Precooked Bacon, Artificial Intelligence Patents, and a Defense of the Common Law

“We should draw a timely lesson from HIP v. Hormel…. Let’s allow the courts to consider individual cases about who owns patents and copyrights to which AI contributed.”

common lawBacon is delightful. And the similarly savory subject of who must be named inventor on a bacon patent was the issue in the recent case of HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (Fed. Cir. May 2, 2023). HIP claimed that one of its employees materially contributed to the invention of Hormel’s patent on methods for precooking bacon. The question of what makes one an “inventor” was central to whether HIP’s employee should be added to the patent. More broadly, questions about inventorship and authorship have become central to recent commentary and speculation about the impact of artificial intelligence (AI) on intellectual property law. While AI did not factor into HIP v. Hormel, the decision provides a useful reminder about the role of the common law in developing answers to these momentous questions.

Who is an Inventor?

Publications from academia and the bar are replete with analysis, think-pieces, and musings on the impact of AI on the law of inventorship and authorship. Congress, the Copyright Office, the U.S. Patent and Trademark Office (USPTO), and many of their worldwide counterparts have either weighed in or are currently considering the issue. These are abstract, difficult, and philosophically-thorny questions.

The Patent Act itself does not provide much guidance. It simply defines an “inventor” as the individual(s) “who invented or discovered the subject matter of a[n] invention.” 35 U.S.C. § 100(f). Thus, the Act’s circular definition of “inventor” delegates the issue to the courts for development through common law, and HIP v. Hormel stands as one such guidepost of the common law tradition. Over the course of decades, the Federal Circuit slowly devised a three-factor test—the “Pannu” test–for determining whether a person qualifies as an inventor. The court in HIP v. Hormel applied the Pannu test to the facts of a precooked bacon invention, determining whether HIP’s employee:

  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. did more than merely explain to the real inventors well-known concepts and/or the current state of the art.

The Unexpected Virtues of the Common Law

Ultimately, the court concluded that HIP’s employee was not a joint inventor under the second Pannu factor. While the specifics are beyond the scope of this article, the opinion itself is a paragon of fact-intensive, common-law reasoning. It dives deep into the background facts and the details of the patent application. No new, wide-scoped, black-letter rules are proudly announced. No effort is made to answer questions beyond the specific case. Rather, sound reason and experienced judgment are directly brought to bear on the dispute of individual parties fighting over a bacon patent. And a just result is rendered: only Hormel’s employees are the inventors.

This is not to say that patent law and the patent bar went unserved by HIP v. Hormel. It is a useful data point, a lighted guidepost in the dark and hazy forest of inventorship. For example, careful readers can discern from the opinion the importance of a patent’s specification to evaluating someone’s claimed contribution to an invention. But the point is we should relish these modest, but real, fruits of human reason developed under the common law.

“Justice” is notoriously difficult to define in the abstract. Plato wrote the entire Republic on “justice,” and it certainly did not settle the issue once and for all. Likewise, commentators seek to divine that one-right-rule to govern the impact of generative AI on inventorship and authorship. Top-down rulemaking—reasoning deductively from the abstract to govern the specific—is difficult, especially for questions involving justice.

But that is why the common law method is such a jewel of English history. It reasons inductively. It takes as its premise that a judge can be trusted to discern justice in an individual case. The common law is modest in the face of fallible humans. Slowly, judges, the bar, and the public can infer certain rules from the data of just results rendered in individual cases. They can devise flexibly-phrased rules like the Pannu factors. These are provisional rules, subject to refinement, exceptions, and attempts to “distinguish” individual cases.

Thus, Justice Holmes was wrong to argue that the traditional perspective on the common law invokes “a brooding omnipresence in the sky.” Southern Pac. Co. v. Jensen, 244 U.S. 205, 222 (1917) (Holmes, J. dissenting). Rather, the common law relies on an incarnate presence—the discovery of justice in a specific and real case involving flesh and blood human beings. It does not purport that mere humans can settle, once and for all, the essential qualities of an inventor or an author. It need only lay claim to an ability to settle whether David Howard, a real-life employee of HIP, should be named as an inventor on Hormel’s precooked bacon patent. And it does that job well.

Leave Inventorship and Authorship to the Common Law

John Locke theorized that a person should own what “he hath mixed his Labour with, and joined to it something that is his own.” Second Treatise on Government, Ch. 16 § 27 (1689). There is truth to this insight, but almost all human abstractions will prove inadequate. As the contemporary philosopher Robert Nozick observed, if you mix your can of tomato juice in the ocean, you simply lose your juice; you don’t come to own the ocean. Anarchy, State, and Utopia 175 (New York: Basic Books 1974). Like Locke, modern commentators and academics want to employ abstract reason to broadly announce the legal landscape of who should own inventions and creative works to which AI contributed. Such ambitious endeavors face similar difficulties as Locke’s philosophy.

Rather, we should draw a timely lesson from HIP v. Hormel. There, the court found that the contribution of HIP’s employee to the bacon invention fell on the “tomato juice in the ocean” side of the line. The individual justice of the result is apparent from the court’s opinion. Similarly, let’s allow the courts to consider individual cases about who owns patents and copyrights to which AI contributed. The specific works and the incarnate facts will matter and will enable the just result to be more easily gleaned. People can and will find just results in tangible cases, and over time we may even be able to make some inferences about what that brooding omnipresence in the sky has to say about the issue. As HIP v. Hormel demonstrates, proceeding humbly (as if taking short, shaky steps in the dark) has the best chance of getting us to our destination. That is the beauty of the common law.

Image Source: Deposit Photos
Image ID: 69425575
Author: Zerbor

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One comment so far.

  • [Avatar for Anon]
    Anon
    May 17, 2023 09:02 am

    This article is simply wrong in so many dimensions.

    The apparent seeking to spans common law beyond mere interpretation is a direct affront to the US Constitutional delegation of law writing to a different branch of the government.

    And that’s only the most direct error of the article.

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