Federal Circuit Emphasizes the Power of Good Documentation in First Post-AIA Derivation Case  

The Federal Circuit recently issued its first precedential decision addressing derivation proceedings under the America Invents Act (“AIA”). A derivation proceeding is a trial before the Patent Trial and Appeal Board (“PTAB”) to determine whether the first-filed patent application was based on an invention taken from the true inventor without authorization. It serves as a safeguard in the first-to-file system, ensuring that the person who files first is also the actual inventor. This case involved dueling patent applications directed to an emulsifier-free wound treatment ointment, where both parties claimed the process to produce a stable product aimed at reducing skin irritation.

Marc Selner filed his application four days before Bradley Burnam, the founder of Global Health Solutions (“GHS”). Burnam’s application was assigned to GHS. GHS alleged that Burnam conceived of the inventive process—certain ingredients heated separately to different temperatures before mixing—and disclosed it to Selner, who then derived his application from Burnam’s work. However, the PTAB rejected GHS’s arguments. Although GHS introduced evidence that Burnam had communicated his idea to Selner via email, Selner produced emails showing he had described the claimed process earlier that same day. Testimony at trial corroborated the authenticity of those emails. On that basis, the PTAB concluded that Selner conceived of the invention independently and prior to Burnam’s alleged disclosure.

On appeal, the Federal Circuit affirmed, finding that although the PTAB mistakenly framed the dispute in “first-to-invent” terms, the error was harmless because Selner established evidence that his conception was independent and earlier than the communication from Burnam. The Court emphasized that derivation proceedings under the AIA differ meaningfully from pre-AIA interferences: the focus is not on who invented first but on whether the first filer derived the invention from another. The Court also upheld the PTAB’s reliance on Selner’s emails and metadata as adequate corroboration, finding no reversible error.

The Federal Circuit also rejected GHS’s fallback request that Burnam be added as a co-inventor because it had not properly moved for correction of inventorship before the PTAB. Instead, GHS buried the request in a single line of its petition, requesting corrected authorship as alternative relief, but making no arguments. The Federal Circuit held that this failure to comply with PTAB procedural requirements forfeited the issue.

Under the AIA, a later filer can prevail in a derivation proceeding only by showing both conception and communication of the invention to the earlier filer. Independent conception, if corroborated by reliable documentary evidence, will defeat such claims. This case also highlights the importance of following PTAB procedures carefully; failure to properly raise and preserve arguments can foreclose alternative relief. IP owners and inventors should work to maintain clear, dated records of inventive steps. Emails, lab notebooks, design documents, and other written communications contemporaneous with the inventive process can serve as important evidence in later disputes. Such documentation should be detailed enough to demonstrate a “definite and permanent idea” of the invention and preserved in ways that allow for later authentication, including metadata or third-party corroboration. Litigants in general must also be disciplined in their PTAB practice—requests for alternative relief such as correction of inventorship must be raised through the proper procedural mechanisms, not casually referenced in an unrelated briefing.