Joint Inventorship Gone Up In Smoke For Want of Significant Contribution
| June 16, 2023
HIP, INC. v. HORMEL FOODS CORPORATION
Decided: May 2, 2023
Before Lourie, Clevenger, and Taranto. Opinion by Lourie.
Summary
The CAFC held that an alleged inventor did not make a contribution sufficiently significant in quality to establish joint inventorship to an issued patent, where the alleged contributed concept was only minimally mentioned throughout the entirety of the patent document including the specification, drawings and claims.
Details
Hormel Foods Corporation (“Hormel”) owns U.S. Patent 9,980,498 (the “’498 patent”) relating to production of precooked bacon. While a traditional bacon producer would “precook” or prepare the bacon prior to sale by a certain type of oven, such as microwave or steam oven, the invention uses a two-step, hybrid oven system to improve the precooking process. FIG. 1, reproduced below, depicts a principle embodiment where a microwave oven 40 initially heats bacon so as to form a coating of melted fat around the meat piece, followed by a super heated steam oven 60 equipped with external steam source 61 for further cooking to a finishing temperature:
Per the ‘498 patent, the first step of forming the “fat barrier” protects the underlying meat from condensation and resulting dilution of flavor, whereas the second step using the external gas source prevents the oven’s internal surfaces from becoming hotter than the smoke point of bacon fat, which would otherwise cause off flavor of the resulting product.
The ’498 patent includes independent claims 1, 5 and 13, defining the inventive method using slightly different languages from each other. As relevant on appeal, claims 1 and 13 both recite a particular mode of cooking in the first step of the hybrid system as “preheating … with a microwave oven,” whereas claim 5 recites three alternative preheating techniques using a Markush language, “selected from the group consisting of a microwave oven, an infrared oven, and hot air.”
As part of its R&D efforts toward the improved precooking process, Hormel contacted Unitherm Food Systems, Inc. (“Unitherm”), now HIP, a manufacturer of cooking machinery such as industrial ovens. The parties jointly agreed to develop an oven to be used in a two-step cooking process. The alleged inventor in question, David Howard of Unitherm, was involved in those meetings and testing process where he allegedly disclosed an infrared heating concept to Hormel. As Hormel’s further R&D—including testing with their own facility instead of Unitherm’s facility—eventually led to the discovery of the inventive two-step process, Hormel filed for a patent. The resulting ’498 patent named four inventors, which did not include Howard.
HIP sued Hormel in the District Court for the District of Delaware, alleging that Howard was either the sole inventor or a joint inventor of the ’498 patent. HIP argued, among other things, that Howard contributed to preheating with an infrared oven, the concept recited in independent claim 5. The district court held that although Howard was not the sole inventor, his contribution of the infrared oven concept made him a joint inventor of the ’498 patent. Hormel appealed.
On appeal, Hormel argued, among other things,[1] that Howard was not a joint inventor because the infrared oven concept was well known, and his alleged contribution was insignificant in quality relative to the extent of the full invention.
Specifically, the joint inventorship issue was argued based on the three-part test set forth in Pannu v. Iolab Corp., 155 F.3d 1344, 1351. Under Pannu, to qualify as an additional joint inventor, one must have:
(1) contributed in some significant manner to the conception of the invention;
(2) made 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) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Hormel asserted that Howard met none of the three factors, and HIP countered that each and every factor was met so as to establish joint inventorship.
The CAFC ultimately sided with Hormel. The CAFC focused its analysis on the second Pannu factor, noting specific circumstances:
- Small # of times mentioned in the specification: The alleged contribution, preheating with an infrared oven, is “mentioned only once in the … specification as an alternative heating method to a microwave oven.”
- Small # of times mentioned in the claims: The alleged contribution is “recited only once in a single claim” whereas the two other independent claims recite preheating with a microwave oven, with no mention of an infrared oven.
- Presence of a more significant alternative in the disclosure: The alternative to the alleged contribution, preheating with a microwave oven, “feature[s] prominently throughout the specification, claims, and figures.”
- Specification focused on the alternative: All the specific examples disclosed in the specification are limited to embodiments using preheating with a microwave oven.
- Drawings focused on the alternative: All the figures, including Figure 1 primarily depicting the operating principles of the claimed invention, are limited to embodiments based on preheating with a microwave oven.
