Derivation Interference First to File Keeps Rights If Conception Was Independent
Contributed by Knobbe Martens. Originally published on Patexia; republished here as part of the LexDana archive.
Written by:Justin J. Gillett and Kenneth O. Aruda, Ph.D.
GLOBAL HEALTH SOLUTIONS LLC v. SELNER
Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board.
Summary: The Federal Circuit affirmed the Board’s rejection of a derivation challenge, holding that the petitioner failed to demonstrate that the first filer derived the invention from others.
Marc Selner filed a patent application. Global Health Solutions LLC (GHS) later filed a patent application covering the same subject matter and listing its founder, Bradley Burnam, as the inventor. The America Invents Act (AIA) governed both applications. GHS filed a petition for an AIA derivation proceeding against Mr. Selner alleging that Mr. Burnam was the true inventor. In that proceeding, GHS argued Mr. Burnam conceived the invention first and communicated his invention to Mr. Selner. The Board disagreed, finding Mr. Selner independently conceived the idea about three hours before Mr. Burnam conceived and communicated it, and that evidence of Mr. Selner’s prior invention was sufficiently corroborated. The Board also rejected an argument by GHS that conception required actual reduction to practice. GHS appealed.
The Federal Circuit affirmed. It held that the Board erred in focusing on who was first to invent, but it deemed the error harmless because Mr. Selner’s proof of independent conception and earlier filing defeated GHS’s derivation claim under the proper AIA standard. The court further rejected GHS’s arguments that evidence of Mr. Selner’s invention was not adequately corroborated, that the Board improperly shifted the burden to GHS to disprove Mr. Selner’s conception, and that conception required actual reduction to practice. Finally, the court held that GHS forfeited its alternative request to add Mr. Burnam as a co-inventor by failing to properly raise it before the Board, as GHS made the request in a single line in its derivation filing.
Editor: Sean Murray
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