Cinbergv.Kiderman et al.

Patent Trial and Appeal Board

Mar 6, 2017

13567670 (P.T.A.B. Mar. 6, 2017)

BoxInterferences@uspto.gov Filed: March 6, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ALEXANDER D. KIDERMAN and JAMES Z. CINBERG,
Application 14/284,718,

Junior Party,
v.

JAMES Z. CINBERG
Patent 8,585,589,

Senior Party.

Patent Interference No. 106,043 (DK)
(Technology Center 3700)

JUDGMENT
37 C.F.R. § 41.127(a)(1)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.
In light of the Decision on Motions regarding inventorship (Paper 82), 1
determining that Senior Party Cinberg incorrectly named James Z. Cinberg as the 2
sole inventor of the claimed subject matter, 3
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It is ORDERED that the claims 1-18 of Cinberg’s Patent 8,585,589 be 1
CANCELED. 35 U.S.C. § 135(a);1 2
FURTHER ORDERED that the parties are directed to 35 U.S.C. § 135(c) 3
and to 37 C.F.R. § 41.205 regarding the filing of settlement agreements; 4
FURTHER ORDERED that a copy of this judgment shall be entered into the 5
administrative record of Patent 8,585,589 and application 14/284,718; and 6
FURTHER ORDERED that a party seeking judicial review timely serve 7
notice on the Director of the United States Patent and Trademark Office; 8
37 C.F.R. §§ 90.1 and 104.2. See also 37 C.F.R. § 41.8(b). Attention is directed to 9
Biogen Idec MA, Inc., v. Japanese Foundation for Cancer Research, 785 F.3d 648, 10
654–57 (Fed. Cir. 2015) (determining that pre-AIA § 146 review was eliminated 11
for interference proceedings declared after September 15, 2012). 12

1 Any reference to a statute is to statute that was in effect on
March 15, 2013 unless otherwise indicated. See Pub. L. 112-29, § 3(n), 125 Stat.
284, 293 (2011).
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cc (via e-mail): 1
2
Attorney for Junior Party Kiderman: 3
Blynn L. Shideler 4
Krisanne Shideler 5
BLK Law Group 6
Blynn@BLKLawGroup.com 7
KShideler@BLKLawGroup.com 8
9
Attorney for Senior Party Cinberg: 10
11
R. Neil Sudol 12
Henry D. Coleman 13
CoSud Intellectual Property Solutions, P.C. 14
rnsudol@cssiplaw.com 15
moconnell@cssiplaw.com 16

BoxInterferences@uspto.gov Filed: March 6, 2017
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ALEXANDER D. KIDERMAN and JAMES Z. CINBERG,
Application 14/284,718,

Junior Party,

v.

JAMES Z. CINBERG
Patent 8,585,589,

Senior Party.

Patent Interference No. 106,043 (DK)
(Technology Center 3700)

DECISION ON MOTIONS
37 C.F.R. § 41.125(a)

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

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I. Introduction 1
The sole issue before us in this interference is inventorship. Junior Party 2
Kiderman is involved based on its application 14/284,7181 (“the ’718 3
application”), which has the same specification and claims as patent 8,585,8592 4
(“the ’859 patent”), Senior Party Cinberg’s involved patent. Kiderman’s ’718 5
application names Alexander J. Kiderman and James Z. Cinberg as inventors. 6
Cinberg’s ’859 patent names only Dr. Cinberg as an inventor. 7
As authorized, both parties filed a single motion each to argue that the other 8
names the wrong inventive entity. (See Declaration, Paper 1, at 2.) Kiderman’s 9
motion argues that Cinberg’s involved patent claims are unpatentable under 35 10
U.S.C. § 102(f) because the patent fails to name Dr. Kiderman as an inventor 11
along with Dr. Cinberg. (Kiderman Motion, Paper 53.) Cinberg’s motion argues 12
that Kiderman’s involved application is unpatentable for failing to name Dr. 13
Cinberg only. (Cinberg Motion, Paper 54.) We take up the parties’ motions in the 14
order that provide for a just, speedy, and inexpensive resolution of their dispute. 15
(See 37 C.F.R. §41.125(a).) Neither party requested oral argument. 16
The subject matter of both parties’ claims is detection of traumatic brain 17
injury using characteristics of eye movement. Kiderman explains that in the 18
“smooth pursuit” or “slow phase” the eyes follow a moving object until it is out of 19

