Hip, Inc. v. Hormel Foods Corporation
22-1696 Document: 49, Filed: May 2, 2023 (2023)
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Rule of Law:
To qualify as a joint inventor, an individual must make a contribution to the claimed invention that is not insignificant in quality when measured against the dimension of the full invention. A contribution mentioned only as a minor alternative within one claim, while the rest of the patent focuses on a different embodiment, is considered insignificant.
Facts:
- In 2005, Hormel Foods Corporation began a project to improve its microwave cooking process for precooked bacon.
- In July 2007, Hormel representatives met with David Howard of Unitherm Food Systems, Inc. (now HIP, Inc.) to discuss cooking processes and Unitherm's equipment.
- The parties subsequently entered into a joint agreement to develop an oven for a two-step cooking process.
- During meetings and testing in late 2007, which involved an infrared oven, Howard alleged that he disclosed the concept of using infrared preheating.
- Hormel's subsequent testing and development led them to a two-step process that used microwave preheating followed by cooking in a superheated steam oven.
- This two-step process, which Hormel found solved issues with condensation and off-flavors, became the basis for a patent application filed in 2011.
- The resulting patent mentioned preheating with an infrared oven as one of three options in one of the patent's independent claims (claim 5), alongside microwave and hot air.
Procedural Posture:
- HIP, Inc. sued Hormel Foods Corporation in the U.S. District Court for the District of Delaware.
- HIP alleged that its employee, David Howard, should be added as a joint inventor on Hormel's U.S. Patent 9,980,498.
- After a bench trial, the district court held that Howard was a joint inventor based on his contribution of the infrared preheating concept found in claim 5.
- The district court ordered the U.S. Patent and Trademark Office to issue a Certificate of Correction adding Howard as a joint inventor.
- Hormel Foods Corporation (appellant) appealed the district court's judgment to the U.S. Court of Appeals for the Federal Circuit, and HIP, Inc. (appellee) defended the lower court's decision.
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Issue:
Does an individual's contribution to a patent qualify them as a joint inventor if that contribution consists of one alternative method in a single claim, and is insignificant in quality when measured against the full scope of the invention as described in the specification, figures, and other claims?
Opinions:
Majority - Louriie, Circuit Judge
No. An individual's contribution does not qualify them as a joint inventor if it is insignificant in quality when measured against the full scope of the invention. To be a joint inventor, a person's contribution must not be insignificant in quality compared to the overall invention. The court found that Howard's alleged contribution—suggesting an infrared oven for preheating—was insignificant. This method was mentioned only once in the patent specification as an alternative and appeared in only one claim within a list of options. In contrast, the use of a microwave oven was central to the invention, featuring prominently throughout the patent's specification, figures, examples, and other independent claims. Because the infrared preheating concept was a minor alternative and not a significant part of the invention as a whole, Howard's contribution did not meet the standard for joint inventorship.
Analysis:
This decision clarifies the 'significance' requirement for joint inventorship under the Pannu test, particularly in the context of complex inventions with multiple embodiments. The court emphasizes that a contribution's significance must be weighed against the 'full invention,' not just the single claim limitation it addresses. This ruling makes it more difficult for individuals who contribute minor alternative features to be added as inventors, reinforcing the presumption that the named inventors on an issued patent are correct. Future cases challenging inventorship will likely require challengers to demonstrate that their contribution was integral to the invention as a whole, rather than being a peripheral or alternative element.
