Interference No. 104,544 Paper149
McDonald v. Miyazaki Page 30
[87] We do not credit his contention that he only came to appreciate that his declaration
could be read to mean the C-terminal fragment was tested after the 666 patent had
issued. The strong implication of the declaration, when read in the context provided by
the specification, was that the test data applied to a C-terminal fragment.
[88] We find Dr. McDonald's testimony that he did not believe an examiner would want to
know the particulars of the sequence of TSF to be material to be incredible given (1) the
fact that fragments of a specific sequence were being claimed, (2) the same specific
sequence was disclosed in the prior art, (3) the specification for the 666 patent
repeatedly trumpets the particular advantages of the C-terminal fragment versus the N
terminal fragment, and (4) the specification strongly suggests that the C-terminal
fragment and TSF are the same. In particular, we give no weight to Dr. McDonald's
contention that TSF and MGDF" are identical, given the insistence in the 666 patent
disclosure that the C-terminal fragment of the de Sauvage sequence, which the
disclosure associates with TSF, is not the portion of the TPO polypeptide that other
researchers had believed to be significant.
[89] We find clear and convincing evidence that Dr. McDonald intentionally overstated the
relationship between TSF and the C-terminal fragment of the de Sauvage sequence
and intentionally withheld his doubts or any qualifications of his statements regarding
the C-terminal fragment because "that was the basis for claiming the C."
We hold that the level of materiality of the misrepresentation and withholding is
very high, that the level of intent is high, and that Dr. McDonald's conduct with regard to
11 A synonym for TPO. See n. 1, supra.
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