Bacon and a Heavy Burden: Significant Contribution Required To Be a Joint Inventor

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Efforts by HIP, Inc. to have David Howard added as an inventor to Hormel’s U.S. Patent No. 9,980,498 (Bacon Patent) were recently scorched by the Federal Circuit. More specifically, in HIP, Inc. v. Hormel Foods Corporation (22-1696), a unanimous panel reversed the District of Delaware’s finding that Howard was a joint inventor of the Bacon Patent and explained that Howard’s purported contribution — preheating with an infrared oven — was insignificant when viewed in the context of the invention as a whole.

A Little Precooking

Bacon is usually precooked before it hits the grocery store shelves. Hormel’s two-step precooking process includes a first cooking step that creates a layer of protective (melted) fat around the bacon to preserve salt and good flavor and a second cooking step that prevents charring. In 2007, Unitherm Food Systems (HIP’s predecessor) entered into a joint development agreement with Hormel to develop an oven that would be used in this two-step cooking process.  During the initial testing phase, HIP alleges that Howard disclosed the infrared preheating concept that appears in claim 5 of the Bacon Patent. More than a decade later in 2018, the Bacon Patent was issued naming four inventors that assigned rights to Hormel. Howard was not named.

In spring 2018, HIP sued Hormel in the District of Delaware alleging that Howard was a sole or joint inventor of the Bacon Patent. The district court found Howard to be a joint inventor based on his purported contribution to the infrared preheating concept. However, as noted by Hormel on appeal, the purported contribution is featured only once in a single claim of the Bacon Patent (independent claim 5) and, at that, in a Markush group including a microwave oven, an infrared oven, and hot air:

A method of making precooked meat pieces using a hybrid cooking system, comprising:

preheating meat pieces in a first cooking compartment using a preheating method selected from the group consisting of a microwave oven, an infrared oven, and hot air to a temperature of at least 140° F. to create preheated meat pieces, the preheating forming a barrier with melted fat around the preheated meat pieces and reducing an amount of condensation that forms on the preheated meat pieces when transferred to a second cooking compartment, the barrier preventing any condensation that forms from contacting the preheated meat pieces under the melted fat and diluting flavor in the preheated meat pieces;

transferring the preheated meat pieces to the second cooking compartment, the second cooking compartment heated with an external heating source, the external heating source being external to the second cooking compartment, the second cooking compartment including internal surfaces, the external heating source assisting in keeping the internal surfaces at a temperature below a smoke point of fat from the meat pieces thereby reducing off flavors during cooking in the second cooking compartment; and

cooking the preheated meat pieces in the second cooking compartment to a water activity level of 0.92 or less to create precooked meat pieces. (Col. 9, line 57 to Col. 10, line 17) 

Turning Up the Heat

As framed by the Federal Circuit, “[t]he burden of proving that an individual should have been added as an inventor to an issued patent is a ‘heavy one’” and requires clear and convincing evidence. Pannu v. Iolab Corp., a 1998 Federal Circuit case, articulates a three-part test that requires the inventor to 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) [done] more than merely explain to the real inventors well-known concepts and/or the current state of the art.

A unanimous panel of the Federal Circuit found that Howard’s purported infrared heating contribution failed the second Pannu factor. In particular, the panel explained that Howard’s purported contribution — preheating with an infrared oven — to be lacking from the summary, examples, or figures. In fact, outside of claim 5, preheating with an infrared oven is mentioned one time in the Bacon Patent:

Preheating the sliced bacon with a microwave oven, or other suitable heating methods such as infrared or hot air, prior to fully cooking the sliced bacon in a superheated steam oven minimizes condensation on the sliced bacon surfaces. (Col. 5, lines 40-44)

In contrast, the panel found the written description, claims, and figures of the Bacon Patent to be replete with discussion and illustrations of microwave oven preheating disclosure. Accordingly, the panel found Howard’s purported contribution of using an infrared oven to be “insignificant in quality . . . [when] measured against dimension of the full invention.” As a result, the panel did not consider Hormel’s additional argument on the third Pannu factor, i.e., Howard’s purported contribution was well known and part of the state of the art, since failure of one Pannu factor is dispositive on the question of inventorship.

A Little Extra on the Plate

To compare and contrast, a few years ago in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceuticals Co., Ltd. (19-2050), a majority panel of the Federal Circuit found a significant contribution by two unnamed inventors. The six patents-at-issue (Honjo Patents) claim a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T cells, i.e., stimulating a person’s immune system to attack cancer cells. Nobel Laureate Dr. Tasuku Honjo was the sole inventor originally named, and Ono Pharmaceutical Co., Ltd. was the assignee of the Honjo Patents. In 2015, Dana-Farber (potential assignee of rights to the Honjo Patents) brought suit alleging that Dr. Gordon Freeman, a researcher at Dana-Farber, and Dr. Clive Wood, a researcher at Genetics Institute, should be added as inventors in the Honjo Patents. The district court agreed and ordered the USPTO to add Drs. Freeman and Wood as joint inventors to the Honjo Patents.

Judge Lourie, who also wrote the HIP opinion discussed above, explained that “[e]ssential to this determination is a recounting of each researcher’s work and the nature of their collaboration.” In this aspect, Dr. Honjo discovered the PD-1 receptor in the early 1990s, isolated its DNA sequence and began working with the protein in mouse models. In September 1998, Dr. Honjo and Dr. Wood connected to find the PD-1 ligand. Dr. Wood believed that the PD-1 receptor could be a candidate for antibody therapy development. Soon thereafter, Dr. Wood and Dr. Freeman, a researcher at Dana-Farber, began working together to determine whether PD-1 binds to novel B7 ligands. For the next few years, the three scientists collaborated and published on their collective efforts. Somewhere along the way, it seems hurt feelings may have affected this collaboration (or at least recognition of the various contributions in the collaboration). Indeed, after Dr. Honjo became aware of a provisional patent application filed in 1999 by Drs. Wood and Freeman disclosing modulation of the immune response via activating or blocking the PD-1/PD-L1 pathway in 1999 (and not naming Dr. Honjo as an inventor), Dr. Honjo stopped sharing data with Drs. Wood and Freeman. In 2002, Dr. Honjo filed the patent application that eventually spawned the Honjo Patents and did not name Drs. Wood and Freeman.  

So, what was the difference here? Is preheating bacon with an infrared oven less important than methods of treating cancer? Well, sorry bacon lovers, but yes. In addition, the appellate panel undertook a lengthy review of invention timeline and purported contributions by each inventor and referenced the lower court’s 111-page opinion that “considered” Dana-Farber’s eight-point theory justifying Drs. Freeman and Wood’s inventorship reveal the complexity behind the decision. While inventorship is a question of law reviewed de novo, the district court’s underlying findings of fact are reviewed for clear error. Indeed, as stated in the opinion, “[u]ltimately, the decision here rested on the extensive factual determinations made by the district court relating to the work performed together by Drs. Wood and Freeman, and Dr. Honjo that were not clearly erroneous, and the court made no errors of law.”

Oh, and interestingly, when Dr. Honjo won the Nobel Prize in Physiology or Medicine in 2018 (pre-appeal), he credited Dr. Freeman in his acceptance speech as a major collaborator in his work.