Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 68
Nichols points out that Tabakoff "published a technical journal article [Snell et
al .2 '] relating to the compounds and their use, all without including the Junior Party.
(Exh. 2008)" (Paper 34, p. 12). Nichols has not explained how Snell et al. (Ex 2008)
shows that Tabakoff acknowledged Nichols as joint inventors, e.g., where Nichols'
synthesis is described and/or stated to be the only operative synthesis. Snell et al. (Ex
2008) is not inconsistent with Tabakoffs position that Nichols is not a joint inventor.
4. it is Nichols' burden to establish inequitable conduct by clear
and convincing evidence
Nichols faults Tabakoff for not offering "a single shred of factual evidence
relating to the subjective intent of the inventors during prosecution of the patent" (Paper
51, pp. 7-8). In its principal reply brief, Nichols notes that its requested discovery to
obtain evidence relative to the issue of inequitable conduct was denied (NRB, p. 20).
VI. The discussion in the ORDER DENYING NICHOLS MISCELLANEOUS
MOTION 1 for discovery (Paper 41) is short and reads as follows:
Nichols presents several reasons as to why "discovery" is needed.
1 .
Nichols seems to maintain that it has made out a prima facie case
of inequitable conduct. Assuming, without deciding at this point, that
inequitable conduct is an issue we can consider, and if so, that we should
consider it, then if Nichols is correct, it will be successful. No further
evidence should be necessary.
However, the board suspects that Tabakoff will cross-examine at
least Nichols. Tabakoff may also present evidence in support of its
opposition, which may include declarations of relevant individuals named
as inventors in the Tabakoff application. Nichols, of course, would be
entitled to cross-examine.
21 Snell et al., "Novel Structure Having Antagonist Actions at Both the Glycine Site of the N
Methyl-D-Aspartate Receptor and Neuronal Voltage-Sensitive Sodium Channels: Biochemical,
Electrophysiological, and Behavioral Characterization," The Journal of Pharmacology and Experimental
Therapeutics, Vol. 292, No. 1, pp. 215-227 (2000) (Ex 2008).
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