News & Analysis as of

First-to-File

Wilson Sonsini Goodrich & Rosati

Federal Circuit Issues First Precedent on AIA Derivation Proceedings Regarding Global Health Solutions v. Selner

The U.S. Court of Appeals for the Federal Circuit (the court) issued its first precedential opinion to an appeal from a derivation proceeding at the Patent Trial and Appeal Board (PTAB) under the Leahy-Smith America Invents...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Reviews First AIA Derivation Proceeding: The Early Bird Gets the Worm

On August 26, in Global Health Solutions LLC v. Selner, the Federal Circuit reviewed its first derivation proceeding. The patent applications at issue claimed the same or substantially the same method for preparing an...more

A&O Shearman

Federal Circuit Affirms PTAB in First Post-AIA Derivation Proceeding Review

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On August 26, 2025, in its first post-America Invents Act (“AIA”) review of a derivation proceeding before the Patent Trial and Appeal Board (“PTAB” or “Board”), the United States Court of Appeals for the Federal Circuit...more

K&L Gates LLP

Federal Circuit’s First Foray Into AIA-Derivation Proceedings

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The Federal Circuit recently issued its first review of a derivation proceeding, a rarely used proceeding provided for by the America Invents Act (AIA)....more

McDermott Will & Schulte

Derivation proceedings highlight race to file under AIA

In one of the first decisions regarding derivation proceedings under the America Invents Act (AIA), the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that an application...more

Knobbe Martens

Federal Circuit Review | August 2025

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In FMC Corp. v. Sharda USA, LLC, Appeal No. 24-2335, the Federal Circuit held that the district court erred by construing a claim term based on disclosures made in a provisional application and an unasserted patent in the...more

Knobbe Martens

Derivation ≠ Interference: First to File Keeps Rights if Conception Was Independent

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GLOBAL HEALTH SOLUTIONS LLC v. SELNER - Before Stoll, Stark, and Goldberg (sitting by designation). Appeal from the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board’s rejection of a derivation challenge,...more

Foster Swift Collins & Smith

IP Monday: Provisional vs. Non-Provisional Patents — When to File What

In the U.S., patent rights generally go to the first inventor to file — not the first to invent. Filing early secures your place in line. But the type of application you choose (provisional vs. non-provisional) can...more

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

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The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

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In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more

Jaburg Wilk

International Trademark Protection: How to Safeguard Your Brand Globally

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U.S. trademark rights stop at the border. If your business operates internationally or plans to expand abroad, you need to understand how to protect your trademark rights beyond the United States. Unlike the U.S., many...more

Ward and Smith, P.A.

First-to-File: A Game-Changer in US Patent Law

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The United States patent system underwent a significant change with the enactment of the First-Inventor-to-File (FITF) provision of the America Invents Act, which became effective on March 16, 2013. The FITF provision...more

Bradley Arant Boult Cummings LLP

False Claims Act: 2024 Year in Review

Bradley’s Government Enforcement and Investigations Practice Group is pleased to present the False Claims Act: 2024 Year in Review, our annual review of significant False Claims Act (FCA) cases, developments and trends. ...more

Foley & Lardner LLP

Stellantis and UAW File Dueling Motions to Consolidate String of Lawsuits Regarding Strike Threats on Opposite Coasts

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The nationwide fight continues between Chrysler owner Stellantis and the United Auto Workers Union (“UAW”) and its local chapters regarding the UAW’s threats to strike if Stellantis does not move forward with planned...more

Mayer Brown

Chinese IP Agency Sanctioned for Acting for Trademark Hijackers

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Brand owners in China continue to grapple with recurring problems of trademark squatting, hijacking, and infringement. Some malicious trademark agencies employ complex strategies to assist individuals or entities acting in...more

Morrison & Foerster LLP - Government...

Ninth Circuit Sits En Banc To “Tidy Up The Law” On The False Claims Act’s First-To-File Rule

In September 2024, the Ninth Circuit reversed in part a district court’s dismissal of an action under the False Claims Act (FCA or the “Act”) for lack of jurisdiction under the Act’s First-to-File Rule and held that the...more

WilmerHale

Federal Circuit Patent Watch: Arguments Not Presented in PTAB Request for Rehearing Are Not Necessarily Forfeited on Appeal

WilmerHale on

Precedential and Key Federal Circuit Opinions - SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll) - Dyk, J. The Court affirmed the Board’s decision...more

Bass, Berry & Sims PLC

False Claims Act Decisions to Know from Q2 2024

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In case you missed it, this post recaps some key False Claims Act (FCA) decisions and case updates from the second quarter of this year. Courts weighed in on the FCA’s anti-retaliation provision, its first-to-file bar, and...more

Schwabe, Williamson & Wyatt PC

Two Separate Lawsuits Challenge the Federal Trade Commission

Two separate lawsuits have challenged the Federal Trade Commission’s ban on non-compete ‎provisions and agreements: Chamber Of Commerce Of The United States Of America et al. v. ‎Federal Trade Commission et al., Case No....more

Seyfarth Shaw LLP

FTC Non-Compete Ban Lawsuits Update: Eastern District of Texas Stays Chamber of Commerce Suit in Favor of Ryan LLC as...

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On May 3, 2024, the United States District Court for the Eastern District of Texas entered an Order staying the proceedings in Chamber of Commerce v. FTC by granting the FTC’s motion to apply the first-to-file doctrine, in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): SNIPR Technologies Ltd. v. Rockefeller University, 72...

As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more

Pietragallo Gordon Alfano Bosick & Raspanti,...

Kaiser Scores First-To-File Dismissal In Medicare Advantage Fraud Suit

Medicare Advantage Organizations have come under increased fire as their parent companies continue to acquire more healthcare practices across the country. Experts suggest that this vertical integration has led to inflated...more

Proskauer - Minding Your Business

A Name is Not Enough: Ninth Circuit Finds No Standing for First-to-File Shareholder to Appeal Securities Class Action

Imagine you are an investor and you decide to file a lawsuit after a company that you invest in suffers a stock drop. When you get to the courthouse, you find that you are the first person to file a federal securities class...more

Sheppard Mullin Richter & Hampton LLP

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more

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