In Focus

Federal Circuit Decision Highlights Traps in Provisional Application Practice

By Milton Springut |

Milton Springut of Springut Law PC analyzes a recent Federal Circuit decision—'MPHJ Technology Investment v. Ricoh Americas'—which highlights some of the traps that can arise with provisional patent applications. He discusses the legal requirements of provisional practice, the implications of this new case, and best practices for such applications.

Scope of Estoppel Post-IPR Proceedings Becoming Clearer

By A. Antony Pfeffer and K. Patrick Herman |

A. Antony Pfeffer and K. Patrick Herman of Orrick, Herrington & Sutcliffe write: While 35 U.S.C. §315(e)(1) has been interpreted relatively narrowly, the decision in 'Verinata Health v. Ariosa Diagnostics' provides patent owners with a new avenue to argue—in certain circumstances—that an IPR petitioner should be estopped from asserting non-instituted IPR grounds in district court.

Patents for Wearable Technologies That Withstand Patentability Challenges

By Walter M. Egbert III |

Walter M. Egbert III of Foley Hoag writes: Like software-related inventions, patent claims directed to wearable technologies run the risk of being considered invalid under 35 U.S.C. §101 as being directed to patent-ineligible subject matter. Thus, practitioners should be thoughtful when claiming wearable devices that provide data gathering and analysis. This article provides some considerations for practitioners drafting claims for wearables.

What's in a Name? Trademark Law for the Family-Owned Winery

By Daniel B. Moar |

Daniel B. Moar of Goldberg Segalla writes: The propriety of using the family name as a trademark to promote a business is often taken as an article of faith. After all, if your family has operated a winery for many years, why wouldn't you be allowed to use the family name as a trademark to identify your wine? The answer lies in the Lanham Act, the federal statute that governs trademark law. As with many legal issues, there are no absolute answers as to whether a family name can be used or registered as a trademark.

Extraterritorial Jurisdiction of IP Laws: Overseas Operations May Still Create U.S. Liability

By Andrew P. MacArthur and Ralph A. Dengler |

Andrew P. MacArthur and Ralph A. Dengler of Venable discuss recent U.S. cases that have created benchmarks of patent, trademark, copyright, and trade secret liability for foreign activity. Businesses should take heed.

David A. Katz and Laura A. McIntosh

Preparing for and Responding to Shareholder Activism in 2017

By David A. Katz and Laura A. McIntosh |

In their Corporate Governance column, David A. Katz and Laura A. McIntosh of Wachtell, Lipton, Rosen & Katz write: Activist investors are taking advantage of favorable conditions in the 2017 market environment to further their activist agendas. Activists are eager to recoup losses from 2016, when the S&P 500 outperformed activist funds as a whole. Companies should review their overall preparedness, take a close look at their potential vulnerabilities to activist attack, and proactively shore up any weaknesses to the extent possible.

Anthony S. Guardino

Eligibility of Residential Developments for IDA Benefits

By Anthony S. Guardino |

In his Zoning and Land Use Planning column, Anthony Guardino discusses 'Matter of Ryan,' which upheld what has long been understood to be the rule: Residential developments are eligible to receive industrial development agency benefits.

Scott E. Mollen

Realty Law Digest

By Scott E. Mollen |

Scott E. Mollen, a partner at Herrick, Feinstein and an adjunct professor at St. John's University School of Law reviews 'Miller v. Falco,' where an unlicensed home improvement contractor was held not able to recover on claims for breach of contract, quantum meruit or unjust enrichment, and 'Estrada v. Browand,' where a tenant was restored possession of the subject apartment after the landlord's actions where held to constitute an illegal lockout.

Collaborative Divorce: A Process Option Whose Time Has Come

By Kim Ciesinski |

Kim Ciesinski of Schwartz & Ciesinski writes: The collaborative process offers an alternative answer to a growing dissatisfaction experienced by both the public and the professionals who toil in this area of the law. Through use of the collaborative process, the divorce professional and the client experience is impacted in a positive manner across the board.

