Alleged Co-Inventor Not Bringing Home the Bacon This Time | Weintraub Tobin
Many of us have said, “Bacon makes everything better.” Can you imagine the accolades someone would receive if they contributed to an invention that improves bacon? Well, it turns out that not all contributions count when it comes to being an inventor of a patent for a better method of precooking bacon.
The dispute arose between HIP, Inc. (“HIP”) and Hormel Foods Corporation (“Hormel”) related to work on a joint project. In 2021, HIP sued Hormel, challenging Hormel’s ownership and the inventorship of U.S. Patent No. 9,980,498 (the “’498 Patent”). HIP, formerly Unitherm Food Systems, Inc. (“Unitherm”), argued that it had rights to the patent because its president was an inventor and should be added to the patent.
The ‘498 Patent is directed to a two-step process for cooking bacon pieces. The first step involves preheating the bacon using a microwave oven, infrared oven, or hot air to create a layer of melted fat around the pieces of bacon. This layer of fat prevents condensation from washing away the flavor from the bacon. The second step cooks the bacon at a higher temperature in a manner that prevents a charred, off flavor.
In 2007, as part of Hormel’s quest to improve its process for creating precooked bacon pieces, Hormel met with David Howard and others from Unitherm to discuss processes and Unitherm’s cooking equipment. At some later time, the companies entered into a joint development agreement for the development of an oven for use in the bacon cooking process. Hormel conducted testing at Unitherm and later at Hormel. Howard asserted that it was during the testing at Unitherm that he shared the concept of using infrared technology for preheating.
In 2011, Hormel filed a patent application for the two-step process, omitting HIP’s involvement. Also, Howard was not named as an inventor. The ‘498 Patent was issued from this application in 2018.
In its complaint, HIP alleged that Howard was an inventor for at least four reasons, including his contribution to independent claim 5, namely, preheating with an infrared oven. Following a bench trial in Delaware, Judge Connolly found that Howard was a joint inventor based on this contribution. The court pointed out the contribution was significant because claim 1 recited only a microwave oven for preheating, whereas claim 5 included an infrared oven option in a Markush group. Hormel appealed to the Court of Appeals for the Federal Circuit.
On appeal, Hormel raised two issues. It argued that Howard could not be a joint inventor “because his alleged contribution of preheating with an infrared oven was well known and part of the state of the art because it was not significant when measured against the scope of the full invention.” Hormel also contended that HIP did not satisfy the standard required to show that Howard was an inventor because Howard’s testimony was not sufficiently corroborated.
To be a joint inventor, “a person must make a significant contribution to the invention as claimed. The court in Pannu v. Iolab Corp. set out a three-part test for evaluating this requirement. The Federal Circuit acknowledged that there is a “heavy burden” to show an inventor should be added to a patent that has already been issued. It must be proven by clear and convincing evidence.
HIP argued that Howard met this burden, satisfying each of the three parts because he “(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) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.”
Hormel countered that the district court erred in finding that the alleged contribution was significant under the first factor and erred in not analyzing the second factor, the significance of the alleged contribution in light of the full invention. Hormel alleged that Howard did nothing more than perhaps suggest a particular piece of equipment for use in the two-step process. Hormel further asserted that “there [was] no indication that infrared preheating solved any specific problem in the field of the ’498 patent,” “infrared preheating is not what made claim 5 patentable,” and “the mere conclusion of the infrared oven language in a claim is not sufficient to label that contribution significant.”
HIP relied on expert testimony that infrared preheating was not state of the art, argued that the contribution was significant as shown by the difference in language in claim 1 versus claim 5, and that the district court did not err in its findings.
The Federal Circuit reversed the district court, finding that Howard was not an inventor because “Howard’s contribution of preheating meat pieces using an infrared oven is ‘insignificant in quality,’” “when ‘measured against the dimension of the full invention.” In its decision, the Federal Circuit mentioned that the patent specification and drawings focus on the use of a microwave oven, and an infrared oven is only mentioned as one of a group of choices in claim 5.
HIP petitioned the U.S. Supreme Court for review of the finding that Howard’s contribution was not significant. In its petition, HIP asserted that the Federal Circuit applied a “new quantitative requirement unsupported by the statutory language, inconsistent with prior precedential panel decisions and legislative history, and inconsistent with the tenet that claims define the invention.” In addition, HIP argued that the ruling would have an adverse impact on patent law because “business decisions based on patent assignments may now be called into question based on the allegation that the quantity of a joint inventor’s contribution was too small.”
On November 6, 2023, the U.S. Supreme Court denied the petition, ending this litigation, but a number of questions remain. What constitutes a ‘significant’ contribution in this context? Will disputes increase between parties involved in joint development work over the significance of contributions? Will there be an upturn in inventorship challenges in general?
As they say, “Time will tell.”
