Federal Circuit affirmed the PTAB in the first appeal of a derivation proceeding under the AIA. The court stated that required elements of a derivation claim are unchanged except to reflect the transition to a first-to-file system. The parties collaborated on a wound-treatment ointment with PHMB permanently suspended in petrolatum without emulsifiers. The dispute centered on which inventor conceived heating petrolatum and PHMB to different temperatures to render PHMB nanodroplets polar and mutually repelling so they remain suspended. The Board found both conceived the invention the same day, but timestamps on Selner's AOL emails showed conception about three hours earlier, and Selner prevailed.
Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Global Health Solutions LLC v. Selner affirming the Patent Trial and Appeal Board (PTAB) in the first appeal of a derivation proceeding under the America Invents Act (AIA) litigated at the Board. Although the Federal Circuit corrected the PTAB on the proper analysis for derivation proceedings in light of the AIA's related first-to-file provisions,
Selner and Bradley Burnham, the latter listed as the inventor on GHS' competing patent application, collaborated on the development of a wound treatment ointment comprising polyhexamethylene biguanide (PHMB), an aqueous biocide, permanently suspended in petrolatum jelly without the use of skin-irritating emulsifiers. In the derivation proceeding, the dispute centered on which inventor conceived of heating the petrolatum and PHMB separately to different temperatures to render nanodroplets of the aqueous biocide polar,
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