Responding to EEOC Charges – Webinar

Lou Klein of Foley & Mansfield’s Los Angeles office will provide practical guidance on how employers should respond to EEOC charges at this upcoming webinar.

See more at:



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EEOC Expands Scope of Protections Under the Pregancy Discrimination Act With New Enforcement Guidelines

On July 14, 2014, the Equal Employment Opportunity Commission (“EEOC”) issued controversial new enforcement guidelines on pregnancy discrimination and related issues. The new guidelines greatly expand the protections afforded pregnant employees by aligning the Pregnancy Discrimination Act more closely with the ADA. However, the Commission was not unanimous in setting forth its guidance with two of its Commissioners, Victoria Lipnic and Constance Barker, issuing strong statements against the new guidelines.

The EEOC’s Enforcement Guidance is the Commission’s first comprehensive update of its position on pregnancy discrimination since 1983. The Guidance takes immediate effect and attempts to clarify the EEOC’s position on numerous pregnancy and pregnancy-related issues. For instance, through the new Guidance, the EEOC effectively stated that it is irrelevant whether a pregnant employee has a disability for purposes of reasonable accommodation because the employer must accommodate a pregnant employee with work restrictions under the PDA if it accommodates non-pregnant employees similar in their ability or inability to work. By doing so, the EEOC imported ADA reasonable accommodation requirements directly into the PDA.

In fact, the Guidance covers a broad range of pregnancy-related conditions for which an employer will be required to provide a reasonable accommodation including: anemia, sciatica, carpal tunnel syndrome, gestational diabetes, nausea, abnormal heart rhythms, swelling in the legs, pelvic inflammation, depression and/or mandatory bed rest. Reasonable accommodations can include redistributing marginal job functions, temporary assignment to light duty work, modification of workplace policies, alteration of how essential or marginal job function is performed (e.g., modifying standing, climbing, lifting or bending requirements), modification of work schedules, and/or granting leave.

But the EEOC has also taken an additional step by indicating in its Guidance that a pregnant employee who is not suffering from a pregnancy-related impairment by still be entitled to ADA-type reasonable accommodations under the PDA.  Specifically, the EEOC cited to lifting restrictions as an example of a reasonable accommodation that a pregnant employee is entitled to receive even if the employee is not otherwise disabled under the ADA.

Commissioners Lipnic and Barker have loudly dissented. Commissioners Lipnic and Barker expressed their disappointment in the non transparent way the EEOC went about finalizing the Guidance – no public notice or comments – particularly because the Guidance “adopts new and dramatic substantive changes to the law.” Commissioners Lipnic and Barker also questioned the “wisdom of the timing of the Commission’s actions.” Commissioner Lipnic stated that “[t]he most significant questions addressed in the Pregnancy Guidance are pending before the U.S. Supreme Court for review and decision. See Young v. United Parcel Services Inc., 707 f.3d 437 (4th Cir. 2013), cert. granted, 86 USLW 3602 (U.S. July 1, 2014)(No. 12-1226).” The new Guidance, there fore, is premature and may not represent the state of the law after the Supreme Court decision much like the Guidance’s discussion of discrimination based on the use of infertility treatments and contraception. Commissioner Lipnic argued that this discussion “has already been overtaken by events, specifically the Court’s recent decision in Burwell v. Hobby Lobby Stores, Inc., et al., – S.Ct. –, 2014 WL 2921709 (June 30, 2014).” Indeed, Commissioner Lipnic stated that it is “not the proper role of the Commission to decide . . . questions of policy, particularly where, as here, the law enacted by Congress plainly does not contemplate the Commission’s answers to those questions.” In Commissioner Lipnic’s view, the Commission reached far beyond its purview by legislating, rather than regulating or interpreting current law.

Part Four of the Guidance provides a number of “Best Practices” which even to the Commission “may go beyond federal non-discrimination requirements . . .” The use of these suggestions may potentially “decrease complaints of unlawful discrimination and enhance employee productivity.” The practices include: developing, disseminating and enforcing strong policies based on the requirements of the PDA and ADA, training managers and employees regularly, conducting employee surveys and reviewing current employment policies, responding to pregnancy discrimination complaints efficiently and effectively, and protecting applicants and employees from retaliation. As both Commissioners Lipnic and Barker noted in their dissents, the new Guidance imposes requirements that are simply not supported by the language of the ADAA or the PDA, or are in complete contradiction to existing court decisions.

Employers are urged to review their policies relating to pregnancy, discrimination, leave and disability accommodation based on the new Guidance.

Louis C. Klein, Of Counsel in Foley & Mansfield’s Los Angeles office, is a member of the firm’s national employment law group.  For more information or assistance, Lou can be reached at 213-283- 2100 or

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Is It Illegal To Do Business With Businesses In the Legal Drug Industry?

The recent legalization of medical marijuana in Minnesota “will create significant complications for financial institutions and members of the financial services industry seeking to do business with the companies and their owners engaged in Minnesota’s legal drug trade,” according to attorney  Chris Parrington. Read his full analysis from the July, 2014 edition of Attorney at Law Magazine!

