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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-2009.OPINION.8-26-2025_2563662.pdf"><em>Global Health Solutions LLC v. Marc Selner</em>, No. 23-2009 (Aug. 26, 2025)</a>, marking the Court’s first review of an AIA derivation proceeding.

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Global Health Solutions (“GHS”) petitioned the Patent Trial and Appeal Board to strip Selner of priority to U.S. App. No. 15/549,111, arguing that Selner derived the claimed emulsifier-free PHMB-petrolatum ointment method from GHS’s founder, Bradley Burnam. Because GHS was the second filer and both patent applications were governed by the America Invents Act’s first-to-file regime, derivation was GHS’s only avenue to prove priority. The Board rejected GHS’s arguments and found Selner independently conceived the invention before any disclosure from Burnam. GHS appealed.

The Federal Circuit affirmed. On appeal, GHS challenged numerous evidentiary and legal determinations, contending that (1) Selner lacked adequate corroboration of conception, (2) the Board improperly shifted the burden of proof, (3) conception was incomplete absent actual reduction to practice, and (4) Burnam at least should have been named a joint inventor. The Court first confirmed that, unlike pre-AIA interferences, an AIA derivation proceeding focuses on whether the first-filer’s conception was <em>independent</em>, not on who was the first to invent. The Court noted that any Board emphasis on “first-to-invent” was harmless because Selner’s evidence also satisfied the correct legal test.

Addressing corroboration, the Court applied the rule-of-reason and held that contemporaneous emails—authenticated by a law-clerk declaration and time-stamped by AOL’s servers—sufficiently corroborated Selner’s account of conception before Burnam’s alleged disclosure. On the burden of proof, the Court held the Board did not improperly shift the burden. Rather, Selner carried a preponderance of evidence showing independent conception, and GHS failed to rebut it. Regarding reduction to practice, the Court held actual reduction to practice was unnecessary because Selner’s detailed disclosure of the temperature-differential mixing method constituted a “definite and permanent” idea adequate for complete conception. Finally, on the joint inventor argument, the Court held GHS forfeited its alternative request to add Burnam as a co-inventor by failing to file the separate motion and supporting evidence required under PTAB rules. Finding no reversible error, the Court affirmed the Board’s judgment.

CAFC Affirms PTAB in First-Ever AIA Derivation Appeal

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