HIP, Inc. v. Hormel Foods Corp., Appeal No. 2022-1696 (Fed. Cir. May 2, 2023)
In its only precedential patent opinion this week, the Federal Circuit reversed a district court determination that David Howard should be added as a joint inventor on appellant Hormel’s U.S. Patent No. 9,980,498, which is directed to a two-step method of precooking bacon or meat pieces. Accepting the facts of Mr. Howard’s contribution, the Court relied entirely on the disclosures of the ’498 patent itself to determine that the contribution was not sufficiently significant to warrant adding him as a joint inventor.
Mr. Howard had been an employee of appellee HIP’s predecessor, Unitherm Food Systems, which produced cooking equipment and with whom Hormel had consulted in developing the invention claimed in the ’498 patent. The claimed process generally involved preheating the bacon in a first cooking compartment with a microwave oven or other suitable heating source to create a layer of melted fat, and then transferring it to a second compartment that used steam to keep the internal temperature below the fat’s smoke point. As relevant to the appeal, independent claim 5 of the ’498 patent required that the preheating method in the first compartment be selected from a Markush group consisting of a microwave oven, an infrared oven, or hot air, and the district court found that Mr. Howard had supplied the concept of using an infrared oven. Hormel, by contrast, contended that Mr. Howard had only recommended a piece of equipment for testing.
Assuming that Mr. Howard supplied the concept of using infrared at the preheating step, the Federal Circuit found this was insufficient to establish Mr. Howard as a joint inventor of the claimed process, applying the three-factor test set forth in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998) (joint inventor must have (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) done more than merely explain to the real inventors well-known concepts and/or the current state of the art).
Specifically, the Federal Circuit found that HIP’s joint inventorship argument failed under factor 2 of the Pannu test, and that the contribution of an infrared preheating method was not significant compared the invention as a whole. In making this determination, the Court relied exclusively on the disclosures of the ’498 patent itself, noting that infrared heating is mentioned only once in the patent’s specification as part of a listing of suitable alternatives to microwave heating. By contrast, every other description of preheating in the specification, including every example, every figure, and every independent claim except for claim 5, specifically focused on microwave heating. Based on these disclosures, the Federal Circuit found that HIP had not shown by clear and convincing evidence that Mr. Howard was a joint inventor.
Notably, the Court recited but did not reach the parties’ arguments under Pannu factor 3, which requires that the purported joint inventor do “more than merely explain to the real inventors well-known concepts and/or the current state of the art” (phrasing from HIP v. Hormel). While Hormel had identified an infrared preheating step in a prior art publication, HIP argued that this was insufficient to show that the contribution was “well known” or the “state of the art,” and that more was required to satisfy this factor. Because the Federal Circuit decided the issue on the question of the significance of the contribution alone, it necessarily left any further clarification on that point for another day. The opinion can be found here.
By Jason Wrubleski
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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