1 The ’718 application was filed 22 May 2014 as a continuation of application
13/971,111, which is a continuation-in-part of application 13/567,670 (“the
’670 application”), filed 6 August 2012.
2 The ’859 patent issued on 19 November 2013, from the ’670 application.
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the field of vision, which triggers the “saccade” or “fast phase” wherein the eyes 1
rapidly move back generally to their initial position. (Kiderman Motion, Paper 53, 2
at 6:4-16.) Kiderman explains that the “optokinetic reflex” is a combination of 3
these two types of eye movements: the slow phase and fast phase movements. 4
(Id.) Kiderman also explains that “optokinetic tests” (abbreviated as “OKN” or 5
“OPK”) are tests that elicit and test the optokinetic reflex. (Id.) Cinberg does not 6
dispute these definitions. 7
The parties’ claims are drawn to methods of detecting minor traumatic brain 8
injury by measuring eye movement in response to a visual stimulus. Specifically, 9
the claims require presenting a subject with a visual stimulus that has a 10
predetermined direction and speed, monitoring the movement of the subject’s eye, 11
and measuring the magnitude of the “fast eye velocity component.” The claimed 12
methods require comparing the measured magnitude to a predetermined numerical 13
value to determine whether the subject has incurred minor traumatic brain injury. 14
(See ’589 patent, Exh. 2028, at 1:55-2:6; ’718 appl., Exh. 2003, ¶ 14.) 15
Claim 1 of the ’718 application and claim 1 of the ’859 patent are identical 16
to each other and to the count and recite3: 17
A method for detecting minor traumatic brain injury, 18
comprising: 19
presenting to a subject a visual stimulus having a predetermined 20
direction and speed of movement across a visual field of the subject; 21
monitoring movement of an eye of the subject while the subject 22
views said stimulus, the eye movement including a slow eye velocity 23
component responsive to said predetermined movement, the eye 24

