Federal Circuit Clarifies Independent Conception Standard for AIA Derivation

by | Sep 24, 2025 | PTAB News, PTAB Trial Basics

By Kate Meng and Sarah Geers –

More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation proceeding. In Global Health Solutions LLC v. Selner, the court clarified that in such proceedings, a first-to-file respondent need only demonstrate independent conception—not earlier conception—to defeat a petitioner’s derivation claim.

We previously discussed the PTAB’s institution decision in Global Health Solutions LLC v. Selner, DER2017-00031 (linked here), one of the very few derivation proceedings ever instituted. The dispute arose from former collaborators who both filed patent applications directed to a wound treatment ointment. Selner filed his application on August 4, 2017, and Global Health Solutions (GHS) filed four days later. GHS alleged that Selner derived the invention from its inventor, Burnam, and petitioned for a derivation proceeding.

In its final decision, the PTAB found that both parties conceived of the same invention on February 14, 2014—Selner at 12:55 p.m. and Burnam at 4:04 p.m.—and concluded that Selner’s earlier conception precluded derivation. On appeal, the Federal Circuit affirmed the PTAB’s decision rejecting Global Health Solutions’ (GHS) derivation claims against Marc Selner, but corrected the PTAB’s legal analysis. The court held that although the PTAB incorrectly framed its analysis around “earliest conception,” the error was harmless because the record showed Selner conceived the invention independently.

The Federal Circuit used this case to clarify the distinction between pre-AIA interference proceedings and AIA derivation. Unlike pre-AIA interference proceedings, which focused on “which party first invented the subject matter,” AIA derivation proceedings ask “whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application, and without authorization.”

The Federal Circuit articulated a clear framework for AIA derivation proceedings: a petitioner must show (i) conception of the claimed invention and (ii) communication of that conception to the respondent before the respondent’s filing. A respondent may overcome that showing by proving independent conception prior to any such communication. The key insight, as the court emphasized, is that “a first-to-file respondent need only prove that his conception was independent” (emphasis in original). Even if another inventor conceived first, the first filer retains patent rights if their conception was independent.

The Federal Circuit also rejected each of GHS’s three arguments on appeal. GHS argued that Selner failed to provide adequate independent corroboration for his invention story. The court disagreed, finding that the emails’ metadata constituted evidence “independent of Selner’s own statements and documents.” GHS claimed the PTAB improperly required it to disprove Selner’s conception rather than making Selner prove his own. The court found this characterization unfair, noting the PTAB “properly held each party to its burden of proof.” GHS also contended that the nature of the invention required simultaneous conception and reduction to practice. The court rejected this argument, explaining that “actual reduction to practice was not required for complete conception” because Selner’s conception was complete when “he was able to define [the Invention] by its method of preparation” or when he had formed “a definite and permanent idea of the complete and operative invention.”

The Federal Circuit also declined to remand for consideration of GHS’s alternative request to add its inventor as a joint inventor on Selner’s application, holding that GHS failed to preserve the issue by not filing a separate motion as required by 37 C.F.R. § 42.22. This serves as a reminder that alternative relief requests must be properly preserved through separate motions.

As we noted in our earlier discussion of the PTAB’s institution decision, derivation proceedings remain exceedingly rare. More than ten years after the AIA’s enactment, the Federal Circuit has now provided its first appellate guidance, making clear that independent conception—not earliest conception—is the controlling standard for respondents defending against AIA derivation claims.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.