Interference No. 104,522 Paper108
Nichols v. TabaKoff Page 64
d. whether Nichols invented a separately patentable
method for synthesizing 4-urea derivatives of kynurenic
acids is not at issue in this interference
In its principal reply brief, Nichols argues that "it is still clear from these letters
(i.e., Exs 2004-2007] that Dr. Tabakoff believed Party Nichols to be an inventor of at
least the synthetic method for making the compounds" (NRB, pp. 19-20). Tabakoff has
not alleged that it is an inventor of the method Nichols allegedly used to synthesize
Tabakoff's claimed compounds. Indeed, in our prior MEMORANDUM OPINION and
ORDER, we found that Nichols had not established that uninvolved Tabakoff method of
synthesis claims 16-17 are the same patentable invention as uninvolved Nichols
synthesis method reissue claims 29-42 (Paper 56, pp. 28-31).
Further, for the reasons discussed above in § III.B.1 b. Nichols fails to establish
that synthesis of Tabakoffs claimed compounds would have required undue
experimentation, i.e., was not within ordinary skill in the art. We take no position on
whether the method Nichols allegedly used to synthesize Tabakofrs claimed
compounds is itself patentable. Suffice to say the patentability of Nichols two-step
synthesis method is not at issue in this interference.
e. summary
In summary, a good faith disagreement over the inventorship of Tabakofrs
claimed compounds does not provide a basis for an inequitable conduct ruling.
PerSeptive, 225 F.3d at 1321, 56 USPQ2d at 1005. Even an error in determining
inventorship is not by itself inequitable conduct. Pro-Mold, 75 F.3d at 1576, 37
USPQ2d at 1632. Nichols has not proved that its synthesis method, which it performed
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