In HIP, Inc. v. Hormel Foods Corporation (May 5, 2023), Judges Lourie, Clevenger and Taranto of the U.S. Court of Appeals for the Federal Circuit addressed a claim of joint ownership and – in a unanimous precedential decision – reaffirmed the framework for determining the degree of contribution that an individual must make in order to qualify as an inventor.
United States patent no. 9,980,498 (Hybrid Bacon Cooking System) is owned by Hormel and relates to methods of precooking bacon and other pieces of meat that improve the flavor and overall quality. Independent claim 5 of the ’498 patent provides the following:
A method of making precooked meat pieces using a hybrid cooking system, comprising:
preheating meat pieces in a first cooking compartment using a preheating method selected from the group consisting of a microwave oven, an infrared oven, and hot air to a temperature of at least 140° F[] to create preheated meat pieces, the preheating forming a barrier with melted fat around the preheated meat pieces and reducing an amount of condensation that forms on the preheated meat pieces when transferred to a second cooking compartment . . .[; and]
transferring the preheated meat pieces to the second cooking compartment, the second cooking compartment heated with an external heating source, the external heating source being external to the second cooking compartment . . . .” (emphasis added).
Before filing the application that led to the ’498 patent, Hormel consulted with David Howard of Unitherm (now HIP). During the consultation, Howard allegedly disclosed to Hormel the concept of infrared preheating (slip op. at 5). Hormel then filed the patent application that became the ’498 patent, but Howard was not named on that patent application.
HIP then sued Hormel in federal district court, arguing that Howard contributed to, inter alia, the infrared and hot air preheating in claim 5 (slip op. at 6). The district court agreed with HIP and determined that Howard was a joint inventor on the basis of his contribution of the infrared preheating. Hormel then appealed, and the Federal Circuit reversed the district court’s decision.
In its decision, the Federal Circuit applied the test from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Under this test, an alleged joint inventor must show that they:
- 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) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Writing for the court, Judge Lourie determined that Howard’s alleged contribution of infrared heating did not meet the second Pannu factor and was “insignificant in quality” to the claimed invention because (1) infrared preheating was “mentioned only once in the ’498 patent specification as an alternative heating method to a microwave oven” (slip op. at 10); (2) “the alleged contribution is recited only once in a single claim of the ’498 patent, in a Markush group reciting a microwave oven, an infrared oven” (slip op. at 10); and (3) as contrasted with infrared preheating, “preheating with microwave ovens, and microwave ovens themselves, feature prominently throughout the specification, claims, and figures” (slip op. at 10) (emphasis added).
Although each case is of course decided on its own unique facts, HIP v. Hormel provides a few important practice points. First, merely because an individual contributed to one part of one claim does not also mean that the individual qualifies as an inventor – instead, the individual’s contribution must satisfy all three parts of the Pannu test. In particular, a drafting attorney should accordingly take care to consider whether a potential inventor’s contribution was “[]significant in quality” when compared to the overall invention. Second, a patent owner accused of failing to include a particular individual as an inventor on a patent can defend that claim by establishing that the individual’s alleged contribution was insignificant when measured against the overall invention and/or that the individual’s contribution was already known in the art. No matter which way one slices HIP v. Hormel, the decision provides important clarity around the framework one should apply to an inventorship analysis.
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