This recent CAFC decision deals with the issue of joint inventorship. The US District Court for the District of Delaware ruled that an inventor be added as a joint inventor based on his contribution to a claimed concept. The CAFC reversed the district court finding instead that the inventor’s contribution was “insignificant in quality,” which is a requirement for joint inventorship under the three-part test articulated in Pannu v. Iolab Corp (hereinafter, “the Pannu test”).
Hormel Foods Corp. owns US.Patent No. 9,980,498 (hereinafter the ‘498 patent) titled “Hybrid Bacon Cooking System,” which is directed to methods of precooking bacon and meat pieces. In 2007, to improve on its microwave cooking process for precooked bacon, Hormel met and entered into a joint agreement with representatives from Unitherm Food Systems, David Howard and Tom Van Doorn, to develop an oven to be used in a two-step cooking process. Howard alleged that he disclosed the infrared preheating concept of independent claim 5 of the ‘498 patent during the meetings and testing process, and hence should be named an inventor. The district court concluded that Howard was a joint inventor having contributed the preheating with an infrared oven concept in independent claim 5.
Hormel appealed and the CAFC agreed with Hormel that Howard was not a joint inventor based on one of the factors of the Pannu test (Pannu v. Iolab Corp.). Under the Pannu test, an inventor 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) more than merely explain[ed] to the real inventors well-known concepts and/or the current state of the art.” The CAFC concluded that Howard was not a joint inventor based on at least the second factor of the Pannu test stating that “Howard’s alleged contribution of preheating meat pieces using an infrared oven is “insignificant in quality,” …, to the claimed invention.”
The CAFC explained that the specification, claims, and figures of the ‘498 patent emphasize preheating with microwave ovens whereas the alleged contribution - preheating with an infrared oven - is mentioned only once in the ‘498 patent specification as an alternative heating method to a microwave oven. The CAFC further explained that the alleged contribution is recited only once in a single claim of the ’498 patent, in a Markush group reciting a microwave oven, an infrared oven, and hot air, and that none of the examples in the ‘498 specification describe preheating with an infrared oven. In fact, independent claims 1 and 13 only recite a method of making precooked bacon pieces (claim 1) or meat pieces (claim 13) using a hybrid cooking system comprising preheating meat pieces with a microwave oven and do not recite preheating with an infrared oven.
The CAFC therefore determined that the specification, claims, and figures all illustrate that Howard’s alleged contribution of preheating the bacon or meat pieces with an infrared oven is “insignificant in quality” when “measured against the dimension of the full invention,” which squarely focuses on a preheating step using a microwave oven. The CAFC did not comment on the other Pannu factors as failure to meet any one factor is dispositive on the question of inventorship.
TAKEAWAYS
- The burden of proving that an individual should be added as an inventor to an issued patent is a heavy one. Pannu v. Iolab Corp. quoting Garrett Corp. v. United States. Therefore, assessing joint inventorship correctly before the patent issues is important.
- Although each inventor need not make the same amount or type of contribution to be named as a joint inventor, it is important to consider whether the contribution is significant in quality “when measured against the dimensions of the full invention.”
- Since failure to meet any one factor of the Pannu test is dispositive on the question of inventorship, it is important to consider whether an inventor’s contribution satisfies all the factors of the Pannu test.