In August 2025, the U.S. Court of Appeals for the Federal Circuit delivered its first precedential opinion on an America Invents Act (AIA) derivation proceeding in Global Health Solutions LLC v. Selner. This case provides critical insights into the standards and burdens of proof in derivation disputes under the AIA’s first-to-file system.
The dispute arose between Global Health Solutions (GHS) and Dr. Marc Selner, both of whom filed patent applications for a method of creating an emulsifier-free wound ointment containing polyhexamethylene biguanide (PHMB) suspended in petrolatum. Selner’s application was filed four days prior to GHS’s, positioning him as the first filer under the AIA framework.
GHS initiated a derivation proceeding, alleging that Selner derived the invention from its founder, Bradley Burnam. The Patent Trial and Appeal Board (PTAB) found that Selner independently conceived the invention before any communication from Burnam, leading to GHS’s appeal.
The Federal Circuit affirmed the PTAB’s decision, emphasizing that under the AIA, the focus shifts from determining the first to invent to assessing whether the first filer derived the invention from another. The court clarified that to establish derivation, a petitioner must demonstrate prior conception and communication of the invention to the respondent before the respondent’s filing date. The respondent can counter this by proving independent conception prior to receiving the petitioner’s communication.
In this case, substantial evidence, including contemporaneous emails and metadata, supported Selner’s claim of independent conception. The court also addressed procedural aspects, noting that GHS’s alternative request to name Burnam as a co-inventor was forfeited due to non-compliance with procedural requirements.
This ruling underscores the importance of independent conception in AIA derivation proceedings and highlights the procedural rigor required in such disputes.