In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and communicated the invention to the respondent before the respondent filed its application. The respondent can overcome the petitioner’s showing by proving independent conception prior to receiving the petitioner’s communication.
On August 26, 2025, the US Court of Appeals for the Federal Circuit issued its first precedential decision reviewing an America Invents Act (AIA) derivation proceeding before the Patent Trial and Appeal Board (PTAB). In Global Health Solutions LLC v. Selner, No. 2023-2009, the court affirmed the PTAB's finding that podiatrist Dr. Marc Selner had not derived an invention from former collaborator Bradley Burnam. It found Selner had independently conceived the invention before the relevant communication from Burnam. This decision marks the court's first guidance on how AIA derivation proceedings differ from pre-AIA interference practice.
PTAB rejects derivation claim
While working at different medical companies, Selner and Burnam had previously collaborated on commercial projects.1 Burnam founded Global Health Solutions (GHS). In August 2017, GHS and Selner each filed US patent applications for an emulsifier-free wound-ointment containing nanoscale droplets of the biocide Polyhexamethylene Biuanide (PHMB). Selner filed his '111 patent application four days before GHS's '197 application, making Selner the first-filer under the AIA.2 Unlike earlier attempts to make the emulsifier-free PHMB-petrolatum jelly that only involved mixing, both applications claimed an inventive process of separately heating the petrolatum and PHMB before mixing them together.3
GHS petitioned for a derivation proceeding a few days after filing in August 2017, alleging that although GHS filed after Selner, Burnam conceived of the invention before Selner and communicated it to Selner. GHS therefore claimed that Selner derived his invention from Burnam.4 In April 2022, almost five years later, the Board instituted the proceeding and found that GHS's petition satisfied the requirements for institution. After hearing the evidence, the PTAB found that although Burnam emailed Selner about the invention by 4:04 p.m. on February 14, 2014, Selner had independently conceived the same invention earlier that day by 12:55 p.m.5 Because Selner proved an earlier conception, the PTAB held he did not derive the invention from Burnam and ruled in Selner's favor.6
Federal Circuit clarifies burden in first AIA derivation review
The Federal Circuit affirmed.7 The court emphasized that this was "our court's first review of an AIA derivation proceeding that was litigated in the [PTAB]."8 The Court began by noting that under the 2011 AIA, the United States moved from a first-to-invent patent system to a first-to-file system.9
Therefore, unlike pre-AIA interference proceedings (where priority turned on who was the first-to-invent), post-AIA derivation proceedings focus on who filed first and whether that filer's conception was independent. Under the AIA, a second-filer can challenge a first-filer's patent only by proving that the first-filer derived the invention from them.10
The Federal Circuit therefore held that "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 respondent's filing of the patent application."11 The respondent can then overcome this showing by proving independent conception prior to having received the relevant communication.12 The Federal Circuit cautioned that although pre-AIA interference cases "may provide helpful guidance," they must be applied "carefully" so that "interference proceedings [are not] inadvertently revived through AIA derivation proceedings."13
Applying these principles, the Federal Circuit held that the PTAB erred by focusing on which party was the first-to-invent, but found that the error was harmless.14 The PTAB had treated Selner's earlier conception as dispositive: because he was first-to-conceive the invention, he could not have derived it from Burnam. To prevail in an AIA derivation proceeding, however, the first-filer "need only prove that his conception was independent," not first.15 Although the PTAB's finding that Selner was the first-to-invent was unnecessary, this finding indirectly showed that Selner independently conceived of the invention and did not derive the invention from Burnam.16
The Federal Circuit dismissed each of GHS's challenges on appeal. It agreed with the PTAB that Selner's conception story was adequately corroborated by contemporaneous emails (exported from his AOL account) and their metadata.17 The court found the PTAB did not improperly shift the burden to GHS and also rejected GHS's argument that Selner must show reduction to practice to prove conception.18 The court also denied GHS's alternative request to correct inventorship such that Burnam be named as co-inventor on Selner's '111 application. It noted that GHS failed to preserve the argument because it did not make a separate motion for joint inventorship before the PTAB.19
Key takeaways
- Pre‑AIA vs. AIA. Pre‑AIA interference proceedings centered on who first invented. Under the AIA's first‑inventor‑to‑file regime, priority generally goes to the first-filer. AIA derivation proceedings (35 U.S.C. § 135) allow a second‑filer to challenge a patent only by proving that the first-filer derived the invention from him.
- Proving derivation. In an AIA derivation, the petitioner must show conception of the claimed invention and that this conception was communicated to the respondent before the respondent filed. The respondent (first-filer) can overcome this by showing that the respondent independently conceived of the invention before having received the relevant communication from the petitioner.
- Inventorship corrections. A contested request for correction of inventorship in a patent application must be made in a separate motion under 37 C.F.R. § 42.22 with the processing fee, an application data sheet identifying each inventor, a "statement of the precise relief requested," and a "full statement of the reasons for the relief requested."20 Failure to comply with the regulatory requirements forfeits the opportunity.
Julia Reilly (White & Case, Law Clerk, New York) contributed to the development of this publication.
1 Global Health Solutions LLC v. Selner, No. 23-2009 (Fed. Cir. Aug. 26, 2025), slip op. at 5.
2 Id. at 3.
3 Id. at 5-6.
4 Id. at 4.
5 Id. at 6.
6 Id. ("After finding Selner proved earlier conception, the [PTAB] determined that he could not have derived the Invention from Burnam, and, thus, GHS failed to prove its derivation claim.").
7 Judge Stark authored the opinion for the Federal Circuit panel that included Judge Stoll and District Court Judge Goldberg.
8 Id. at 2-3.
9 Id. at 2.
10 Id.
11 Id. at 10.
12 Id. at 10-11.
13 Id. at 11.
14 Id.
15 Id. at 12.
16 Id.
17 Id. at 13-15.
18 Id. at 16 (citing Pfaff v. Wells Elecs. Inc., 525 U.S. 55, 60 (1998)).
19 Id. at 17-18.
20 Id. at 18 (citing 37 C.F.R. § 42.22(a)).
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