3 Indentations added to separate the steps of the claimed method.
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movement further including a fast eye velocity component, the 1
monitoring of eye movement including detecting said fast eye velocity 2
component; 3
determining a magnitude of a parameter of the detected fast eye 4
velocity component; and 5
comparing the determined magnitude with a predetermined 6
numerical value to determine whether the subject has incurred minor 7
traumatic brain injury. 8
9
(Kiderman Clean Copy of Claims, Paper 12; Cinberg Clean Copy of Claims, 10
Paper 7.) All 18 claims of the ’718 application and ’859 patent correspond to 11
Count 1, the only count, and are involved in the interference. (Decl., Paper 1, at 4.) 12
13
II. Inventorship 14
A. 15
Inventorship is a question of law regarding whether there was the “formation 16
in the mind of the inventor, of a definite and permanent idea of the complete and 17
operative invention, as it is hereafter to be applied in practice.” Hybritech, Inc. v. 18
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed.Cir.1986) (citation 19
omitted). Conception exists when the definite and permanent idea includes every 20
feature of the subject matter. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). 21
“An idea is definite and permanent when the inventor has a specific, settled idea, a 22
particular solution to the problem at hand, not just a general goal or research plan 23
he hopes to pursue.” Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 24
1228 (Fed.Cir.1994). “A ‘preliminary’ statement about a ‘possibility’ or ‘potential 25
use,’ alongside a recommendation for continued work and a ‘report back’ in the 26
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future, falls short of a ‘definite and permanent idea of the complete and operative 1
invention, as it is hereafter to be applied in practice.’” Dawson v. Dawson, 710 2
F.3d 1347, 1352 (Fed. Cir. 2013) (quoting Hybritech Inc. v. Monoclonal 3
Antibodies, inc.802 F.2d 1367 (Fed. Circ. 1986)). 4
Invention may be accomplished by joint inventors who do not necessarily 5
make the same type or amount of contribution to the invention. 35 U.S.C. § 116. 6
Each inventor must, though, perform some task which produces the invention. 7
Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). One 8
does not qualify as a joint inventor by merely assisting the actual inventor after 9
conception of the claimed invention. See Sewall v. Walters, 21 F.3d 411, 416 (Fed. 10
Cir. 1994). 11
B. 12
The following findings of fact, as well as others provided in this opinion, are 13
supported by a preponderance of the evidence. 14
1. An e-mail from Dr. Kinderman to Dr. Cinberg, dated 29 November 15
2010, reads: 16
I think if you can provide data for patient with mTBI we can: 17
1.Collect data for 20-30 patients and have a good presentation and 18
then paper 19
2. Develop diagnostic testing protocol 20
3. Maybe we can discuss development some rehab protocol? 21
AK 22
(Exh. 1002, at 1.) 23
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2. On 29 November 2010, Dr. Kiderman commented to Dr. Cinberg in 1
an e-mail that he “propos[ed] a way to collect data for multiple patients and then 2
look[] for pattern that belong to mTBI patients” as a way to use data. (Exh. 1002, 3
at 1.) 4
3. An e-mail from Dr. Cinberg to Dr. Kiderman, dated 6 May 2011, 5
reads: 6
AK 7
thank you. 8
How do i input into my software? 9
Have you analyzed what are the norms for the asymmetry for the 10
quick component of the OPK response? I wonder if an asymmetry in 11
that area would be sensitive to trauma induced oculomotor 12
dysfunction. 13
Best for weekend 14
JC 15
16
(Exh. 1003.) 17
4. An e-mail from Dr. Kiderman to Dr. Cinberg, dated 6 May 2011, 18
reads: 19
1. Let’s schedule next week to load new software on your system. 20
2. I have “norms’ for OPK for 20-50 yo and 13-18 yo. And again I 21
think that saccade components is very sensitive to head truma for only 22
low frequency. 23
AK 24
(Exh. 1004.) 25
5. An email from Dr. Cinberg to Dr. Kiderman, dated 10 May 2011, 26
reads: 27
AK 28
OK. 29
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I'm reviewing prior patients and often I see that the fast component, 1
saccadic velocity of the OPK is asymmetiric and or less than normal 2
in patients with head trauma. 3
Do you find a similar change 4
JC 5
(Exh. 1005.) 6
6. An email from Dr. Kiderman to Dr. Cinberg, dated 30 May 2011, 7
reads: 8
Hi Jim, 9
10
I put 30 normals and make first graphs (see below) Mean Eye 11
Velocity (slow phase red) and bleu mean fast phase eye velicity. 12
13
I can make a “norms” for fast phase (probably it will be better if you 14
e-mail me 4-5 normals (for comparason). 15
16
Also I looked at cople your patients data and mostly their fail at fast 17
