United States: Getting HIP With Inventorship

In last week's precedential decision in HIP, Inc. v. Hormel Foods Corp, the Federal Circuit reversed a decision by the District Court of Delaware holding that an inventor, David Howard, should be added as a joint inventor on U.S. Patent 9,980,498 ("'498 Patent"). The Federal Circuit reasoned that the inventor failed to satisfy the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344,1351, because his contribution to the claims of the '498 Patent was "insignificant in quality." HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 U.S. App. LEXIS 10670, at *13 (Fed. Cir. May 2, 2023). This case highlights the importance of the specification in determining inventorship for a claimed invention. In this case, the holding was in large part based on how many times the claim term that a person contributed to "inventing" was mentioned in the patent specification. This is potentially in contrast to other Federal Circuit caselaw that came before it.

Summary of Case

The '498 Patent is owned by Hormel and is directed to a method of precooking bacon and meat bits. Specifically, the patent claims a two-step method that involves a first step of preheating using a microwave oven, infrared oven, or hot air, and a second step of cooking at a higher temperature. In 2007, Hormel met with Howard to discuss products and processes that Hormel was developing. The two parties subsequently entered into a joint agreement to develop an oven to be used in a two-step cooking process.

Howard alleged that, during the course of the party's joint agreement, he disclosed the infrared preheating concept to Hormel. After testing of the two-step cooking process was complete, Hormel filed a non-provisional patent listing four inventors as joint inventors, while excluding Howard as a named inventor. This application issued in May 2018 as the '498 Patent. HIP later filed a claim pursuant to 35 U.S.C. §256 for Correction of Inventorship, alleging that Howard should have been named as an inventor of the '498 Patent.

Pannu Factors

Both parties framed their argument for and against inventorship using the three-part test articulated in Pannu. HIP v. Hormel, at *7. To qualify as an inventor under U.S. law, a person must make a significant contribution to the invention as claimed. Id. Under the Pannu test, to qualify as a joint inventor to the invention as claimed, a person needs to satisfy three requirements. First, the individual must have contributed in some significant manner to the concept of the invention. Second, the individual needs to have 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 third, the inventor needs to have done more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Hormel argued that Howard failed to satisfy the third prong of the Pannu test because his contribution of preheating with an infrared oven was well known and part of the state of the prior art. HIP v. Hormel, at *8. Specifically, Hormel argued that the step of preheating meat pieces with an infrared oven was disclosed in a prior printed publication that the court failed to consider. In response, HIP asserted that Hormel was attempting to improperly equate "information that is well known in the art with anything in the prior art, however obscure." HIP v. Hormel, at *9.

While the Court ultimately agreed with Hormel that Howard was not a joint inventor of the '498 patent, they reasoned that it was actually the second Pannu factor that Howard failed to satisfy. The court found that Howard's contribution to the '498 patent was "insignificant in quality" as the idea of "preheating with an infrared oven" was mentioned only once in the specification, as an alternative heating method to using a microwave oven. HIP v. Hormel, at *10. Further, the contribution is mentioned only once in the claims as part of a Markush group reciting a microwave oven, an infrared oven, and hot air. (A "Markush group" is a claim that recites a list of alternatively useable members). In contrast to the sparse disclosure of preheating with an infrared oven, preheating with a microwave oven was mentioned extensively throughout the specification, claims, and figures.

The Court did not discuss how the other Pannu factors may have applied in this case, stating that "the failure to meet any one factor is dispositive on the question of inventorship." HIP v. Hormel, at *12. Although the analysis in HIP v. Hormel was limited to the just the second Pannu factor, the Federal Circuit has discussed the other factors in earlier cases.

Pannu Applied in Other Cases

In Bio-Rad Labs v. ITC, the Federal Circuit agreed with the ITC that two individuals did not qualify as joint inventors for the patent in question because they failed to satisfy the third prong of the Pannu test. 996 F.3d 1301 (Fed. Cir. 2021). Specifically, the individuals presented ideas "at a level of generality that cannot support inventorship, or (sometimes and) involve nothing more than elements in the already published prior art." Many of Bio-Rads "ideas" were disclosed in a separate patent that was published prior to the undisputed earliest date of conception, making the ideas part of the prior published art.

In Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., the Federal Circuit discussed the level of contribution needed to satisfy the Pannu test. 964 F.3d 1365. The Court stated "there is no 'explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor.'" Joint inventors need not physically work together, nor do they need to make the same type or amount of contribution. The Court ultimately found in favor of joint inventorship reasoning that "collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others."

Takeaways

HIP v. Hormel highlights the importance of the specification in determining inventorship for a claimed invention. Here, the ruling of the court seems to turn on the frequency in which the alternative methods of preheating were mentioned in the specification. Whereas Howard's contribution of infrared heating was mentioned just once in the specification and claims, the idea of microwave heating was discussed extensively throughout the specification, claims, figures, summary of the invention, and background. For patentees working on a joint invention, it is important to make sure that your contributions are adequately represented throughout the specification when compared to the contributions of other inventors.

Although not discussed in HIP v. Hormel, the Pannu decision also highlights the importance of getting inventorship right for patentees. Where the three-part test in Pannu is satisfied but a patent fails to name the joint inventor, that patent may be invalid for non-joinder. Pannu v. Iolab Corp., 155 F.3d 1348-49 (Fed. Cir. 1998). While inventorship is evaluated on a claim-by-claim basis, the failure to join an inventor of any claim invalidates the entire patent. Plastipak Packaging, Inc. v. Premium Waters, Inc., 55 F.4^th 1332, 1340 (Fed. Cir. 2022)

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