In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA). No. 2023-2009 (Fed. Cir. Aug. 26, 2025). Global Health Solutions (GHS) challenged the PTAB’s determination that Marc Selner did not derive his patent application from GHS’s founder. The Federal Circuit affirmed the PTAB’s decision, clarifying the correct legal analysis for AIA derivation proceedings.
Background
Selner filed his patent application on August 4, 2017. Four days later, on August 8, 2017, GHS—listing its founder, Bradley Burnam, as inventor—filed a competing application. Both claimed substantially the same method for making a wound treatment ointment.
Three days later, GHS petitioned for a derivation proceeding, alleging that Selner derived his application from Burnam. The PTAB instituted review.
During the derivation proceeding, evidence showed that Burnam had founded two companies, SteriWeb Medical and R&S Research, which shared office space and jointly pursued projects. Selner worked specifically for R&S. In 2013, Burnam, Selner, and another individual agreed SteriWeb would develop a wound treatment ointment. Burnam later left SteriWeb and started GHS.
The dispute during the derivation proceeding focused on who first conceived the inventive concept of separately heating two ointment components before mixing them. Both Burnam and Selner claimed to have originated this approach.
The PTAB concluded that GHS failed to prove derivation. While GHS showed Burnam had conceived the inventive heating process in a 4:04 pm email on February 14, 2014 to Selner, Selner established he conceived the idea first by 12:55 pm that same day. Thus, Selner could not have derived his invention from Burnam.
Federal Circuit Decision
The Federal Circuit first clarified the differences between the pre-AIA interference inquiry and the AIA derivation inquiry. Pre-AIA interferences turn on determining who invented first. In contrast, in AIA derivation proceedings, the question is whether the first filer derived the invention from the second filer. To succeed, the petitioner (second filer) must show both (a) conception of the invention and (b) communication of the conceived invention to the first filer before the first filer’s filing date. The respondent (first filer) may overcome that showing, however, by demonstrating independent conception.
In the PTAB proceeding, both the Board and the parties erroneously focused on the question of who first conceived of the invention (a question no longer directly relevant under the post-AIA framework). But this error, the court held, was harmless because Selner had independently conceived the inventive heating process before Burnam’s disclosure, satisfying the correct AIA derivation framework.
The Federal Circuit also rejected GHS’s argument that Selner’s AOL emails lacked sufficient corroboration. The Federal Circuit found adequate corroboration in the emails’ timestamps and content, Selner’s evidence that he sent the emails and Burnam received the emails, and an affidavit from Selner’s attorney’s law clerk regarding retrieval of the emails.
The Federal Circuit further rejected GHS’s contention that complete conception of the invention at issue here required a simultaneous reduction to practice. The Federal Circuit noted that complete conception does not universally require actual reduction to practice, and that here, Selner’s documentation alone demonstrated complete conception without an actual reduction to practice.
Finally, the Federal Circuit declined GHS’s alternative request to name Burnam as a co-inventor because the argument was not properly preserved at the PTAB.
Practical Takeaways
- Contemporaneous Documentation Remains Important in the AIA’s First-to-File Regime.
Even under a first-to-file system, contemporaneous documentation of inventive ideas is vital, especially when multiple companies collaborate. For a respondent (first filer) in a derivation proceeding, electronic communications, lab notebooks, or other records can be decisive evidence of independent conception.
- Focus on Derivation, Not Who Invented First.
In AIA derivation proceedings, the question is not who first invented (as in interferences), but whether the first filer derived the invention from the petitioner before filing their application. PTAB practitioners should frame their arguments accordingly.
- The Required Burden of Proof in an AIA Derivation Proceeding is an Open Question.
Explaining in a footnote that the parties and the PTAB applied a preponderance of the evidence standard, while interferences require clear and convincing evidence, the Federal Circuit expressly stated that it was not deciding a party’s required burden of proof in an AIA derivation proceeding.
- File Patent Applications Promptly.
Beyond avoiding prior art, prompt filing provides an important advantage in potential derivation disputes. A petitioner (second filer) bears the initial burden to prove that conception occurred and was communicated to the first filer before the first filer’s application.
