Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 67
intended to file a patent application directed towards the compounds, Tabakoff claimed
that he should be included on the application, but never claimed Nichols and Yielding
were not inventors" (Paper 34, p. 11). As discussed above (§ V.D.1. civ), whatever
Nichols might have been planning to submit a patent application on, e.g., ureido
substituted kynurenates, a method of synthesis thereof, a method of use therefore, etc.,
Tabakoff affirmatively claimed inventorship of at least the compounds. Rather, the
letter of April 17, 1997 (Ex 2007) discussed above (§ V.D.1.c.vi.) suggested that
Tabakoff believed a joint patent application with Nichols claiming ureido substituted
kynurenates, a method of use and a method of synthesis thereof was possible. Nichols
would have us infer that the Nichols' proposed application would claim only ureido
substituted kynurenates and then make a second inference therefrom based on
silence. A determination of inequitable conduct cannot be based on drawing inferences
from inferences from inferences. Moreover, since we have concluded that Nichols is
not a joint inventor of Tabakoffs claimed compounds, Dr. Nichols having synthesized
these compounds was not material to any issue of patentability in this case.
Nichols would also have us infer deceptive intent on the part of Tabakoff
because Tabakoff filed a patent application without naming Nichols as joint inventors
after Nichols declined Tabakofrs "partnership offer" (Paper 34, pı 11; Paper 51, p. 7).
Nichols further argues that Tabakoff may not have gotten its federal SBIR grant if NIH
had known that Nichols "had a claim of ownership of the compounds claimed in the
Tabakoff patent application" (id., p. 12). As stated above, ownership is a separate
issue from inventorship.
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