Federal Circuit Affirms First-Filer Determination

In Global Health Solutions LLC (Burnam) v. Selner, No. 23-2009 (Fed. Cir. August 26, 2025), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) did not commit reversible error in its application of the independent corroboration requirement. The Federal Circuit affirmed the PTAB's finding in favor of the first-filer. The Federal Circuit explained that "to meet its prima facie burden in an AIA derivation proceeding, the petitioner must produce evidence sufficient to show (i) conception of the claimed invention, and (ii) communication of the conceived invention to the respondent prior to respondent's filing of that patent application. A respondent can overcome the petitioner's showing by proving independent conception prior to having received the relevant communication from the petitioner."

Global Health Solutions LLC ("GHS") (through Bradely Burnam) and Marc Selner each filed a patent application covering the same subject matter (a method for preparing an emulsifier-free wound ointment). Selner filed on August 4, 2017 and GHS filed four days later. Both applications claim heating petrolatum and PHMB separately, to different temperatures, before mixing them together. GHS filed a petition for an AIA derivation proceeding against Selner. GHS alleged that Burnam conceived of the invention prior to Selner and communicated it to Selner by email, and that as a result, Selner derived his invention from Burnam. The PTAB ruled in Selner's favor finding Selner's earlier conception was corroborated. GHS appealed, contending that the PTAB made multiple errors. Selner and Burnam previously collaborated while working for different companies with one shared owner. The PTAB found that GHS proved Burnam conceived the invention and communicated it to Selner via email by 4:04 p.m. on February 14, 2014, and also found that Selner proved he conceived of the invention earlier that same day, by 12:55 p.m., a finding based in part on another email exchanged between Selner and Burnam, proving earlier conception by Selner.

The Federal Circuit determined any errors made by the PTAB were harmless. To prevail in an AIA derivation proceeding, a first-to-file respondent like Selner need only prove that his conception was independent prior to the relevant communication from the petitioner, not that it was first. While it was error for the PTAB to predicate its conclusions on Selner being the first-to-conceive, rather than a finding of independent conception, this error does not affect the PTAB's decision: in finding Selner was first, the PTAB indirectly found independent conception.

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