Global Health Solutions LLC v. Marc Selner

United States Court of Appeals
for the Federal Circuit
______________________
GLOBAL HEALTH SOLUTIONS LLC,
Appellant
v.
MARC SELNER,
Appellee
______________________
2023-2009
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. DER2017-
00031.
______________________
Decided: August 26, 2025
______________________
J ONATHAN W.S. E NGLAND, Blank Rome LLP,
Washington, DC, argued for appellant. Also represented
by RUSSELL T. WONG, Houston, TX.
ANTHONY H. H ANDAL , Norwalk, CT, argued for
appellee.
______________________
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 2
Before STOLL , STARK, Circuit Judges, and G OLDBERG,
District Judge.1
STARK, Circuit Judge.
In 2011, Congress passed and the President signed the
Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-
29, 125 Stat. 284, 284-341 (Sept. 16, 2011) (“AIA”). Among
other innovations, “the AIA changed how priority is
determined, by converting the U.S. patent system from a
first-to-invent to a first-inventor-to-file system.” SNIPR
Techs. Ltd. v. Rockefeller Univ., 72 F.4th 1372, 1374 (Fed.
Cir. 2023). Prior to the AIA’s enactment, a first inventor
could obtain a patent even if a second inventor filed an
application for the same invention first, as long as the first
inventor could prove she was the first to invent. That was
the essence of our prior “first-to-invent” system. Under the
AIA, by contrast, a first inventor will generally not be
entitled to a patent if a second inventor files his application
first. This is a consequence of our transition to a “first-to-
file” system.
The AIA does, however, preserve a limited opportunity
for a first-inventor second-filer to obtain a patent despite
another person filing his application first: where the first-
filer derived the invention from the second-filer. That is,
the first-inventor second-filer can try to prove that she
conceived of the invention and communicated that
invention to the first-filer before he filed his patent
application. The AIA permits a first-inventor second-filer
to pursue such a claim against a first-filer in a derivation
proceeding.
This case marks our court’s first review of an AIA
derivation proceeding that was litigated in the Patent Trial
1 Honorable Mitchell S. Goldberg, District Judge,
United States District Court for the Eastern District of
Pennsylvania, sitting by designation.
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 3
and Appeal Board (“Board”). Global Health Solutions LLC
(“GHS”) and Marc Selner each filed a patent application
covering the same subject matter. After discovering
Selner’s application, GHS filed a petition for an AIA
derivation proceeding against Selner, contending that,
although Selner filed his patent application first, he was
not the true inventor. Rather, according to GHS, that
distinction belongs to its founder, Bradley Burnam, who is
listed as the inventor on GHS’ patent application.
Before the Board, GHS alleged that Burnam conceived
of the invention prior to Selner, and he communicated his
invention to Selner; therefore, Selner derived his purported
invention from Burnam. For this reason, GHS argued that
its patent application should be granted despite Selner’s
earlier filing date. The Board disagreed, ruling in Selner’s
favor.
GHS now appeals. Before us, GHS contends that the
Board committed multiple errors, each requiring reversal.
GHS additionally argues that, at minimum, we should
remand for the Board to consider GHS’ alternative request
that Burnam be named a co-inventor on Selner’s patent
application. As we see no merit in any of GHS’ contentions,
we affirm.
BACKGROUND
The Parties and Their Patent Applications
Selner filed U.S. Patent Application 15/549,111 (“’111
Application”), entitled “Ionic Nanovesicle Suspension and
Biocide Prepared Therefrom,” on August 4, 2017. The ’111
Application names Selner as its sole inventor. Four days
later, on August 8, 2017, GHS filed U.S. Patent Application
15/672,197 (“’197 Application”), “Petrolatum-Based
Delivery Systems And [sic] For Active Ingredients.” The
’197 Application names Burnam as sole inventor. Both
Applications claim priority from other patent applications
that are also subject to AIA standards. It is undisputed
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 4
that the pertinent applications are governed exclusively by
the AIA, that Selner is the first-filer, and that GHS is the
second-filer.