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Roger Yuen Named to Lawyers of Color “Hot List”

Foley & Mansfield is pleased to congratulate attorney Roger Yuen of the firm’s Oakland office on being named to the Lawyers of Color’s Second Annual Hot List, which recognizes early to mid career attorneys excelling in the legal profession. Roger will be feted at a reception for the Western Region on July 23rd in San Francisco The Honorable Jay C. Gandhi, U.S. Magistrate Judge for the Central District of California has been invited to offer remarks. Roger will also be profiled in the Hot List 2014 Issue released on July 28.

The “Hot List” honorees were selected by a committee comprised of the editorial staff and advisers, as well as law school fellows and interns, who reviewed nominations and researched bar publications and legal blogs to identify promising candidates. Selections were also based on research that identified attorneys who had noteworthy accomplishments or were active in legal pipeline initiatives.

Learn more about Roger and his practice here.

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Nine Foley & Mansfield Attorneys Named to 2014 Minnesota Super Lawyers® and Rising Star® Lists

The national law firm of Foley & Mansfield is pleased to announce that nine litigators in the firm’s Minneapolis office have been named to the 2014 Minnesota Super Lawyers® and Rising Star® Lists.

Foley & Mansfield attorneys recognized on the Super Lawyers list are:

  • Stephen J. Foley – Personal Injury Defense: Products
  • Kyle B. Mansfield – Personal Injury Defense: General
  • Thomas W. Pahl – Business Litigation
  • Janet G. Stellpflug – Personal Injury Defense: General
  • Seymour J. Mansfield – International Business
  • Lisa M. Lamm Bachman – Employment Litigation: Defense

Foley & Mansfield attorneys named to the Rising Star list are:

  • Christopher P. Parrington - Business Litigation
  • Wyatt S. Partridge – Real Estate
  • Jamie L. Habeck Paz - Business Litigation

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys. Rising Stars follows a similar process to recognize up-and-coming attorneys who are age 40 or younger, or who have been in practice for 10 years or less. No more than 2.5 percent of lawyers in a state receive this recognition.

Foley & Mansfield, named a 2014 “Go-To” Law Firm for Fortune 500 clients, provides a broad spectrum of services to clients throughout the country.  Celebrating its 25th year in business, Foley & Mansfield is a national law firm with a diverse practice of business and trial attorneys in ten offices across the U.S. We invite you to learn more about how we can serve your business.

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Florida Legal Elite Recognizes Beranton J. Whisenant, Jr. as “Up and Comer” for 2014

Foley & Mansfield is pleased to announce that Beranton J. Whisenant, Jr., a partner in the firm’s Miami office, has been named to the Florida Legal Elite “Up and Comer” list for 2014. Whisenant, Jr. was selected for his work in civil trials.

Florida Legal Elite presents a prestigious roster of attorneys chosen for highest honors by their peers, representing less than 2% of actively practicing Florida attorneys. Now in its eleventh year, the Legal Elite lists are published annually in a special edition of Florida Trend magazine.

We invite you to learn more about Beranton and his practice here.

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Beranton J. Whisenant, Jr. Selected as one of Miami-Dade County’s “40 Under 40 Black Leaders of Today and Tomorrow for 2014″

Beranton J. Whisenant, Jr., a partner in the firm’s Miami office, has been selected by Legacy Miami magazine as one of “Miami-Dade County’s 40 Under 40 Black Leaders of Today and Tomorrow for 2014.”  Beranton will be recognized in the June 30th issue of The Business Monday Section of the Miami Herald.

Legacy is a news/business publication that provides news and information to South Florida’s Black Affluencers and Influencers.

Learn more about Beranton and his practice here.

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Beranton J. Whisenant, Jr. Recognized by the National Bar Association

Foley & Mansfield is pleased to announce that Beranton J. Whisenant, Jr., a partner in the firm’s Miami office, has been named a “Trailblazer Under 40″ by the National Bar Association (the “NBA”), the nation’s oldest and largest bar association of African American Attorneys. He was recognized as a dynamic member who has achieved prominence and distinction in the law, and has demonstrated a strong commitment to advancing the goals and mission of the National Bar Association. Whisenant will be awarded a NBA “Torch” at a ceremony this July during the organization’s 2014 89th Annual Convention in Atlanta, Georgia.

The NBA is a professional network of more than 20,000 lawyers, judges, educators and law students, with 84 affiliate chapters throughout the United States and affiliations in Canada, the United Kingdom, Africa and the Caribbean. The organization is committed to protecting the civil and political rights of the citizens and residents of the United States. For more information, visit

Learn more about Beranton and his practice here.

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Daniel Ruttenberg Named to 2014 Washington Rising Star® List

Foley & Mansfield is pleased to announce that attorney Daniel Ruttenberg of the firm’s Seattle office has been named to the Washington Rising Star® list for the second consecutive year.  Ruttenberg was again recognized for his work in the area of Personal Injury Defense: Products. He practices in the firm’s Toxic and Mass Tort group, serving a broad range of clients including product manufacturers, premises owners, contractors, and retailers.

Rising Stars recognizes up-and-coming attorneys who are age 40 or younger, or who have been in practice for 10 years or less. The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, an independent research evaluation of candidates, and peer reviews by practice area.

Learn more about Daniel and his practice here.

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Foley & Mansfield Rises in 2014 National Law Journal 350 List

Foley & Mansfield is pleased to again announce its inclusion in the National Law Journal 350 Annual Survey of the Nation’s Largest Law Firms.

