Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 2
Snell and Paula L. Hoffman (Tabakoff). The involved subject matter relates to 4-urea
(i.e., 4-ureido) derivatives of kynurenic acid, a class of antagonists of N-methyl-D
aspartate (NMDA) receptors in the brain, useful for treating conditions involving
overstimulation of NMDA receptors, e.g., alcohol or drug withdrawal symptoms or
epilepsy (Ex 2009, ccs. 1-2; Ex 2011, pp. 7-9).
There is no disagreement that Tabakoff asked Nichols to synthesize 4-urea
derivatives of kynurenic acid ("4-urea derivatives") in order to study their efficacy in
treating alcohol withdrawal symptoms or that Nichols performed synthetic activities as a
result of Tabakoffs request. The disagreement is over the nature of the collaborative
relationship between the two parties. Tabakoff contends that Nichols performed routine
synthetic activities on its behalf, while Nichols argues that those activities rose to the
level of inventorship because Tabakoff did not suggest any specific (i.e., disubstituted)
4-urea derivative or synthesis method therefor. Nichols further argues that after
"extensive" experimentation it actually reduced the invention to practice before
Tabakoffs effective filing date and provided Tabakoff with detailed -information
regarding the design and synthesis of the 4-urea derivatives. Nichols still further argues
that Tabakoffs failure to list Nichols as joint inventors of Tabakoffs claims amounts to
inequitable conduct before the U.S. Patent and Trademark Office (PTO). According to
Tabakoff, Nichols' patent violates the best mode requirement by failing to disclose fully
details of Nichols' synthesis method (e.g., order of addition of reagents, stoichiometry of
the reaction, and isolation and purification of the claimed compounds).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007