Proposed Rule for NY Supreme Court May Make Arbitration Truly Confidential

By Robert Lewin and Andrew S. Lewner |

Robert Lewin and Andrew S. Lewner of Stroock & Stroock & Lavan discuss a rule proposed by the Administrative Board of the New York State Courts for the New York Supreme Court, Commercial Division. If adopted, the Proposed Rule might provide parties an avenue to maintain the confidentiality of arbitration awards in connection with confirmation or vacatur motions.

Making Diversity Happen in ADR: No More Lip Service

By Noah Hanft |

Noah Hanft of the International Institute for Conflict Prevention & Resolution writes: Diverse neutrals need experience to show quality, build their reputations and earn their selections—but, in order to gain that all important experience and develop their skills, they first need to get selected.

Mediation: A Solution for Resolving Interpersonal Conflict

By Caroline Antonacci |

Caroline Antonacci of JAMS writes: As often parties need to maintain relationships after the immediate conflict is resolved, mediation can provide the parties a framework for resolving future conflicts that may arise. Mediation should be seriously considered as the optimal forum choice for resolving interpersonal disputes.

Preparing for a Successful Mediation: It's Elementary!

By Susan Hernandez |

Presenting from a mediator's point of view, Susan Hernandez of NAM discusses a few suggestions that would serve parties well when they are preparing for a mediation.

Enforcing Foreign Arbitral Awards Against Foreign Corporations Registered to Do Business in NY

By Henry Weisburg, Christopher Ryan and Daniel Purisch |

Henry Weisburg, Christopher Ryan and Daniel Purisch of Shearman & Sterling discuss the Second Circuit's 2016 decision in 'Brown v. Lockheed Martin', which provides guidance as to how the principles established in 'Daimler' should be applied to business registration statutes and illustrates why New York courts should not be able to exercise personal jurisdiction over an award debtor solely on the basis of business registration.

John C. Coffee Jr.

The Race to the Bottom: Is the Last Stop New York?

By John C. Coffee Jr. |

In his Corporate Securities column, John C. Coffee Jr. of Columbia University Law School discusses a recent decision of the Appellate Division, First Department, writing: 'Gordon v. Verizon Communications' will ensure that the nuisance suit remains alive and well in New York and should bring the worst of the plaintiff's bar streaming back to New York. Unless the Court of Appeals reverses, New York will become celebrated as the jurisdiction of the judicial rubber stamp.

Steiner-Goldstein

Local Considerations in Jury Trial Waiver Enforcement

By Jeffrey B. Steiner and Jason R. Goldstein |

In their Financing column, Jeffrey B. Steiner and Jason R. Goldstein discuss the inclusion of pre-dispute jury waiver provisions in loan documents as a means to circumvent a trial by jury in commercial cases. They use a recent California case, 'Rincon v. CP III Rincon Towers,' to highlight the issue.

Scott E. Mollen

Realty Law Digest

By Scott E. Mollen |

Scott E. Mollen, a partner at Herrick, Feinstein and an adjunct professor at St. John's University School of Law discusses 'Rehabilitation Support Services v. Town of Esopus,' where a zoning board's finding was held not to constitute a final decision on the proposed residence at issue.

Hotel Management Agreements and Enforcement of Forum Selection Clauses

By Joshua D. Bernstein and Phillip Spinella |

Joshua D. Bernstein and Phillip Spinella of Akerman write: Hotel management agreements often contain forum selection clauses that select New York as the forum for litigation. This is so despite the fact that often neither the parties nor the hotel in question has any connection to the state. When disputes inevitably arise, the question becomes whether those forum selection clauses are enforceable and whether the doctrine of forum non conveniens applies.

When Pre-Arbitration Requirements Lead to Disputes Over Dispute Resolution Clauses

By Marisa Marinelli and Andrew Choi |

Marisa Marinelli and Andrew Choi of Holland & Knight discuss some of the key reasons why arbitration clauses end up in litigation, the effect of non-compliance with pre-arbitration requirements, and what parties should consider when drafting their dispute resolution clause to avoid this outcome.

Ajit Pai

Appointment of New FCC Chair Could Lead to Reduced TCPA Litigation

By James L. Bernard and Arjun P. Rao |

James L. Bernard and Arjun P. Rao of Stroock & Stroock & Lavan write: Year after year, litigation under the Telephone Consumer Protection Act continues to increase. The recent appointment of Ajit Pai—who dissented to two important FCC opinions that have been criticized as contributing to the onslaught of TCPA litigation—as the Chairman of the FCC, however, has the potential to reduce that volume of litigation.

