prometheus claims.

    ROTFLMAO

  90. But I’m pretty sure the copyright holder will sell you another,

    LOL, how many times have I said that about patents? How many times was I reminded that the exclusivity of the patent right is sacred? NTP wants an injunction, MercExchange wants an injunction, everybody wants an injunction even though it would make much more economic sense to license and get money than to keep the infringer’s product on the market.

    Why wouldn’t a copyright owner want an injunction for the same reason, to protect a right that is just as exclusive for the same reason? If you think your patent is valuable, and it’s unenforceable unless you file this art, and it could issue at any moment, that sounds like a business opportunity for the copyright owner.

  91. Pay the fee and the PTO will make a copy of all the NPL in a given application’s file and give it to you. I’m not sure the availability has anything to do with copyright concerns.

  92. “Deny reality all you want. Golan is indeed about the law “on the books” and that law just got stronger – not weaker. This is a change that very much affects your generation.”

    It only affects us while you oldies are still around. Down with the old people!

  93. Thanks, Inconvenient Truth. Didn’t know the PTO would provide copies of the NPL with a paid file wrapper. Maybe makes sense given the APA requirements of having a publicly available “full record” or proceedings leading to the patent. So the copyright holders are then only a little bit pregnant in that every TD&H doesn’t have public access, just that small minority of those interested enough to pay the PTO for the file wrapper. Still, ya know what they sez about being a “little bit”…

  94. refuses to license the copies

    Asked and answered.

    You surrender the legit copy in your hands. Keeping one in your hands isn’t exactly part of the requirement of 1.56, is it?

    But I’m pretty sure the copyright holder will sell you another, so you can put that strawman to rest.

    No such thing as a “well-intentioned infringer.”

  95. There is no justifiable reason

    Other than the law, you mean?

    Dxmm, hxte when that happens.

    You can discharge your duty without impacting someone else’s bona fide rights.

    Guess which side wins.

  96. But the harm to the infringer is not worthy of any consideration whatsoever, in my view. Infringers have NO RIGHT TO INFRINGE, but that is what denying the patent holder an injunction implies,

    Okay, so back to my original question. What do you do when your client comes to you with a copyrighted NPL reference, and the copyright holder refuses to license the copies to submit to the PTO and keep in your files? Now you and your client are the well-intentioned infringers of an exclusive right who are entitled to no consideration.

  97. Deny reality all you want. Golan is indeed about the law “on the books” and that law just got stronger – not weaker. This is a change that very much affects your generation.

    Good luck with that constitutional amendment. You can’t even get enough signatures to ban softwarte patents.

  98. on behalf of the public interest.

    Except the reason given by the Office is not a public reason. The examination and grant of a patent is not going to a public interest. It is going to a private interest and the government has no basis for such an action.

    It’s further actions of unlawfully selling copies to the public serve no examination purpose and contravene the copyright holders’ rights completely.

    The Office is in hot water on this!

  99. Not really, Golan is about how the law is “on the books” abolition entails changing what is “on the books”. If it takes a constitutional amendment, then that too will be achieved.

  100. Still, however, we have a Copyright Royalty Tribunal that sets royalties to be paid by participating copyright holders. This situation looks like another good opportunity for copyright owners to get paid when government infringes on behalf of the public interest.

  101. It would be nice if the owner of the copyright of enforce their rights per the law.

    Oh wait, they can .

  102. “No, but doing it in a way that appeases journal publishers would be an onerous burden on the patent bar”

    It is already an onerous burden on the rest of the country, especially in re “entertainment”. Why should you guys get a special pass? Join us in the abolition cause!

  103. It would be nice if the public could download the NPL by paying a copyright fee, to be paid over to the copyright holder. The fee should be listed on the NPL.

  104. Except for the little (inconvenient) fact that the Office is perfectly happy to make paper copies for you (if you ask real nice, and of course, PAY the Office).

  105. No, but doing it in a way that appeases journal publishers would be an onerous burden on the patent bar. I’d much rather exercise my fair use rights in submitting NPLs via EFS.

  106. anon, we are somewhat on the same side of this issue.  I think the USPTO posting conflicts with 28 USC 1498(b), which gives copyright holders a remedy in the Court of Claims when their copyrights are infringed with the authorization and consent of the government.

    The statutory policy conflicts with the USPTO statement.  I think the court should invite the government to at least file a brief explaining its official position here.

  107. Are you assuming that you cannot observe both the 1.56 duty and the copyright law?

    This one is rhetorical.

  108. “Why not?”

    Um, because we’re mostly patent lawyers and applicants? Do you think you should be sued for copyright infringement for merely discharging your Rule 56 duty?

  109. I’d say the PTO is concerned with keeping the “fair use” (government review of the submitted prior art documents) within the scope of that stated fair use.

    Permitting the general public to download the NPL for its reading pleasure doesn’t fit within those bounds. (Even assuming the PTO’s SG is correct that the PTO’s use qualifies as fair use.)

  110. “H Chang, it is an oversimplification to assume that the submission on its own would be fair use and that would be dispositive of the situation. There is nothing currently stopping the submission of a single legally obtained copy. The problem may come up with the actions of violating certain express contract terms in making a new copy for the submission, while retaining (and possibly making other in house copies) of that legally held item. If a law firm (or any entity) wants to divest itself of an actual physical and legally held version, there is nothing stopping that entity from doing so in order to meet its legal obligation under 1.56. Keep in mind that it is the extra actions that may fall outside of copyright law. We should not be in a hurry to abbrogate someone’s rights.”

