Federal Circuit Affirms PTAB in Rare AIA Derivation Case

Why AIA Derivation Proceedings Are So Rare

Before the AIA, inventorship and priority disputes often played out as interference proceedings, where the key question was basically: “Who invented first?” The AIA flipped the script by moving the U.S. to a first-inventor-to-file system. In plain English: if you’re first to the Patent Office (and you’re truly an inventor), you generally get the prize.

But Congress didn’t entirely ignore the obvious loophole: what if the first filer wasn’t actually the inventorwhat if they learned the invention from someone else and raced to file? Enter the AIA’s “first-to-file, except when you stole it” safety valve: the derivation proceeding.

Derivation proceedings are rare for a few reasons:

• Narrow scope: You’re not arguing “I invented first.” You’re arguing “you derived it from me.” Different claim, different proof.
• High evidence burden in practice: You need credible, corroborated proof of both your conception and the other side’s receipt of it.
• Timing and strategy: Many disputes get resolved through other routes (assignments, contracts, inventorship corrections, licensing, or traditional litigation).

So when a derivation appeal makes it to the Federal Circuitespecially as a first-of-its-kind reviewit’s worth paying attention.

The Dispute: Same Invention, Two Filings, One Very Busy February

The invention at the center: a wound-treatment ointment without emulsifiers

Both parties filed patent applications directed to a method of preparing a wound-treatment ointment. The method involved nanodroplets of an aqueous biocidepolyhexamethylene biguanide (PHMB)permanently suspended in petrolatum jelly. A key point: the method did not require emulsifiers, which can irritate skin. The claimed approach achieved stability by heating components separately to different temperatures before mixing, producing a composition that stays suspended without an emulsifier.

Who are the players?

Global Health Solutions LLC (GHS) asserted that its founder, Bradley Burnam, conceived the relevant manufacturing insight and communicated it to Marc Selnerwho then allegedly filed first on an invention he didn’t truly invent. Selner, on the other hand, maintained he independently conceived the key step.

Key filing dates (because in first-to-file land, dates are the scoreboard)

Selner filed first (August 4, 2017). GHS filed four days later (August 8, 2017). Both applications were governed by the AIA standards, and the parties did not dispute that Selner was the first filer and GHS the second filer.

How the PTAB saw it

The Board found that GHS proved Burnam conceived the invention and communicated it to Selner by email at 4:04 p.m. on February 14, 2014. But the Board also found Selner proved he conceived earlier that same dayby 12:55 p.m.based in part on a separate email exchange. If Selner had independently conceived before receiving Burnam’s communication, then Selner could not have derived the invention from Burnam.

Translation: even if you can show you told someone about the invention, you still lose a derivation claim if they can credibly show they already had itindependentlybefore your message arrived.

What the Federal Circuit Affirmedand What It Clarified

1) AIA derivation is not pre-AIA interference in a fake mustache

One of the most important takeaways was conceptual, not chemical. The Federal Circuit emphasized that while older “derivation” case law often came up inside interferences, an AIA derivation proceeding is meaningfully different. Under the AIA, the inquiry centers on whether the petitioner conceived and communicated the invention before the respondent filed, and whether the respondent’s filing was “without authorization” and derived from that communication.

The court noted that the Board (and frankly, the parties) drifted into interference-like thinking by focusing on who was “first to invent.” The Federal Circuit said that focus was errorbut harmlessbecause the Board’s findings effectively established independent conception on Selner’s side anyway.

The court’s broader warning was clear: AIA derivation shouldn’t become a backdoor way to resurrect interferences, where “I invented first” is the whole ballgame.

2) The two-part core: conception + communication (and then the defense: independent conception)

The decision reaffirmed that proving derivation involves a two-part showing:

• Conception of the claimed invention by the petitioner, and
• Communication of that conceived invention to the respondent before the respondent’s filing.

But the opinion adds a practical reality check: the respondent can overcome a prima facie case by showing independent conception before receiving the alleged communication. In a first-to-file world, independent conception is enough to keep the first filer in the winner’s circle.

3) Corroboration matters: the “rule of reason” and why metadata is your quiet MVP

Derivation disputes often turn on testimony, and testimony is famously… flexible. That’s why patent law relies on corroboration. The Federal Circuit endorsed the Board’s use of the “rule of reason” frameworkexamining all pertinent evidence to decide whether an inventor’s story is credible and sufficiently supported.