Both the ’111 and ’197 Applications (together,
“Applications”) claim a method for preparing a wound
treatment ointment, comprising nanodroplets of an
aqueous biocide (Polyhexamethylene Biguanide (“PHMB”))
permanently suspended in petrolatum jelly. Unlike prior
art methods for making PHMB-petrolatum jellies, the
methods disclosed in the two Applications do not require
emulsifiers, which can irritate a patient’s skin. Appx1081-
82. The Applications’ emulsifier-free ointments are
achieved using a manufacturing method rendering the
ointments’ aqueous biocide nanodroplets polar and
mutually-repelling, resulting in the nanodroplets becoming
permanently suspended without the assistance of an
emulsifier.
Although the parties disagree over details of the
method for preparing the ointment, for our purposes it is
sufficient to point to what they agree on: the modified
polarity, which results in the emulsifier-free composition,
arises from heating the petrolatum and PHMB separately,
to different temperatures, before mixing them together.
The Applications each claim the same or substantially the
same method for preparing the ointment (“the Invention”).
GHS’ Petition and the Board’s Institution Decision
On August 11, 2017, GHS filed a Petition to Institute
Derivation Proceeding Pursuant to 35 U.S.C. § 135
(“Petition”). GHS’ Petition alleged that Selner (who is
referred to as the “respondent” before the Board) derived
the claims of his ’111 Application from Burnam. On April
6, 2022, the Board instituted a derivation proceeding.
In its institution decision, the Board found that GHS’
Petition satisfied the regulatory requirements for an AIA
derivation proceeding. The Board explained that the
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 5
Petition identifies at least one patent claim owned or
applied-for by GHS that is (i) “[t]he same or substantially
the same as . . . the respondent’s claimed invention” and is
also (ii) “[t]he same or substantially the same as . . . the
invention disclosed to the respondent” by GHS’ inventor,
Burnam. Appx10-13; see also 37 C.F.R. § 42.405(a)(2)(i) &
(ii) (defining these as necessary grounds for standing in
derivation proceeding). Neither GHS nor Selner argued
against the Board’s findings with respect to these points
during the remainder of the Board proceedings or on
appeal. Consequently, it is undisputed that both
Applications claim the Invention.
The Board Proceedings and Decision
Before the Board, the parties explained that Burnam
and Selner met while Burnam was working for SteriWeb
Medical, Inc. (“SteriWeb”), a company Burnam co-founded
with Bertram Rosenthal. At that time, Selner, a doctor of
podiatric medicine with a background in chemistry, was
working for R&S Research, LLC (“R&S”), a company
Selner separately co-founded with the same Mr. Rosenthal.
SteriWeb and R&S shared office space and collaborated on
commercial projects.
In 2013, Burnam, Selner, and Rosenthal determined
that SteriWeb should make and sell a PHMB-petrolatum
jelly. While developing that product, they decided to create
a novel emulsifier-free PHMB-petrolatum jelly. In
furtherance of this goal, Burnam contacted a third-party
contract manufacturer, Pro-Tech Design & Manufacturing,
Inc. (“Pro-Tech”), and thereafter served as the point-of-
contact between Pro-Tech, on the one hand, and Selner and
Rosenthal, on the other. Later, Burnam separated from
SteriWeb and formed GHS.
The early attempts to create an emulsifier-free PHMB-
petrolatum jelly focused on “heavy, heavy mixing,” which
ultimately proved unsuccessful. Appx81. During this
time, someone – and the dispute presented to the Board
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 6
largely related to identifying who this person was –
conceived of an inventive process involving heating the
petrolatum and PHMB separately to different
temperatures before mixing them together.
As one would expect in a derivation proceeding, the
parties offer competing narratives of inventorship.
According to GHS, Burnam conceived of the process of
heating the petrolatum and PHMB to different
temperatures before mixing, and then told Selner about his
insight. By contrast, Selner says he discovered and
disclosed to Burnam that the critical step for achieving a
stable ointment without an emulsifier is heating the
petrolatum to a point at which it retains its “wax
properties” and has a “loose gel consistency,” before mixing
it with the separately-heated PHMB. Open. Br. at 6;
Appx2598-99.
