Alleged Copyright Infringement by Patent Prosecutors

By Dennis Crouch

American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg (D.Minn)

Publishers John Wiley & Sons and American Institute of Physics have asked the Minnesota District Court for leave to amend and narrow their complaint against the Schwegman law firm. The amendment would drop any allegation that submitting copies of copyright works to the USPTO constitute copyright infringement. The plaintiffs write that the amended complaint

does not allege that this unauthorized copying includes (i) making such copies of a copyrighted work for submission to the PTO as may be required by the rules and regulations of the PTO, (ii) transmitting such copies to the PTO, or (iii) making an archival copy of that work transmitted to the PTO for Defendants’ internal file to document what has been transmitted.

To be clear, however, the plaintiffs have not dropped their case, but continue to allege that other copies and transmission do constitute copyright infringement. Further, because Wiley does not have any proof of those other activities, it argues that the now unchallenged submission to the PTO serves as “evidence of broader use and circulation” sufficient to permit the complaint to move forward.

The newly amended complaint thus recites no factual basis other than the fact that Schwegman is a law firm that prosecutes patents and that, because Schwegman submitted copies of certain articles to the USPTO that it must have also made unauthorized copies. The complaint:

14. Upon information and belief, Defendants have engaged in Unauthorized Copying with respect to the copyrighted articles from Plaintiffs’ journals, including but limited to the articles identified on Schedule A.

15. Plaintiffs cannot know the full extent of Defendants’ Unauthorized Copying without discovery.

The amended complaint also adds a further list of obscure scientific articles that were submitted to the PTO by Schwegman and were allegedly copied internally in an unauthorized manner. The plaintiffs have not yet filed any proposed amendments in the MBHB case.

The USPTO intervened in these cases supporting the law firms. It appears that this amendment is meant to appease the USPTO so that it will fall out of the case – making the defendants look much less sympathetic.

Notes:

28 thoughts on “Alleged Copyright Infringement by Patent Prosecutors

  1. 28

    That is quite a bizarre line of argument. It would mean that if I read a book only for its underlying ideas, not for the sentence structure I can make a copy of the book without violating copyright.

  2. 27

    And to deflate your pedantic tendencies, your directive “tell me where I’m wrong” is equated to a question of “where am I wrong?”

    Dismissive and glib is no way to go through life son.

  3. 26

    I knew then that whatever questions you posed weren’t important.

    Your hubris is amazing. Maybe you should read the thread.

  4. 25

    The poor strategic and legal move was the filing of the complaint in its original form, against a defendant who was unlikely to fold like a cheap lawn chair.

    I knew then that whatever questions you posed weren’t important. To its detriment, it has taken the plaintiff longer to reach the same realization.

    And because it has escaped your notice, I haven’t asked any questions.

    Tell me where I’m wrong.

  5. 24

    Tell me,

    I reviewed the thread you linked to. How does it move the conversation forward for you to ask questions already answered and invite questions already asked?

    It’s telling that I posed a series of questions (and answers) to you and you failed to respond on that thread. And yet, here, months later, you rejoin the conversation and haughtily proclaim “precise logical effects” when in truth, the plaintiff’s request is simply a poor strategic and legal move.

    Since the comments are closed on the other thread, should I take the time to repost the questions here? Would you answer them or simply disappear again?

  6. 23

    The AIP is the parent organization of about 10 scientific societies, including the American Physical Society, the American Astronomical Society and the American Association of Physics Teachers. It’s got more than 100,000 members. In the solid-state physics area, and probably most of the others, it’s work is the best on the planet.

    In terms of the good that organizations do for society, I think I’d put the AIP _far_ ahead of most patent law firms.

  7. 22

    Key cites, summaries, and head notes, yes. Page numbering, no. See Matthew Bender & Co. v. West Publ. Co., 158 F.3d 693 (2d Cir. 1999).

  8. 20

    Do I detect bootstrapping?

    The contention is that it is fair use because the government “authorizes” it, demands it by rule, in fact.

    The government has the means to subscribe to the publications. It does not and should not require, authorize or demand that applicants submit infringing copies of copyrighted materials it itself has access to by paying for a subscription. But, if it does, it should respond in damages in the court of claims.

  9. 19

    This is looking more and more like a desperate fishin’ expedition.

    The American Institute of Physics – now powered by fishin’.

  10. 14

    Malcolm, I don’t know why Schwegman is litigating at all. If the action is authorized by the US government, which is what they contend, they should simply refer the copyright owner to the court of claims pursuant to 28 USC 1498.

  11. 13

    Actually, if the government takes, it pays.

    See, 28 USC 1498. That statute covers both patent and copyright takings to the extent the government demands that a contractor infringe.

    In the case of private property, eminent domain come to mind. But there was that case where Truman took over the steel mills. Now, what was decided there? That he could act only when authorized by Congress?

    Youngstown Sheet & Tube Co. v. Sawyer, 343 US 579 – Supreme Court 1952, link to scholar.google.com

    Where did the Director get the authority to infringe with impunity and to authorize others to do so as well?

  12. 11

    Hmmm. Let’s see here. According to plaintiffs, the following is not “unathorized copying”:

    (i) making such copies of a copyrighted work for submission to the PTO as may be required by the rules and regulations of the PTO,

    (ii) transmitting such copies to the PTO, or

    (iii) making an archival copy of that work transmitted to the PTO for Defendants’ internal file to document what has been transmitted.

    And yet they argue that “because Schwegman submitted copies of certain articles to the USPTO that it must have also made unauthorized copies.”

    If the above list constitutes legal copies, what are the “unathorized copies” that “must” have been made?

    This is looking more and more like a desperate fishin’ expedition.

  13. 10

    What happens when the government takes property from a citizen?

    In the case of AIP, the citizen gets out his big gun and shoots himself in the feet until he can’t walk. Then he hires a steamroller to flatten him into a pancake for easy disposal.

  14. 9

    The cases themselves are in the public domain. The service that Westlaw and LexisNexis provide is the electronic database.

  15. 7

    According to link to copyright.gov “Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.” With respect to patent office submissions, the only thing of interest are the “facts, ideas, systems, or methods of operation.” Of course, you can’t copy an article without copying “the ways these things are expressed,” but it seems like this should make the fair use argument easier.

  16. 6

    Dennis, or better yet, what would happen if the government demanded free access to a publisher's legal cases?  What would happen if the government demanded free access to patented inventions?  Do we have a Constitution?  What does it say?
    What happens when the government takes property from a citizen?

  17. 5

    Dennis, interesting that the courts are given free access to the legal case publishers.  The question arises then what would happen if they did not have free access and demanded that litigants provide copies.

  18. 4

    Ned – The courts are given free access to Westlaw and LexisNexis.  Further, litigators regularly submit copies of important (or difficult to find) cases to the court as attachments to their briefs. 

  19. 3

    When we cite cases to a court, we do not submit copies of the cases, do we? We expect, no we demand, that the court itself have a subscription to the publisher of the case.

    Why is this situation any different? Why can’t we demand that the government have its own subscription to scientific publications so that we may simply cite the reference in our IDS and not be required to obtain a copy for the government?

  20. 2

    Yes, but shouldn’t we remember that fewer than 2% of all scientific papers are ever the subject of litigation?

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