Correcting Patent Inventorship: The High Bar To Overcome Being Trimmed Fat

• Published date: 06 June 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Thompson Coburn LLP
• Author: Mr William Holtz and Sylvia Wilson

How do you take a case about patent inventorship and make it better? Add bacon. The Federal Circuit's recent decision in HIP, Inc. v. Hormel Food Corp., 66 F.4th 1346 (Fed. Cir. 2023) illustrates the high bar that must be met to convince the courts to add a person as a joint inventor to an issued patent.

In the 2000's, Hormel, a company that sells bacon, and HIP (formerly Unitherm Food Systems, Inc.) collaborated on ways to make tastier bacon. In 2018, Hormel obtained US Patent No. 9,980,498 ("the '498 patent"), claiming a method of making precooked bacon. The method involves a two-step process in which bacon is first preheated to melt the fat and form a protective layer that prevents water condensation from diluting the tastiness during the second cooking step. Four inventors were listed on the '498 patent and all assigned their interest in the patent to Hormel.

In April 2021, HIP filed suit in the United States District Court for the District of Delaware, alleging that David Howard of HIP was either the sole inventor or a joint inventor of the '498 patent. Howard claimed that he disclosed certain aspects of the claimed invention during his time collaborating with Hormel. The district court determined that while Howard was not the sole inventor, he was a joint inventor based solely on his contribution of the concept of infrared preheating, which was an alternative preheating embodiment listed in dependent claim 5 (e.g., a microwave oven, an infrared oven, and hot air). The district court instructed the United States Patent and Trademark Office ("USPTO") to add Howard as a joint inventor which would make HIP a joint owner of the '498 patent with Hormel.

Hormel appealed to the Federal Circuit, raising two issues. First, that Howard's alleged contribution of preheating with an infrared oven was well known and part of the state of the art and that it was not significant when measured against the scope of the full invention and second, that Howard's testimony was insufficiently corroborated.

The Federal Circuit's analysis begins by discussing the presumption that inventorship in an issued patent is correct, therefore, the standard to add an inventor post-issuance is high:

The burden of proving that an individual should have been added as an inventor to an issued patent is a "heavy one," Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) (quoting Garrett Corp. v. United States, 422 F.2d 874, 880 (Ct. Cl. 1970)), and "the issuance of a patent creates a...