Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 44
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
he or she used the services, ideas, and aid of others in the process of
perfecting the invention. See Shatterproof Glass Corp. v. Libbey-Owens
Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed. Cir. 1985).
[However,], [t]he basic exercise of the normal skill expected of one
skilled in the art, without an inventive act, also does not make one a joint
inventor. See Sewall, 21 F.3d at 416, 30 USPQ2d at 1359.
Conception must include every feature or limitation of the claimed invention. Kridl v.
McCormick, 105 F.3d 1446, 1449, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997): Davis v.
Redd , 620 F.2d 885, 889, 205 USPQ 1065, 1069 (CCPA 1980). Inventor testimony
alone is insufficient to prove conception; some form of corroboration must be shown.
Price, 988 F.2d at 1194, 26 USPQ2d at 1036-37. Whether a putative inventors
testimony has been sufficiently corroborated is determined by a "rule of reason"
analysis, in which "[a]n evaluation of all pertinent evidence must be made so that a
sound determination of the credibility of the inventors story may be reached. Id., 988
F.2d at 1195, 26 USPQ2d at 1037.
91. Here, there is no dispute that Tabakoff (Dr. Snell) contacted Nichols (Dr. Nichols)
in December 1993 or January 1994 and asked Nichols to synthesize kynurenic acid
derivatives wherein the 4-position of the kynurenic acid was substituted with a urea
group in order to study their efficacy in treating alcohol withdrawal symptoms.'5
92. Tabakoff admits that it did not suggest any method for making the requested
compounds but denies that it did not suggest any particular type of urea group. 16
15 See Paper 45, pp. 3-4 where Tabakoff partially admits Nichols fact 5 set forth in Paper 33, p. 3.
16 See Paper 45, p. 4 where Tabakoff partially admits Nichols fact 8 set forth in Paper 33, p. 4.
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