Background

Hormel Foods appealed the District Court’s ruling that David Howard should be added as a joint inventor on its patents.

Standard of Review

“Inventorship is a question of law that [the Federal Circuit] review[s] without deference.” The Federal Circuit “review[s] facts underlying inventorship for clear error.”

Claimant’s Burden of Proof and Requirements to Establish a Prima Facie Case

Under the Pannu factors, to qualify as a joint inventor, “an alleged joint inventor must prove by clear and convincing evidence” that an alleged joint inventor (i) “contributed in some significant manner to the conception of the invention[,]” (ii) “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 (iii) “did more than merely explain to the real inventors well-known concepts and/or the current state of the art.”

Issue

Whether Mr. Howard is a joint inventor based on the significance of his alleged contribution.

Holding

Mr. Howard is not a joint inventor because he has not made any significant contribution to the invention.

Reasoning

Mr. Howard is not a joint inventor because his alleged contribution was not significant when measured against the scope of the full invention. “[T]he specification, claims, and figures [of the patent-at-issue] illustrate that Howard’s alleged contribution . . . is insignificant in quality when measured against the dimension of the full invention.” For example:

1. Mr. Howard’s contribution is “mentioned only once in the” specification of the patent-at-issue “as an alternative”;

• Mr. Howard’s contribution is “recited only once in a single claim” of the patent-at-issue. Further, such contribution is recited in a Markush group;

• The “[s]ummary of the invention” of the patent-at-issue does not mention Mr. Howard’s contribution; and

• No figure or recited example described Mr. Howard’s contribution.