Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 60
further work on your compounds could certainly be influenced by these patents" (Ex
2003).
This acknowledges a fact not in dispute, i.e., that Nichols synthesized the
compounds "we [Nichols and Tabakoff] have been discussing, and initially testing" (id.).
Therefore, the letter of February 28, 1996 is not inconsistent with a good faith
disagreement over joint inventorship of Tabakoff s claimed compounds.
iii. the letter of August 16, 1996 (Ex 2004)
107. In the letter dated August 16, 1996, Dr. Tabakoff expressed concern about a
possible "divergent understanding" developing with Dr. Yielding, i.e.,
Your [August 9th] letter contained some verbiage which generated in me
[Dr. Tabakoff] the desire to follow up on the telephone conversation in
which I discussed with you my origination of the idea to have synthesized
the compounds which we are now studying. ... As mentioned in our earlier
correspondence and conversation, I have no problem acknowledging the
importance of Al's synthetic skills and I hope that agreements between us
will give you and Al the proper credit and reward for your contributions.
[Ex 2004, 11.]
108. Dr. Tabakoff also hoped that Drs. Yielding and Nichols could "be our guests in
Denver so that we can review the Phase 11 application and discuss further activities with
regard to the compounds already available and other collaborative possibilities
discussed in our telephone conversations (e.g.: other Phase I applications originating
from your laboratories)" (Ex 2004, ý 2).
Although this letter (Ex 2004) suggests tension is brewing between the parties, it
does not contain any acknowledgment by Dr. Tabakoff that Nichols is a joint inventor of
Tabakoffs compounds. Rather, Tabakoff clearly claims inventorship of the
"compounds we are now studying." Tabakoff does not allege that it is a joint inventor of
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