LJN Newsletters

The right of first refusal ('ROFR') and its close cousin, the right of first offer ('ROFO'), collectively sometimes called pre-emptive rights, are devices used to afford the grantee a degree of flexibility in potentially buying or leasing the subject property at a future time. These rights can be considerably more troublesome, especially to grantors, than may be immediately apparent to many real estate deal makers. Many who have been 'burned' recognize that the problems include: 1) financial loss and delay in completing a transaction that arise from dampened interest in the subject property on the part of third-party potential bidders, and 2) disputes (sometimes resulting in litigation) that arise from issues surrounding the triggering, execution, and preservation of the right. This article focuses on the second problem, with special emphasis on disputes that revolve around the triggering of the pre-emptive rights. It also suggests certain drafting implications that follow from the analysis.

In divorce situations, nothing -- not even the question of who gets the house -- can compare to the importance of the question of how custody of the children will be worked out. Some lucky families will be able to work together toward the optimum solution for all concerned, with a willingness to be flexible that will keep the arrangement working smoothly for years. Other parents, however, will be at odds, due to real concerns for the children and the parents' relationship with them, or even from sheer animosity toward one another. In this special issue focusing on custody, we look at the some things all parents in custody battles should consider as well as some things that will affect only a smaller percentage of parents.

Over the years, I have helped prepare many parents to testify in custody matters. In that time, I have discovered crucial areas of preparation that will help produce a competent and confident witness. Parents need guidance on: 1) attitude; 2) behavior; and 3) basic custody topics they should be prepared to discuss. Most lawyers manage to include parts of these three areas when preparing their clients for trial, but frequently, the approach is scattered. The instructions are fine as far as they go, but there are holes in the preparation that, if stumbled into, will certainly trip up and unnerve a witness. School your client on the following elements of testimony and the chances of a favorable outcome will be greatly increased.

When resolving custody issues between international parents, counsel should address the issue of international travel and should use their best efforts to prevent international parental child abduction. In my practice, I assist attorneys and clients around the world to prevent children from being abducted overseas and to seek their return if they have been abducted. Preventing child abduction is obviously far better than trying to recover abducted children from countries that do not recognize an obligation to reunite families. Unfortunately, clients often seek help too late, lawyers often do not recognize the severity of the situation or do not know what steps to take, and judges often fall back on concepts such as international comity to justify a refusal to issue the necessary orders.

Representing the non-biological parent in a custody dispute today is an uphill struggle. There are only three classes of people under New York statutory law who may seek custody of or visitation with children: parents, siblings, and grandparents (DRL '' 70-72). All others have no standing. And under current case law, biological strangers are legal strangers.

While most trademark practitioners are prepared to handle an initial refusal to register a mark from the U.S. Patent and Trademark Office ("PTO") based on likelihood of confusion or descriptiveness grounds, many are considerably less comfortable responding to refusals in which the PTO challenges whether a particular mark even qualifies for trademark status. Such refusals are often based on genericness, ornamentation, or functionality grounds. Strategies for overcoming such refusals are discussed in detail below.

In a decision that is certain to impact both patent prosecution and patent litigation strategies, the U.S. Court of Appeals for the Federal Circuit recently ruled that the literal scope of claims reciting time-dependent claim terms is limited to the technologies existing at the time of the invention. See PC Connector Solutions LLC v. Smartdisk Corp., 406 F.3d 1359 (Fed. Cir. 2005). Further, the court stated that such claims would not be infringed by later arising technology even under the doctrine of equivalents. This case, in combination with the Federal Circuit's earlier decision in Kopykake Enterprises, Inc. v. The Lucks Company, 264 F.3d 1377 (Fed. Cir. 2001), demonstrates that patent practitioners must be extremely careful when using words such as "conventional," "normal," "standard" or "traditional" in the claims or in specification definitions of claim terms. On the other hand, those accused of infringement should argue for the inclusion of such terms during claim construction, particularly when the accused device comprises technology developed after the invention date of the patent-in-suit.

Pharmaceutical companies have had some success extending the lives of their patent portfolios by obtaining patents that claim the combination of a known drug, a container for holding it, and a label providing instructions for a new use of the drug. These "drug labeling patents" have given such companies a leg up in their ongoing battle with generic drug manufacturers. However, a little-noticed judicial decision handed down by the Court of Appeals for the Federal Circuit ("Federal Circuit") has cast serious doubt over whether drug labeling claims constitute patentable subject matter.