Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 54
Therefore, the Board does have jurisdiction to consider issues of fraud and/or
inequitable conduct raised in a pending interference if they are raised by way of
preliminary motion for judgment under 37 CFR § 1.633(a) and filed during the period
set for filing preliminary motions (37 CFR § 1.636(a)). Consequently, the Board has no
jurisdiction to consider issues of fraud and/or inequitable conduct over claims not
involved in the interference, i.e., any ruling hold such claims unpatentable for
inequitable conduct would merely be an advisory opinion.
In order to convince us to exercise our discretion and hold that conduct amounts
to "inequitable conduct," a party must show that its opponent (1) made an affirmative
misrepresentation of fact or failed to disclose a fact; (2) the fact misrepresented or not
disclosed was material; and (3) the misrepresentation or failure to disclose was done
with intent to deceive or mislead the PTO. Molins PLC v. Textron, Inc., 48 F.3d 1172,
1178, 33 USPQ2d 1823, 1826 (Fed. Cir. 1995). "Materiality does not presume intent
which is a separate and essential component of inequitable conduct" (Ld.).
The party alleging inequitable conduct on the part of its opponent bears a burden
of proving its case by clear and convincing evidence. Manville Sales Corp. v.
Paramount Sys., Inc., 917 F.2d 544, 552, 16 USPQ2d 1587, 1593 (Fed. Cir. 1990);
Kingsdown, 863 F.2d at 872, 9 USPQ2d at 1389. Once the requisite levels of
materiality and intent are shown, it is necessary to determine whether the equities
warrant a conclusion that a party engaged in inequitable conduct. Molins PLC, 48 F.3d
at 1178, 33 USPQ2d at 1827 (Fed. Cir. 1995).
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