'Mandatory' Arbitration of Construction Disputes Under NY's Prompt Payment Act

By Christopher A. Gorman |

Christopher A. Gorman of Abrams, Fensterman, Fensterman, Eisman, Formato, Ferrara & Wolf discuss a recent decision that interprets the Prompt Payment Act's requirement that a construction contract may not limit the parties' right to refer a dispute to arbitration. The decision sheds some light on the extent to which courts are willing to go to interpret the PPA in such a way as to ensure that an aggrieved contractor or subcontractor seeking payment can vindicate its rights to payment in as expeditious a manner as is possible.

Headquarters of the U.S. Securities and Exchange Commission in Washington D.C.

Challenges to SEC Administrative Proceedings Echo Complaints Against Arbitration

By Carrie H. Cohen |

Carrie H. Cohen of Morrison & Foerster writes: As the challenges to SEC administrative proceedings continue, expect those challenges increasingly to include the due process arguments that consumers and employees have made against arbitration agreements.

Philip Berkowitz

Trade Secrets and Whistleblower Disclosures

By Philip Berkowitz |

In his Employment Issues column, Philip Berkowitz discusses the recent whistleblower case 'Erhart v. BofI Holding', writing that 'Erhart' does not represent an isolated occurrence. Banks and indeed all businesses must anticipate that a whistleblower may disclose highly confidential and even privileged records to an enforcement agency or third party. These disclosures, if carried out in good faith and in the reasonable pursuit of a legal claim, are likely to be held to be fully lawful.

Kenneth M. Block and Joshua M. Levy

Recurring Issues With Contract Indemnities

By Kenneth M. Block and Joshua M. Levy |

In their Construction Law column, Kenneth M. Block and Joshua M. Levy discuss two common misconceptions with regard to construction contract indemnities.

Scott E. Mollen

Realty Law Digest

By Scott E. Mollen |

Scott E. Mollen, a partner at Herrick, Feinstein and an adjunct professor at St. John's University School of Law reviews “11-01 36 Avenue v. Quamar,” dealing with time-of-essence letters, and “Roger Morris Apt. v. Varela,” where a factual dispute barred summary judgment.

Privacy and Cybersecurity: A Rendezvous in Data Breaches

By Anahita Thoms and Peter Jaffe |

Anahita Thoms and Peter Jaffe of Freshfields Bruckhaus Deringer look at both cybersecurity requirements and breach notification rules, comparing U.S. laws with the key European Union laws. They focus on the requirements for data controllers because almost every company is a data controller, even if only because it handles its own employees' data.

Insurance Challenges Ahead as Cyber Perils Shift

By Joshua Gold |

Joshua Gold of Anderson Kill P.C. writes: The landscape of insurance coverage for technology risk alters as fast as the risk itself—that is, constantly and dramatically. Today's conventional wisdom can become obsolete in a heartbeat. Sound risk management will continue to require close monitoring of the situation, smart decision making and adaptability.

A Meeting of the Minds: Emerging Regulation and the Convergence of Cyber and Fraud

By Joseph Nocera and Douglas B. Bloom |

Joseph Nocera and Douglas B. Bloom of PwC discuss new regulatory developments, writing that these new rules will require organizations to enhance many aspects of their cybersecurity programs. However, the combination of incident reporting requirements from both FinCEN's advisory and DFS's Part 500 demands a level of convergence between financial fraud and cyber controls in the banking industry heretofore unseen.

Do Mitigation Efforts Give Plaintiffs a Right to Sue in Data Breach Cases?

By Seth D. Rothman and Dennis S. Klein |

Seth D. Rothman and Dennis S. Klein of Hughes Hubbard & Reed write: Imagine that your credit card information is stolen in a data breach. Do you have standing to sue the company where the data breach occurred? Most courts would say "no," not unless the hackers misuse your information and you incur fraudulent charges. But if there is a substantial risk that this may happen and you take steps to prevent it, you may be able to recover your mitigation costs.

Regulatory Oversight of Third-Party Arrangements: Who's Writing the Contract?

By John Kennedy, Michelle DeBarge and Timothy Wright |

John Kennedy, Michelle DeBarge and Timothy Wright of Wiggin and Dana write: Responding to the growing recognition of "third-party risk," regulators are sharpening their focus on how businesses manage third-party providers, to the point of mandating (or at least strongly encouraging) specific types of terms in contracts with parties that access or manage a company's systems or data. Regulators are further extending their reach by mandating cybersecurity policy content and certain risk management practices for third-party provider arrangements.

Cybersecurity for Law Firms: Business Imperatives Update 2017

By Kenneth N. Rashbaum |

Following the maxim that it's better to light a candle than to curse the darkness, Kenneth N. Rashbaum of Barton LLP suggests practices for law firms to mitigate cybersecurity risks.

William F. Johnson

FIFA Judge Rejects Target-Victim Common Interest Agreement

By William F. Johnson |

In his Corporate Crime column, William F. Johnson discusses the recent high-profile FIFA soccer corruption case in the Eastern District of New York, which serves as a reminder of the protections and the dangers of communications pursuant to a "common interest."

Warren A. Estis and Jeffrey Turkel

Commercial to Residential Substantial Rehabilitation

By Warren A. Estis and Jeffrey Turkel |

In their Rent Regulation column, Warren A. Estis and Jeffrey Turkel discuss the topic of "substantial rehabilitation" and look at whether units converted from commercial to residential use are exempt from "stabilization per se."

Scott E. Mollen

Realty Law Digest

By Scott E. Mollen |

Scott E. Mollen, a partner at Herrick, Feinstein and an adjunct professor at St. John's University School of Law discusses 'Klyczek v. Shannon', a civil rights case dealing with discrimination and the definition of "single-family house" under the Fair Housing Act.

SEC Whistleblower Program Experiences Historic Year

By Julia M. Jordan |

Julia M. Jordan of Sullivan & Cromwell writes: The U.S. Securities and Exchange Commission's 2016 Annual Report on its Dodd-Frank Whistleblower Program reflects that 2016 was historic for the program, both in terms of whistleblower activity and enforcement of whistleblower protections.

Where There's Smoke: N.Y. Companies Should Re-examine Marijuana Policies

By Kathryn Barcroft |

Kathryn Barcroft, special counsel for Cohen & Gresser, writes: With the growing trend toward legalization of marijuana for both medical and recreational purposes, New York companies should carefully evaluate their workplace policies to adhere to the latest legal developments impacting employees.

Increasing State and Local Government Activism Creates Compliance Minefield

By James Holahan and Theresa Rusnak |

James Holahan and Theresa Rusnak of Bond, Schoeneck & King discuss the likely acceleration of state and local regulation and the complexities of devising and administering sound human resource policies across multiple states and municipalities. This challenge will not get any easier as the transition of power continues across the federal government.

Workplace Analytics and the Law: What Today's Practitioner Needs to Know

By Eric J. Felsberg |

Eric J. Felsberg of Jackson Lewis writes: Employers are increasingly using workplace analytics to help streamline their employment processes. Designed and deployed properly, workplace analytics can be a very effective tool for managing the workplace, helping companies optimize their personnel processes resulting in saved time, money, and resources. But before embarking on a workplace analytics initiative, employers must ensure that it is appropriately designed and in compliance with applicable law.

An Employment Policy Is Only Good if the Company Enforces It

By Jonathan Meer |

Jonathan Meer of Wilson Elser Moskowitz Edelman & Dicker writes: In cases where there is a variance on how an employer enforces its own policies, questions of fact can be raised that create more challenges for an employer's defense. Attorneys involved in employment disputes understand that how policies are enforced can make a difference if employment litigation arises in the future.

Litigating Against a Former Employer for Additional Compensation

By Jennifer B. Zourigui |

Jennifer B. Zourigui of Ingram Yuzek Gainen Carroll & Bertolotti presents four topics to discuss with a former employee before commencing litigation: Analyzing and weighing the merits of the claim; realistically considering the costs of an individual litigating against a company; discussing how emails, texts, and social media may be discoverable; and understanding that skeletons in the work closet will come out.