Interference No. 104,522 Paper 108
Nichols v. Tabakoff Page 43
C. Conclusion
We hold that Nichols fails to prove an actual reduction to practice of the invention
of the Count prior to Tabakoff's effective filing date of June 6, 1997. We also hold that
Nichols has not proved derivation of the subject matter of the Count by Tabakoff.
IV. Deferred Nichols preliminary motion 114
Pursuant to 37 CFR § 1.633(a), Nichols seeks judgment that involved Tabakoff
claims 11 -15, 18 and 19 are unpatentable under 35 U.S.C. § 102(f) for failure to name
Nichols as joint inventors (Paper 33). Tabakoff opposes (Paper 45); Nichols replies
(Paper 50).
In Fina Oil and Chemical Co. v. Ewen, 123 F.3d 1466, 1473, 43 USPQ2d 1935,
1941 (Fed. Cir. 1997), our appellate reviewing court said
Conception is the touchstone to determining inventorship. See
Sewall v. Walters, 21 F.3d 411, 415, 30 USPQ2d 1356, 1358 (Fed. Cir.
1994). Conception of a chemical substance requires knowledge of both
the specific chemical structure of the compound and an operative method
of making it. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223,
1229, 32 USPQ2d 1915, 1921 (Fed. Cir. 1994).
- [A] joint inventor must contribute in some significant manner to the
conception of the invention. See Pro-Mold & Too] Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1575, 37 USPQ2d 1626, 1632 (Fed. Cir.
1996) (citing Sewall, 21 F.3d at 415, 30 USP02d at 1358-59). As such,
"each inventor must contribute to the joint arrival at a definite and
permanent idea of the invention as it will be used in practice." Burroughs
Wellcome, 40 F.3d at 1229, 32 USPQ2d at 1921.
If a person supplies the required quantum of inventive contribution,
that person does not lose his or her status as a joint inventor just because
14 In NICHOLS RESPONSE TO TABAKOFF PROPOSED FINDINGS OF FACT (p. 2, response
to Tabakoff fact no. 16), Nichols confirrned that "Junior Party Nichols filed its Principal Brief on the issues
of priority, derivation, and inequitable conduct (see Nichols Principal Brief)."
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