The firm ranked #262, up 44 spots from #306 in last year’s listing. The firm’s Minneapolis office also ranked 9th in the 350 Regional Report.

The NLJ 350 can be viewed at

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Tribal Disenrollment: “They’re trying to disenroll me! Now what?”

It’s all the news – tribal disenrollments are on the rise and sweeping the nation. Many speculate that with increasing tribal gaming revenues, Tribal leaders are “ax”ing members they no longer wish to share in the pot. Others blame feuds between tribal leaders and membership, family against family, as the root of disenrollments.

Tribal members understand that affiliation with one’s Tribe is the very essence of one’s physical and spiritual being. It has been described as “everything” to a tribal member. Certainly, there are various financial benefits that come with tribal affiliation, including stipends from gaming revenues, access to various federal- or state-funded services and housing and educational benefits. These benefits generally cease upon disenrollment. More importantly, so too does the recognition of affiliation with your Tribe. This is often the most devastating consequence of disenrollment making the matter of contesting one paramount. For this reason, hiring an attorney is critical as most Tribes will have sophisticated legal counsel on their side.

Tribal disenrollment an unnerving situation which can often leave a tribal member feeling scared, discouraged and helpless. So, you’ve been a member of a Tribe and suddenly you receive a notice of disenrollment. You think: “They’re trying to disenroll me! Now what?” Here are a few practical pointers for handling a notice of disenrollment.

First, TAKE ACTION. Many Tribes have specific enrollment ordinances which include processes for disenrollment proceedings. For most Tribes, once proceedings are initiated, you will only have a limited period of time to contest or “appeal” a disenrollment determination. If you miss that deadline, you very well may miss your opportunity to contest your disenrollment. Be mindful that as every day that passes, you (and your attorney) have one less day to prepare your case.

Second, GET HELP. Contact legal counsel. Like myself, there are attorneys who are highly experienced in this area of law and able to quickly assess your situation and the nuances of your Tribe’s regulations regarding disenrollment procedures. Be proactive so that your attorney, in turn, is able to move quickly on your behalf.

Third, GET YOUR DUCKS IN A ROW. Be prepared to present your attorney with your notice of disenrollment and any other documentation that accompanies it. Also, be prepared to present your attorney with any documentation which supports your enrollment. It is critical that your attorney have sufficient information concerning your lineage, your enrollment and the reasons for your disenrollment in order to determine the very best course of action for challenging the disenrollment. This becomes especially important should disenrollment procedures allow only a small window of time for making your case.

Fourth, COOPERATE. The success of your case is directly tied to your cooperating with your attorney in gathering documents, presenting important information to, and maintaining open lines of communication.. Remember, your attorney will be prepared to work efficiently, effectively and aggressively on your behalf. That means, your attorney will need 100% cooperation in organizing and preparing your case.

Jana Berger Simmons leads Foley & Mansfield’s practice area in tribal law and federal Indian law, including enrollment and disenrollment procedures. For more information or assistance with disenrollment proceedings or other matters relating to Tribal law across the U.S., contact her at


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The Trouble with Software: Patent and Copyright Protection

Software has a split personality in the sense that it can be protected both as a creative work of authorship under copyright law and as a patent protectable invention under our patent laws. The basic difference between these two statutory schemes of protection is that patent law protects the functional reduction to practice of an idea, whereas copyright law protects the artistic expression of an idea. As an illustrative example, consider the situation where there exists a copyright on the blueprint of a machine. Copyright law only prevents others from making unauthorized copies of the blueprint not from building the machine; the latter is the province of patent law.

Unfortunately, the application of this dual system has led to some confusion as between what patent and copyright law protects and where those lines should properly be drawn. More fundamentally, we are not clear as to whether or not or to what degree software-based inventions should even qualify as patentable subject matter. The reason for this anti-software patent bias is based largely on the fact that most of the patents that are being used by so-called “patent trolls” to sue big and small companies for infringement, are in this software-based questionable validity category. Patent Trolls, also referred to as Patent Assertion Entities, acquire patents from others, typically at a large discount, as through a bankruptcy, and try to use such patents to obtain royalty payments under the threat of infringement litigation. The real abuse perpetrated by Trolls is to also pay scant attention to whether or not their patent is actually infringed and to pursue hundreds of alleged infringers. Such lawsuits are taking up a disproportionate percentage of federal district court time and resources and are forcing small companies to settle and pay royalties they should not have to pay because they cannot afford the high cost of litigation. Big companies that can afford the litigation will also often settle because the trolls are smart enough to price their license well below the cost of a suit so the large business finds it easier to pay to make them go away. There is also an old-fashioned antipathy towards software being patentable because it is not as “tangible” as a physical machine, a chemical compound or a traditional process that involves mechanical, physical and/or chemical steps.

To understand where we may have erred, and what can be done to improve the situation we must first look at how we define patents and copyrights. Interestingly, inventions and works of art and authorship were considered so important by our founding fathers that their protection is provided for in our Constitution. Specifically pursuant to the enumerated powers of Section 8 of Article 1 of the Constitution, Congress has the power “ To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” From this clause Congress has created our copyright laws under United States Code Title 17, and our patent laws, under United States Code Title 35. (Emphasis supplied.)

