Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 51
For the above reasons, Nichols preliminary motion 1 is denied.19
V. Deferred Nichols preliminary motion 2
Pursuant to 37 CFR § 1.633(a), Nichols moves for judgment that Tabakoff
compound claims 11-15, 18 and 19 are unpatentable due to inequitable conduct on the
ground that Tabakoff intentionally withheld material information of inventorship with
intent to deceive the PTO (Paper 34). Tabakoff opposes (Paper 46); Nichols replies
(Paper 51).
A. Jurisdiction
Tabakoff argues that the Board has no subject matter jurisdiction on matters of
inequitable conduct, "[i]n view of the recent decision in PerSeptive Biosystems, Inc. v.
Pharmacia Biotech, Inc., 225 F.3d 1315, 56 USPQ2d 1001 (Fed. Cir. 2000)
inequitable conduct is entirely equitable in nature... ") (Paper 46, p. 7).
First, there is nothing surprising in this statement as the very phrase "inequitable
conduct" conveys an equitable nature. Second, the CAFC has long held that the issue
of inequitable conduct is equitable, not legal, in nature. Kingsdown Medical Consultants,
Ltd. v. Hollister Inc., 863 F.2d 867, 876, 9 USPQ2d 1384, 1392 (Fed. Cir. 1988) (en
banc), cert. denied, 490 U.S. 1067 (1989). Third, according to the plain language of 37
CFR § 1.56(a) ("...no patent will be granted on an application in connection with which
fraud on the Office was practiced or attempted or the duty of disclosure was violated
through bad faith or intentional misconduct..."), the PTO can consider fraud and
19 The issue of whether Nichols compound claims 1-28 are unpatentable under 35 U.S.C. § 102(f)
for failure to name party Tabakoff as joint inventors thereof is not before us and we decline to take up the
matter sua spont .
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