Hip, Inc. v. Hormel Foods Corporation
Docket No. 2022-1696 (https://cafc.uscourts.gov/opinions-orders/22-1696.OPINION.5-2-2023_2120058.pdf)
LOURIE, CLEVENGER, TARANTO
May 2, 2023
Brief Summary: DC decision finding party should have been name a joint inventor reversed as contribution “not significant when measured against the scope of the full invention”. Summary: Hormel appealed DC holding that David Howard should be added as a joint inventor under section 256 to US 9,980,498 directed to methods of precooking bacon. ‘498 claim 1 is directed to “[a] method of making precooked bacon pieces using a hybrid cooking system” using “a microwave oven” (claim 1) (or “a microwave oven, an infrared over, and hot air” (claim 5), “transferring the preheated bacon pieces to the cooking compartment of the oven”, and “cooking the preheated bacon pieces in the cooking compartment”. The FC panel opinion explains that Hormel began this project in 2005 and met with David Howard of Unitherm Food Systems (now HIP) to discuss the project in 2007 and “entered into a joint agreement to develop an oven to be used in a two-step cooking process”. Mr. Howard alleged “he disclosed the infrared preheating concept” in subsequent meeting with Hormel. Hormel later made some adjustments to “solve the charred, off flavor of the bacon” and began “preheating the bacon with a microwave oven” to produce the “two-step cooking process”. Hormel filed a provisional patent applications naming four inventors who assigned their rights to Hormel, but the inventors did not include Mr. Howard. In April 2021, HIP sued Hormel to make Howard the sole inventor or add him as a joint inventor, arguing he “contributed to at least one of the following: (1) using superheated steam at a level of 90% or more in claims 3 and 12; (2) heating the internal surfaces of the oven to a temperature less than 375º F. in claim 1; (3) preheating by hot air in claim 5; and/or (4) preheating with an infrared oven in claim 5.” The DC agreed, finding Howard to be a joint inventor. In this appeal, Hormel argued Mr. Howard’s contribution of preheating with an infrared oven “was well known”, “part of the state of the art”, and “not significant when measured against the scope of the full invention” and that Mr. Howard’s “testimony was insufficiently corroborated.” The FC panel explained that “an alleged inventor” must prove the claim “by ‘clear and convincing evidence’” (Hess, FC 1997; Pannu, FC 1998; Final Oil, FC 1997). The FC panel agreed with Hormel that Howard was not a joint inventor because “[u]nder the second Pannu factor”, he did not “make a significant contribution…measured against the dimension of the full invention”, noting that “preheating with an infrared oven…is measured only once in the ‘498 patent specification as an alternative heating method” (and not in the examples) and “recited only once in a single claim”, not including independent claims 1 and 13. The FC panel did not consider the other Pannu factors or address the corroboration issue.