The America Invents Act (AIA) changed the U.S. patent system from a first-to-invent system to a first-to-file system. Thus, under the AIA, a first inventor is generally not entitled to a patent if a second inventor files his application first. However, a first-inventor second-filer may still obtain a patent if the first filer derived the invention from the second filer. These challenges are pursued at the Board in a new proceeding created by the AIA called a “derivation proceeding.” Global Health Solutions (GHS) was the Federal Circuit’s first review of a Patent Trial and Appeal Board (PTAB) decision in such a proceeding.
GHS filed a derivation petition against Selner’s U.S. patent application. The claims at issue were directed to methods of preparing a wound treatment ointment. Selner was the first filer. GHS contended that its inventor, Burnam, was the first inventor, and that Selner derived the invention from Burnam. The PTAB determined that Burnam conceived the invention and communicated it to Selner via email by the afternoon of Feb. 14, 2014, but that Selner had proven earlier conception of the invention because he had sent an email to Burnam earlier that day describing the invention. The PTAB thus ruled in Selner’s favor.
The Federal Circuit affirmed. It first clarified the similarities and differences between pre- and post-AIA derivation claims. Prior to the AIA, a party asserting derivation had to establish (1) conception prior to the adverse claimant’s conception and (2) communication to the adverse claimant. In an AIA derivation proceeding, a petitioner also must show prior conception and communication, but the inquiry “centers on whether the petitioner conceived and communicated the invention before the respondent filed his application.” A “respondent can overcome the petitioner’s showing by proving independent conception prior to having received the relevant communication from the petitioner.” The respondent does not need to prove conception prior to the petitioner’s conception. This is because “under the AIA … the inventor who files first will retain patent rights as long as he did not derive his claimed invention from another.” The court also noted in a footnote that it was not deciding what burden of proof applies in addressing these questions because neither party raised the issue on appeal.
The PTAB, the Federal Circuit explained, had incorrectly focused on whether Selner was the first to invent rather than whether his conception was independent. But this was harmless error because “in finding Selner was the first-to-invent, the Board also indirectly determined that he independently conceived and, thus, did not derive his invention from Burnam.”
The court addressed but rejected the arguments GHS made on appeal. First, the court rejected GHS’ argument that there was insufficient corroboration of Selner’s claim of inventorship. A “rule of reason test is used to determine whether an alleged inventor’s testimony is sufficiently corroborated.” The court agreed with the PTAB that the emails retrieved from Selner’s web-based AOL email account were “documentary evidence generated contemporaneously with the inventive process” that sufficiently corroborated Selner’s claim. The court found that the “emails, whose authenticity is not challenged, do not require independent corroboration,” and that in any event the email metadata was “independent of Selner’s own statements and documents” and thus independently corroborative.
Second, the court rejected GHS’ argument that the PTAB improperly shifted the burden to GHS to disprove Selner’s conception. The PTAB, the court concluded, considered the evidence, determined that Selner had proven conception, and did not shift the burden to GHS to prove otherwise.
Third, the court rejected GHS’ argument that the PTAB erred by not requiring Selner to prove that he had reduced the invention to practice. The court found that substantial evidence supported the PTAB’s factual findings that Selner was “able to define [the invention] by its method of preparation” and had formed “a definite and permanent idea of the complete and operative invention.” Namely, Selner’s email “explained the invention in detail to Burnam” and was sufficient to prove conception without a showing of reduction to practice.
Finally, the court determined that GHS had not preserved its alternative request that inventorship be corrected to name Burnam as a joint inventor because it had not followed the procedures required by the PTAB to do so.
Related:
Regents of the U. of California v. Broad Inst., Inc., 136 F.4th 1367 (Fed. Cir. May 12, 2025) (in an appeal from an interference proceeding, holding that the PTAB legally erred by conflating the distinct legal standards for conception and reduction to practice, that proving conception does not require proof that the inventor knows the invention will work, and that the PTAB erred by “failing to consider routine methods or skill” for achieving reduction to practice).
[1] Honorable Mitchell S. Goldberg, District Judge, United States District Court for the Eastern District of Pennsylvania, sitting by designation.
This article appeared in the 2025 Federal Circuit IP Appeals: Summaries of Key 2025 Decisions report.
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