After reviewing the entire record and hearing oral
argument, the Board found that GHS proved Burnam,
conceived the Invention and communicated it to Selner via
email by 4:04 p.m. on February 14, 2014. Appx26-27, 51.
But the Board 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. Appx52. After finding Selner proved
earlier conception, the Board determined that he could not
have derived the Invention from Burnam and, thus, GHS
failed to prove its derivation claim. Appx51-52.
In reaching these conclusions, the Board found that
Selner presented sufficient evidence corroborating his
inventorship. This evidence consisted principally of a
declaration from a law clerk to Selner’s attorney, who
testified that she accessed Selner’s web-based email
account hosted by AOL, Inc. (“AOL”) and, without
modification, exported the emails that were later
introduced into evidence. The Board also rejected GHS’
argument that, given the nature of the Invention, actual
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 7
reduction to practice was needed in order to complete
conception.
GHS timely appealed. The Board had jurisdiction
under 35 U.S.C. § 6(b)(3) and we have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
LEGAL STANDARDS
We review the Board’s legal determinations de novo
and its underlying factual determinations for substantial
evidence. See Brown v. Barbacid, 276 F.3d 1327, 1332
(Fed. Cir. 2002). While the ultimate question of whether a
patent applicant derived a claimed invention from another
inventor is one of fact, the determination of whether the
accused deriver conceived is a question of law, which is
based upon subsidiary factual findings. See Price
v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993).
We review the Board’s evidentiary rulings for abuse of
discretion. See Acceleration Bay, LLC v. Activision
Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018). The
Board abuses its discretion when it makes “a clear error of
judgment in weighing the relevant factors” or bases its
decision “on an error of law or clearly erroneous fact
finding.” ArcelorMittal Atlantique et Lorraine v. AK Steel
Corp., 908 F.3d 1267, 1277 (Fed. Cir. 2018).
“We have previously made clear that the harmless
error rule applies to appeals from the Board just as it does
in cases originating from district courts. Thus, to prevail
the appellant must not only show the existence of error, but
also show that the error was in fact harmful because it
affected the decision below.” In re Watts, 354 F.3d 1362,
1369 (Fed. Cir. 2004) (internal citations omitted); see also
28 U.S.C. § 2111 (“On the hearing of any appeal . . . the
court shall give judgment after an examination of the
record without regard to errors or defects which do not
affect the substantial rights of the parties.”).
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 8
DISCUSSION
We begin our analysis by setting out some of the
similarities, but also important differences, between
derivation claims as they were litigated prior to enactment
of the AIA and derivation proceedings under the AIA.
There seems to have been some confusion on these points
during the Board proceedings.
Then we turn to the specifics of the derivation
proceeding we are reviewing. As we explain, any error
committed by the Board in its approach to GHS’ claim of
derivation or to Selner’s affirmative defense was harmless.
Each of the specific grounds GHS raises for reversal – lack
of independent corroboration for Selner’s invention story,
improperly requiring GHS to disprove Selner’s alleged
conception, and failure to apply the doctrine of
simultaneous conception and reduction to practice – lacks
merit. Finally, we address GHS’ alternative request that
Burnam be named a co-inventor on Selner’s ’111
Application, which GHS failed to preserve.
I
AIA Derivation Proceedings Resemble, But Are
Meaningfully Different From, Pre-AIA Proceedings
Involving Derivation Claims
Our existing case law involving derivation claims often
presents these claims in the context of an interference (a
type of proceeding that is not applicable to AIA patents),
which is used to determine who is entitled to priority of
invention under our prior first-to-invent law. See 35 U.S.C.
§ 135(a) (pre-AIA). An interference “focuses on
[determining] which party first invented the subject
matter.” Price, 988 F.2d at 1190.
