Interference No. 104,522 Paper 108
Nichols v. Tabakoff Page 69
Given that Nichols believes it has presented a prima facie case, it
is not apparent that Rule 639 discovery is necessary.
2.
Nichols maintains that Tabakoff "could have a benign explanation
for [allegedly] failing to inform the PTO" of certain information. If that be
so, then one would fully expect Tabakoff in its opposition to Nichols
Preliminary Motion 2 to offer up the "benign explanation."
3.
The interference is in the preliminary motion phase. After the
preliminary motion phase, there may be a priority testimony phase. Upon
entry of a decision on preliminary motions, it also may be appropriate to
defer to final hearing any issue of inequitable conduct and allow that issue
to be developed along with priority.
Nichols now complains that Tabakoff did not present testimony refuting Nichols'
allegations of inequitable conduct and argues that "the only reasonable inference is that
Party Tabakoff did not have a good faith explanation and did not want to subject itself to
cross-examination scrutiny" (NRB, p. 20). However, the initial burden is on Nichols to
establish inequitable conduct on the part of Tabakoff by clear and convincing evidence.
Only after Nichols satisfies its burden does the burden of persuasion shift to Tabakoff to
rebut Nichols' allegation of inequitable conduct by "a showing that applicant's failure to
disclose art or information did not result from an intent to mislead the PTO." FMC
Corp., 835 F.2d at 1415, 5 USPQ2d at 1115. In our opinion, Nichols has not satisfied
its initial burden by even a preponderance of the evidence, let alone by clear and
convincing evidence.
For the above reasons, Nichols preliminary motion 2 is denied.
V1. Renewed Tabakoff preliminary motion 1
Tabakoff preliminary motion 1 was denied without prejudice, subject to renewal
based on evidence acquired during the priority phase of this interference or other
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