Every Move You Make, Every Email (Breath) You Take: The Patent “Paper” Trail

You might think every move you make and every email you take are nobody’s business but your own. Think again. In the first Federal Circuit decision interpreting America Invents Act (AIA) derivation proceedings under 35 U.S.C. § 135, the court in Global Health Solutions LLC v. Selner affirmed the Patent Trial and Appeal Board’s (Board) ruling that Global Health Solutions LLC (GHS) failed to prove that first-filer Selner derived the claimed wound-treatment invention from GHS’s inventor, Burnam. Contemporaneous emails, timestamps and server records helped tell the story. In this case, the electronic “paper” trail did more than refresh anyone’s memory; it helped decide who had the better claim to the invention.

Both parties filed patent applications in August 2017 claiming the same emulsifier-free polyhexamethylene biguanide (PHMB)/petrolatum nanodroplet formulation. The dispute focused on who conceived the crucial feature of heating PHMB and petrolatum to different temperatures before mixing. The Board found that Burnam communicated the invention to Selner by 4:04 p.m., but Selner had already independently conceived it by 12:55 p.m. on the same day. The Federal Circuit affirmed.

The Federal Circuit condensed AIA derivation into a two-part showing:

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. A respondent can overcome the petitioner’s showing by proving independent conception prior to having received the relevant communication from the petitioner.

Selner’s contemporaneous emails, retrieved from AOL’s server by a law clerk, formed the backbone of the corroboration. The court explained that documentary evidence generated contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated. Specifically, the email metadata including timestamps, routing data and server logs was independent evidence not authored by the inventor. Similar language in the parties’ emails and a later email from Burnam referring to the invention as Selner’s “magic goo” strengthened Selner’s argument and also provided reliable proof.

GHS argued that the invention required simultaneous conception and reduction to practice for a complete conception. However, the Federal Circuit disagreed:

[W]e 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.

Key Takeaways

• Derivation for first-to-file ≠ first-to-invent. Under the AIA, the only question is whether the petitioner conceived and communicated before the respondent filed—not who invented first.
• Digital evidence wins cases. Independently generated metadata, timestamps and contemporaneous emails can provide the evidentiary proof.
• Reduction to practice is generally not needed for most inventions; describing the invention with specificity is generally sufficient for conception.

Practice Tips for Patent Drafters

• Document conception in real-time. Encourage inventors to document insights in dated emails, project logs or cloud systems with preserved metadata.
• Use controlled communication channels. Corporate email with intact server logs is generally better than personal accounts from an evidentiary standard (though AOL saved Selner in this case).
• Memorialize disclosures to authorized recipients. Written summaries and dated transmittals can later establish “communication” for §135 purposes.
• File early. Early provisional filings minimize derivation exposure and protect against a later collaborator or other third-party claims.

Practice Tips for Patent Litigators

• Tell a clean chronology. A well-reasoned narrative combining emails, communications and inventor conduct can provide the necessary proof.
• Argue independent conception—not priority. A respondent need only show they conceived the invention before receiving petitioner’s disclosure to defeat a claim of derivation.
• Leverage metadata as corroboration. Server-side timestamps and routing data should satisfy the independent-corroboration requirement to prove independent conception.

Conclusion

The lesson for inventors and patent lawyers is simple: document every move, preserve every email and pay attention to every timestamp. Years later, recollections may blur, stories may diverge and a seemingly routine message may become the star witness. The paper trail may be electronic, but its impact is real. And when patent priority is on the line, you never know which email will be the one that makes the difference.

is a partner in Manatt, Phelps & Phillips’ Intellectual Property Protection and Enforcement business unit and is the author of Patent Prosecution: Law, Practice, and Procedure, 2025 Edition, and Constructing and Deconstructing Patents (2d Edition).

Global Health Solutions LLC v. Marc Selner, 148 F.4th 1363, 2025 USPQ2d 1106, 2025 WL 2446374 (Fed. Cir. 2025).

Id., 148 F.4th at 1371-72.

Id., 148 F.4th at 1375.