phase peak velocity and/or asymmetry. 18
19
My impression: helpful new criteria, not bad SD and good 20
repeatability. 21
22
Best regards. 23
AK 24
(Exh. 1006, at 1.) 25
7. An e-mail from Dr. Kiderman to Dr. Cinberg, dated 20 June 2011, 26
reads: 27
Hi Jim, 28
I analyzed yesterday another group of "normals' age 13 to 18 (total 60 29
subjects) and created "normal' data for past phase OPK. 30
Do you have a chance to collect data on "normal" 31
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Best regards. 1
AK 2
(Exh. 2016.) 3
8. An e-mail from Dr. Kiderman to Dr. Cinberg, dated 19 November 4
2011, reads: 5
Jim, 6
I tried today statistical (IBM SPSS software) approach to separate 7
normals (31) and your MVA patients (25) using average fast phase 8
velocity as a separation criteria. As you see below closed to 90% 9
group separate using discriminant analysis and more than 90% using 10
binary regression (not bad at all). 11
Next I would like to compere the same result using slow phase 12
velocity 13
What else you think we can do? 14
AK 15
(Exh. 2004, at 1.) 16
9. The e-mail of 19 November 2011 from Dr. Kiderman to Dr. Cinberg 17
includes the description: 18
Method 1: discriminant analysis: 19
Discriminant between condition 1 (normal, 31 subject) and condition 20
2 25 MVA patients with age matching norms. 21
22
(Exh. 2004, at 1.) 23
10. An e-mail from Dr. Cinberg to Dr. Kiderman, dated 20 November 24
2011, reads: 25
AK 26
I am inadequately knowledgeable to comment re your stats approach 27
but the separation seems significant. I'll try to be tutored so that I may 28
be better able to understand the results. 29
Graphs look nice. 30
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What do you think about my thoughts in my earlier e-mail of 1
yesterday: first submission only normals next comparison norms and 2
patients with symptoms? 3
I also see that the OPK I run usually only lasts for under eight 4
seconds: so please modify my earlier suggestion on comparisons of 5
first and last segments to the first two seconds as compared to the last 6
two seconds. 7
look forward to your thoughts 8
the best 9
JC 10
JC 11
(Exh. 2018.) 12
C. 13
Senior Party Cinberg argues that judgment should be entered against Junior 14
Party Kiderman because Alexander Kiderman, who is named on Junior Party’s 15
involved ’718 application, did not contribute to conception of the claimed subject 16
matter. (Senior Party Motion, Paper 54, at 3:3-5.) Cinberg argues that 17
Dr. Cinberg was the sole inventor of the claimed subject matter. 18
According to Cinberg, “[t]he invention was first described in an email 19
Dr. Cinberg sent to Dr. Kiderman on May 6, 2011.” (Cinberg Motion, Paper 54, at 20
6:21-22, citing Exh. 1003; see also id. at 7:3-5 and 13:13-15.) Exhibit 1003 is a 21
copy of an e-mail, dated 6 May 2011, from Dr. Cinberg to Dr. Kiderman, in which 22
Dr. Cinberg “wonder[ed] if an asymmetry in that area would be sensitive to trauma 23
induced oculomotor dysfunction” and asked Dr. Kiderman “what are the norms for 24
the asymmetry for the quick component of the OPK response?” (FF 3.) 25
We are not persuaded that Exhibit 1003 demonstrates conception of the 26
subject matter claimed in either party’s claim 1 because Exhibit 1003 does not 27
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indicate Dr. Cinberg conceived of a method including a step of “comparing the 1
determined magnitude with a predetermined numerical value to determine whether 2
the subject has incurred minor traumatic brain injury.” Although Dr. Cinberg 3
“wonder[ed]” about an “asymmetry” and asks about the “norms,” the e-mail does 4
not indicate that he had a specific, settled idea that there was even a correlation 5
between the quick component of the OPK response and traumatic brain injury. Dr. 6
Cinberg merely wondered if it existed. Exhibit 1003 does not demonstrate that Dr. 7
Cinberg conceived of the complete and operative invention of the Cinberg claims. 8
Cinberg argues further that the invention was described again in an e-mail 9
sent by Dr. Cinberg to Dr. Kiderman on 10 May 2011.4 (Cinberg Motion, 10
Paper 54, 6:22-7:2, citing Exh. 1005.) Exhibit 1005 is a copy of an e-mail, dated 11
10 May 2011, from Dr. Cinberg to Dr. Kiderman, wherein Dr. Cinberg states: 12
“often I see that the fast component, saccadic velocity of the OPK is asymmetiric 13
and or less than normal in patients with head trauma.” (FF 5.) Dr. Cinberg asks 14
Dr. Kiderman if he finds a similar change. (Id.) 15
Although Exhibit 1005 indicates that Dr. Cinberg observed the fast, saccadic 16
velocity of the OPK in comparison to normal, Exhibit 1005 does not demonstrate 17
that he conceived of a method wherein a determined magnitude could be compared 18
to a predetermined numerical value to determine whether the subject has incurred 19