“To prove derivation in an interference proceeding, the
party asserting derivation must establish prior conception
of the claimed subject matter and communication of the
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 9
conception to the adverse claimant.” Cooper v. Goldfarb,
154 F.3d 1321, 1332 (Fed. Cir. 1998).
When the AIA moved the United States from a first-to-
invent to a first-to-file system, Congress eliminated
interferences for patents and applications governed by AIA
standards. See SNIPR Techs., 72 F.4th at 1374-76. Thus,
when AIA law governs, a first-inventor second-filer must
prove the first-filer derived his purported invention from
her. See id. at 1376 (“Where interference proceedings
determined who was the first inventor, derivation
proceedings determine whether an earlier filer had derived
the claimed invention from a later filer.”) (comparing 35
U.S.C. §§ 102(g) & 135 (pre-AIA) with 35 U.S.C. §§ 135 &
291 (AIA)).
The AIA transformed 35 U.S.C. § 135 from a law
governing interferences (35 U.S.C. § 135 (pre-AIA)) to one
governing derivation proceedings. Section 135 now
provides, in part, that the Board:
shall determine 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 earlier
application claiming such invention was filed.
35 U.S.C. § 135(b); see also 35 U.S.C. § 291 (providing that
derivation claims may also be filed by patent owner against
another patent owner via civil action in district court).
Congress did not, however, describe with any
specificity what a petitioner in an AIA derivation
proceeding must prove to show that “an inventor named in
the earlier application derived the claimed invention from
an inventor named in the petitioner’s application.”
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 10
35 U.S.C. § 135(b).2 As “Congress is presumed to be aware
of an administrative or judicial interpretation of a statute,”
Lorillard v. Pons, 434 U.S. 575, 580 (1978), we conclude
that the required elements of a derivation claim have not
changed other than to the extent necessary to reflect the
transition from a first-to-invent to a first-to-file system of
patent administration.
Proving derivation in a pre-AIA interference required
the party asserting derivation to demonstrate (i)
conception of the claimed subject matter prior to the
adverse claimant’s conception, and (ii) communication of
the conception to the adverse claimant. See Cooper, 154
F.3d at 1332. Likewise, in an AIA derivation proceeding,
proving derivation requires a two-part showing, involving
conception and communication. Under the AIA, however,
because we no longer focus on who is the first-to-invent, the
inquiry in an AIA derivation proceeding centers on
whether the petitioner conceived and communicated the
invention before the respondent filed his application.
Accordingly, 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.3 A respondent can overcome the
2 Sometimes, as in this case, the petitioner is different
than the petitioner’s inventor. Here, the petitioner is GHS,
an entity, while petitioner’s inventor is Burnam. For
simplicity, throughout this opinion we may refer to
“petitioner” when we mean “petitioner’s inventor,” as is
clear from the context.
3 This case does not require us to decide whether a
party’s burden of proof in an AIA derivation proceeding is
preponderance of the evidence or clear and convincing
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 11
petitioner’s showing by proving independent conception
prior to having received the relevant communication from
the petitioner.
In general, under the AIA, unlike before, the inventor
who files first will retain patent rights as long as he did not
derive his claimed invention from another. For this reason,
while our derivation cases arising in the context of pre-AIA
interferences may provide helpful guidance, they must be
carefully considered before being applied in AIA derivation
proceedings. Judges must take care not to allow
interference proceedings to be inadvertently revived
through AIA derivation proceedings.
II
The Board’s Focus On Earliest Conception
Was Harmless Error
Neither the parties nor the Board appears to have
appreciated the difference in the derivation standard
governing AIA derivation proceedings as compared to pre-
AIA interferences. Although the Board erred in focusing
on whether Burnam or Selner was the first-to-invent, see
Appx6 (“The party asserting derivation must establish
prior conception of an invention . . . .”), this error was
harmless.
As we have explained, the concentration on first-to-
invent, while a hallmark of pre-AIA interferences with
evidence. In an interference, a party trying to prove
derivation had to do so by clear and convincing evidence.
See Price, 988 F.2d at 1190-94. Nevertheless, here both
parties urged the Board to apply a preponderance of the
evidence standard, and the Board did so, to both
petitioner’s affirmative case and respondent’s affirmative
defense. Appx5. Neither party has asked us to review this
issue on appeal.
