Joint Inventorship – Understanding the Meat and Potatoes of Invention Contributions

In a reversal of the district court’s decision, the Federal Circuit determined that an alleged inventor, who was not named in the patent application, did not qualify as a joint inventor. This was due to the alleged inventor’s contribution being deemed too insignificant when considered within the context of the entire invention. HIP, Inc. v. Hormel Foods Corp., Case No. 22-1696 (Fed. Cir. May 2, 2023).

Hormel is the owner of the 9,980,498 patent (“the ‘498 patent”), which pertains to precooking methods for bacon and meat pieces. The patent details a two-step approach that involves preheating using a microwave oven, infrared oven, or hot air, followed by a higher-temperature cooking phase. The initial preheating step creates a layer of melted fat around the meat, which safeguards it from moisture that could wash away salt and flavor during cooking. The subsequent cooking phase avoids the unpleasant burnt taste often associated with cooking meat at higher temperatures.

In April 2021, HIP sued Hormel in the district court, alleging that Howard, an employee of HIP, was a joint inventor of the ’498 patent. HIP argued that Howard contributed to at least the concept of preheating with an infrared oven as described in claim 5. The district court agreed with HIP and Hormel appealed.

To qualify as joint inventor, a person must make a significant contribution to the invention as claimed. To make this determination, the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) should be used. A person is considered to be a joint inventor if the person (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.

The Federal Circuit agreed with Hormel that Howard was not a joint inventor of the invention claimed in the ’498 patent. According to the second Pannu factor, an inventor must make a contribution to the claimed invention that is of non-insignificant quality when measured against the full dimension of the invention. In this case, the Court found that Howard’s alleged contribution of using an infrared oven to preheat meat pieces was “insignificant in quality” to the claimed invention. This alleged contribution is only mentioned once in the ‘498 patent specification as an alternative heating method to a microwave oven. Additionally, preheating with an infrared oven is recited only once in a single claim, which mentions a Markush group consisting of a microwave oven, an infrared oven, and hot air. Independent claims 1 and 13 describe a method of making precooked bacon or meat pieces using a hybrid cooking system involving preheating with a microwave oven, do not mention preheating with an infrared oven.

In contrast to the limited reference to preheating with an infrared oven, both the use of microwave ovens and preheating with them are extensively discussed throughout the specification, claims, and figures. The brief summary of the invention mentions preheating with a microwave oven but omits any mention of infrared preheating. Similarly, the specification repeatedly mentions preheating with a microwave oven in various sections, including the background of the invention. Furthermore, the examples and corresponding figures illustrate processes that employ preheating with a microwave oven rather than an infrared oven. In fact, none of the examples describes preheating with an infrared oven.

In conclusion, the specification, claims, and figures of the ‘498 patent indicate that Howard’s alleged contribution of using an infrared oven to preheat bacon or meat pieces is insignificant when compared to the focus by the full invention on preheating with a microwave oven. Consequently, Howard is not a joint inventor. The Court did not need to address the other Pannu factors since failing to meet any one factor resolves the issue of inventorship.

Practice Tips:
This ruling is remarkable as it extends the standard interpretation of inventorship that typically pertains to contribution to just one claim. It emphasizes that the contribution should not only be to the conception of the invention in a claim, as defined below, but also that the contribution must “not be insignificant” when viewed in the context of the entire invention