In their latest Law360 column on recent notable Federal Circuit decisions, partners Sean Murray and Jeremiah Helm offer key takeaways from the court’s ruling in Global Health Solutions LLC v. Marc Selner last month.
The ruling marks the first time the Federal Circuit has reviewed a final written decision by the Patent Trial and Appeal Board in an America Invents Act (AIA) derivation proceeding, through which an issued patent can be invalidated by another inventor who proves that the named inventor derived the invention from the patent challenger.
Murray and Helm describe the new derivation proceeding and its role in the first-to-file patent system established under the AIA. With this context, the authors trace the history of the dispute between GHS and Selner from its beginnings before the Patent Trial and Appeal Board to the Federal Circuit’s ultimate affirmation of the PTAB’s ruling rejecting GHS’s derivation challenge.
Murray and Helm underscore the significance of this decision for practitioners and petitioners alike, writing that the ruling “provides an analytical framework for future derivation cases under the AIA.” The decision can help attorneys representing petitioners “predict the legal principles the PTAB and the Federal Circuit would likely apply to the petitioner’s derivation claim,” they add.
“Before the GHS decision, it was difficult to assess a potential derivation challenge’s odds of success,” the authors conclude. “It will now be much easier to determine whether such a challenge is worth the petitioner’s time and resources.”
Read the full article here.
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