In Brief: A named inventor has to make a significant contribution to the claims in a patent.
Here’s What Happened:
Hormel Foods Corporation obtained a patent for a two-step process for precooking bacon and meat pieces. The first step involves preheating in a microwave oven and the second step involves cooking the meat in a superheated steam oven.
David Howard of HIP, Inc. claimed that he was either the sole inventor or a joint inventor of the patent. HIP alleged that David disclosed an infrared heating preheating concept that was incorporated into one of the patent claims. He came up with the concept when Hormel and HIP’s predecessor entered into a joint agreement to develop an oven for the two-step process.
HIP sued Hormel for patent infringement.
After a bench trial, the court concluded that David was a joint inventor and so HIP had an interest in the patent.
Hormel appealed to the Federal Circuit Court of Appeals.
The court used a three part test for determining joint inventorship that was adopted in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). To be a joint inventor, one must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make 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) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
On appeal, the court concentrated on the second factor. While infrared heating was mentioned in one of the patent claims, the rest of the claims recited use of microwave ovens for the preheating step. The examples and figures in the patent application depicted preheating with a microwave oven and not an infrared one. The court held that because of the scarcity of the mention of use of an infrared oven, David did not contribute enough to the quality of the patent.
The court reversed the lower court’s determination that David was an inventor of the patent.
Why You Should Know This: Inventorship doesn’t apply to someone tangentially involved in development. Inventors should clearly delineate their contributions to the invention and the significance of each inventor’s contribution. That way, the inventors will be properly identified on the patent application.
Case Information: Hip, Inc. v. Hormel Foods Corporation, No. 2022-1696 (Fed. Cir. May 2, 2023)