Noting that the entirety of the ’498 patent disclosure supports insignificance in quality of the alleged contribution per the second part of Pannu test, the CAFC concluded that Howard did not qualify as a joint inventor. Lastly, the CAFC noted that there was no need to address the other Pannu factors “as the failure to meet any one factor is dispositive on the question of inventorship.”
Takeaway
This case provides a reminder of the role a patent disclosure may play in determining the question of joint inventorship. In particular, although the second Pannu factor requires the inventor’s contribution to be “not insignificant in quality” (emphasis added), in certain circumstances, the amount of mentions made of the alleged contributed concept in the patent, along with other considerations such as the primary focus of the patent as discerned from the entire disclosure, may influence the determination of joint inventorship.
[1] Hormel’s second main argument challenges insufficiency of corroboration of Howard’s testimony, the question rendered moot due to the decision on the significance of the alleged contribution.
CAFC upheld ITC’s ruling under the ‘Infrequently Applied’ Anderson two-step test regarding the enablement of open-ended ranges
| June 8, 2023
FS.com Inc. v. ITC and Corning Optical Corp.
Decided: April 20, 2023
Before Moore, Prost and Hughes. Opinion by Moore.
Summary:
Corning filed a complaint with the ITC alleging FS was violating §337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), (a.k.a ‘unfair import’) by importing high-density fiber optic equipment that infringed several of their patents – U.S. Patent Nos. 9,020,320; 10,444,456; 10,120,153; and 8,712,206. The patents relate to fiber optic technology commonly used in data centers.
The Commission ultimately determined that FS’ importation of the high-density fiber optic equipment violated §337 and issued a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS.
Subsequently, FS appealed the Commission’s determination that the claims of the ’320 and ’456 patents are enabled and its claim construction of “a front opening” in the ’206 patent.
ISSUE 1: ENABLEMENT
FS challenges the Commission’s determination that claims 1 and 3 of the ’320 patent and claims 11, 12, 15, 16, and 21 of the ’456 patent are enabled. These claims recite, in part, “a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space” or “a fiber optic connection of at least one hundred forty-four (144) fiber optic connections per U space.” FS argued these open-ended density ranges are not enabled because the specification only enables up to 144 fiber optic connections per U space.
A patent’s specification must describe the invention and “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same.” 35 U.S.C. § 112(a). To enable, “the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.”
In determining enablement, the Commission applied the two-part standard set forth in Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007):
[O]pen-ended claims are not inherently improper; as for all claims their appropriateness depends on the particular facts of the invention, the disclosure, and the prior art. They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.
Although the CAFC acknowledged that the Anderson test is infrequently applied, both FS and Corning agreed that the test governed their legal dispute. In applying this standard, the Commission determined the challenged claims were enabled because skilled artisans would understand the claims to have an inherent upper limit and that the specification enables skilled artisans to approach that limit.
The CAFC agreed, understanding the Commission’s opinion as determining there is an inherent upper limit of about 144 connections per U space. See Appellant’s Opening Br. at 51 (“The only potential finding by the Commission of an inherent upper limit to the open-ended claims is approximately 144 connections per 1U space.”). Specifically, that determination was based on the Commission’s finding that skilled artisans would have understood, as of the ’320 and ’456 patent’s shared priority date (August 2008), that densities substantially above 144 connections per U space were technologically infeasible. This was supported by expert testimony.
ISSUE 2: CLAIM CONSTRUCTION
The Commission construed “a front opening” in claim 14 of the ’206 patent as encompassing one or more openings. FS argued the proper construction of “a front opening” is limited to a single front opening and therefore its modules, which contain multiple openings separated by material or dividers, do not infringe claims 22 and 23. The CAFC disagreed.
The CAFC held that, generally, the terms “a” or “an” in a patent claim mean “one or more,” unless the patentee evinces a clear intent to limit “a” or “an” to “one.” 01 Communique Lab’y, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012). The CAFC concluded here that the claim language and written description did not demonstrate a clear intent to depart from this general rule.
Comments:
- Open-end ranges are not automatically improper. If such a range is required/desired during prosecution, apply the two-part standard set forth in Anderson: (1) is there inherent, albeit not precisely known, support for an upper limit and (2) does the specification enables one of skill in the art to approach that limit.
- The terms “a” or “an” in a patent claim remain to mean “one or more,” unless the patentee evinces a clear intent to limit “a” or “an” to “one.”
