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Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 65
as a service to Tabakoff, constituted conception of the claimed compounds, i.e., that
Tabakoff could not have synthesized the compounds without Nichols. The proffered
evidence does not show the Tabakoff ever represented or acquiesced to inventorship of
its claimed compounds by Nichols. Even if Tabakoff believed that Nichols had a claim
of ownership to the compounds of Tabakoff claims 11-15, 18 and 19, ownership is a
separate issue from inventorship." Moreover, the letters discussed above suggest that
Tabakoff made several offers to share ownership of any profits due to patenting of its
claimed compounds with Nichols. A determination of inequitable conduct cannot be
based on drawing inferences from inferences from inferences.
2. Tabakofrs "familiarity with the facts" did not mandate a
disclosure to the PTO.
Nichols contends that Tabakoff had a duty to disclose "any information that
establishes a prima facie case ... [Tabakoff] did not name the correct inventors in the
[Tabakoff '697] application" (Paper 34, p. 9), even if Tabakoff genuinely believed that
Nichols were not joint inventors (id., p. 11). According to Nichols, this information was
that (1) Nichols independently conceived the allegedly novel method of synthesizing the
compounds of this interference, (2) which led to the development of compounds having
additional chemical groups attached to the urea substituent, all (3) without input from
Tabakoff (id., pp. 9-10).
20 We note that in its principal brief Nichols argued that "[i]t is therefore a reasonable inference
that the Senior Party did not disclose the Junior Party's claim of ownership to the USPTO to intentionally
deceive the USPTO into issuing a patent to the Senior Party so that the Senior Party would have exclusive
ownership of a potentially valuable pharmaceutical patent" (NB, pp. 25 and 50).
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