Here, the corroboration wasn’t a dramatic lab notebook with coffee stains and heroic handwriting. It was emailsplus the kind of technical details most people ignore until they’re suddenly in court: timestamps, transmission records, and server-retrieved copies.

The Board credited evidence that emails were retrieved from Selner’s web-based AOL account and introduced with supporting testimony, and it treated server-generated metadata (like send/receive times and addresses) as independent of Selner’s own narrative. The Board also found circumstantial support in similarities between the language used in emails, suggesting copying in one directionand it even cited a later email where Burnam referred to the invention as “magic goo” and described it as having been “invented” by Selner.

Practical lesson: the boring parts of your digital lifemetadata and version historycan become the most persuasive parts of your evidentiary record.

4) Reduction to practice is not automatically required for conception

GHS argued that for this invention, conception required reduction to practice (or at least “simultaneous conception and reduction to practice”) because of technical complexity. The Federal Circuit disagreed. The court emphasized that conception generally can occur without actually reducing the invention to practiceso long as the inventor has formed a definite and permanent idea of the complete and operative invention (for example, being able to define it by its method of preparation).

In other words: you don’t always have to build the thing to conceive the thingthough in unpredictable fields there can be exceptions. On the record presented, the Board’s finding that Selner had complete conception by 12:55 p.m. on February 14, 2014 was supported by substantial evidence.

5) Procedural reality: preserve your alternative theories or lose them

GHS also wanted, in the alternative, to have Burnam named a joint inventor on Selner’s application. The Federal Circuit refused to entertain that request because GHS did not properly preserve it before the Board. The opinion points to procedural requirements for contested inventorship corrections and faults GHS for not filing the necessary motion and for effectively burying the request in a conclusory sentence.

Litigation takeaway: an “alternative request” that isn’t properly raised is not a clever backup planit’s a forfeited footnote.

What This Means for Patent Strategy in a First-to-File World

Derivation is a scalpel, not a sword

Derivation proceedings exist to fix a specific problem: the wrong person filing first after learning the invention from the true inventor. If the fight is really about “who invented first,” you’re trying to use the wrong tooland courts are increasingly wary of that mismatch.

Documentation is not clerical work; it’s future evidence

If you collaborate, consult, prototype, or even casually brainstorm with people outside your immediate company bubble, you should assume that one day someone might sincerely (or conveniently) remember the story differently. Good documentation doesn’t prevent disputes, but it can end them faster.

• Write down conception details early: what problem you solved, what the key insight was, and how you’d implement it.
• Preserve contemporaneous records: emails, lab notebooks, meeting notes, whiteboard photos, version control commits, and invention disclosure forms.
• Keep metadata intact: avoid “cleaning up” files, stripping properties, or moving key content into formats that lose history.

Collaboration hygiene: define ownership before the breakthrough

Derivation disputes often grow out of relationships: founders and contractors, adjacent companies sharing office space, collaborators with overlapping projects, or joint development where boundaries were never clearly drawn. Contracts, NDAs, and assignment agreements won’t solve every problem, but they can eliminate the ambiguity that fuels litigation.

Know your options when a dispute erupts

Derivation is one route, but not the only one. Depending on the facts, parties may consider:

• Inventorship correction pathways (when you can show who truly contributed to at least one claim),
• Contract and trade secret claims (especially where access and confidentiality obligations are clear),
• Licensing or settlement (often cheaper than turning an email archive into a courtroom drama).

The biggest strategic mistake is assuming the legal label (“derivation”) will do the hard work for you. The record does the work.

Quick FAQ: AIA Derivation, in Human Terms

Is “I invented first” enough to win a derivation proceeding?

No. Under the AIA, being first to invent is not the central question. The issue is whether the first filer derived the invention from the petitionermeaning the petitioner conceived and communicated the invention, and the first filer’s claim came from that communication without authorization.

What kind of evidence wins (or loses) these cases?

The best evidence is contemporaneous and corroborated: dated emails, documents with reliable metadata, lab records, neutral witness testimony, and consistent timelines. Self-serving testimony without support is a hard sell.

