Interference No. 104,522 Paper 108
Nichols v. Tabakoff Page 30
"The issue of derivation is one of fact and the party asserting derivation has the
burden of proof... . Derivation is shown by a prior, complete conception of the claimed
subject matter and communication of the complete conception to the party charged with
the derivation." Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA
1974). In Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1578, 42
USPQ2d 1378, 1383 (Fed. Cir. 1997), the court held that the "correct standard" for
derivation is 'Whether the communication enabled one of ordinary skill in the art to
make the patented invention."
Nichols contends that Tabakofrs request to Dr. Nichols to synthesize a 4-urea
kynurenic acid derivative was simply a research plan because Tabakoff did not suggest
a specific chemical structure for the derivative or a synthesis method therefor. Nichols
alleges that "extensive" research was required to obtain an operable synthesis method.
[NB, pp. 28-30.) Nichols relies on a March 23, 1994 experiment recorded in Dr. Nichols'
lab notebook (Ex 2020) to show complete conception, i.e., "knowledge of both the
specific chemical structure of the compound and an operative method of making it" (id.,
p. 32). Nichols further contends that it communicated that information to Tabakoff as
shown in letters and e-mails from Tabakoff acknowledging Nichols as "the entity
responsible for the synthesis of these compounds" (id., p. 25).
Tabakoff argues that none of the evidence shows that Nichols knew of or had
made any 4-urea kynurenic acid derivatives before Dr. Snell requested Dr. Nichols to
make such compounds. Tabakoff further argues that Dr. Snell sent scientific
publications to Dr. Nichols on the synthesis of similar types of prior art compounds.
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