United States: Copyright Claims Based On Submission Of Prior Art To Patent Office Finally Dismissed: Were They The "Weakest Infringement Claims Of All Time"?

Last Updated: April 7 2014
Article by David A. Kluft

In April 2012, we reported on four copyright lawsuits filed by the American Institute of Physics (AIP) and John Wiley & Sons. Ltd, the publishers of a range of scientific literature.  These suits alleged that four law firms in Illinois, Kansas, Minnesota and Texas had infringed the AIP's copyrights by submitting certain scientific articles to the Patent and Trademark Office (PTO) as "prior art." In other words, these law firms essentially were being sued for doing what patent law firms across the country do every day: prosecute patent applications. On March 25, 2014, the last of these cases came to a conclusion.

AIP had alleged that, even though the submission of prior art to the PTO was required by law, it was nevertheless infringement to make any unauthorized copies "in connection with researching, filing and prosecuting certain patent applications."  AIP initially argued that this included the mere submission of a copyrighted scientific article to the PTO. The closest analogy we could find to this claim were a pair of cases that Professor Nimmer calls the " Weakest Infringement Claims of All Time," in which parties had attempted to use copyright law to prevent the submission of adverse evidence by opponents in civil actions.

However, AIP softened its stance as the cases progressed. It eventually acknowledged that submitting a copy to the PTO (and retaining a copy of the PTO submission) was fair use, but argued that any other copying by the law firm was off limits without a license, including "downloading, storing, making internal copies of, and distributing the Articles by email."  This more focused theory of the case was clearly intended to invoke the Second Circuit's 1994 opinion in American Geophysical Union v. Texaco. In that case, Texaco had purchased only one or two subscriptions to scientific periodicals, to be shared among 400 to 500 research scientists.  Some of the scientists made unauthorized copies of the publications for their own libraries.  The Court held that this was not fair use.

So maybe AIP was on to something after all. Let's see. Here's a recap of how these four cases came out.

American Institute of Physics v. Hovey Williams LLP (D. Kansas)

The Kanas matter was a promising start for AIP. On June 22, 2012, a few months after the case was filed, it settled. Reportedly, the law firm didn't want the distraction of a long legal battle and agreed to purchase a blanket license from the Copyright Clearance Center.

American Institute of Physics v. Schwegman, Lundberg & Woessner, P.A. (D. Minnesota)

In the Minnesota case, the defendant law firm had copied and used in patent applications approximately eighteen articles published by AIP, most of which it had obtained from the PTO's Public PAIR website. The defendant also saved these scientific articles in its electronic document management system. After discovery, the defendants (supported by the PTO, which intervened in Minnesota, Texas and Illinois) moved for summary judgment.

On July 30, 2013, Magistrate Judge Jeffrey Keyes issued a Report recommending that summary judgment be granted for the defendant because the copying was fair use. As to the "purpose and character" of the use, Judge Keyes held that a "reasonable jury could only conclude that [defendant's] purpose in downloading and making internal copies . . . was to ultimately comply with the legal requirement to provide prior art to the USPTO and to represent its clients' interests."  And as to the effect on the market, AIP had produced no evidence that the use of the articles by patent lawyers had harmed its traditional target market of scientists, academics and the like.

Judge Keyes also rejected the plaintiffs' analogy to the Texaco case. In Texaco, the intended target market was scientists and the intended purpose of the original work was to aid scientific research. Texaco was creating additional copies of the work for the same market for the same purpose, just without paying. Here, by contrast, lawyers aren't the traditional audience for scientific articles, and those articles were not primarily intended for use in patent applications, so fair use applies. Leery of being misinterpreted, however, Judge Keyes warned in a footnote that he was not establishing a copying exception for lawyers. Attorneys who make unauthorized copies of legal texts (for which they are the target audience) are likely to fall on wrong side of the Texaco line.

