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By Ryan Davis

Law360, New York (March 05, 2012, 10:40 PM ET) — Law firms that use academic articles in patent applications have little to fear from recent lawsuits alleging the use constitutes copyright infringement, attorneys say.

American Institute of Physics and John Wiley & Sons Inc. sued Schwegman Lundberg & Woessner PA and McDonnell Boehnen Hulbert & Berghoff LLP on Wednesday, alleging that the major patent law firms infringed their copyrights by submitting journal articles to the U.S. Patent and Trademark Office and making copies for internal use.

But the publishers will have an uphill battle in the case, according to Mark Schonfeld of Burns & Levinson LLP, since lawyers are required by the USPTO to submit prior art as part of patent applications, likely making it a legitimate fair use.

“The plaintiffs here will have a tough time making out a case on this claim,” he said.

Whether copies made by the firms for internal use by their attorneys are shielded by the fair use doctrine is not so cut and dry, especially if the firms were making a great number of copies, Schonfeld added. The plaintiffs say in their complaints that the full extent of the firms’ copying cannot be known without discovery.

But given that the authors of the academic journal articles in question are not paid for their work, Peter Toren of Weisbrod Matteis & Copley PLLC says the publishers’ demands for money for articles used as part of the patent application process are unreasonable.

“It’s really kind of a misuse of copyright law to say that someone is entitled to financial gain for something like this. It’s just not right,” he said.

The suits were filed weeks after the USPTO issued a memo outlining its position that submissions of copyrighted material as part of the patent application process is protected fair use, although the office said it took no position on whether additional copies of such articles made for clients, other attorneys or the firm’s future reference qualifies as fair use.

Bill Dunnegan of Dunnegan & Scileppi LLC, an attorney for the plaintiffs, told Law360 on Thursday that the crux of what the case deals with is the internal copying by the law firms, although the complaints allege that copies submitted to the USPTO infringe as well.

Were the publishers to prevail in this case, it would put a burden on patent lawyers that could be difficult to deal with, according to Andrew Deutsch of DLA Piper.

“It could have a significant impact on what firms do for clients if lawyers were required to stop and get a license for articles in every instance,” he said.

Herbert Wamsley, executive director of the Intellectual Property Owners Association, said that if the the suits survive, “we may have to seek a legislative exemption from copyright law for patent prosecutors.”

Schonfeld said that the fact that prior art submissions are a required part of the patent application process very much weighs in favor of the law firms, especially given the USPTO’s position that such submissions are fair use.

Determining whether an accused infringer engaged in fair use involves consideration of four factors, including the purpose and character of the use and whether it is of a commercial nature.

“If it’s prescribed by the government, that seems to be a pretty good defense,” Schonfeld said. “The purpose is to comply with a government regulation and the government itself has said it constitutes fair use.”

The complaints allege that the copyrighted articles “were used for the commercial benefit of defendants and their clients,” but Toren said he didn’t find that position to be very persuasive.

“It could be argued that this is commercial use because you’re using it to apply for a patent, but I really think that’s a bit of a stretch,” he said.

The case seems to present a novel issue in copyright law, according to Deutsch, who said the closest comparison may be to a 1994 Second Circuit decision involving a library of copyrighted scientific articles kept by Texaco for the internal use of its staff scientists. Texaco had subscriptions to the journals, but only a few subscriptions for hundreds of scientists.

The court in that case found that Texaco’s use of the article did not constitute fair use because the articles were used for a commercial purpose and hurt the publishers’ potential for making money.

The case involving the law firms could play out differently because the copies were made for purposes of USPTO proceedings, which furthers the patent system, not to avoid taking a license, as in the Texaco case, Deutsch says.

The use of copyrighted articles in the course of patent applications could also be considered transformative, one of the factors that weighs in favor of a finding of fair use, he adds. The article is being used to show that an invention was already known, rather than the original purpose of publicizing scientific research.

“Every court is different and fair use is a matter of discretion and balancing,” he said. “But I think the courts would consider the submission of a copyrighted article as proof of a fact is transformative and therefore, a fair use.”

In addition, the fair use analysis looks at whether the use affects the potential for and value of the copyrighted work, and Schonfeld said it will be difficult for the plaintiffs to show that they’ve suffered any financial injury by their articles being submitted as part of a patent application.

People have been submitting scientific articles as part of patent applications since the patent system was established by the U.S. Constitution, and it seems unlikely that the publishers will succeed in changing that with their suit, according to Toren.

“This has been going on for hundreds of years,” he said. “I can’t see that any court is going to give their claims much merit at this point in time.”

The plaintiffs are represented in the Schwegman Lundberg suit by Bill Dunnegan of Dunnegan & Scileppi LLC and Timothy J. Pramas and Michelle K. Dove of Manty & Associates PA, and in the McDonnell Boehnen action by Bill Dunnegan of Dunnegan & Scileppi LLC and Annette M. McGarry and Marianne Holzhall of McGarry & McGarry LLC.

Counsel information for the defendants was not immediately available.

The cases are American Institute of Physics et al. v. Schwegman Lundberg & Woessner PA, case number 0:12-cv-00528, in the U.S. District Court for the District of Minnesota, and John Wiley & Sons Ltd. et al. v. McDonnell Boehnen Hulbert & Berghoff LLP, case number 1:12-cv-01446, in the U.S. District Court for the Northern District of Illinois.

–Additional reporting by Zach Winnick. Editing by Andrew Park.

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Reposted from Law360, found at <http://www.law360.com/ip/articles/316139>.