4 Cinberg also argues that the e-mail of 10 May 2011 (Exh. 1005) demonstrates a
reduction to practice of the claimed method. (See, e.g., Cinberg Motion, Paper 54,
at 11:23-12:8 and 15:15-16.) Because we are not persuaded that the earlier e-mail
of 6 May 2011 (Exh. 1003) demonstrates conception of the claimed invention, we
evaluate whether the e-mail of 10 May 2011 is evidence of a conception.
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minor traumatic brain injury. Exhibit 1005 also indicates that Dr. Cinberg was still 1
unsure of the correlation because he asked Dr. Kiderman if he had also observed it. 2
Exhibit 1005 fails to persuade us that Dr. Cinberg was the sole inventor. 3
Cinberg argues further that in an e-mail dated 30 May 2011, Dr. Kiderman 4
corroborated Dr. Cinberg’s conception by agreeing that fast phase velocity, 5
particularly peak fast phase velocity of eye movement, was a reliable marker of 6
minor traumatic brain injury. (Cinberg Motion, Paper 54, at 7:19-8:19, citing 7
Exh. 1006.) Exhibit 1006 is a copy of the e-mail cited by Cinberg showing that Dr. 8
Kiderman’s impression of Dr. Cinberg’s data was that it demonstrated “helpful 9
new criteria, not bad SD [standard deviation] and good repeatability.” (FF 6.) 10
Exhibit 1006 does not persuade us that Dr. Cinberg conceived of a comparison 11
between a determined magnitude and a predetermined value because by itself it 12
does not indicate that Dr. Cinberg did anything beyond providing data. Instead, 13
Exhibit 1006 indicates that Dr. Kiderman evaluated the data, not Dr. Cinberg. 14
Cinberg argues that Dr. Cinberg performed all of the steps of the claimed 15
method, including “pencil and paper calculations” before Dr. Kiderman provided 16
formal statistical verification. (Cinberg Motion, Paper 54, at 10:16-18.) 17
According to Cinberg, Dr. Cinberg presented a subject with a visual stimulus, 18
monitored the subject’s eye movements, detected a fast eye velocity component of 19
the subject’s eye movement, determined a magnitude of a parameter of the fast eye 20
velocity and compared the measurements with a reference or standard from normal 21
subjects without a history of concussion. (Id., at 10:23-11:19.) To support its 22
argument, Cinberg cites only to Dr. Cinberg’s testimony (Exh. 1001 at ¶¶ 28 and 23
29) and to the specification of the involved ’589 patent (Exh. 2028). 24
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We are not persuaded by Dr. Cinberg’s testimony because it is not 1
corroborated. “[A]n inventor's testimony, standing alone, is insufficient to prove 2
conception-some form of corroboration must be shown.” Price v. Symsek, 988 F.2d 3
1187, 1194 (Fed. Cir. 1993). Corroboration is necessary to guard against being 4
deceived by inventors who may be tempted to mischaracterize the events of the 5
past. See Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374 (Fed. 6
Cir. 2009). Cinberg fails to direct us to corroborating evidence such as a copy of 7
the calculations written by Dr. Cinberg or the testimony of one with knowledge of 8
his calculations. Accordingly, because it is uncorroborated, Dr. Cinberg’s 9
testimony about calculations he performed carries little to no weight. 10
To the extent that Cinberg relies on its involved ’859 patent as evidence of 11
conception by Dr. Cinberg alone, it is not persuasive of Cinberg’s arguments. (See 12
Cinberg Motion, Paper 54, at 11:21-23, citing Exh. 2028, at 10:26-285.) The 13
claims and specification of the ’859 patent are the same as those of Junior Party 14
Kiderman’s application and thus do not support either party’s contention of 15
inventorship over the other. 16
Cinberg also argues that Dr. Cinberg's findings “necessarily entailed” a 17
comparison of measurements from concussed patients with a reference or standard 18
from subjects without a history of concussion. (Cinberg Motion, Paper 54, at 19

