In a May 2, 2023 precedential opinion in HIP, Inc. v. Hormel Foods Corporation (available here), the Federal Circuit reversed an order from the District of Delaware adding an individual as a joint inventor to U.S. Patent No. 9,980,498, a Hormel Foods Corporation (“Hormel”) patent directed to methods of precooking bacon and meat pieces (the ‘’498 patent” or the “Patent”).

 

By way of background, Unitherm Food Systems, Inc. (“Unitherm”, now HIP, Inc. (“HIP”)), entered into a joint agreement with Hormel to develop an oven to be used in a two-step cooking process.  Hormel conducted pork loin testing relating to color development during which it used both an infrared oven and a more conventional spiral oven.  David Howard, Unitherm’s president, alleged that he disclosed the infrared preheating concept during meetings with Hormel and the testing process.

 

Hormel conducted additional bacon testing using Unitherm’s mini spiral test oven, but experienced problems with that oven and testing at Unitherm’s facility.  Thereafter, Hormel leased the oven and moved it to its own R&D facility to continue testing.  That testing resulted in a two-step cooking process, the first step involving preheating the bacon and the second step involving cooking the meat in a superheated steam oven.  Thereafter, Hormel filed a non-provisional patent application listing four inventors, but not Unitherm’s president.  That application was later issued as the Patent.

 

In its lawsuit, HIP alleged that Mr. Howard was either the sole inventor or a joint inventor of the Patent.  HIP argued that Mr. Howard had contributed to at least one of several claimed features, including preheating with an infrared oven as set forth in claim 5.  After a bench trial, the judge held that Mr. Howard was not the sole inventor, but he was a joint inventor based on his contribution of an infrared preheating concept. The court ordered the USPTO to add Mr. Howard as a joint inventor on the Patent and issue a Certificate of Correction.

 

On appeal to the Federal Circuit, Hormel argued that Mr. Howard is not a joint inventor because the alleged contribution of preheating with an infrared oven was well known and part of the state of the art, and because it was not significant when measured against the scope of the full invention.  Hormel also argued that HIP had not met its burden of establishing by clear and convincing evidence that Mr. Howard is a joint inventor because his testimony was insufficiently corroborated.

 

To qualify as joint inventor, a person must make a significant contribution to the invention as claimed.  Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).  The burden of proving that an individual should have been added as an inventor to an issued patent is a “heavy one.”  Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) (quoting Garrett Corp. v. United States, 422 F.2d 874, 880 (Ct. Cl. 1970)).

 

In Pannu, the Federal Circuit set forth a three-part test for determining inventorship, stating that a joint inventor must contribute in a significant manner to the conception or reduction to practice of the invention, make a contribution to the invention that is not insignificant, and do more than explain well-known concepts or the current state of the art.  Pannu, 155 F.3d at 1351.  The failure to meet any one factor is dispositive on the question of inventorship.  Id.

 

On appeal, the Federal Circuit found that Mr. Howard could not be a co-inventor since his alleged contribution of preheating bacon or meat pieces using an infrared oven was “insignificant in quality.”  Slip Op. at 10.  Among other things, the Federal Circuit observed that Mr. Howard’s alleged contribution is only mentioned once in the Patent specification, and as an alternative heating method to a microwave oven.  Patent, col. 5 ll. 40–42 (“Preheating the sliced bacon with a microwave oven, or other suitable heating methods such as infrared or hot air, prior to fully cooking the sliced bacon . . . .”).  It further stated that the alleged contribution is only recited in a single claim of the Patent, in a Markush group reciting a microwave oven, an infrared oven, and hot air. Id., col. 9 ll. 57–62.  It contrasted those limited disclosures of preheating with an infrared oven with microwave ovens, which feature prominently throughout the specification, claims, and figures.  It also recognized that the examples and corresponding figures employ procedures using preheating with a microwave oven, but not preheating with an infrared oven, and no examples describe preheating with an infrared oven.

 

“In summary, the specification, claims, and figures all illustrate that Howard’s alleged contribution of preheating the bacon or meat pieces with an infrared oven is ‘insignificant in quality’ when ‘measured against the dimension of the full invention,’ Pannu, 155 F.3d at 1351, which squarely focuses on a preheating step using a microwave oven.  Thus, we conclude that Howard is not a joint inventor of the ’498 patent.”  Slip Op. at 12.

 

Finally, having found that Mr. Howard’s alleged contribution of infrared preheating was insignificant under Pannu, the Federal Circuit found that the question of corroboration of evidence regarding Mr. Howard’s alleged contribution is rendered moot.