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Federal Circuit Affirms PTAB In First Post-AIA Derivation Proceeding Review
09/16/2025On August 26, 2025, in its first post-America Invents Act (“AIA”) review of a derivation proceeding before the Patent Trial and Appeal Board (“PTAB” or “Board”), the United States Court of Appeals for the Federal Circuit affirmed the PTAB’s determination that Marc Selner (the respondent and appellee), who filed his patent application before Global Health Solutions LLC (“GHS,” the petitioner and appellant), was the proper inventor of the patent. Global Health Solutions LLC v. Selner, No. 2023-2009 (Fed. Cir. Aug. 26, 2025).
In a derivation proceeding, governed by 35 U.S.C. § 135, a petitioner may challenge the general rule of the AIA’s first-to-file system. In such a proceeding, a first inventor, but second-patent-application filer, seeks to prove that the first-patent-application filer “derived” his invention from the first inventor. If the petitioner successfully demonstrates that the invention was derived from him, the claims derived from the first inventor in the first-filed application are cancelled. The second filer may also request inventorship be corrected to designate the two inventors joint inventors.
Marc Selner and Bradley Burnam worked together on a Polyhexamethylene Biguanide (“PHMB”)-petrolatum jelly product starting in 2013. Burnam later founded GHS but kept in contact with Selner. Selner filed a patent application for the invention first, on August 4, 2017. GHS filed a patent application for the invention four days later on August 8, 2017, naming Burnam as the sole inventor. GHS brought a derivation proceeding, claiming that Selner had derived the claims of his application from Burnam because Burnam had allegedly created and communicated the invention to Selner.
During the derivation proceeding, Burnam and Selner offered competing narratives of the invention, which relates to emulsifier-free, PHMB-petrolatum jelly. Burnam contended that he conceived of a process of heating petrolatum and PHMB before mixing, and that he then told Selner of his idea, while Selner contended that it was he who discovered that a critical step in the process is heating the petrolatum separately from the PHMB, and that he disclosed that to Burnam.
In a final written decision, the PTAB found that Burnam communicated his idea to Selner at 4:04 pm on February 14, 2014, while Selner had conceived his idea just prior—at 12:55 pm on the same day. Because the PTAB found that Selner conceived his invention before Burnam communicated his idea, the PTAB found that Selner did not derive the invention from Burnam, and therefore that GHS had not proven its derivation claim.
GHS appealed, alleging that the Board committed legal error by focusing on who conceived the invention first, by not requiring corroboration for Selner’s invention story, by improperly requiring GHS to disprove Selner’s conception, and by failing to apply the doctrine of simultaneous conception and reduction to practice. In the alternative, GHS requested that Burnam be named a co-inventor on Selner’s first-filed application.
In reviewing the PTAB’s decision, the Federal Circuit first articulated that, in a post-AIA derivation proceeding, the petitioner must show (1) conception of the claimed invention and (2) communication of the conceived invention prior to the respondent filing his patent application. The Federal Circuit noted that this was different from the pre-AIA derivation process, that process did not require the communication to be prior to the conception by the respondent. The Federal Circuit also explained that the respondent may overcome a petitioner’s showing by proving its own independent conception prior to receiving the relevant communication from the petitioner.
Turning to the question as to whether the PTAB had committed legal error, the Federal Circuit determined that any error committed by the PTAB was harmless. While the PTAB did err by focusing on whether Burnam or Selner was the first to invent—because Selner only needed to prove that his conception was independent of Burnam’s communications—there was no error in the Board’s finding that Selner conceived the invention first, because Selner had proven his conception was independent by showing that his conception was first.
The Federal Circuit also rejected GHS’s claim that the Board should have required Selner to corroborate his inventorship with evidence outside of his own emails. The Court found no error in the Board’s rule of reason approach that considered all of the pertinent evidence before it to determine that Selner’s evidence established that his invention story was credible. While inventor testimony may be self-serving, contemporaneous documentary evidence, like the emails Selner relied on, can be sufficient to establish conception and reduction to practice. Therefore, the Board did not err by accepting Selner’s emails as sufficient evidence of his independent invention, especially given that GHS did not challenge their authenticity.
Next, the Federal Circuit found that the PTAB had not committed a reversible error by improperly requiring GHS to prove that Selner did not conceive the invention. Rather, the Court held that the Board had carefully considered the evidence before it to find that Selner had adequately proved that he conceived and possessed the invention.
Last, the Federal Circuit rejected GHS’s claim that the Board failed to adjudicate the question of whether the invention at issue was one that required simultaneous conception and reduction to practice, such that Selner’s proof of conception alone was insufficient. The Court found that the Board appropriately addressed GHS’s argument about whether reduction to practice was required for complete conception in this case. The Court further found that the Board appropriately considered the evidence in front of it to ultimately reject GHS’s argument and to determine that Selner had conceived his invention prior to Burnam’s communication to Selner, even without evidence of reduction to practice.
The Federal Circuit also rejected GHS’s bid for joint inventorship, on the basis that GHS had failed to preserve that argument before the Board and therefore the argument was forfeited.
