Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 66
A good faith disagreement over that law of joint inventorship does not provide a
basis for an inequitable conduct ruling. Pet-Septive, 225 F.3d at 1320, 56 USPQ2d at
1004. Even an error in determining inventorship is not itself inequitable conduct. Pro
Mold, 75 F.3d at 1576, 37 USPQ2d at 1632. Moreover, an allegation of inequitable
conduct is not established by a mere showing that art or information having some
degree of materiality was not disclosed. FIVIC Cori). v. Manitowoc Co. Inc., 835 F.2d
1411, 1415, 5 ILISP02d 1112, 1115 (Fed. Cir. 1987). Further, a "failure to disclose"
allegation of inequitable conduct may be rebutted by "a showing that applicant's failure
to disclose art or information did not result from an intent to mislead the PTO" (id.).
3. the evidence does not show that Tabakoff acted with an intent
to deceive the PTO
There is no dispute that Tabakoff asked Nichols to make 4-urea derivatives and
that Tabakoff acknowledges that Nichols did so. We are not persuaded by Nichols'
argument that the letters from Dr. Tabakoff to Dr. Yielding (Exs 2002-2007, discussed
in § V.D.1.c. above) show by clear and convincing evidence that Tabakoff acted with an
intent to deceive the PTO. Giving Nichols credit for work it performed at the behest of
Tabakoff and offering to share ownership of future patent profits with Nichols is
insufficient to establish by clear and convincing evidence that Tabakoff believed Nichols
were joint inventors and intentionally hid this information from the PTO. It is just as
plausible that Tabakoff merely wanted to compensate Nichols for work performed at
Tabakoff s request. [Paper 34, p. 11.]
Nichols argues that deceptive intent can also be inferred from the letter of
January 17, 1997 (Ex 2005), i.e., "[w1hen ... [Nichols] informed Tabakoff that they
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