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 12
derivation claims, is no longer dispositive in an AIA
derivation proceeding. To prevail in the latter, a first-to-
file respondent like Selner need only prove that his
conception was independent. Selner chose to prove his
independent conception by proving that he conceived
before Burnam. In doing so, Selner also overcame GHS’s
prima facie showing. Thus, while it was error for the Board
to predicate its conclusions on Selner being the first-to-
conceive, this error does not affect the Board’s decision: in
finding Selner was the first-to-invent, the Board also
indirectly determined that he independently conceived and,
thus, did not derive his invention from Burnam.
Accordingly, the Board’s erroneous focus on who was first-
to-invent amounts to no more than harmless error.
We now turn to GHS’ arguments on appeal.
III
GHS’ Arguments For Reversal Lack Merit
GHS seeks reversal of the Board’s judgment in favor of
Selner on several grounds. First, GHS argues that the
Board erred by not requiring Selner to corroborate his
claim of inventorship with evidence independent of
himself. Second, GHS contends that the Board improperly
shifted the burden to GHS to disprove Selner’s purported
conception, rather than making Selner prove his own
conception. Third, and finally, GHS asserts that the Board
should have applied the doctrine of simultaneous
conception and reduction to practice. We are not
persuaded by these arguments.
A
The Board’s Findings Are Supported By Adequately
Corroborated Evidence
The Board did not err in finding that Selner proved
independent conception with evidence that adequately
corroborated his testimony.
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 13
As the Board recognized, Appx6, the rule of reason test
is used to determine whether an alleged inventor’s
testimony is sufficiently corroborated. See Blue Gentian,
LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1357 (Fed. Cir.
2023) (“[A] ‘rule of reason’ test is applied where ‘all
pertinent evidence is examined in order to determine
whether the inventor’s story is credible.’”) (quoting Sandt
Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344,
1350 (Fed. Cir. 2001)). In undertaking such an analysis,
the Board must consider “all pertinent evidence” and then
determine whether the “inventor’s story” is credible.
Sandt, 264 F.3d at 1350.
Corroboration of inventor testimony is required
because an alleged inventor “might be tempted to describe
his actions in an unjustifiably self-serving manner in order
to obtain a patent.” Shu-Hui Chen v. Bouchard, 347 F.3d
1299, 1309 (Fed. Cir. 2003); see also Price, 988 F.2d at 1195
(noting that even “honest witnesses can convince
themselves that they conceived the invention of a valuable
patent”). “Documentary or physical evidence that is made
contemporaneously with the inventive process provides the
most reliable proof that the inventor’s testimony has been
corroborated.” Sandt, 264 F.3d at 1350-51; see also id. at
1350 (“Although each case must be decided in view of its
own facts, the determination is not utterly unstructured.”).
The Board proceeded in a manner consistent with our
precedents. After noting GHS was not challenging the
authenticity of the evidence presented by Selner, Appx33
n.14,4 the Board determined that the emails (retrieved by
Selner’s attorney’s law clerk from Selner’s web-based AOL
email account) were documentary evidence generated
contemporaneously with the inventive process and, as
4 GHS did not move to exclude Selner’s February 14
emails. Nor does GHS dispute the authenticity of the
emails on appeal.
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 14
such, placed substantial weight on them in finding that
Selner’s invention story was adequately corroborated, see,
e.g., Appx32-34 (crediting Selner’s evidence that he sent,
and Burnam received, the February 14 emails, based on
the messages themselves, their timestamps, Selner’s
attorney’s law clerk’s retrieval of them, and that “AOL is a
well-known email service provider who stores all the
emails of its account holders that are sent or received using
an AOL email address”).
