Global Health Solutions LLC v. Selner

Case: 23-2009 Document: 59 Page: 1 Filed: 08/26/2025

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

______________________

JONATHAN W.S. ENGLAND, Blank Rome LLP,

Washington, DC, argued for appellant. Also represented

by RUSSELL T. WONG, Houston, TX.

ANTHONY H. HANDAL, Norwalk, CT, argued for

appellee.

______________________

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2 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

Before STOLL, STARK, Circuit Judges, and GOLDBERG,

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

Honorable Mitchell S. Goldberg, District Judge,

1

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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4 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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6 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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8 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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10 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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12 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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14 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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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16 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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

Case: 23-2009 Document: 59 Page: 18 Filed: 08/26/2025

18 GLOBAL HEALTH SOLUTIONS LLC v. SELNER

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

Case: 23-2009 Document: 59 Page: 19 Filed: 08/26/2025

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.