In Global Health Solutions LLC v. Selner, No. 2023-2009 (Fed. Cir. Aug. 26, 2025), the Federal Circuit affirmed the PTAB's rejection of Global Health's AIA derivation claim because substantial evidence supported Selner's claim of independent conception.
Selner and Global Health each filed a patent application under the AIA covering the same subject matter, but Selner filed its application first. Global Health filed an AIA derivation petition under 35 U.S.C. § 135, alleging that Selner derived the invention from Global Health or, alternatively, that its inventor should be included as a co-inventor. The PTAB instituted a proceeding and issued a final decision for Selner, determining that Selner had been the first to conceive of the invention. Global Health appealed.
On appeal, the Federal Circuit explained that AIA derivation proceedings require proof that the petitioner conceived of an invention and communicated the invention to the respondent before the respondent's filing. A respondent can overcome this showing by demonstrating independent conception, regardless of who conceived of the invention first. The Federal Circuit contrasted this with pre-AIA interference proceedings, which focus on who was the first to invent.
The Federal Circuit determined that the record, which included contemporaneous emails and metadata from Selner's email account, supported the Board's independent-conception findings. The Court also affirmed that Selner did not need to demonstrate reduction to practice to prove conception and that the Board's erroneous requirement that Selner be the first-to-invent was harmless because the Board's decision indirectly determined that Selner had independently conceived of the invention. With respect to Global Health's co-inventorship claim, the Court determined that Global Health had forfeited this argument because it was not properly presented to the Board in a separate motion.
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