Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

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 was litigated before the Patent Trial and Appeal Board.  The Court affirmed the Board’s finding that appellee Marc Selner was the proper inventor for his first-filed application claiming an emulsifier-free preparation of biocidal petrolatum jellies, rejecting petitioner GHS’s claims that Selner derived the invention from its founder Bradley Burnam.  In the process, the Court explained key differences between derivation proceedings under the America Invents Act and the pre-AIA “interference” proceedings that they replaced.

The facts of the case are straightforward.  Selner and Burnam had worked together in 2013-2014 to try and solve the problem of suspending an aqueous biocide (Polyhexamethylene Biguanide or “PHMB”) in a petrolatum medium without the use of an emulsifier.  Their later, separate patent applications each claimed the solution of depolarizing the PHMB by heating it to a different temperature than the petrolatum before mixing them together, and the factual dispute before the Board concerned who conceived that invention.  While the Board found that Burnam had communicated conception of the invention to Selner in a February 14, 2014 email, the Board also found that Selner had conceived of the invention by earlier that same day, as collaborated in part by a different email Selner had sent to Burnam about three hours earlier.  Accordingly, the Board rejected GHS’s derivation arguments and found for Selner.

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ALSO THIS WEEK

Hyatt v. Stewart, Appeal Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070, 2024-1992, -1993, – 1994, -1995 (Fed. Cir. Aug. 29, 2025)

Back on appeal after a remand trial, the Federal Circuit affirmed the district court’s finding of prosecution laches concerning more than 1000 patent claims that have been in prosecution since the Clinton administration.  We provided an extensive write-up about this case in 2021, following the Federal Circuit’s decision in a first appeal, Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021), which can be found here.  In that earlier decision, the Federal Circuit reversed the district court’s decision rejecting the Patent Office’s assertion of prosecution laches as a defense to Hyatt’s Section 145 actions.  The Court found not only that prosecution laches was viable as a defense to Section 145 actions, but that the Patent Office had established a prima facie case of prosecution laches.  The Court remanded for further consideration on the question of whether the Patent Office experienced prejudice as a result of Hyatt’s conduct.  Following a three-week bench trial on that issue on remand, the district court held that all of the patent claims at issue were barred by prosecution laches.  The issues in this second appeal were narrow.  The Court rejected Hyatt’s assertion that prosecution laches does not apply in Section 145 actions, citing its decision  in the prior appeal and holding that the law-of-the-case doctrine bars revisiting that issue.  The Court also rejected Hyatt’s argument that the district court abused its discretion in finding that prosecution laches applies here, citing the district court’s extensive analysis on the issue.  The Court also rejected separate cross-appeals filed by Hyatt, affirming the district court’s finding that it did not have Article III jurisdiction over those claims.

The opinion can be found here.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder