Monthly Archives: November 2008

Sexual Harassment, discrimination, retaliation and after acquired evidence.

Quite often employers will discover information that may form an additional basis for justifying an adverse employment action, but how this after acquired evidence may be used is limited.  Once an employer makes the decision to terminate, transfer or demote an employee, it is often too late to justify that decision via after acquired evidence.  McKennon v. Nashville Banner Pub’s Co., 513 U.S. 352 (1995) and O’Neal v. City of New Albany, 293 F.3d 998 (7th Cir. 2002). 

Often employers discover additional information based on an investigation conducted after an employee makes a claim of sexual harassment, discrimination and/or retailaition; but employers do not realize the limitation on the use of the after acquired evidence.  Consulting an employment attorney prior to making the adverse employement decision to properly protect against a claim of sexual harassment, discrimination and/or retaliation can help avoid the limitation on use of the after acquired evidence.

Luckily, the employer may still be able to utilize the after acquired evidence to limit the remedies available to the employee.  McKennon v. Nashville Banner Pub’s Co., 513 U.S. 352, 361-2, (1995). Therefore, implementing a good human resource policy to investigate before taking an adverse employment action can assist in litigation success and limiting an employer’s exposure for any sexual harassment, discrimination and/or retaliation that an employee claims. 

We can assist employers in taking such preventative measures to limit their exposure under Title VII of the Civil Rights Act of 1964, the Americans with Disability Act, and the Age Discrimination in Employment Act.

Enablement Requirement for Patent Claims

The Enablement requirement for patent claims stems from the Written Description requirement of 35 USC 112.  In order to satisfy this requirement, the Written Description (Specification) must describe the claimed invention in sufficient detail to enable a Person of Ordinary Skill in the Art (POOSA) to determine that the patentee invented and claimed the invention. 

Often times, patentees seek to get as broad a claim as they can for their invention to try and increase the number of infringers and run afoul of 35 USC 112, 35 USC 102, and/or 35 USC 103.  The enablement requirment of section 112 means that an individual making broad claims must provide multiple embodiments of the claimed invention or general principles of how a single embodiment is applicable to other broadly claimed inventions.  In re Alonso, (Fed. Cir. 2008). 

In re Alonso, the USPTO rejected the patentee’s claim to other versions of an idiotypic monoclonal antibody (mAb) designed to treat neurofibrosarcoma in a human based on the fact that a single embodiment was insufficient for a POOSA to determine that the patentee was in possession of all the other versions of mAb’s.  The Federal Circuit stated that it must use the Substantial Evidence standard and under that standard if a reasonable mind would accept the evidence as adequate to support the conclusion, the Federal Circuit will affirm the PTO’s decision, if it is reasonable. 

The Federal Circuit may have found things differently, but found the PTO’s decision to be reasonable in light of the single embodiment of mAb.  The Federal Circuit went on to restate it’s holding in Noelle v. Lederman, 355 F.3d 1343, 1350 (Fed. Cir. 2004), that the patentee of a biotech invention cannot make a genus claim based on a limited number of species described in the specification.  There is often too much unpredictability in the results obtained from the species to put the POOSA on notice that the patentee has possession of the genus claim. 

This holding is not new law, but it reconfirms the importance of properly supporting the claimed embodiment within the specification and the dangers presented by an overly broad genus claim.

Copyright Infringement for Movie Special Effects and Computer Software

Quite often, a Consultant or Individual (hereafter “Developers”) being hired to develop special effects for movies or computer software programs for businesses does not have a written agreement relating to the project.  Many times, the special effects or software programs are developed, then the parties have a disagreement about payment terms and/or scope of use for the special effects or software programs.

Usually, Developers will try to assert trade secret misappropriation or copyright infringement against their own clients to prevent the use of their special effects in movies or software program in business operations.  The Ninth Circuit, has applied the implied license to use defense in two such cases where Developers claimed Copyright Infringement.

See. Asset Marketing Systems Inc., v. Gagnon, 542 F.3d 748 (9th Cir. 2008) and Effects Assocs Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990).  In the more recent case, Asset Marketing Systems, the court found that although the Developer retained copyrights to the software program, his client had an implied license to use the Software Program.  Id.  The Court said that there was no written transfer of the copyright as required under 17 USC 204 (a) therefore, the Developer retained the Copyright.

However, the court found an implied license was provided by the Developer based on his objective manifestations that indicated that the client was allowed to use and modify the software.  The Court restated the basis for finding an implied license: 1) licensee requests creation of work; 2) the creator makes the work and delivers it to the licensee who requested it; and 3) the licensor intends that the licensee-requester copy and distribute his work.

This ruling only further demonstrates that Developers and clients need to have a good agreement in place relating to ownership and use of special effects and/or software for companies.