    What you appear to be proposing is that instead of using the efficient EFS to discharge one’s duty of disclosure, applicants should instead use snail mail to submit NPLs to the USPTO. Such a proposal would be onerous and puts unnecessary costs on applicants to discharge its Rule 56 duty, particularly in biotech/pharma cases where (1) the amount of NPLs needed to be cited can exceed 1,000 pages for just one case; (2) the number of related cases in which those 1,000 pages need to be cited can be high. There is no justifiable reason to put that burden on patent applicants when the use of EFS to cite NPLs does not harm the rights holders in the first place.

    The rights of copyright holders are not abbrogated by invoking fair use. Copyright holders never had the rights to prevent such use in the first place. The treatment of using EFS to cite NPLs to the USPTO as actionable copyright infringement is just a bastardization of the law by the failing publishing industry.

  111. “Now, Plaintiffs John Wiley & Sons, Ltd. and American Institute of Physics (“Plaintiffs”) attempt to introduce a costly new requirement into this long-standing practice. They seek to impose a requirement on those practicing patent prosecution to negotiate a license with the holder of the copyright in the journals before complying with the Patent Office’s prior art submission requirements. Plaintiffs’ misguided attempt to change established practice will only serve to undermine the full disclosure requirements of the USPTO and interfere with access to the constitutionally mandated patent system.”

    Short Answer From Plaintiff:
    The fact that you find following the law to be somewhat burdensome IS_SIMPLY_NOT_My_Problem.

  112. “Keep in mind also that the PTO does not make the NPL publicly available on its website. If you go to the public PAIR site, you cannot download NPL.

    Seems like the PTO is concerned about infringing the publisher’s copyright . . . ”

    Is OK, my generation is working on abolition of our generation’s “prohibition”. You old timers can suffer along with us until we get old people dead off.

  113. Keep in mind also that the PTO does not make the NPL publicly available on its website. If you go to the public PAIR site, you cannot download NPL.

    Seems like the PTO is concerned about infringing the publisher’s copyright . . .

  114. - buy an extra copy to submit,
    - negotiate a waiver of a contracted “do not copy” restriction,

    The copyright owner has an exclusive right. He’s not required to permit you to do either of those things, if he doesn’t want to.

    - go without the item to begin with (you do not have to submit that which you do not know)

    Of course you realize that we’re discussing the very common fact scenario wherein you are already aware of the reference but can’t disclose it to the PTO without making multiple unauthorized copies. How would you go about un-knowing of an article? Probably the same way you’d avoid infringement of the Prometheus claims.

    What’s the answer? Compulsory license of copyright? A tax on blank IDS forms?

  115. “that he is not receiving any royalties from the article. ”

    Imagine that. Stronger Copyright! The artists aren’t getting any monies! All we need are stronger copyright lawls.

    Lulz.

  116. Ned,

    We have been through this before. I do not understand your position (how and why the government should intervene to abbrogate someone else’s perfectly good copyright and contracted positions), espcially in light of previous discussion on this matter.

    From the government’s actual policy statement (from an earlier Patently-o threads at

    link to patentlyo.com , link to patentlyo.com , and
    link to patentlyo.com

    From the government’s Background and Summary Conclusions:

    Patent applicants or their attorneys sometimes make copies of copyrighted NPL and submit those copies to the USPTO, pursuant to the USPTO’s disclosure requirements. The USPTO considers this copying to be protected by the doctrine of fair use.

    BUT it contiues…

    The USPTO takes no position on whether additional copies of such NPL made by an attorney or applicant during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventor, or for the
    law firm’s future reference) qualifies as fair use.
    To the extent applicants have obtained copyrighted NPL pursuant to a license, applicants are responsible for ensuring that the license is not inconsistent with fair use.

    Keep in mind that the government memo is not law and that the government has been wrong on a number of important occasions. Relying on the government’s stated position is not wise.

    Further, rather than rehashing many of the arguments already put forth (without suitable responses – including the possibility that any fair use defense may have been contracted away), simply visit again the links provided above.

    Note to Dennis, the full view of comments on the March 2 thread is still not working.

    H Chang, it is an oversimplification to assume that the submission on its own would be fair use and that would be dispositive of the situation. There is nothing currently stopping the submission of a single legally obtained copy. The problem may come up with the actions of violating certain express contract terms in making a new copy for the submission, while retaining (and possibly making other in house copies) of that legally held item. If a law firm (or any entity) wants to divest itself of an actual physical and legally held version, there is nothing stopping that entity from doing so in order to meet its legal obligation under 1.56. Keep in mind that it is the extra actions that may fall outside of copyright law. We should not be in a hurry to abbrogate someone’s rights.

  117. APA Sec. 553(e): Each agency shall give an interested person the right to petition for the issuance, amendment, or repeal of a rule.

    MBHB (or just anyone) should petition to the Copyright Office and/or the Patent Office to make/amend federal regulation making Rule 56 compliance fair use.

  118. Did the government actually say on its web site that making copies and submitting those copies to the USPTO was fair use?

    The government really needs to intervene here. Really.

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