Last week, in Hip, Inc. v. Hormel Foods Corporation, No. 2022-1696 (Fed. Cir. May 2, 2023), the Federal Circuit reversed Delaware District Chief Judge Colm F. Connolly’s decision to add an unnamed inventor onto a patent for methods of precooking bacon and meat pieces. The Federal Circuit did not question the relationship between the parties but instead focused on the significance of the purported contributions by the alleged joint inventor, which were determined to be “insignificant in quality” and failed to satisfy the joint inventorship standard articulated in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
Under Pannu, to be a joint inventor, one must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make 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) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Hormel Foods Corporation (“Hormel”) is the owner of U.S. Patent 9,980,498 (the “’498 Patent”), which claims a two-step process for cooking bacon and meat pieces. The first step involves preheating and the second step involves cooking the meat in a superheated steam oven.
In April 2021, HIP sued Hormel in the United States District Court for the District of Delaware, claiming that David Howard of HIP was either the sole inventor or a joint inventor of the ’498 patent. HIP alleged that Howard disclosed the infrared preheating concept in claim 5 of the ’498 patent to Hormel in 2007, when Hormel and HIP’s predecessor (Unitherm Food Systems) entered into a joint agreement to develop an oven to be used in a two-step cooking process.
District Court Decision
After a bench trial, the district court concluded that Howard was a joint inventor of the ’498 Patent because his contribution of the infrared preheating concept in claim 5 was significant to the conception of the claimed invention. In particular, the district court found that claim 1 only recites preheating with a microwave oven whereas claim 5 adds the additional options of preheating with an infrared oven or hot air. According to the district court, the difference between claim 1 and claim 5 indicated that the infrared preheating concept in claim 5 was significant. Hormel appealed.
On appeal, Hormel claimed that the district court erred in holding that Howard’s purported contribution satisfied the three-part test set forth in Pannu. After comparing the patent claims and examining the intrinsic record, the Federal Circuit agreed, finding that Howard’s purported contribution of preheating meat pieces using an infrared oven was “insignificant in quality” and, therefore, failed to satisfy the second Pannu factor. In particular, the Federal Circuit noted that the specification mentions preheating with an infrared oven only once as an alternative heating method to a microwave oven, but refers to prehearing with a microwave oven numerous times, including in the background and detailed description of the invention. The Federal Circuit also observed that the brief summary of the invention mentions preheating with a microwave oven but fails to mention infrared preheating. Further, preheating with an infrared oven is mentioned only once in a single claim of the patent. In contrast, claims 1 and 13 only recite preheating with a microwave oven, and do not mention an infrared oven. Moreover, the examples and figures depict preheating with a microwave oven, but not an infrared one.
For these reasons, the Federal Circuit determined that Howard failed to meet the second Pannu factor. Because failure to meet any one factor is dispositive on the question of inventorship, the Court did not analyze the other two Pannu factors. The Federal Circuit also did not consider the issue of corroboration between the parties, which was mooted by the insignificant contributions allegedly made. With its conclusion that preheating meat pieces using an infrared oven was not significant based on the full scope of the ’498 patent, the Federal Circuit reversed the district court’s decision to add Howard as an inventor.