 Section 102 of Title 17 describes what can be copyrighted by stating, as follows:

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

(b)In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. (Emphasis supplied.)

35 USC Section 101 defines what is patentable by stating:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. (Emphasis supplied.) It is important to note also that case law has determined that products and laws of nature, physical phenomena, abstract ideas, human performable mental acts and mathematical equations, are not patentable.

There are two other important hurdles that an invention must overcome in order to be patentable:

35 USC Section 102  requires that to be patentable an invention must be novel, i.e. not previously invented.  (There should be no benefit for re-invention.)

35 USC Section 103 requires that in addition to being novel an invention must be nonobvious. Section 103 can be understood to stand for the proposition that patents will not be granted to small improvements over the prior art. In other words, if the invention would be obvious to a person skilled in the particular technology it would not be significant enough to justify a 20 patent year term of exclusion.

Looking initially at copyright protection of software, the US Copyright Office first allowed for the registration of software programs in the mid 1960’s and the propriety of such registrations was given formal support in the 1976 Copyright Act. Software can generally be defined as a set of instructions consisting of lines of code that, in the context of a computer/microprocessor of some sort, can act on inputs to calculate or produce certain outputs. Typically, it is the human readable source code that is registered, however it does not possess the type of creative artistic merit we think of with respect to a novel, a painting or a play. That said, software code is statutorily considered a “literary” work in that it is deemed to possess at least the minimal level of artistic creativity required for copyright protection. That minimal level is also attributed to other “pedestrian” copyright protected works, such as, catalogues, reference books, business information forms and the like. And, most people agree that, due to the ease with which software can be copied precisely and quickly, it is important that we have some form of protection in place that, at a minimum, prevents others from making verbatim copies. Thus, since we had a copyright law in existence with a well-developed body of case law surrounding it that prevented illegal copying of works of authorship, and as software is a “work” that is “authored”, it was at least somewhat logical to use that statutory framework to provide for software copy protection.

However, problems arise when we begin to apply the logic of copyright infringement case law analysis to software as was developed for works of art. The difficulty is not so much in situations where another is making exact copies, but where the alleged copyist has made less than a 100% copy. It was early on recognized that to have any value copyright protection had to not only prevent exact duplication, but also had to prohibit making copies that, even though not identical, amounted to a taking of the original author’s rights. Determining the point at which a line is crossed into illegitimate copying has always been a problem for judges and juries. The difficulty is that there can be no hard and fast rule as the cases are highly fact dependent and the answer can only be arrived at on a case by case basis. Factors taken into consideration are such things as the nature of the work, what percentage is copied, what was the importance to the work of the portion copied, the level of detail and creativity of the copied work, and so forth. This approach to infringement analysis essentially involves analyzing the work to determine which elements of it are original and protectable and which are unoriginal and not, and then comparing it with the alleged infringing work to see what of the original portion was copied. Clearly, the more the alleged infringing work copies the original parts of a work the greater the chance it would have of constituting an infringement.

Courts have developed the concepts of “scénes à faire” and “merger” to assist them in filtering out material that is common or not creative. Scénes à faire can be thought of as elements of a work that are in the public domain and free for anyone to use such as basic plot lines, locations and descriptions. For example, anyone writing a novel about the American wild west would be free to write a story about a gang of evil cattle rustlers, a saloon having a hard-bitten woman proprietor, a drunken sheriff and a stranger riding into town that ultimately helps to save it from the gang of outlaws. These characters and plot lines are standard “fare” and free for anyone to include in a new creative work.

The merger doctrine is used to remove elements as being non-creative where the idea and how it is expressed are said to merge because the idea can be expressed in only one or a very few ways. For example, where a literary work and its alleged infringer both describe a scene concerning heart bypass surgery to the main character, it would not be surprising, at least at a basic level of abstraction, for there to be a high degree of similarity in how that medical procedure is described. But of course, at a more detailed level there would be an almost infinite variety of ways the scene such as that could unfold and it would be these unique aspects that would be scrutinized for similarity. The merger doctrine is more practically applied in a more densely factual context where, for example, two text books are being compared as to how they teach the Pythagorean theorem or review the basics of the periodic table of the elements. Clearly, the alleged infringing work can be shielded by the merger doctrine to the extent that teaching of such topics is somewhat limited in descriptive range. That said, copying will be found if it is essentially verbatim and certainly if any accompanying tables, graphs or other pictorial matter accompanying the text is copied.

Applying the foregoing analysis logic to software as we break it down into its individual elements we see various routines or algorithms that themselves may contain sub-routines and ultimately individual lines of code. It is probably safe to say that many if not most of the routines used in any particular software program are scénes à faire in that they constitute very well known or standard techniques found in the public domain and used for many years by computer programmers to accomplish certain computational tasks. And software is typically written in one of a variety of particular languages, each being highly specific as to how the code is written and how a routine must be expressed to accomplish a particular calculation or result. Thus, much of what is contained in a software program can be eliminated on either a scénes à faire or merger basis. After that filtering process we are then left with, a residue of creative algorithms or at least a novel combination of known algorithms. So far so good, but herein lies the problem: The algorithms that make up a software program are completely functional, like gears in a transmission, and are completely devoid of, and not amenable to, artistic expression or embellishment. Therefore, being completely functional, we know that under Title 17, Sec. 102 subparagraph b, recited above, these algorithms cannot be protected under copyright law. In other words, uniquely functioning software can only be protected, if at all, under patent law. If we nevertheless find the unique part of a software program protectable as having been “copied” under the filtering procedure created for copyright law protection of artistic works, we are then improperly substituting copyright protection for patent protection. And, since copyrights can extend for decades longer than the twenty years allowed for patents, we would be providing defacto patent protection for much longer than is provided under our patent laws. More importantly, I believe this confusion about how software should be protected under patent and copyright law is preventing us from tackling the problem directly and obtaining the consistent and rational results that the software industry needs.