5 Cinberg does not include a column number with this citation. We assume the
citation is to column 10, which corresponds to the other citations Cinberg made to
the ’589 patent in support of Dr. Cinberg’s activities (see Cinberg Motion,
Paper 54, at 10:23-11:13) and is a reference to the comparing steps in claim 1 of
the ’589 patent.
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11:14-18.) Because the evidence cited by Cinberg does not demonstrate that 1
Dr. Cinberg made such findings by himself, we are not persuaded that he 2
“necessarily” conceived of the comparison attributed to him. As discussed above, 3
Exhibit 1003 demonstrates that Dr. Cinberg only wondered about an asymmetry in 4
OPK data and asked Dr. Kiderman about norms. (FF 3.) Similarly, Exhibit 1005 5
demonstrates that Dr. Cinberg asked Dr. Kiderman for confirmation of an 6
asymmetry. (FF 5.) Neither of these exhibits, nor any other to which Cinberg 7
directs us, shows that Dr. Cinberg had a definite and permanent idea of the 8
complete and operative method claimed. Accordingly, we are not persuaded that 9
Dr. Cinberg “necessarily” conceived of any comparison for a method of detecting 10
minor traumatic brain injury as claimed. 11
Furthermore, Dr. Cinberg’s own statements cast doubt on Cinberg’s 12
argument that he necessarily did the claimed comparison or that any “pencil and 13
paper calculations” he did were a conception of such a comparison. In an e-mail to 14
Dr. Kiderman, Dr. Cinberg stated: “I am inadequately knowledgeable to comment 15
re your stats approach but the separation seems significant. I'll try to be tutored so 16
that I may be better able to understand the results.” (Exh. 2018; FF 10; see 17
Kiderman Opp., Paper 76. at 15:7-12.) In light of Dr. Cinberg’s statement we are 18
not persuaded that he had a definite and permanent idea of a comparison between 19
the magnitude of a parameter of the fast eye velocity component and a 20
predetermined value that he knew to be useful in determining whether a subject 21
had suffered a minor traumatic brain injury. Cinberg does not explain how such a 22
comparison could be done without a statistical analysis of patient data. 23
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Cinberg also argues that Dr. Kiderman did not contribute to conception of 1
the claimed invention because his contributions were no more than application of 2
conventional and routine statistical techniques. (Cinberg Motion, Paper 54, at 3
12:21-13:23.) According to Cinberg, because Dr. Kiderman used a pre-existing 4
computer program to perform statistical analysis on Dr. Cinberg’s data, his 5
contribution was not inventive, but rather an exercise of routine skill. (Id.) 6
Cinberg’s argument is difficult to reconcile with Dr. Cinberg’s statements 7
that he was “inadequately knowledgeable” to even comment on Dr. Kiderman’s 8
statistics. (See E-mail of 20 November 2011, Exh. 2018; FF 10; see Kiderman 9
Opp., Paper 76, at 15:7-12.) Furthermore, even if the analysis itself was routine to 10
those of skill in the art, Cinberg does not explain why Dr. Kiderman’s application 11
of it to the problem resolved by the claimed method was not inventive. Cinberg’s 12
argument fails to address how Dr. Cinberg alone conceived of comparing the 13
determined magnitude of a parameter of the detected fast eye velocity component 14
to any other value. 15
Cinberg argues further that the claimed invention “does not require a 16
statistical method or even a statistical value, but merely requires the measurement 17
of eye movement velocities and the comparison of the measured fast phase eye 18
movement velocities with a standard or reference.” (Cinberg Motion, Paper 54, at 19
15:1-4.) According to Cinberg, the standard or reference recited in claim 1 could 20
be a statistical quantity such as an average, but does not have to be. (Cinberg 21
Motion, Paper 54, at 4-5.) No other explanation of the claimed standard or 22
reference is provided. Even if Cinberg is correct that the claim does not require a 23
“statistical quantity,” Cinberg fails to direct us to evidence that Dr. Cinberg used 24
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any value for a comparison in a specific, settled idea of the claimed method. 1
Dr. Cinberg asked Dr. Kiderman about “norms” (see E-mail of 6 May 2011, 2
Exh. 1003; FF 3), but this evidence does not indicate he conceived of a method that 3
used such norms in a comparison. Similarly, Dr. Cinberg discussed an asymmetry 4
with normal patients, but then asked Dr. Kiderman about Dr. Kiderman’s findings. 5
(See E-mail of 10 May 2011, Exh. 1005; FF 5.) Thus, even if Dr. Cinberg was 6
thinking about a comparison, he did not have a definite and permanent idea of a 7
complete and operative invention, as it would be applied in practice. See 8
Hybritech Inc., 802 F.2d at 1376. Cinberg fails to persuade us that his invention 9
would have been operative without some statistical analysis to support it. 10
Cinberg also argues that Dr. Cinberg’s and Dr. Kiderman’s professional 11
experiences indicate that Dr. Cinberg is the sole inventor of the subject matter of 12
the claims. (Cinberg Motion, Paper 54, at 9:1-10:13.) Cinberg does not explain 13
why, or direct us to authority to support that, an individual’s background or prior 14
experience is relevant to inventorship and in particular who conceived the claimed 15
subject matter. 16
Cinberg has failed to direct us to evidence that persuades us Dr. Cinberg 17
solely conceived of a method “comparing the determined magnitude with a 18
predetermined numerical value to determine whether the subject has incurred 19
minor traumatic brain injury.” At most, Dr. Cinberg had a general goal or research 20
plan that he hoped to pursue to develop a method to detect traumatic brain injury. 21
Because Cinberg fails to provide a showing, supported with appropriate 22
evidence, that even unrebutted justifies the relief it seeks, we deny Cinberg’s 23
motion for judgment as to inventorship. (See 37 C.F.R. § 41.208(b).) 24
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D. 1
Junior Party Kiderman argues that the claims of involved Cinberg ’589 2
patent are unpatentable under 35 U.S.C. § 102(f) because Alexander D. Kiderman 3
was not named as an inventor. 4
Kiderman acknowledges, and we agree, that the essential features of claim 1 5
of Cinberg’s patent are determining a magnitude of a parameter of detected fast 6
eye velocity component of a subject in an OKN test and comparing that magnitude 7
with a predetermined numerical value to determine whether the subject has 8
incurred minor traumatic brain injury. (Kiderman Motion, Paper 53, at 3:14-18.) 9
According to Kiderman, Dr. Kiderman contributed to conception of this invention 10
by calculating the average fast phase velocity of a subject in an optokinetic test and 11
showing that there is a 90% separation6 of groups between subjects with traumatic 12
brain injury and normal subjects. (Kiderman Motion, Paper 53, at 3:19-22.) 13
Kiderman argues that on 20 June 2011, Dr. Kiderman communicated the 14
results of his analysis of data from normal subjects for fast phase response on OKN 15
testing and demonstrated that he had established normative data for similar 16
subjects. (Kiderman Motion, Paper 53, at 7:3-6, citing Exh. 2016.) Exhibit 2016 17
is a copy of an e-mail dated 20 June 2011 sent by Dr. Kiderman to Dr. Cinberg, 18
wherein Dr. Kiderman indicated he “analyzed yesterday another group of 19

