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Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 58
the compounds you [Nichols] have already synthesized" (Ex 2002, T 2). Dr. Tabakoff
asked Dr. Yielding to consider:
If compounds synthesized by you, or others in your company, prove
through our research efforts to be efficacious in managing central nervous
system hyperexcitability syndromes and have characteristics (i.e.,
bioavailability, appropriate therapeutic index, acceptable long-term
toxicities, etc.) to be patented, you and/or your company and Lohocla
Research Corporation would share, proportionately, in the patent. I would
suggest that patents would be assigned, usually in a 50% / 50% ratio to
your company and to Lohocla Research Corporation, respectively, ...
unless one company or the other, committed a much more extensive
amount of fiscal resources, time, and effort to the work necessary to
patent the compound or to otherwise commercialize the compound. ... [Ex
2002, 13.]
105. In its principal brief, Nichols asserts that this letter (Ex 2002) shows that "Dr.
Tabakoff clearly believed that the Junior Party had a claim of ownership to the twelve
compounds that had already been synthesized and proposed that ownership of the
patent would be based on the Junior Party's contribution of compounds and the Senior
Party's contribution of methodology for managing central nervous system [CNS]
hyperexcitability syndromes with the compounds" (NB, p. 48).
First, as stated in Sewall, 21 F.3d at 417, 30 USPQ2d at 1360,
It is elementary that inventorship and ownership are separate
issues. ... [I]nventorship is a question of who actually invented the subject
matter claimed in a patent. Ownership, however, is a question of who
owns legal title to the subject matter claimed in a patent, patents having
the attributes of personal property.
...Who ultimately possesses ownership rights in that subject matter
has no bearing whatsoever on the question of who actually invented that
subject matter. [Citations omitted.] Beech Aircraft Cori). v. EDO Corp.,
990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1983).
Second, Tabakoff did not acknowledge that synthesis of the claimed compounds
was not within ordinary skill in the art or that Nichols was the only one with an operable
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