Processing All Things Federal Circuit
May 22, 2023 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (May 15 – May 19): Joint Inventorship and Insignificant Contributions


This week’s bacon-related case of the week may lack a certain recognizable savory smell, but it still manages to pack some helpful insights on the law of joint inventorship.

Case of the (recent) week: HIP, Inc. v. Hormel Foods Corporation, No. 22-1696

Panel: Judges Lourie, Clevenger, and Taranto, with Judge Lourie writing the opinion

You should read this case if: you have a case involving joint inventorship

Hormel Foods owns a patent to a method for precooking bacon and other meat. The method involves preheating the bacon before cooking it in a superheated steam oven. Before filing its patent application, Hormel had consulted with David Howard about testing and improvements to its process. But Hormel eventually completed its development and testing in-house.

HIP sued Hormel claiming that Howard should be added as joint inventor to Hormel’s patent. HIP claimed that Howard contributed by disclosing preheating the bacon using an infrared oven, which is recited as one option for preheating in the patent’s claim 5. The district court held a bench trial and ruled for HIP.

The Federal Circuit reversed. The Federal Circuit applied a three-part framework, sometimes called the Pannu factors, which requires joint inventors to:

(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 held that Howard failed the second Pannu factor because his contribution was insignificant when measured against the full invention, which focused primarily on preheating with a microwave oven. Howard’s alleged contribution, preheating with an infrared oven, was mentioned only once in the patent’s specification as an alternative to a microwave oven, and similarly appeared only once in claim 5 in a Markush group that included a microwave oven, an infrared oven, and hot air. By contrast, preheating with microwave ovens featured prominently, and repeatedly, in the patent’s specification and claims, as well as in the examples and figures which described preheating only with a microwave oven and not an infrared oven. 

Because failing even one of the Pannu factors was dispositive of inventorship, the court declined to reach the parties’ arguments on the remaining factors or to address whether Howard’s testimony was sufficiently corroborated.


Precedential opinions: 1

Non-precedential opinions: 11

Rule 36: 0

Longest pending case from argumentFeliciano v. Department of Transportation, No. 22-1219 and Flynn v. Department of State, No. 22-1220 (126 days, companion cases)

Shortest (non-Rule 36) pending case from argument: The Regents of the University of California v. ITC, No. 22-1521 and The Regents of the University of California v. Satco Products, Inc., No. 22-1106 (15 days, companion cases)