Federal Circuit: Contributions to Patented Cooking Method Not Meaty Enough for Joint Inventorship

June 5, 2023

Reading Time : 3 min

The Federal Circuit has reversed the District of Delaware’s ruling that added an inventor to a patent. The Federal Circuit found that the contribution by the added inventor was not significant when measured against the invention as a whole, thereby defeating the bid to change inventorship.

The patent owner Hormel Foods obtained a patent for a two-step method of precooking bacon and meat pieces. The first step required preheating the meat to seal in desired flavors. The second step used a higher temperature to prevent unwanted flavors. The patent had three independent claims, including one claim that required a microwave oven to be used for the first step, and another claim that gave the option of a microwave oven, an infrared oven or hot air to be used for the first step. The method was researched and developed under a joint agreement between Hormel and another company that was eventually called HIP.

Approximately three years after the patent issued, HIP filed suit alleging that one of its employees should be either a sole inventor or a joint inventor. HIP contended that the employee had contributed the infrared heating concept during discussions of the testing research. The district court ruled in favor of HIP, finding that the employee was a joint inventor. On appeal, Hormel argued that the district court erred by finding that the employee’s alleged contributions merited joint inventorship, and by finding that HIP had met the evidentiary requirements for corroboration of the employee’s testimony.

The Federal Circuit began its analysis by setting out the burdens for joint inventorship and the three-part test from Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). A person claiming to be a joint inventor of an issued patent must prove the claim by clear and convincing evidence. To qualify as a joint inventor, the person must (1) contribute in some significant manner to the conception or reduction to practice of the invention; (2) make 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) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The Federal Circuit focused its analysis on the second Pannu factor. The court found that the employee’s contribution of using an infrared oven in the first step was insignificant in quality to the claimed method. The court juxtaposed the patent’s discussion of using different heat sources. Use of an infrared oven was discussed only once in the specification, and even then only as an alternative to a microwave oven. Further, as a claim limitation, use of an infrared oven was only in one of the three independent claims, and only as part of a Markush group. In contrast, use of a microwave oven featured heavily in the specification and claims. In particular, the examples and figures showed using a microwave oven or other heat sources, not an infrared oven. The court found that the microwave oven was central to the cooking methods disclosed.

The Federal Circuit did not analyze the other Pannu factors, stating that the employee’s failure to meet any one factor doomed the bid for joint inventorship. Further, the court explained that it did not need to reach the issue of corroboration because the issue had been mooted.

Practice Tip: A party wishing to challenge inventorship to add an inventor faces a high bar. First, the burden of proof is clear and convincing evidence. Second, the putative inventor must meet all three parts of the Pannu test, which includes considering the description of the invention and the scope of the claims in the patent. Litigants should consider how to develop the evidentiary record to best serve their goals in light of the burden and tests for joint inventorship.

HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 WL 3184358 (Fed. Cir. May 2, 2023) (Lourie, Clevenger, Taranto)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.