Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025)

In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that was litigated before the Patent Trial and Appeal Board.  The Court affirmed the Board’s finding that appellee Marc Selner was the proper inventor for his first-filed application claiming an emulsifier-free preparation of biocidal petrolatum jellies, rejecting petitioner GHS’s claims that Selner derived the invention from its founder Bradley Burnam.  In the process, the Court explained key differences between derivation proceedings under the America Invents Act and the pre-AIA “interference” proceedings that they replaced.

The facts of the case are straightforward.  Selner and Burnam had worked together in 2013-2014 to try and solve the problem of suspending an aqueous biocide (Polyhexamethylene Biguanide or “PHMB”) in a petrolatum medium without the use of an emulsifier.  Their later, separate patent applications each claimed the solution of depolarizing the PHMB by heating it to a different temperature than the petrolatum before mixing them together, and the factual dispute before the Board concerned who conceived that invention.  While the Board found that Burnam had communicated conception of the invention to Selner in a February 14, 2014 email, the Board also found that Selner had conceived of the invention by earlier that same day, as collaborated in part by a different email Selner had sent to Burnam about three hours earlier.  Accordingly, the Board rejected GHS’s derivation arguments and found for Selner.

On appeal, the Federal Circuit rejected GHS’s assignments of error, but also noted that by focusing on who was the “first” to conceive of the invention, “[n]either the parties nor the Board appears to have appreciated the difference in the derivation standard governing AIA proceedings as compared to pre-AIA interferences.”  While the “first” inventor was the determining factor in interference proceedings under pre-AIA 35 U.S.C. § 135, the AIA’s conversion of the U.S. patent system into a “first-to-file” system meant that a second-to-conceive, first-to-file inventor could still retain patent rights so long as his conception was independent of (i.e. not derived from) the adverse claimant’s conception.  Accordingly, the Court found that the Board erred to the extent its decision turned on its determination that Selner was the “first” to conceive, and cautioned that while pre-AIA interference case law could provide guidance in determining whether a derivation has been shown, “[j]udges must take care not to allow interference proceedings to be inadvertently revived through AIA derivation proceedings.”  However, because the Board’s finding that Selner was first necessarily meant that his conception was independent from Burnam’s, the Court held this error to be harmless.

The Court otherwise found GHS’s arguments on appeal to have “no merit,” finding, inter alia, that Selner’s contemporaneous emails sufficiently corroborated his conception testimony, and that GHS had failed to preserve an alternative co-inventorship argument by not making its request by motion as required by 37 C.F.R. § 42.22.  Accordingly, the Court affirmed the Board’s judgment for Selner.

The opinion can be found here.

By Jason A. Wrubleski

ALSO THIS WEEK

Hyatt v. Stewart, Appeal Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070, 2024-1992, -1993, – 1994, -1995 (Fed. Cir. Aug. 29, 2025)

Back on appeal after a remand trial, the Federal Circuit affirmed the district court’s finding of prosecution laches concerning more than 1000 patent claims that have been in prosecution since the Clinton administration.  We provided an extensive write-up about this case in 2021, following the Federal Circuit’s decision in a first appeal, Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021), which can be found here.  In that earlier decision, the Federal Circuit reversed the district court’s decision rejecting the Patent Office’s assertion of prosecution laches as a defense to Hyatt’s Section 145 actions.  The Court found not only that prosecution laches was viable as a defense to Section 145 actions, but that the Patent Office had established a prima facie case of prosecution laches.  The Court remanded for further consideration on the question of whether the Patent Office experienced prejudice as a result of Hyatt’s conduct.  Following a three-week bench trial on that issue on remand, the district court held that all of the patent claims at issue were barred by prosecution laches.  The issues in this second appeal were narrow.  The Court rejected Hyatt’s assertion that prosecution laches does not apply in Section 145 actions, citing its decision  in the prior appeal and holding that the law-of-the-case doctrine bars revisiting that issue.  The Court also rejected Hyatt’s argument that the district court abused its discretion in finding that prosecution laches applies here, citing the district court’s extensive analysis on the issue.  The Court also rejected separate cross-appeals filed by Hyatt, affirming the district court’s finding that it did not have Article III jurisdiction over those claims.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.