Do you always have to reduce the invention to practice to prove conception?

Not always. Conception generally can be proven without actual reduction to practice, although some technologies and fact patterns can complicate that analysis. The key is whether the inventor had a definite and permanent idea of the complete invention.

Conclusion: The Unicorn SpokeAnd It Said “Bring Receipts”

Global Health Solutions v. Selner matters because it’s a rare appellate look at an AIA derivation proceeding and a clear reminder that the AIA changed the center of gravity. The Federal Circuit affirmed the PTAB because substantial evidence supported independent conception and adequate corroborationespecially through contemporaneous emails and metadata.

For innovators, the message is simple: if you want to win a “you derived it from me” fight, you must prove it with credible, corroborated evidenceand you must frame the dispute the way the AIA frames it. Otherwise, you’re trying to relive the interference era in a first-to-file world that has politely moved on.

From the Trenches: 5 Real-World Experiences That Show Why This Case Hits Home

Most derivation disputes don’t start with villains twirling mustaches. They start with collaborationmessy, fast, optimistic collaborationfollowed by a filing date that arrives before everyone realizes they’re no longer on the same team. Below are five common “lived” scenarios patent practitioners and innovation teams frequently encounter, and how the lessons from Selner map onto them.

1) The “Friendly Email” That Becomes a Legal Document Overnight

A founder shares a breakthrough with a friendly industry contactmaybe to get feedback, maybe to explore manufacturing, maybe just because the founder is excited and caffeine is doing the steering. Months later, the contact files an application. Suddenly that “Quick thoughtwhat if we heat A to X degrees and B to Y degrees?” email isn’t casual; it’s the case. In Selner, the timeline turned on emails and timestamps. The experience here is the same: if you’re going to disclose, do it intentionally, with clear context and preferably under a written confidentiality framework.

2) Shared Office Space, Shared Projects… Shared Confusion

Startups and small R&D groups often share space, equipment, consultants, or contract manufacturers. The collaboration feels efficientuntil the boundary between “our project” and “your project” blurs. When a key insight pops up, people remember the moment differently: who proposed the critical step, who tested what, who wrote the method down. Selner shows how that ambiguity collapses into evidence battles. The practical antidote is painfully unglamorous: meeting minutes, scoped statements of work, and a habit of confirming decisions in writing.

3) The Contractor Who “Just Helped” (Until They Didn’t)

A contractor solves a bottlenecktweaks a process parameter, proposes a substitution, or suggests a method that makes the whole system work. The company assumes it owns the output. The contractor assumes they invented something and should be named. Then a patent application gets filed, and everyone’s surprised that inventorship is not the same as ownership. One recurring experience is that teams treat assignment agreements as optional paperworkuntil inventorship becomes contested. The procedural discussion in Selner also reminds teams: if you want an inventorship correction, you must pursue it properly and preserve it, not toss it into a filing like a spare sock.

4) “We Had the Idea” vs. “We Could Explain the Idea”

In technically complex projects, people often conflate a hunch with conception. Someone says, “We should be able to make this stable without emulsifier,” but can’t actually explain how. Another person later articulates the concrete methodtemperatures, sequence, mixing behavior, and why it works. In litigation, those aren’t the same thing. The conception discussion in Selner echoes a common experience: courts care about whether the inventor had a definite, operative idea, not whether they had a vibe and a whiteboard doodle.

5) The Accidental Power of “Boring” Digital Footprints

Teams sometimes underestimate how persuasive ordinary digital artifacts can be: email headers, server logs, file histories, and metadata. Then they do something well-intentioned but harmful, like forward an email chain without preserving headers, copy-paste text into a new document, or “clean up” a folder structure that wipes timestamps. In Selner, metadata helped support corroboration. In real projects, the experience is similar: the most boring evidence often becomes the most trusted evidence because it looks less curated and more contemporaneous.

The overarching “trenches” lesson is that derivation disputes are usually won or lost long before the petition is filed. They’re won or lost in how teams document invention development, how they manage collaboration, and how carefully they preserve the quiet factstimestamps, drafts, and who said what, when. If this sounds like administrative busywork, you’re not wrong. But as Selner illustrates, administrative busywork is sometimes just “future courtroom insurance” with a better haircut.