Are You Actually A Joint Inventor?

• Jurisdiction: United States,Federal
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Subject Matter: Intellectual Property, Patent
• Author: Colin Downey
• Published date: 24 May 2023

The Court of Appeals for the Federal Circuit (CAFC), on May 2, 2023, reversed the Delaware District Court's decision in HIP, Inc. v. Hormel Foods Corp., that David Howard of Unitherm should be added as a joint inventor on US 9,980,498 (herein, the '498 patent), a patent owned by Hormel and directed to methods of precooking bacon and meat pieces. The decision on appeal considered whether Howard contributed to the conception of the invention and whether the determination of his joint inventorship should be upheld.

In 2005, Hormel and Van Doorn of Unitherm entered into a joint agreement to develop an oven to be used in a two-step cooking process. During this agreement, two different ovens were utilized for testing. One oven was an infrared oven and the other was a more conventional spiral oven. Howard claimed during these initial meetings that he disclosed the infrared preheating concept at issue on appeal. In 2008, Hormel conducted additional testing using Unitherm's mini spiral test oven at Unitherm's research facility upon leasing the oven from Unitherm. Subsequent testing at Hormel's own facility resulted in a two-step cooking process being developed. The first step involved preheating the bacon and the second step involved cooking the meat in a superheated steam oven. Upon developing the process, Hormel filed a non-provisional patent on the two-step cooking process in August 2011. The application issued in May 2018 as the '498 patent. The '498 patent named four inventors, who all assigned their interests in the patent to Hormel.

In 2021, HIP sued Hormel in the District Court of Delaware claiming that Howard was either the sole inventor or a joint inventor of the '498 patent based on various claims. At the bench trial, the district court determined Howard was not the sole inventor, but that he was a joint inventor based solely on his alleged contribution of the infrared preheating in claim 5. The court stated that the infrared preheating concept in claim 5 was significant based on the differences between independent claim 1 and independent claim 5. The differences between claim 1 and claim 5 are shown below:

Claim 1: A method of making precooked bacon pieces using a hybrid cooking system, comprising:
Preheating bacon pieces with a microwave oven to a temperature of 140' F. to 210' F... .

Claim 5: A method of making precooked bacon pieces using a hybrid cooking system, comprising:
Preheating bacon pieces in a first cooking compartment using a preheated...