The Board continued its analysis, finding “other
circumstantial evidence . . . reinforces the testimony of
[Selner’s counsel’s law clerk] and makes the case of
corroboration even stronger, although such additional
evidence is unnecessary.” Appx34. For example, the Board
found that the language in Burnam’s email to Selner at
4:04 p.m. on February 14 “bears substantial resemblance
to the language used by Marc Selner” in his email to
Burnam hours earlier, which in the Board’s view was
“circumstantial evidence that Marc Selner did send [the
12:55 p.m. email] . . . to Bradley Burnam.” Appx35. All of
this, in the Board’s view, further supported the reasonable
inference that Burnam received and copied what Selner
had previously disclosed to him. See id. Additionally, the
Board noted that a few months later, on April 24, 2014,
Burnam sent an email to Selner’s daughter in which
Burnam himself referred to the Invention (which he
described as “magic goo”) as having been “invented” by
Selner. Appx35-37; see also Appx2698.
We find GHS’ assertions that the Board committed
legal error in its application of the independent
corroboration requirement unavailing. Contrary to GHS’
insistence, the Board did not “generally disregard[]” GHS’
evidence. Open. Br. at 22. Instead, the Board considered
the entire record and made findings of fact, all of which are
supported by substantial evidence. See Appx15-52. GHS
faults the Board for relying on the emails because their
evidentiary value “is solely based on communications from”
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 15
Selner, Open. Br. at 37, but the Board did not err by placing
substantial weight on the emails as corroborating evidence.
The emails, whose authenticity is not challenged, do not
require independent corroboration. See Mahurkar v. C.R.
Bard, Inc., 79 F.3d 1572, 1577-78 (Fed. Cir. 1996) (“This
court does not require corroboration where a party seeks to
prove conception through the use of physical exhibits. The
trier of fact can conclude for itself what documents show,
aided by testimony as to what the exhibit would mean to
one skilled in the art.”) (internal citation omitted); see also
Brown, 276 F.3d at 1335 (same). In any event, the
metadata generated by the web-based mail server –
including the date and time the messages were sent and
received, as well as the addresses of the sender and
recipient – was not authored by Selner. That metadata is
independent of Selner’s own statements and documents.5
In sum, the Board did not err in its application of the
law and did not abuse its discretion in its evidentiary
rulings. It had substantial evidence for each of its findings
of fact. GHS has demonstrated no reversible error.
B
The Board Held Each Party To Its Burden of Proof
GHS next contends that the Board improperly shifted
the burden to GHS to disprove Selner’s alleged conception.
Again, we disagree.
GHS’ insistence that the Board merely found that
Selner possessed the Invention, without requiring Selner
also prove that he conceived of it, rests on an unfair and
5 This distinguishes this case from Apator Miitors ApS
v. Kamstrup A/S, 887 F.3d 1293, 1296 (Fed. Cir. 2018), in
which a party failed to produce “any evidence of . . .
conception that is not supported solely by [the inventor]
himself” (emphasis added).
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 16
incorrect reading of the Board’s decision. The Board
carefully considered the evidence before it and the parties’
arguments and, after pages of analysis, found that Selner
proved conception. The Board did not find only that Selner
proved possession, as opposed to a complete conception of
the Invention. And at no point did the Board require GHS
to prove that Selner did not conceive the Invention.
In short, the Board properly held each party to its
burden of proof. GHS identifies no reversible error.
C
Selner Did Not Have To Show Reduction
To Practice To Prove Conception
Finally, GHS accuses the Board of failing “to adjudicate
a threshold and outcome determinative issue,” namely
“whether the subject stable suspension composition and
method of manufacturing it fall into the category of
inventions that require simultaneous conception and
reduction to practice” in order for conception to be
complete. Open. Br. at 47. In GHS’ telling, “the Board
recognized that GHS raised the issue that reduction to
practice was necessary for conception” but “failed to
consider this argument” in its analysis. Id. (citing Appx44).
GHS is wrong. The Board neither ignored GHS’ argument,
nor erred in rejecting it.
The Board addressed GHS’ argument that “reduction
to practice is a requisite for complete conception” of the
Invention over the course of three pages of its decision.
Appx44-46. As the Board recognized, generally conception
can occur without an inventor actually reducing the
invention to practice. Appx46; see also, e.g., Pfaff v. Wells
Elecs. Inc., 525 U.S. 55, 60 (1998). There are exceptions,
including where “an inventor is unable to envision the
detailed [structure of his invention] so as to distinguish it
from other materials, as well as a method for obtaining it.”
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 17
(Fed. Cir. 1991). Contrary to GHS’ suggestion, however,
we have not held that actual reduction to practice is always
necessary for complete conception to occur in unpredictable
fields of invention. In fact, we have rejected this
contention. See Burroughs Wellcome Co. v. Barr Labs.,
Inc., 40 F.3d 1223, 1229 (Fed. Cir. 1994).
GHS cites no authority, and provides no persuasive
reason, for requiring Selner to have reduced the Invention
to practice in order to have fully conceived of it. To the
contrary, Selner’s conception was complete at the point at
which 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.”
Amgen, 927 F.2d at 1206. Substantial evidence supports
the Board’s factual finding that Selner had reached these
points by 12:55 p.m. on February 14, 2014 –
notwithstanding the fact that he never actually reduced
the Invention to practice – as illustrated by the fact that
Selner explained the Invention in detail to Burnam in his
February 14 email sent at 12:55 p.m.
Actual reduction to practice was not required for
complete conception of the Invention. The Board did not
commit reversible error.
IV
GHS Failed To Preserve Its Alternative Request That
Selner Be Named A Joint Inventor
In the alternative, GHS argues that, if we affirm the
Board’s finding that Selner proved independent
conception, we should remand for the Board to determine
whether Burnam should be named as a co-inventor on
Selner’s ’111 Application. We will not do so. GHS’ request
to correct inventorship was not properly presented to the
Board and is forfeited.
Under the Board’s rules of practice, a contested request
for correction of inventorship in a patent application must
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 18
be made in a separate motion under 37 C.F.R. § 42.22,
accompanied by the processing fee as well as an application
data sheet identifying each inventor. See 37 C.F.R. § 1.48(i)
(citing 37 C.F.R. §§ 1.48(a), 42.22). Section 42.22(a) further
requires such a motion to include a “statement of the
precise relief requested” and a “full statement of the
reasons for the relief requested, including a detailed
explanation of the significance of the evidence including
material facts, and the governing law, rules, and
precedent.” 37 C.F.R. § 42.22(a).
GHS failed to comply with these requirements. It
never filed a separate motion. Instead, the only manner by
which it put its request before the Board was via a single
sentence in its Petition:
In addition, or in the alternative, [GHS] seeks a
finding under 35 U.S.C. § 135(a)(1) that Burnam is
joint inventor of at least one claim in the ’111
Application and an order naming him as an
inventor on the ’629 and ’111 Applications.
Appx343. This is not the required separate motion. Nor is
it a detailed explanation of the reasoning supporting joint
inventorship.
Moreover, subsequent to including this one conclusory
sentence in its Petition, GHS made no reference
whatsoever to its request for correction of inventorship.
GHS did not attempt to prove or even argue, in its briefing
or at the oral hearing, that Burnam is a co-inventor.
Under these circumstances, any error the Board may
have committed in not expressly addressing an
undeveloped request for alternative relief, buried in a
petition and never referenced again, is attributable to GHS’
own failings and is harmless. See generally In re Steed, 802
F.3d 1311, 1321 (Fed. Cir. 2015) (holding that Board’s
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GLOBAL HEALTH SOLUTIONS LLC v. SELNER 19
failure to rule on a motion that “did not conform to Board
regulations” did not amount to “reversible error”).6
CONCLUSION
We have considered GHS’ remaining arguments and
find they lack merit. Accordingly, we affirm the Board’s
judgment for Selner.
AFFIRMED
COSTS
Each party shall bear its own costs.7
6 We recognize that the Board did consider, and deny,
Selner’s similar request that he be named as sole inventor
on GHS’ ’197 Application. Appx54; see also Appx516. This
was despite the fact that Selner also failed to file a separate
motion or explain in detail his reasoning for his requested
relief. Any error in the Board’s treatment of Selner’s
request is also harmless as it, too, has no impact on the
disposition of this appeal.
7 We reject Selner’s characterization of this case as a
“brazen, meritless appeal” warranting sanctions. Resp. Br.
at 42.
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