Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (May 2, 2023), reversing a district court ruling that an employee of HIP’s predecessor entity, Unitherm, was a joint inventor on a patent assigned to Hormel.
In 2005, Hormel and Unitherm collaborated to improve on Hormel’s microwave cooking process for precooked bacon and entered into an agreement to develop an oven for a two-step cooking process. After testing, a two-step cooking process was finalized: a first step involving preheating the bacon and a second step involving cooking the meat in a superheated steam oven. Hormel filed a patent application on the process listing only Hormel employees as inventors. The resulting patent includes three independent claims. Two of those claims recite a preheating step using a microwave oven. One recites a preheating method selected from the group consisting of “a microwave oven, an infrared oven, and hot air . . . .”
HIP sued Hormel, alleging one of Unitherm’s employees was either the sole or a joint inventor of the patented invention. The district court held a bench trial and determined that the Unitherm employee was a joint inventor because he contributed the concept of preheating with an infrared oven. Hormel appealed.
The Federal Circuit reversed. Applying its own precedent, the Court considered whether the Unitherm employee made “a contribution to the claimed invention that is not insignificant in quality, when . . . measured against the dimension of the full invention.” In performing its evaluation, the Court looked to both the claims and the specification. Focusing on the claims, the Court noted that the use of an infrared oven was “recited only in a single claim of the . . . patent, in a Markush group,” while the other independent claims recited only microwave ovens. Focusing on the specification, the Court explained that the patent focused primarily on using microwave ovens in the preheating step and that the potential use of an infrared oven was mentioned only one time in the entire written description. Neither the summary of the invention nor any of the examples discussed in the detailed description mentioned the use of an infrared oven. Accordingly, the Court determined that the Unitherm employee’s contribution was too insignificant to support the district court’s conclusion on inventorship.