Possible Solutions.

Copyright Protection: The best route here is to relegate copyright infringement of software primarily to instances of verbatim copying. Where the copy is one that is almost identical then it might be possible to resort to the copyright registration deposit copy or other indicators that the software had been essentially literally copied such as by reviewing the overall similarity in any visual or auditory output in terms of any graphical user interfaces or streaming video content. If the deposit copy is not sufficient to show copying then a plaintiff should be able to discover and review, or have it independently reviewed by a court appointed expert, possibly 10% to 20% or more of the defendant’s code assuming the deposit copy is less than that percentage and/or does not demonstrate copying.

Software Patents: Some software is highly specialized and tied to the operation of a specific machine, from an MRI scanner to the engine management system in a car, and can operate from a generalized computing platform like a PC or from a highly specialized circuit board and processor environment. And such software can be designed to interact and react to human input through a monitor and a keyboard whereas other software operates autonomously receiving non-human originated inputs from sensors in the environment in which it operates. The problem with such software-based inventions has not been primarily with the software that contributes to the function and capabilities of a particular machine or device, as the utility of the machine is apparent and as the novelty of the invention generally resides in a combination of the software and the machine. The harder question is where the “physicality” of the invention resides only in the computing hardware needed to run the software and where the novelty resides essentially exclusively in the “calculations” that the software makes. Even here, most people understand the value of permitting patenting of software applications that perform complex tasks and that provide some new and useful service or capacity, such as word processing, video editing, web browsing, email management and the like.   Where the most disagreement arises is when the software in question appears to be making a series of essentially mathematical calculations relative to a body of data which calculations arrive at results that provide, for example, insights to guide future investment decisions. This type of software is often then referred to as “business method” software. In the “State Street” case the Court of Appeals for the Federal Circuit, (CAFC) found a computer implemented business method of pooling investment funds in a way that provided some economies of scale and partnership tax advantages, to be eligible for patent protection. See generally, State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998). The court decided that the invention did fall within the definition of patentable subject matter under section 101 of the patent laws because it produced a “useful, concrete and tangible result.” However, the CAFC went in a different direction in a subsequent case involving a software implemented business method for the computation of hedging risk, by finding the patent claims directed to non-patent eligible subject matter. See, In re Bilski, 545 F .3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008). In this case the CAFC relied on the “machine or transformation” test to find that the claims were not directed to patentable subject matter. The court was not clear whether a general computer would suffice for fulfilling the specific machine test, but found that the invention did not transform any article into a different state or thing. This decision was appealed to the Supreme Court where the decision of the CAFC rejecting the claims as unpatentable was upheld however on different grounds. The Supreme Court found the claims of the patent to be unpatentable as encompassing the abstract idea of hedging. See generally, Bilski v. Kappos, 130 S. Ct. 3218 (2010). However, the Supreme Court rejected any idea that the “machine or transformation” test is the sole test for determining the patent eligibility of a process and also rejected any categorical exclusion of business method patents from patent eligibility. Many commentators have also made it clear that in our “information age” we have to be forward thinking and able to adjust to any new forms of invention and not tied to the old fashioned idea that an invention must have some mechanical or physically transformative aspect or result.

Unfortunately, the foregoing cases do not provide the software industry with sufficient guidance as to when and how to apply the various tests for determining the existence or not of patentable subject matter to software-based inventions and particularly where a business method is involved. The question of software patentability for a business method is currently under review again by the US Supreme Court in a case entitled “Alice Corporation Pty. Ltd. v. CLS Bank International”. In this case the Supreme Court is not only considering whether or not a patent that covers a system and method for reducing settlement risk in financial transactions embodies patentable subject matter but is reviewing more broadly the larger question of software patent eligibility.

The business method in the Alice case has been criticized based on the idea that the computer is technically unnecessary in the sense that the calculations/manipulations of data could be accomplished by hand with a pencil and paper – at least theoretically and given sufficient time. I do not see this rationale as constituting a legitimate argument against patentability as there are many machines that have been invented over the years for the express purpose of extending what humans are capable of doing both physically and mentally. Thus, why should a software program be per se patent ineligible, especially when it provides tangible results, such as, accomplishing a complicated task more quickly and accurately? It can also be imagined that a process of human hand calculation could be so slow that results once arrived at would no longer be of any usefulness, particularly where a time constraint exists that would render those results of little or no value, i.e. the invention could not be accomplished by hand to achieve the same results. More importantly, saying that a sequence of calculations could have been performed by hand provides no insight relative to the novelty of the invention or nonobviousness thereof with respect to the various equations, the interaction thereof and/or the sequence of the calculations performed, the data used in the equations as well as the selection process for that data. Also, the exclusion under Sec. 101 of mathematical equations would be an overly broad interpretation thereof in a situation where the invention is not drawn to mere mathematical calculations but includes, as stated, a multiplicity of equations, the interactions thereof as well as the question of any data selection constraints or criteria. In other words, exclusion of software under Sec. 101 in the Alice case may constitute an unwarranted and overly broad interpretation of the court made exclusions under Sec. 101 based either on human performable mental acts or the prohibition against the patenting of mathematical equations.

