Hip, Inc. v. Hormel Foods Corporation

Case: 22-1696 Document: 49 Page: 1 Filed: 05/02/2023
United States Court of Appeals
for the Federal Circuit
______________________
HIP, INC.,
Plaintiff-Appellee
v.
HORMEL FOODS CORPORATION,
Defendant-Appellant
______________________
2022-1696
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:21-cv-00546-CFC, Chief
Judge Colm F. Connolly.
______________________
Decided: May 2, 2023
______________________
JERRY ROBIN SELINGER, Patterson & Sheridan LLP,
Dallas, TX, argued for plaintiff-appellee. Also represented
by KYRIE CAMERON, EDGAR NEIL GONZALEZ, BARDEN TODD
PATTERSON, Houston, TX.
TIMOTHY MICHAEL O'SHEA, Fredrikson & Byron, PA,
Minneapolis, MN, argued for defendant-appellant. Also
represented by LUKE P. DE LEON, BARBARA MARCHEVSKY,
KURT JOHN NIEDERLUECKE.
______________________
Before LOURIE, CLEVENGER, and TARANTO, Circuit Judges.
Case: 22-1696 Document: 49 Page: 2 Filed: 05/02/2023
2 HIP, INC. v. HORMEL FOODS CORPORATION
LOURIE, Circuit Judge.
Hormel Foods Corporation (“Hormel”) appeals from a
decision of the United States District Court for the District
of Delaware holding that David Howard should be added
as a joint inventor on its U.S. Patent 9,980,498 (the “’498
patent”) pursuant to 35 U.S.C. § 256. See HIP, Inc. v. Hor-
mel Foods Corp., No. 21-cv-546 (D. Del. Apr. 4, 2022), Dkt.
53 (“Final Judgment”) at J.A. 1–2, Dkt. 61 (“Trial Tr. III”)
at J.A. 3–13, 831–1045, Dkt. 63 (“Trial Tr. V”) at J.A.
14–42, 1188–1294. For the reasons provided below, we re-
verse.
BACKGROUND
Hormel owns the ’498 patent, which is directed to
methods of precooking bacon and meat pieces. Specifically,
the ’498 patent claims a two-step method that involves a
first preheating step using a microwave oven, infrared
oven, or hot air, and a second, higher-temperature cooking
step. The first step creates a layer of melted fat around the
meat pieces, which protects the meat from condensation
that may wash away salt and flavor during cooking. The
second step prevents the charred, off flavor associated with
cooking the meat pieces at higher temperatures. See ’498
patent, col. 3 ll. 52–61.
The ’498 patent has three independent claims, claims
1, 5, and 13. Claims 1 and 5 are relevant on appeal.
Claim 1 reads as follows:
1. A method of making precooked bacon
pieces using a hybrid cooking system, com-
prising:
preheating bacon pieces with a microwave
oven to a temperature of 140º F. to 210º F. to
create preheated bacon pieces, the preheating
forming a barrier with melted fat around the
preheated bacon pieces and reducing an
Case: 22-1696 Document: 49 Page: 3 Filed: 05/02/2023
HIP, INC. v. HORMEL FOODS CORPORATION 3
amount of condensation that forms on the pre-
heated bacon pieces when transferred to a
cooking compartment of an oven, the barrier
preventing any condensation that forms from
contacting the preheated bacon pieces under
the melted fat and diluting flavor in the pre-
heated bacon pieces;
transferring the preheated bacon pieces to the
cooking compartment of the oven, the cooking
compartment heated with steam from an ex-
ternal steam generator, the external steam
generator being external to the cooking com-
partment, the steam being injected into the
cooking compartment and being approxi-
mately 400º F. to 1000º F. when the steam
leaves the external steam generator, the cook-
ing compartment including internal surfaces,
the steam assisting in keeping the internal
surfaces at a temperature below 375 ºF.
thereby reducing off flavors during cooking in
the cooking compartment; and
cooking the preheated bacon pieces in the
cooking compartment to a water activity level
of 0.92 or less to create precooked bacon
pieces.
