Global Health Solutions LLC, v. Marc Selner, No. 2023-2009 (Fed. Cir. (PTAB) Aug. 26, 2025). Opinion by Stark, joined by Stoll and Goldberg.
“This case marks [the Federal Circuit’s] first review of an AIA derivation proceeding that was litigated in the Patent Trial and Appeal Board.” Global Health Solutions LLC (“GHS”) and Marc Selner (“Selner”) each filed a patent application covering the same subject matter, but Selner filed his application first. GHS filed a petition for an AIA derivation proceeding against Selner contending that Selner derived the invention from another inventor listed on GHS’s patent application. The Board ruled in favor of Selner. GHS appealed.
The Federal Circuit affirmed the Board’s judgment in favor of Selner.
The Federal Circuit first addressed the similarities and differences between derivation claims as they were litigated prior to enactment of the AIA and derivation proceedings under the AIA. The court concluded that “the required elements of a derivation claim have not changed other than to the extent necessary to reflect the transition from a first-to-invent to a first-to-file system of patent administration.” Specifically, the court explained that “because we no longer focus on who is the first-to-invent, the inquiry in an AIA derivation proceeding centers on whether the petitioner conceived and communicated the invention before the respondent filed his application.” Accordingly, “to meet its prima facie burden in an AIA derivation proceeding, the petitioner must produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to the respondent’s filing of that patent application.” Likewise, to overcome the petitioner’s showing, the court explained that the respondent need only prove “independent conception prior to having received the relevant communication from the petitioner.” In other words, “under the AIA, unlike before, the inventor who files first will retain patent rights as long as he did not derive his claimed invention from another.”
Applying this standard to the Board’s decision, the court acknowledged that the Board erred by applying the pre-AIA standard. Nevertheless, because the Board’s conclusion indirectly determined that Selner independently conceived of the invention, the court concluded that the Board’s erroneous focus on who was first-to-invent amounted to no more than harmless error.
The court first held that substantial evidence—including emails and metadata related to those emails—supported the Board’s finding that Selner proved independent conception with evidence that adequately corroborated his testimony. Second, the court rejected GHS’ argument that the Board improperly shifted the burden to GHS to disprove Selner’s purported conception. Finally, the court rejected GHS’ arguments that the Board failed “to adjudicate a threshold and outcome determinative issue” of whether simultaneous conception and reduction to practice was required for conception to be complete because, as the Board recognized, actual reduction to practice was not required for the complete conception of the invention at issue. The court also rejected GHS’s alternative request for remand to consider whether one of the inventors on the GHS patent should be listed as an inventor on Selner’s patent, reasoning that GHS failed to comply with the Board’s requirements to a contested request for correction of inventorship in a patent application under C.F.R. § 42.22.
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Hyatt v. Stewart, Nos. 2018-2390, -2391, -2392, 2019-1049, -1038, -1039, 1070, 2024-1992, -1993, -1994, -1995 (Fed. Cir. (D.D.C.) Aug. 29, 2025). Opinion by Reyna, joined by Wallach and Hughes.
This case was previously before the Federal Circuit in Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021) (“Hyatt I”), where the Federal Circuit remanded the case back to the district court to consider the issue of prosecution laches. The district court found that prosecution laches barred the issuance of Hyatt’s pending claims, and Hyatt appealed (“Hyatt II”).
Gilbert P. Hyatt, an inventor and registered patent agent, filed nearly 400 patent applications in the months leading to the effective date of the Uruguay Round for the General Agreement on Tariffs and Trade, four of which are relevant here. After the patent examiner rejected most of the claims in those four patent applications, Hyatt appealed to the Board of Patents Appeals and Interferences, who affirmed the examiner’s rejections of some claims and reversed the examiner’s rejections of other claims. Hyatt filed actions in federal district court to secure allowance of all claims across his four applications. In response, the Patent Office asserted the affirmative defenses of prosecution laches and invalidity. The district court granted judgment in favor of Hyatt.
In Hyatt I, the Federal Circuit vacated the district court’s judgments “concluding that the court has misapplied the standard for prosecution laches and that under the correct legal standard, the PTO satisfied its burden of proving that Mr. Hyatt engaged in unreasonable and unexplainable delay in prosecuting his applications at issue.” The Federal Circuit did not address Hyatt’s separate cross-appeal as to whether the district court had Article III jurisdiction over the claims the Board had reversed in Hyatt’s favor, and thus those claims remained pending before the Federal Circuit.
On remand, the district court found that prosecution laches barred the issuance of Hyatt’s pending claims, concluding that “the complete trial record require[s] a singular result—judgment for the PTO. No other result is even colorable.” Hyatt again appealed.
In Hyatt II, the Federal Circuit first rejected Hyatt’s argument that prosecution laches are not available in a § 145 action. The court explained that it already addressed this argument in Hyatt I, and thus Hyatt's argument was foreclosed by the law-of-the-case doctrine. The Federal Circuit next rejected Hyatt’s argument that the district court abused its discretion in determining that prosecution laches applied, explaining that Hyatt’s principal argument on appeal was forfeited because he failed to raise it before the district court and that, regardless, the significant record evidence confirmed that the district court did not abuse its discretion.
The Federal Circuit then addressed the still pending issue as to whether Hyatt established Article III jurisdiction over pending claims for which the Board reversed the examiner’s rejections. The court determined that even though Hyatt made a bare allegation of dissatisfaction with the Board’s decision that may be sufficient to survive the pleading stage, Hyatt ultimately failed to establish that he was injured by the Board’s reversal of the examiner’s rejections, and thus the district court lacked jurisdiction over these claims. In doing so, the court rejected Hyatt’s assertion that § 145 extends district-court jurisdiction to the entire decision, explaining that § 145 does not override Article III’s threshold requirements as to each pending claim.
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