One alternative in one claim is not a significant contribution when measured against the whole invention

2023-05-02Fed. Cir.

HIP, Inc. v. Hormel Foods Corporation, 66 F.4th 1346 (Fed. Cir. May 2, 2023) (precedential) (Lourie, J., joined by Clevenger and Taranto, JJ.), reversing HIP, Inc. v. Hormel Foods Corp., No. 1:21-cv-00546-CFC (D. Del. Apr. 4, 2022) (Connolly, C.J.)

United States Patent No. 9,980,498 claims a two-step method of making precooked bacon: preheating the meat to form a barrier of melted fat that keeps condensation from washing away flavor, then cooking it in a compartment heated by an external source kept below the smoke point. Hormel Foods Corporation filed the application in 2011 naming four inventors. HIP, Inc., formerly Unitherm Food Systems, Inc., sued under Section 256 of Title 35 of the United States Code, alleging that Unitherm's David Howard was the sole or a joint inventor, having disclosed infrared preheating at meetings and testing in 2007. After a bench trial, Chief Judge Connolly of the District of Delaware found Howard a joint inventor because independent claim 5 recites preheating "selected from the group consisting of a microwave oven, an infrared oven, and hot air." The Federal Circuit reversed in an opinion by Judge Lourie, joined by Judges Clevenger and Taranto. Under the second factor of Pannu v. Iolab Corp., Howard's alleged contribution was "insignificant in quality" when "measured against the dimension of the full invention": infrared preheating appears once in the specification as an alternative, once in a single claim as one member of a Markush group, and in none of the examples or figures, while claims 1 and 13 and every example use a microwave oven. The court did not reach the other Pannu factors or corroboration.

What it changesJoint inventorship is tested claim by claim but weighed against the invention as a whole, so a person who supplied one alternative in one Markush group is not an inventor unless that alternative is what the invention is about. For artificial intelligence teams the pattern is familiar: a model or a screening pipeline proposes candidates, several engineers evaluate them, and the claims end up reciting a list of acceptable options. Thaler v. Vidal already requires every named inventor to be a natural person; this decision says which natural persons count. The disclosure record should tie each claim element to the person who conceived it, and the drafter should decide whether a minor alternative belongs in a claim at all, because reciting it invites a Section 256 suit from the vendor or consultant who mentioned it. The decision is precedential and reversed a finding made after a bench trial.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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