6 We understand “separation” to mean that a predictor is associated with only one
outcome value when the predictor is greater than some constant. This
understanding is consistent with Kiderman’s use of the term, which is not disputed
by Cinberg.
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‘normals’ age 13 to 18 (total 60 subjects) and created ‘normal’ data for past phase 1
OPK.” (FF 7.) 2
Kiderman also argues that on 19 November 2011, Dr. Kiderman 3
communicated results from his analysis of data from normal subjects and traumatic 4
brain injury (“MVA”) patients with statistical software. (Kiderman Motion, Paper 5
53, at 9:16-23, citing Exh. 2004.) Exhibit 2004 is a copy of an e-mail sent from 6
Dr. Kiderman to Dr. Cinberg on 19 November 2011, wherein Dr. Kiderman stated: 7
“tried today statistical (IBM SPSS software) approach to separate normals (31) and 8
your MVA patients (25) using average fast phase velocity as a separation criteria. 9
As you see below closed to 90% group separate using discriminant analysis and 10
more than 90% using binary regression (not bad at all).” (FF 8.) According to 11
Kiderman, the e-mail of 19 November 2011 is evidence of conception because it is 12
evidence that Dr. Kiderman realized the almost 90% group separation between 13
prospective traumatic brain injury subjects and normal subjects. (Kiderman 14
Motion, Paper 53, at 9:16-23.) 15
This evidence persuades us that Dr. Kiderman contributed to the conception 16
of the claimed method. The e-mails of 20 June 2011 (Exh. 2016, FF 7) and 17
19 November 2011 (Exh. 2004, FF 8) demonstrate that Dr. Kiderman’s statistical 18
analysis provided the information that the average fast eye velocity could be used 19
as a separation criteria. We are persuaded that Dr. Kiderman’s statistical analysis 20
provided a specific, settled idea that the fast eye velocity component is different in 21
subjects with and without minor traumatic brain injury. Accordingly, we are 22
persuaded that Dr. Kiderman’s analysis contributed to the conception of a 23
comparison between the magnitude of the detected fast eye velocity component 24
Interference 106,043

