CAFC’s Joint Inventorship Analysis Challenged in SCOTUS Petition
“HIP told the Justices that the case has ‘enormous practical importance’ as it will affect the validity of already issued patents and changes business strategies about which inventors to include or exclude from a patent.”
HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”
The U.S. District Court for the District of Delaware initially determined that David Howard of Unitherm Food Systems, Inc. was not the sole inventor of Hormel Foods Corporation’s U.S. Patent No. 9,980,498, but that he was a joint inventor based on the contribution of the infrared preheating in claim 5.
However, the CAFC said that Howard’s contribution failed under the three-part test articulated in Pannu v. Iolab Corp. That test says that an inventor must have: “(1) 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) [done] more than merely explain to the real inventors well-known concepts and/or the current state of the art.”
Among other reasons, the CAFC said that Howard’s contribution “is mentioned only once in the ’498 patent specification…[and] is recited only once in a single claim of the ’498 patent.” Thus, “Howard’s alleged contribution of pre-heating meat pieces using an infrared oven is ‘insignificant in quality’… to the claimed invention,” said the court.
But in HIP’s petition last week, the company told the Court that the CAFC has added the requirement “that a joint inventor’s contribution be not insignificant in quality when measured against the dimension of the full invention,” in conflict with the plain language of the statute on joint inventorship (35 U.S.C. §116(a)). The specific questions presented are:
- Whether joint inventorship requires anything more than a contribution to conception that is stated in a patent claim.
- Whether, under Section 116(a), a claimed and enabled contribution to conception can be deemed insignificant in quality based on the quantity of disclosure in the specification.
HIP told the Justices that the case has “enormous practical importance” as it will affect the validity of already issued patents and changes business strategies about which inventors to include or exclude from a patent. While inventorship errors can be corrected, there is a cost involved and damages may not be immediately recoverable before such corrections are made, said the petition.
The petitioner ultimately told the High Court it should review the case because the CAFC is improperly reading requirements into Section 116(a) that aren’t there and that Congress never expressed; and that the court-made quantitative analysis used to determine inventorship conflicts with Section 112 and is improper as a joint invention inquiry. “[T]he appellate panel’s newly fashioned precedential quantity requirement calls into question the validity of an unknown, but potentially large, number of issued patents,” said HIP.
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Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