Id. col. 9 ll. 23–48 (emphasis added).
Claim 5 reads as follows:
5. A method of making precooked meat
pieces using a hybrid cooking system, com-
prising:
preheating meat pieces in a first cooking com-
partment using a preheating method selected
from the group consisting of a microwave
oven, an infrared oven, and hot air to a tem-
perature of at least 140º F. to create preheated
Case: 22-1696 Document: 49 Page: 4 Filed: 05/02/2023
4 HIP, INC. v. HORMEL FOODS CORPORATION
meat pieces, the preheating forming a barrier
with melted fat around the preheated meat
pieces and reducing an amount of condensa-
tion that forms on the preheated meat pieces
when transferred to a second cooking com-
partment, the barrier preventing any conden-
sation 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 compart-
ment, the second cooking compartment in-
cluding internal surfaces, the external
heating source assisting in keeping the inter-
nal surfaces at a temperature below a smoke
point of fat from the meat pieces thereby re-
ducing off flavors during cooking in the second
compartment; and
cooking the preheated meat pieces in the sec-
ond cooking compartment to a water activity
level of 0.92 or less to create precooked meat
pieces.
Id. col. 9 l. 57–col. 10 l. 17 (emphasis added).
In early 2005, Hormel embarked on a project to im-
prove on its microwave cooking process for precooked ba-
con. Appellant’s Br. 7. Then, in July 2007, Hormel planned
to meet with David Howard of Unitherm Food Systems,
Inc. (“Unitherm”) to discuss the products and processes
that Hormel was developing, as well as to discuss
Unitherm’s cooking equipment. Appellant’s Br. 8 (citing
J.A. 1651). Unitherm, now HIP, was a company that
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HIP, INC. v. HORMEL FOODS CORPORATION 5
produced food safety and thermal processing equipment.
J.A. 1515.
Accordingly, Howard and Tom Van Doorn, both of
Unitherm, met with Hormel representatives in July 2007
and during the subsequent months. Appellant’s Br. 9 (cit-
ing J.A. 1510–1547). The parties eventually entered into a
joint agreement to develop an oven to be used in a two-step
cooking process. J.A. 1682, 1692. In December 2007, Hor-
mel conducted pork loin testing relating to color develop-
ment. Appellant’s Br. 15 (citing J.A. 771), Appellees’ Br.
12. During this testing, Hormel used both an infrared oven
and a more conventional spiral oven. J.A. 1719–20. How-
ard later alleged that it was during these meetings and
testing process that he disclosed the infrared preheating
concept at issue on appeal. See Trial Tr. V 1151:3–7, J.A.
35.
In January 2008, Hormel conducted additional bacon
testing using Unitherm’s mini spiral test oven. Appellant’s
Br. 16 (citing J.A. 775, 1723). After experiencing problems
with the spiral oven and testing at Unitherm’s facility,
Hormel leased the oven and moved it to its own research
and development facility to continue testing. Appellant’s
Br. 17 (citing J.A. 777). Subsequent testing revealed that
turning off internal electrical heating elements in the oven
solved the charred, off flavor of the bacon, Appellant’s Br.
19 (citing J.A. 684, 792), and preheating the bacon with a
microwave oven prevented condensation from washing
away the salt and flavor, Appellant’s Br. 20 (citing J.A.
807). That testing resulted in a two-step cooking process,
the first step involving preheating the bacon and the sec-
ond step involving cooking the meat in a superheated
steam oven. Appellant’s Br. 20. Hormel filed a non-provi-
sional patent application for the two-step cooking process
in August 2011, listing Brian J. Srsen, Richard M. Herreid,
James E. Mino, and Brian E. Hendrickson as joint inven-
tors. J.A. 52. The application issued in May 2018 as the
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6 HIP, INC. v. HORMEL FOODS CORPORATION
’498 patent. The ’498 patent names the four inventors, all
of whom assigned their interests in the patent to Hormel.
