Court: U.S. Court of Appeals for the Federal Circuit

Docket: 23-2009 

Opinion Date: August 26, 2025

Global Health Solutions LLC and Marc Selner each filed patent applications in August 2017 for a method of preparing a wound treatment ointment containing nanodroplets of an aqueous biocide suspended in petrolatum jelly without emulsifiers. Selner filed his application four days before GHS, making him the first-filer under the America Invents Act (AIA) “first-inventor-to-file” system. GHS alleged that its founder, Bradley Burnam, conceived the invention and communicated it to Selner, who then derived the invention and filed first. Both parties agreed that their applications claimed the same invention, and the dispute centered on who conceived the invention and when.

The United States Patent and Trademark Office, Patent Trial and Appeal Board (the Board) instituted a derivation proceeding. After reviewing evidence, including contemporaneous emails, the Board found that Burnam communicated the invention to Selner by 4:04 p.m. on February 14, 2014, but also found that Selner had independently conceived the invention earlier that same day, by 12:55 p.m. The Board determined that Selner did not derive the invention from Burnam and ruled in favor of Selner. GHS appealed, arguing that the Board erred in its evidentiary rulings, burden of proof allocation, and failure to require reduction to practice for conception, and also requested that Burnam be named a co-inventor.

The United States Court of Appeals for the Federal Circuit reviewed the Board’s legal conclusions de novo and factual findings for substantial evidence. The court held that the Board’s focus on “first-to-invent” was harmless error, as Selner’s independent conception was dispositive under the AIA. The court found no reversible error in the Board’s evidentiary rulings, burden allocation, or treatment of reduction to practice. The court also held that GHS failed to properly preserve its request for correction of inventorship. The Board’s judgment for Selner was affirmed.