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and a predetermined numerical value because the statistical analysis shows this 1
component is different in patients with minor traumatic brain injury. 2
Cinberg’s arguments do not persuade us otherwise. In its opposition, 3
Cinberg puts forth similar arguments to those it asserted in its motion for judgment 4
that Kiderman named the wrong inventors. For example, Cinberg argues that Dr. 5
Kiderman provided only a routine statistical confirmation of Dr. Cinbergs’s 6
conception and reduction to practice of the invention, which required nothing more 7
than the application of ordinary skill. (Cinberg Opposition, Paper 78 at 3:12-17; 8
6:14-17; 7:5-10; and 7:17-8:15.) 9
We disagree because the statistical analysis that Dr. Kiderman performed 10
provided the basis for the specific, settled idea that subjects with minor traumatic 11
brain injury exhibit different average fast eye velocity components. As discussed 12
above in regard to Cinberg’s motion, Cinberg fails to direct us to sufficient 13
evidence showing that Dr. Cinberg alone had a specific, settled idea of any 14
comparison. Furthermore, even if the data Dr. Kiderman used was provided by 15
Dr. Cinberg and the tools that Dr. Kiderman used were routine to those of skill in 16
the art, Cinberg has not directed us to evidence that the actual analysis 17
Dr. Kiderman performed lacked any inventive component. 18
Cinberg also argues that Dr. Kiderman’s analysis was not critical to 19
conception or reduction to practice of the invention because the method does not 20
require a statistical method or value. (Cinberg Opp., Paper 78, at 9:10-14.) 21
Cinberg argues that the comparison required in the claimed method is with a 22
“standard or reference,” not necessarily with a statistical value, but Cinberg 23
provides no further explanation of what this standard or reference could be. 24
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Cinberg fails to explain how Dr. Cinberg, alone, had a definite and permanent idea 1
of the complete and operative invention, as it would be applied in practice, of any 2
such a standard or reference. Accordingly, we are not persuaded by this argument. 3
Instead, we consider the evidence of Dr. Kiderman’s statistical separation analysis 4
to provide a specific, settled idea for a comparison between a fast eye velocity 5
component of a subject with suspected traumatic brain injury and a value from a 6
normal subject. 7
Accordingly we grant Kiderman’s motion for judgment that the claims of 8
Cinberg’s patent 8,585,589 are unpatentable under 35 U.S.C. § 102(f). 9
To the extent that Kiderman also argues that the claims of Cinberg patents 10
8,808,179 and 9,084,573 are unpatentable (see Kiderman Motion, Paper 53, at 11
15:14-16), the claims of these patents have not been designated as corresponding to 12
the count of this interference and Kiderman did not request that they be. 13
Therefore, the patents are not involved in this interference. We have not 14
contemplated these claims and render no decision in regard to them. 15
16
III. Conclusion 17
We deny Cinberg’s motion (Paper 54) and we grant Kiderman’s motion 18
(Paper 53). 19
Judgment will be entered separately. 20
21
22
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cc (via e-mail): 1
2
Attorney for Junior Party Kiderman: 3
Blynn L. Shideler 4
Krisanne Shideler 5
BLK Law Group 6
Blynn@BLKLawGroup.com 7
KShideler@BLKLawGroup.com 8
9
Attorney for Senior Party Cinberg: 10
11
R. Neil Sudol 12
Henry D. Coleman 13
CoSud Intellectual Property Solutions, P.C. 14
rnsudol@cssiplaw.com 15
moconnell@cssiplaw.com 16