In April 2021, HIP sued Hormel in the United States
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 that Howard contributed to at
least one of the following: (1) using superheated steam at a
level of 90% or more in claims 3 and 12; (2) heating the
internal surfaces of the oven to a temperature less than
375º F. in claim 1; (3) preheating by hot air in claim 5;
and/or (4) preheating with an infrared oven in claim 5.
After a bench trial, the district court determined that
Howard was not the sole inventor of the ’498 patent, Trial
Tr. III 896:9–13, J.A. 11, but that he was a joint inventor,
based solely on his alleged contribution of the infrared pre-
heating in claim 5, Trial Tr. V 1153:3–5, J.A. 37. The court
held that the infrared preheating concept in claim 5 was
significant based on the differences between independent
claim 1 and independent claim 5 and that HIP established
that Howard’s testimony was corroborated by Van Doorn’s
testimony, by the pork loin testing data, and by testimony
from three Hormel inventors stating that they had not con-
ceived of the preheating with an infrared oven limitation.
Trial Tr. V 1150–53, J.A. 34–37.
In summary, the district court concluded that Howard,
although not the sole inventor of the ’498 patent, was a
joint inventor, having contributed the preheating with an
infrared oven concept in independent claim 5. The court
ordered the United States Patent and Trademark Office to
add David Howard as a joint inventor on the ’498 patent
and to issue a Certificate of Correction accordingly. Final
Judgment at 1–2, J.A. 1–2. Hormel appealed. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
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HIP, INC. v. HORMEL FOODS CORPORATION 7
DISCUSSION
Hormel raises two issues on appeal. First, Hormel con-
tends that the district court erred in holding that David
Howard is a joint inventor of the ’498 patent because the
alleged contribution of preheating with an infrared oven
was well known and part of the state of the art and because
it was not significant when measured against the scope of
the full invention. Second, Hormel contends that the court
erred in holding that HIP met its burden of establishing by
clear and convincing evidence that David Howard is a joint
inventor of the ’498 patent because Howard’s testimony
was insufficiently corroborated. We address each argu-
ment in turn.
“Inventorship is a question of law” that we review
“without deference” to the district court. Gen. Elec. Co. v.
Wilkins, 750 F.3d 1324, 1329 (Fed. Cir. 2014). We review
facts underlying the inventorship question for “clear error.”
Id. The burden of proving that an individual should have
been added as an inventor to an issued patent is a “heavy
one,” Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir.
1998) (quoting Garrett Corp. v. United States, 422 F.2d 874,
880 (Ct. Cl. 1970)), and “the issuance of a patent creates a
presumption that the named inventors are the true and
only inventors,” Gen. Elec. Co., 750 F.3d at 1329. Thus, an
alleged joint inventor must prove a claim of joint inventor-
ship by “clear and convincing evidence.” Hess v. Advanced
Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir.
1997).
To qualify as joint inventor, a person must make a sig-
nificant contribution to the invention as claimed. Fina Oil
& Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).
The parties here frame their arguments using the three-
part test articulated in Pannu, 155 F.3d at 1351. HIP ar-
gues that David Howard was a joint inventor because he
(1) contributed in some significant manner to the concep-
tion of the invention; (2) made a contribution to the claimed
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8 HIP, INC. v. HORMEL FOODS CORPORATION
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. Id.Hormel contends that the district court erred in hold-
ing, under the third Pannu factor, that David Howard is a
joint inventor of the ’498 patent because the alleged contri-
bution of preheating with an infrared oven was well known
and part of the state of the art. Hormel contends that How-
ard’s alleged contribution to claim 5, preheating meat
pieces with an infrared oven, was disclosed in a prior
printed publication, U.S. Patent App. Pub. 2004/0131738
(“Holm”), which, Hormel argues, the court erred in failing
to consider. Hormel contends that Holm is directed to a
method and apparatus for browning and cooking food prod-
ucts with steam, expressly providing that one of the cook-
ing sources can be an infrared oven. Hormel also argues
that its expert testimony established that Holm’s browning
is preheating, and thus Holm taught using an infrared
oven to preheat meat pieces three years before Howard’s
and Hormel’s 2007 discussions. Hormel asserts that the
court erred in failing to consider Holm and its disclosure,
and instead only looked to the claim language in determin-
ing whether preheating with an infrared oven reflected the
state of the art. Hormel further asserts that HIP’s sugges-
tion that Hormel had an obligation to prove that Holm’s
disclosure was commercialized, described in a marketing or
sales brochure, or described in a textbook is not required in
order to show that infrared preheating was well known.
