SCOTUS Declines to Consider Joint Inventorship Petition
“Dissatisfied with the outcome at the Federal Circuit, HIP now argues that the Federal Circuit took a wrong turn in 1998 in deciding Pannu and asks that the Court reverse the Federal Circuit’s application of Pannu, overturn Pannu, and upset 25 years of Federal Circuit precedent in the process.” – Hormel reply brief to SCOTUS
The U.S. Supreme Court on Monday denied certiorari to HIP, Inc. in a case that asked the Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) standard for determining joint inventorship.
The petition, filed in August, asked the Court to resolve what it called “an indisputable conflict between the express language of Section 116(a) of Title 35, informed by the legislative history of its 1984 amendments, and requirements the Federal Circuit has imposed on the joint inventions statute since the 1984 amendments.”
In May, the CAFC reversed a district court holding that inventor David Howard should be added as a joint inventor for his contributions to Hormel Foods Corp.’s U.S. Patent No. 9,980,498, titled “Hybrid Bacon Cooking System.” The CAFC said the inventor’s contribution did not satisfy the three-part test articulated in Pannu v. Iolab Corp. because the contribution was “insignificant in quality.”
Under the Pannu test, 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.”
The U.S. District Court for the District of Delaware determined that Howard was not the sole inventor, but that he was a joint inventor based on the contribution of the infrared preheating in claim 5 of the patent. The court said the contribution was significant because of the differences between independent claim 1 and independent claim 5 and that Unitherm (now HIP) had shown that Howard’s testimony was corroborated by his colleague’s testimony, “by the pork loin testing data, and by testimony from three Hormel inventors stating that they had not conceived of the preheating with an infrared oven limitation.”
Hormel argued that Howard’s contribution was well known and part of the state of the art, particularly, U.S. Patent App. Pub. 2004/0131738 (“Holm”). Hormel said the district court failed to consider Holm and its disclosure, but HIP argued that the reference was “obscure” and never commercialized.”
The CAFC ultimately agreed with Hormel, explaining that the contribution did not meet the standard set forth in Pannu, and noting that “we find that Howard’s alleged contribution of pre-heating meat pieces using an infrared oven is ‘insignificant in quality’… to the claimed invention.”
HIP’s petition argued that the case is “of enormous practical importance,” that 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. “[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.
Hormel’s response, filed in late September, dismissed these concerns and said that even HIP had argued to the lower courts that Pannu is the proper test, and therefore had waived its right to argue that it’s improper. “Dissatisfied with the outcome at the Federal Circuit, HIP now argues that the Federal Circuit took a wrong turn in 1998 in deciding Pannu and asks that the Court reverse the Federal Circuit’s application of Pannu, overturn Pannu, and upset 25 years of Federal Circuit precedent in the process,” said Hormel’s brief.
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]