Hopefully, the Supreme Court in Alice realizes the problems inherent in broadening the court made demarcations of non patentable subject matter and accepts the per se patentability of all software-based inventions, including business methods. Further support for this approach is seen in Sec. 101 itself as it is written broadly to include “any new and usefulprocess, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. Certainly, a novel and nonobvious manipulation of a body of information that produces new insights has utility. And the fact that this new information can be acted upon to improve business performance or optimize a business or other result should fit within a broad definition of a tangible result. And, as mentioned earlier, we must be always be open to new types of inventions and particularly in our current information age. Additionally, our constitution requires that we promote the progress of the sciences and the useful arts. Thus, it would seem we are obligated to err on the side of providing software patent applicants with the chance to prove that what they have invented is in fact promoting that progress. Therefore, we must narrowly construe the judicial interpretations of Sec. 101 as to what constitutes non patentable subject matter so they are not expanded to prevent patent protection for legitimate inventions.

Software Patent Examination:   Of course, if software is considered per se patentable, then we are going to need to rely on a proper novelty and obviousness analysis and the USPTO will have to ensure that task is being done properly in the first place. If we do not have a sufficient number of patent examiners to give enough time to reviewing patents in the software art area then more need to be hired. It should also be noted that more examiners could also, without impacting quality, reduce the pendency time of software patent applications which is critical in this art area due to the rapid rate at which software evolves. If there is also difficulty in retaining experienced software examiners then salary increases have to be considered as well. Of course, if examiners do not have a robust software prior art database with which to make solid novelty and obviousness determinations, then we have to find where there may be holes and see what can be done to fill them in. The examination process might also benefit from an approach where software is viewed in a more mechanical sense. Where, for example, the routines and subroutines are seen as being analogous to machine components, such as gears, ball bearings and shafts. Thus, as invention can be found with machines in the novel arrangement of known elements and/or in the use of a new element, it then follows that software novelty can reside in the unique combination of known elements, i.e. routines, and/or in the development of new routines.

In conclusion, to question the patentability of software simply because certain software-based patents have issued that should not have or because certain types of software patents appear to be clogging the courts due to very questionable behavior of certain patent owners or that software fails to meet some sort of metaphysical :”concreteness” requirement, is, I believe, to miss the point entirely. All software inventions, including business methods, have the potential for achieving results that benefit society and do so in a way that is novel and nonobvious and should not be obstructed by Sec. 101 due to other factors not the fault of the software applicant. Additionally, we need to be aware of the fact that software is used to run essentially everything in modern society, including, cell phones, automobiles, and personal computers and not to mention mission critical systems that impact our national security such as our electrical energy and communications networks. Thus, to deny or to call into question patent protection for software generally, or even for a subset thereof, would be unwise as it may hinder an industry that is critical to our technological and economic future. For these reasons I think we have to assume the per se patentability of software, rely on a good novelty and obviousness determination to prevent the issuance of software patent applications not deserving of allowance and move ahead with making any improvements that are required to our system for assessing the patentability of such technology. I think this approach will be far more productive and efficient in the long run as compared to any attempt at drawing patentability subject matter lines between various classes of software based inventions.  More importantly, to do otherwise would be to shirk our duty under the constitution to “promote the progress of Science and useful Arts” .


Sten E. Hakanson is Senior Patent Counsel for the national law firm of Foley & Mansfield. he can be reached at 612-338-8788 or via e-mail at


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Is There a Silver Lining to Patent Trolls? – Casting light on Needed Reforms

Hopefully, the current glut of patent infringement litigation initiated by so-called “Patent Trolls” will result in reforms to our patent system starting from the way in which patents are examined through the way they are litigated. Patent Trolls, a/k/a Non-Practicing Entities or Patent Assertion Entities, have been responsible for the filing of many patent infringement suits based on patents they have acquired from others, and generally on patents that are of questionable validity. These suits are taking up a disproportionate percentage of district court time and resources and many individuals and businesses are being needlessly harassed. In response, members of the House and Senate have introduced bills to address these abuses. The proposals contained in these bills can be summarized, as follows:

  1. Requiring plaintiffs’ pleadings to be specific as to their theory of infringement.
  2. Attorney Fee Liability for Losing Plaintiffs.
  3. Identification of the true party in interest.
  4. Requiring joinder and liability of the true party in interest.
  5. Eliminating liability for consumers based on their purchase and use of infringing goods.
  6. Reducing discovery costs prior to a determination of validity or a Court’s determination of the scope of the patent claim(s) in question.
  7. Mandating stay of suit pending patent office completion of post grant review.