Judge Keyes also went to some length in his fact section to point out that the law firm's archiving of articles in its document management system did not allow personnel to perform text searches. Presumably, this was significant because it meant that the system could not become an aid to general scientific research or a substitute (in future patent prosecutions by the firm) for legitimate access to online research databases. However, Judge Keyes did not explain how this fact impacted his legal conclusions on fair use, so its relevance remains unclear.

The Court adopted the Magistrate Judge's recommendations and dismissed the case.  AIP filed a notice of appeal to the Eighth Circuit but dropped the appeal in February 2014.  The defendant's motion for fees was denied on the grounds that the AIP's claims were "colorable" and that outcome was "by no means a foregone conclusion."

American Institute of Physics v. Winstead PC (N.D. Texas)

The Texas case involved more or less the same issues.  AIP alleged that the defendant patent law firm made unauthorized copies of approximately 13 scientific articles in the process of preparing patent applications, most of which were obtained from clients. This firm did not maintain an archive of articles, but did make what AIP charged were "excessive" internal copies. The defendants filed a motion to dismiss, and the Court converted it to a motion for summary judgment.

In an opinion issued December 3, 2013, the Court dismissed the action on the grounds of fair use. The court divided the "purpose and character" analysis into three parts: (1) the defendant's use was transformative because, despite consisting of exact copies, these copies had a different function from, and did not supersede, the original; (2) the defendant's copying was not commercial because, even though it charged its clients $.18 per page for copying, this did not result in a profit; and (3) the defendant's copying provided a public benefit, to wit, an efficient patent system.  The Court went on to hold that this "public benefit" was also the determinative issue with regard the effect on the market.

This time, AIP didn't bother to file a notice of appeal.

American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff, LLP (N.D. Illinois)

That left only the Illinois case, which lasted a little bit longer because it appears to have been aggressively litigated on both sides and because the defendant introduced a twist.  In addition to fair use, the defendant law firm asserted the affirmative defense of Noerr-Pennington immunity. On December 11, 2013, Court announced that the Noerr-Pennington argument was "not fully developed" in the parties' summary judgment papers and ordered an extra round of briefing on that issue.

Noerr-Pennington immunity, a First Amendment doctrine derived from a pair of antitrust cases in the 1960's, provides that efforts to petition or influence the government (whether by filing lawsuits or by lobbying the legislative or executive branches) are immune from antitrust liability even if the intent the activity is to eliminate competition. Here, the law firm defendant claimed that, since a patent application is a petition to the federal government, Noerr-Pennington applies and makes such activity immune from copyright infringement actions.  AIP responded that application of Noerr-Pennington immunitywas limited to antitrust matters.  The PTO chimed in that the whole Noerr-Pennington debate was a pointless distraction because the fair use doctrine would resolve the case and render Noerr-Pennington immunity moot.

It turned out that the PTO was right, at least about the Noerr-Pennington debate being pointless, because the Court never got to rule on the issue. By early 2014, the AIP had apparently had enough and threw in the towel. In March 2014, AIP moved to voluntarily dismiss on the grounds that it had already lost in both Minnesota and Texas, and dismissing the Illinois case too was the "pragmatic" thing to do. The law firm defendant opposed but, on March 25, 2014, the Court allowed the motion, thus ending the last of the "weakest infringement claims of all time."

Not So Weak After All?

There are a few important takeaway points from these cases. First, there is no special copyright exception for lawyers. Darn. Second, the use of copyrighted materials to fulfill legal obligations in governmental proceedings is most likely fair use, but it's not the "slam dunk" defense that many once thought it was. Courts may not dismiss these cases out-of-hand, but rather may subject the parties to a factual inquiry to determine (a) whether the defendant's activities represent the traditional function of and market for the plaintiff's work; and (b) whether the "internal" activity leading up to and related to the governmental proceeding crossed the line from fair use into systematic commercial copying. Finally, Texaco is alive and well, but it does not provide the answer to every copyright question.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions