Mark E. McGrath

Associate

Overview
Experience
Articles

Mr. McGrath is an associate in the Business Trial Practice Group and the Intellectual Property Practice Group in the firm's New York office.

Areas of Practice

Mr. McGrath focuses his practice on commercial and complex securities litigation. He has particular experience in the areas of securities litigation, corporate trust litigation, distribution and regulatory actions, director and officer liability, bankruptcy litigation, patent infringement, trademark infringement, unfair competition and false advertising. Mr. McGrath also conducts investigations on behalf of debtors' and creditors' committees.

Mr. McGrath advises and counsels clients on numerous intellectual property issues including the establishment and exploitation of their intellectual property portfolios. His counseling experience extends to the areas of advertising, licensing and copyright as well as issues relating to Internet websites. Mr. McGrath also assists clients with intellectual property due diligence in connection with potential transactions.

Mr. McGrath also advises, counsels and represents clients in transactional and litigation matters that involve numerous legal and regulatory issues applicable to the alcohol industry. His counseling experience includes negotiating distribution and licensing agreements, advising on advertising issues, and the three tier system.

Education

J.D., Fordham University School of Law, 1999, Editor-in-Chief, Fordham Intellectual Property, Media & Entertainment Law Journal, 1998-99
B.A., University of Notre Dame, 1994

Admissions

New York
Connecticut
United States Court of Appeals – Second Circuit
United States Court of Appeals – Federal Circuit
United States District Court for the Southern District of New York
United States District Court for the Eastern District of New York
United States District Court for the Western District of New York

Part of a litigation team that won a four-month jury trial for an established Japan-based trading company that was alleged to have violated the antitrust laws. The jury deliberated for just five hours before returning a unanimous verdict.
Part of a litigation team representing JPMorgan Chase in $2.1 billion lawsuit against 11 insurance companies relating to surety bonds on commodities transactions with Enron. Conducted extensive discovery and motion practice. Drafted successful motions to strike defendants' affirmative defenses and counterclaims and preclude defendants from introducing any materials from Congressional hearings. A favorable settlement for client was reached during jury deliberations.
Obtained control of millions of dollars in art collateral on behalf of a credit opportunity fund after an evidentiary hearing.
Represented a lender in a litigation against a borrower during which the court granted the lender's ex parte application for an order of attachment.
Represented a brewer in a litigation regarding its termination of a distributor distributors for fraud. A favorable result for the brewer was reached before a hearing on the distributor's motion for a temporary restraining order.
Represented a brewer in a litigation resulting from its enactment on a regional consolidation policy.
Assisted in the representation of an indenture trustee in a suit by a holder of a subordinate note claiming that the liquidation of a collateralized bond fund was improper. The court granted the trustee's motion to dismiss the tort claims then granted summary judgment in favor of the trustee. The action was subsequently dismissed with prejudice.
Assisted in the representation of an indenture trustee in suit by a holder of a subordinate note against indenture trustee. The court granted the indenture trustee's motion to stay the case pending an arbitration between the plaintiff and other defendants, then subsequently granted the indenture trustee's motion to dismiss.
Member of the defense team for an indenture trustee in a suit by a former collateral manager of a fund against its issuers and trustee. After discovery, negotiated settlement which required no monetary payment by the trustee.
Assisted in the representation of a fiscal agent in a suit by former holders of a foreign corporation's notes. Successfully opposed motion to amend and won motion to compel production of documents and testimony that a party claimed were privileged. After taking the depositions of the parties and third parties, the case was settled without the fiscal agent disbursing any money.
Defended a sports memorabilia manufacturer in a coverage dispute with its insurance carrier. A settlement was reached during court-ordered mediation.
Assisted in the representation of the Post-Effective Committee of Unsecured Creditors of a retail company in the investigation and potential prosecution of claims against the former directors of the debtors. Obtained a pre-complaint settlement that increased the creditor recovery ten-fold
Assisted in the representation of the Official Committee of Unsecured Creditors of a satellite company in the investigation of claims against the non-debtor parent company and the debtors' former officers and directors.
Represented an ad hoc committee of bondholders in a dispute with the issuer over the payment of a make-whole premium. The matter was resolved favorably for the bondholders before evidentiary hearings commenced.
Assisted in the successful defense of a patent infringement suit. Following Markman ruling construing claims in client's favor, summary judgment motion granted dismissing suit.
Assisted in the defense of an on-line behavioral targeting advertising network against patent infringement claims. The case was dismissed before Markman briefing.
Assisted in the defense of a manufacturer of packaging machinery against patent infringement claims. A global settlement was negotiated after Markman briefing and argument.
Member of the litigation team that obtained an emergency stay from the Federal Circuit followed by a judgment vacating preliminary injunction in a patent infringement suit involving the design of a turbocharger.
Advised a large software developer in a dispute with a customer over unauthorized use. A settlement was reached before a complaint was filed.
Defended a sports memorabilia manufacturer in trade dress infringement suit. A settlement was entered upon conclusion of discovery and hearing on cross-motions for summary judgment.
Represented a plaintiff in trademark infringement, unfair competition and false advertising action against former U.S. distributor. Following a motion for preliminary injunction, the defendant changed name, packaging trade dress and advertising claims.
Defended a national restaurant operator against trademark infringement claims made by a former partner. A settlement was entered into following denial of plaintiff's motion for a temporary restraining order and obtaining expedited discovery from plaintiff.
Participated in the successful defense of an unfair competition suit which resulted in a judgment for defendants at bench trial.
Assisted in obtaining optimal settlement for defense following depositions of inventors in a patent infringement suit.

Articles

"Virtual Contacts and Personal Jurisdiction: The Next Frontier" New York Law Journal, June 16, 2009
"Search Functions and Marketing: Be Careful Where You Click," SES Magazine, May 2009.
"E-Contacts and New York's Long-Arm Statute," New York Law Journal, April 7, 2008.
"Think Remote, Electronic Contacts Will Keep Jurisdiction Away?," New York Law Journal, June 18, 2007.

New York Commercial Division Round-Up Blog Articles