Hormel further argues that the district court failed to
analyze the significance of the alleged contribution in light
of the full invention (the second Pannu factor) and also
erred in its conclusion that the infrared preheating lan-
guage in claim 5 was significant (the first Pannu factor).
Hormel asserts that the court’s findings that Howard was
not the sole inventor make it clear that he did not
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HIP, INC. v. HORMEL FOODS CORPORATION 9
contribute to the overall conception of the claimed method,
but at most suggested the use of a piece of equipment. Hor-
mel concludes that that was not a significant contribution,
and further that there is no indication that infrared pre-
heating solved any specific problem in the field of the ’498
patent. Hormel notes that the specification of the ’498 pa-
tent mentions infrared ovens only once, in contrast to mi-
crowave ovens, which are mentioned throughout the
specification, including in the figures. Hormel also argues
that HIP did not put forward any evidence of the signifi-
cance of Howard’s contributions. Hormel finally asserts
that the court erred in its claim differentiation analysis be-
tween claim 1, which does not include the infrared preheat-
ing limitation, and claim 5, which does, because infrared
preheating is not what made claim 5 patentable. Hormel
concludes that the mere inclusion of the infrared oven lan-
guage in a claim is not sufficient to label that contribution
significant.
HIP responds that the district court did not err in de-
termining that Howard’s infrared preheating contribution
provided more than a well-known concept in the current
state of the art. HIP asserts that Hormel attempts to im-
properly equate information that is well known in the art
with anything in the prior art, however obscure. HIP con-
tends that Holm is an obscure publication that was never
commercialized and had never been described in a market-
ing or sales brochure or in a textbook. The infrared pre-
heating claim limitation, HIP argues, does not become
current state of the art merely because it is mentioned in a
single patent publication. HIP also argues that its inventor
testimony established that infrared preheating was not the
state of the art.
HIP further responds that the district court did not err
in determining that Howard’s infrared preheating contri-
bution was not insignificant in view of the whole invention
(the second Pannu factor). HIP also argues that the court
did not err in determining that Howard contributed in
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10 HIP, INC. v. HORMEL FOODS CORPORATION
some significant way to the invention (the first Pannu fac-
tor), further noting that Hormel did not address that find-
ing in its briefing. HIP argues that Hormel improperly
attempts to frame the inquiry under the third Pannu factor
as one of nonobviousness. HIP also contends that the dis-
trict court did not err in comparing the claim language in
claims 1 and 5 and determining that the added infrared
preheating in claim 5 was significant.
We agree with Hormel that Howard was not a joint in-
ventor of the invention claimed in the ’498 patent. Under
the second Pannu factor, the inventor must “make a con-
tribution to the claimed invention that is not insignificant
in quality, when that contribution is measured against the
dimension of the full invention.” Pannu, 155 F.3d at 1351.
Here, we find that Howard’s alleged contribution of pre-
heating meat pieces using an infrared oven is “insignificant
in quality,” id., to the claimed invention. Howard’s alleged
contribution, preheating with an infrared oven, is men-
tioned only once in the ’498 patent specification as an al-
ternative heating method to a microwave oven. ’498
patent, col. 5 ll. 40–42 (“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 ba-
con . . . .”). Further, 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. Id. col. 9 ll. 57–62. 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 micro-
wave oven and do not recite preheating with an infrared
oven. Id. col. 9 ll. 23–25; id. col. 10 ll. 38–40.
