Seven years after the PTAB instituted the first AIA derivation proceeding, the Federal Circuit finally issued its first opinion in an appeal of a derivation decision, Global Health Solutions, LLC v. Selner, No. 23-2009 (Fed. Cir. 2025), affirming the Board’s decision that the petitioner did not carry its burden to show respondent (Selner) derived the invention from the petitioner’s inventor (Burnam).
Both parties filed applications claiming formulations of a particular biocide, PHMB (polyhexamethylene biguanide) suspended in petroleum jelly, each naming a sole inventor. Selner filed his application a few days before Global Health filed its application in 2017. Selner and Burnam had worked together beginning in 2013 to develop the PHMB/petroleum jelly composition, but early efforts to develop a process for making the composition were unsuccessful. The Board found that each inventor independently conceived the process (involving separately heating the components to particular temperatures before mixing) on the same day in 2014. Burnam showed that he conceived the invention and communicated it to Selner by email that day, but the Board concluded Selner had conceived the invention a few hours earlier, and that Selner provided sufficient evidence to corroborate his independent conception.
The Court explained that proving derivation in an AIA derivation proceeding has similar requirements for proving derivation in a pre-AIA interference proceeding: the petitioner must produce sufficient evidence to show (i) conception of the claimed invention and (ii) communication of the conceived invention to the respondent before the respondent’s filing of a patent application. A respondent can overcome such a showing by proving independent conception before receiving the relevant communication from the petitioner. Unlike in interference proceedings, an inventor who files first (but may not have invented first) will retain patent rights as long as the inventor did not derive the invention from another.
The Court determined that the Board’s finding that the respondent Selner proved independent conception with sufficient corroboration was supported by substantial evidence. The Board erred in evaluating whether Selner was the first to invent the claimed subject matter, which is not relevant in an AIA derivation proceeding. But this error was harmless, according to the Court, because the Board properly found that Selner independently conceived the claimed invention, which was sufficient to overcome Global Health’s prima facie case of derivation.
On appeal Global Health argued that Selner’s evidence of conception was not supported by sufficient corroborating evidence, because his testimony was corroborated by a declaration of a clerk of Selner’s attorney, testifying that she accessed Selner’s web-based AOL email account, and without modification, exported emails that were introduced into evidence. The Court determined that Selner’s testimony concerning his conception was adequately corroborated under the applicable rule-of-reason test, based on evidence including Selner’s evidence that he sent emails to Burnam on the date of his conception, the emails’ timestamps, Selner’s law clerk’s retrieval of the messages, and evidence that AOL is a well-known email service provider. The Board also properly relied on additional circumstantial evidence, including the similarity of language in Burnam and Selner’s email messages, and an email message from Burnam to his daughter stating the invention was “invented” by Selner.
Global Health also argued that Selner failed to establish inventorship because he did not prove reduction to practice of the conceived invention, but the Court concluded that Selner established complete conception of the invention, and that proof of reduction to practice was not necessary. Citing Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1229 (Fed. Cir. 1994), the Court noted that reduction to practice is sometimes but not always necessary for complete conception in unpredictable fields of invention.
The Court also concluded that Global Health failed to preserve its alternative request to add Burnam as a joint inventor on Selner’s application, because Global Health failed to file a motion for correction of inventorship or take any other action to preserve this issue beyond including one sentence in its petition.
Parties to AIA derivation proceedings should carefully consider the Court’s guidance concerning how to prove (or rebut) a claim of derivation.