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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Law Firm Must Perform Limited Search for Use of Allegedly Infringed Scientific Papers

Posted in Discovery

John Wiley & Sons, Ltd. v. McDonnell Boehnen Hulbert & Berghoff LLP, No. 12 C 1446, Slip Op. (N.D. Ill. Feb. 12, 2013) (Keys, Mag. J.).

Judge Keys granted in part plaintiffs’ motion to compel discovery responses regarding use of its copyrighted articles. Plaintiffs accused defendant McDonnell Boehnen Hulbert & Berghoff (“MBHB”) of copyright infringement based upon alleged use of plaintiffs’ articles in MBHB’s legal practice before the U.S. Patent Office, as well as in litigation and client counseling. Plaintiffs demanded that MBHB search each of its employees’ files, email and hard drives for potential infringing use of the articles. The Court held that while some discovery was relevant to plaintiffs’ broad copyright infringement claims, plaintiffs’ demand went too far. Instead, the Court ordered that MBHB perform a search that it has suggested as a compromise position during the parties’ discussion of the discovery requests, specifically:

  • Search MBHB’s electronic document management system for copies of the articles;
  • Search the index of MBHB’s off-site document storage for references to the articles and manually search any files identified;
  • Ask each MBHB lawyer, law clerk or technical advisor if they remember using the articles; and
  • Search the paper and electronic files of two individuals previously identified as having used the articles in their practices.