In contrast to the insignificant disclosure of preheating
with an infrared oven, preheating with microwave ovens,
and microwave ovens themselves, feature prominently
throughout the specification, claims, and figures. The brief
summary of the invention mentions preheating with a
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HIP, INC. v. HORMEL FOODS CORPORATION 11
microwave oven, but never mentions infrared preheating.
’498 patent, col. 2 l. 28. As discussed above, independent
claims 1, 5, and 13 recite preheating bacon pieces (claim 1)
or meat pieces (claims 5 and 13) with a microwave oven.
Id. col. 9 ll. 25, 61; id. col. 10 l. 40. The specification also
repeatedly refers to preheating with a microwave oven, in-
cluding in the background of the invention (“One typical
way of making precooked bacon is to use microwave heat-
ing,” id. col. 1 ll. 19–22) and in the detailed description of
the invention (“To address the dilution of the cure flavor,
the inventors of the present invention determined that by
including a preheating step using a microwave oven, the
cold slices of bacon were heated enough to reduce the
amount of condensation that formed on the slices of bacon
. . .,” id. col. 3 ll. 52–56).
Furthermore, the examples and corresponding figures
employ procedures using preheating with a microwave
oven, but not preheating with an infrared oven. In fact, not
one example describes preheating with an infrared oven.
Example 1 discloses preheating using a microwave oven.
Id. col. 5 l. 63. Example 2 uses three methods to preheat
the bacon slices: a microwave oven, a superheated steam
oven, and a hybrid system using both a microwave oven
and a steam oven, consistent with the claimed invention.
Id. col. 6 ll. 4–21. Strikingly, not a single method of pre-
heating used in Example 2 is an infrared oven. Example 3
uses four preheating methods, including a microwave/su-
perheated steam system, which, the specification discloses,
“is the system in accordance with the present invention.”
Id. col. 6 ll. 23–40. Examples 4 and 5 also use microwave
ovens and do not use infrared ovens. Id. col. 6 ll. 47–49
(using a hybrid system with a microwave oven); id. col. 7 ll.
4–6, 16–18 (same).
The figures further emphasize the centrality of the mi-
crowave oven, and the corresponding insignificance of the
infrared oven, to the current invention. Figures 2–5 pre-
sent the results of the microwave-oven-based examples,
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12 HIP, INC. v. HORMEL FOODS CORPORATION
with none indicating the use of an infrared preheating step.
Finally, Figure 1, a schematic diagram of a hybrid bacon
cooking system according to the principles of the claimed
invention, explicitly discloses a “microwave oven 40” as the
instrument used in the precooking step.
In summary, the specification, claims, and figures all
illustrate that Howard’s alleged contribution of preheating
the bacon or meat pieces with an infrared oven is “insignif-
icant in quality” when “measured against the dimension of
the full invention,” Pannu, 155 F.3d at 1351, which
squarely focuses on a preheating step using a microwave
oven. Thus, we conclude that Howard is not a joint inven-
tor of the ’498 patent.
We need not comment on the other Pannu factors, as
the failure to meet any one factor is dispositive on the ques-
tion of inventorship. Pannu, 155 F.3d at 1351 (stating that
a joint inventor must contribute in a significant manner to
the conception or reduction to practice of the invention,
make a contribution to the invention that is not insignifi-
cant, and do more than explain well-known concepts or the
current state of the art). We therefore need not address
Hormel’s arguments that the alleged disclosure of infrared
preheating in Holm constitutes a well-known concept
and/or the state of the art. We also need not address Hor-
mel’s arguments on whether the district court erred in its
conclusion that the infrared preheating language in claim
5 was a significant contribution to the conception or reduc-
tion to practice of the invention (i.e., the first Pannu factor).
Finally, we need not reach the question of corrobora-
tion. Howard’s alleged contribution of infrared preheating
was insignificant under Pannu, so the question of corrobo-
ration of evidence regarding Howard’s alleged contribution
is rendered moot.
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HIP, INC. v. HORMEL FOODS CORPORATION 13
CONCLUSION
We have considered the parties’ remaining arguments,
but we find them unpersuasive. For the foregoing reasons,
the decision of the district court is reversed.
REVERSED