I will address these ideas and others individually, but first I think we have to keep in mind that any changes to our patent laws will affect all litigants. If we get it right we will improve our system for patent enforcement for everyone, so that abusers of that system are identified and dealt with accordingly, and where those with legitimate claims of infringement can bring their case and have it determined in a fair, cost effective and efficient manner. In other words, we should view this onslaught of bad faith patent infringement litigation as an opportunity to review and improve our system of patent enforcement so we can better respond to those that would abuse that system. There are a number of factors we can look at to identify if a patent owner is engaging in abusive behavior, such as:

  1. They do not manufacture or sell the products or services covered by the patent(s) they claim are infringed.
  2. They did not develop the technology in question.
  3. They try to conceal the real party in interest.
  4. They have not done their due diligence as to determining the scope or validity of their patent(s).
  5. They have not performed a claim analysis demonstrating infringement through mapping the elements of their claim or claims they allege are infringed to their opponents allegedly infringing product or process
  6. Based on 4 and 5 above, their pleadings lack sufficient specificity to support their allegation of infringement.
  7. They file suit against purchasers and users of a technology rather than move against the manufacturers and sellers of the technology.
  8. They acquired their patent or patents from others at a fraction of the cost to the original owner of obtaining and maintaining those patents.
  9. They send letters to people and/or businesses requesting royalty payments in order to avoid threatened litigation.
  10. Such letters are sent to hundreds of putative defendants.
  11. The patents they allege are infringed are of dubious value/validity.
  12. They have essentially no place of business or business assets.
  13. They are rarely if ever true champions on behalf of the inventors of the patented technology.
  14. They engage in fraudulent or abusive litigation conduct.
  15. They have established over time a pattern of doing one or more of the foregoing.

There are certainly other factors that could be added to the list, but the point is that we have to be sure that we are able to identify patent owners that are actually taking advantage of the system before we mete out the punishment for the behavior that the proposed changes to our laws are intended to curb. For example, the non-practicing entity status is the least valuable indicator and that alone would not be sufficient to establish an abuse of our system for patent enforcement. (A University can be a non-practicing entity.)

In the long run it may be better to move away from the use of the word “Troll”, and especially to the extent using that term gets us too hung up on trying to define a “Troll” rather than permitting a court to look at the totality of the evidence of abusive behavior and craft a proper remedy.

Suggested statutory remedies.

Pleadings. I think pleadings in all cases, not just in patent infringement litigation, could afford to be more specific. That said, it is certainly especially important for plaintiffs prior to filing a patent suit to do their homework as the stakes and the costs are potentially so high. I do not think it is overly onerous to not only require an identification of the patent or patents allegedly infringed along with a listing of the specific claims infringed, but to also include at least one claim analysis per patent. A claim analysis lists each of the elements of a claim along with a specific identification of the comparable part or step in the defendant’s device or method. We cannot view the federal courts as comprising some casual playground for patent system abusers in which to throw out vague allegations of infringement in the hope that they can coerce payments out of an unlucky defendant before the strength of their claim is ever determined in a court of law. It may also be possible to have enhanced pleading requirements for plaintiffs that are not the inventors or the original assignee/owner of the patent. For individuals that obtain a patent “second hand” there should be the further requirement to allege in the pleadings that a recent independent prior art search was ordered and performed by a registered patent attorney and that the claims alleged to be infringed remain novel and nonobvious. The original inventors or owners of the technology can be assumed to have a better understanding of the prior art based on their development of the patented technology, their activity in the industry to which the technology pertains and/or their involvement in the filing and prosecution of the applicable patent application.

Awarding Fees and Costs. Awarding attorney’s fees to the winning infringement defendant is a good idea provided, of course, the plaintiff is deserving of that penalty, i.e. they have engaged in abusive and/or unethical behavior. Certainly, a losing plaintiff that brings a suit in good faith based on a credible theory of infringement should not pay the other side’s attorney’s fees, absent some other deceptive or fraudulent conduct. We do not want to scare infringed plaintiff’s away from enforcing their patent rights. What should be done is to permit the trial court wider discretion to entertain a motion for attorney’s fees and other costs of the litigation based on evidence establishing the existence of the abuse factors listed above along with any other conduct evidencing abusive or deceptive practices.

True Party in Interest. I have always thought that every pleading should identify the true party in interest. How can you have a fair fight if you do not know who your real opponent is? How can you conduct effective and complete discovery if the identity of the real party is withheld? I should think that requiring such transparency must be mandatory. It is impossible to dispense justice if we allow the real party to be an unnamed shell of a shell of a holding company twice removed. Some investors have complained that their joinder would be unfair, but those that stand to gain from a successful infringement suit should be identified and joined into the case.

Protecting Users. Yes, a patent does give the owner thereof the right to exclude others from making, selling and using, but I believe that an infringement plaintiff must first exhaust their actions against manufacturers and sellers. Thus, where a consumer has purchased a product they should be granted immunity from infringement suits based on their use of the product or process. Clearly, it is the manufacturer or seller that have been enriched from the profits of the sale of the patented product and they should be the one to pay any damages. The company that has their name on the product being sold is the one with primary infringement liability. Resellers and contract manufacturers may have some secondary liability to the extent they are not protected by a hold harmless agreement by the named company.

