Fight heats up between John Wiley and patent lawyers over journals

Copyright lawyers feeding on patent lawyers — it’s not for the faint-hearted.

Recall that publisher John Wiley sued patent firms in March, claiming the law firms should pay extra copyright royalties when they submit a journal article to the US Patent Office.

It was unclear at the time if the firms would settle (as some have reportedly done) or instead tell Wiley to jump in the lake. It appears they’ve chosen the latter.

In new filings, Chicago’s McDonnell Boehnen Hulbert & Berghoff has denied copyright infringement while Minnesota’s Schwegman Lundberg & Woessner is asking the court to throw out Wiley’s complaint.

The law firms say they are required by law to submit the journal articles as part of patent applications, and point out that the Patent Office itself has said the practice is fair use. The Chicago firm is also arguing that its use of the articles is a non-public display, and that John Wiley is committing copyright misuse and has unclean hands.

The controversy stems from John Wiley’s efforts to squeeze extra revenue out of the journals by asking law firms to acquire a second license in addition to paying to read the articles in the first place. This second license would cover the right to make internal copies of the articles for their clients or for the patent office.

Patent law firms pay for access to journal articles because the articles are often part of the “prior art” that inventors must submit to the patent office to prove an invention is new.

Critics say John Wiley’s lawsuits will raise overall patent costs. The controversy hash also gained the attention of leading blog Patently-O.

So far, the publisher is showing no signs of backing off and is instead doubling down. On Friday, it filed a new suit against Kansas law firm Hovey Williams.

Here is what the Chicago firm thinks of Wiley’s complaint:

McDonnell Boehnen Hulbert & Berghoff Answer to Wiley Complaint Copy