Patent Case Summaries – May 2023 #1 | Alston & Bird
A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (Fed. Cir. (D. Del.) May 2, 2023). Opinion by Lourie, joined by Clevenger and Taranto.
HIP sued Hormel seeking to correct the inventorship of a Hormel patent relating to methods of precooking bacon and other meat pieces. According to HIP, its employee David Howard should have been either the sole inventor or a joint inventor of the patent pursuant to 35 U.S.C. § 256.
After a bench trial, the district court held that Howard was a joint inventor because, during discussions between HIP and Hormel, he contributed the limitation of independent claim 5 requiring preheating with an infrared oven. The court ruled that the infrared preheating concept was significant based on the differences between claim 1 and claim 5 and that HIP established that Howard’s testimony was corroborated by other witness testimony, by testing data, and by testimony from three Hormel inventors stating that they had not conceived of the limitation. Hormel appealed.
On appeal, Hormel asserted that the district court erred in holding that Howard is a joint inventor for two reasons. First, Hormel asserted that preheating with an infrared oven was well known and part of the state of the art and was not significant when measured against the scope of the full invention. Second, Hormel asserted that Howard’s testimony was insufficiently corroborated.
The Federal Circuit agreed with Hormel and reversed. The court explained that, “to qualify as a joint inventor, a person must make a significant contribution to the invention as claimed.” Here, applying the pertinent factors outlined in Pannu v. Iolab Corp., the court ruled that “Howard’s alleged contribution of preheating meat pieces using an infrared oven is ‘insignificant in quality’” when that contribution is “measured against the dimension of the full invention.” The patent specification, figures, and examples focused on a microwave oven, not an infrared oven. Howard’s alleged contribution “was mentioned only once in the … patent specification as an alternative heating method to a microwave oven,” and was “recited only once in a single claim … in a Markush group reciting a microwave oven, an infrared oven, and hot air.” Thus, Howard did not qualify as a joint inventor.
Because Howard’s alleged contribution of infrared preheating was insignificant under Pannu, the Federal Circuit determined that the further question of whether Howard’s testimony was sufficiently corroborated “is rendered moot.”
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