Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 55
In our opinion, there is no inequitable conduct because Nichols fails to prove by
even a preponderance of the evidence, let alone by clear and convincing evidence, that
Tabakoff believed Nichols to be joint inventor of its involved claims and withheld this
information with intent to deceive the PTO. Thus, Nichols' inequitable conduct
argument fails.
B. Nichols' inequitable conduct argument
Nichols contends that Tabakoff admitted Nichols (Drs. Nichols and Yielding)
were co-inventors of Tabakoff's invention in a series of letters (Exs 2002-2007) from Dr.
Tabakoff to Dr. Yielding which allegedly recognized the "significant" value of Nichols'
contribution and offered to share patent revenues and ownership with Nichols. Nichols
further contends that even if Tabakoff genuinely believed that Nichols were not joint
inventors, Tabakoff's familiarity with the facts mandated disclosure to the PTO. [Paper
34, pp. 11-12; Paper 51, pp. 1 and 4-5.]
This last argument is somewhat surprising insofar as Nichols agrees with
Tabakoff s opposition position, i.e., "Party Tabakoff correctly notes that a good faith
disagreement over joint inventorship or an error in determining inventorship does not
provide a basis for inequitable conduct" (NRB, p. 19).
C. Tabalkoffs counter argument
Tabakoff argues that Nichols cannot be inventors of a compound they did not
conceive and that the synthesis scheme allegedly used by Nichols to make the
requested compounds was well within ordinary skill in the art. According to Tabakoff, a
good faith disagreement over the law of joint inventorship vis-a-vis its compounds does
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