Infringement Case Procedure. One of the tricks Trolls/Patent Enforcement Abusers use, and especially when going against a large business, is to price the cost of on-going royalty payments well below discovery costs – not that hard to do. Thus, it might be better in patent infringement cases to quickly limit discovery issues to claim scope. A finding of narrow claim scope, though not necessarily ending the litigation, could go a long way to possibly encourage settlement and reduce the up-front cost of an infringement suit. Additionally, infringement defendants have the right under the America Invents Act (AIA) to request an Inter Partes Review wherein the Patent Trial and Appeal Board conducts a trial to determine the validity of the patent or patents the defendant is being accused of infringing. Currently, it is not mandatory that a federal district court stay an infringement suit pending the outcome of a parallel Inter Partes Review (IPR) proceeding. However, it would generally be an advantage to defendants being sued by an illegitimate plaintiff to have a stay issued by the district court as there would be a statistically higher chance that the patent or patents owned by such a plaintiff would be invalid and the cost of the IPR would be less than a district court proceeding. Thus, we should consider at least a provision permitting the right to request a stay where such will result in judicial economy.

Patent Application Prosecution Reforms.

Whereas, the foregoing discussion has examined what we might be able to do after the fact of the filing of a patent infringement suit, we also need to look at what can be done at the United States Patent and Trademark Office (USPTO) to reduce the number of low value patents that it issues. A first step is to make sure the USPTO retains all or at least most of the fees it collects so it can hire more examiners and can put in place a pay scale that works to reduce examiner turnover. The move towards branch offices around the country should help in this regard as it will always be easier to find sufficiently qualified applicants for a job if the job location is not limited to one metropolitan area. And, we must be cautious about denying patentability outright to software and business method patents in our zeal to disarm patent system abusers of one of their main weapons of choice. Software is critical to the operation of almost all modern technology, from cell phones to information networks and power grids, and thus plays a central role in the technological advancement of our nation. Being at the forefront technologically is critical for our country to maintain its position of economic leadership. Having a strong economy, in turn, allows us the resources to exert our influence economically around the world as well as maintain and outfit a superior military force. So, technological leadership is not only a question of prosperity but one of national security as well. Thus, it would make more sense to accept the per se patentability of software and business methods and do what is needed to provide examiners with the resources to do their job so they can make good novelty and obviousness determinations. Specifically, we need to be sure we have adequate numbers of examiners in the software art areas equipped with a comprehensive database of prior art so they each have the time and information that allows them to examine such patent applications thoroughly and accurately.

In conclusion, the patent “Troll” phenomenon has alerted us to the fact that we need to tighten up the requirements for all patent owners regarding the substance of their pleadings when alleging infringement of their patents. The courts also have to be able to better recognize when an abuse of the system is occurring and be more willing to assess penalties in terms of attorneys fees and costs where that result is warranted. Longer term we need to ensure that the USPTO has the resources it needs to do what is a very difficult job and do it well so the issuance of overly broad and invalid patents is minimized.


Sten E. Hakanson is Senior Patent Counsel for the national law firm of Foley & Mansfield. he can be reached at 612-338-8788 or via e-mail at


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Pressley Joins Foley & Mansfield as Director of Information Services and Technology

The national law firm of Foley & Mansfield today announced that Terry Pressley has recently joined the firm as its Director of Information Services and Technology.  Recognized as a CIO of the Year by the Minneapolis St. Paul Business Journal in September 2012, Terry has a demonstrated record of building and retaining high performing teams and creating synergetic partnerships and relationships with users, vendors and service providers.

Pressley joins just as the firm is preparing to undergo a massive technological transformation with the implementation of Thomson Reuters’ 3E and MatterSphere software platforms. “As the firm celebrates its 25th anniversary year, our technology team has been devoting countless hours and resources to current technology initiatives, ultimately placing our firm in a position to thrive for another 25 years,” says CEO Peter Torseth. “Terry is coming aboard to help direct and coordinate our efforts, guide us through this transformation, and identify the next series of challenges.  His attention to detail, determination, and positive perspective make him a perfect fit for our firm.”

Prior to joining Foley & Mansfield, Terry served as CIO at the law firm of Leonard, Street and Deinard, and also served in leadership roles with several other law firms including Robins, Kaplan, Miller & Ciresi and Popham, Haik.

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Oakland attorneys Andrew L. Sharp and Khaled Taqi-Eddin Earn a Non-Suit on Behalf of Calaveras Asbestos, Ltd.

Andrew L. Sharp and Khaled Taqi-Eddin successfully argued and were awarded a Non-Suit after three weeks of trial for Calaveras Asbestos, Ltd. in the Fresno County Superior Court, State of California.

Plaintiffs filed suit for the death of James Phillips arguing that Calaveras had supplied raw asbestos fiber to Johns Manville and CertainTeed for the manufacture of asbestos-containing cement pipe and that Mr. Phillips was exposed to the pipe during his work as a plumber. At the conclusion of the plaintiff’s case, Mr. Sharp and Mr. Taqi-Eddin convinced the Court that plaintiffs had failed to prove a connection between the alleged exposure and any fiber supplied by Calaveras. 

Visit this link for additional information on Foley & Mansfield’s national toxic tort practice.  Mr. Sharp and Mr. Taqi-Eddin can be reached in the Oakland, CA office of Foley & Mansfield.



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