CAFC’s Joint Inventorship Analysis Challenged in SCOTUS Petition

“HIP told the Justices that the case has ‘enormous practical importance’ as it will affect the validity of already issued patents and changes business strategies about which inventors to include or exclude from a patent.”

HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”

The U.S. District Court for the District of Delaware initially determined that David Howard of Unitherm Food Systems, Inc. was not the sole inventor of Hormel Foods Corporation’s U.S. Patent No. 9,980,498, but that he was a joint inventor based on the contribution of the infrared preheating in claim 5.

However, the CAFC said that Howard’s contribution failed under the three-part test articulated in Pannu v. Iolab Corp. That test says that an inventor must 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.”

Among other reasons, the CAFC said that Howard’s contribution “is mentioned only once in the ’498 patent specification…[and] is recited only once in a single claim of the ’498 patent.” Thus, “Howard’s alleged contribution of pre-heating meat pieces using an infrared oven is ‘insignificant in quality’… to the claimed invention,” said the court.

But in HIP’s petition last week, the company told the Court that the CAFC has added the requirement “that a joint inventor’s contribution be not insignificant in quality when measured against the dimension of the full invention,” in conflict with the plain language of the statute on joint inventorship (35 U.S.C. §116(a)). The specific questions presented are:

Whether joint inventorship requires anything more than a contribution to conception that is stated in a patent claim.
Whether, under Section 116(a), a claimed and enabled contribution to conception can be deemed insignificant in quality based on the quantity of disclosure in the specification.

HIP told the Justices that the case has “enormous practical importance” as it will affect the validity of already issued patents and changes business strategies about which inventors to include or exclude from a patent. While inventorship errors can be corrected, there is a cost involved and damages may not be immediately recoverable before such corrections are made, said the petition.

The petitioner ultimately told the High Court it should review the case because the CAFC is improperly reading requirements into Section 116(a) that aren’t there and that Congress never expressed; and that the court-made quantitative analysis used to determine inventorship conflicts with Section 112 and is improper as a joint invention inquiry. “[T]he appellate panel’s newly fashioned precedential quantity requirement calls into question the validity of an unknown, but potentially large, number of issued patents,” said HIP.

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Join the Discussion

4 comments so far.

Anon
September 5, 2023 12:13 pm
Miss Trujillo,

Thank you for your contribution. How would you see the directive to take a claim — as a whole — with any such attempt to parse elements of a claim and dictate “invention” on a piece part basis?

I can easily see entirely inventive claims made up of nothing but piece part items that themselves are not inventions (nor inventive, alone or per se).

That being said, a mere ‘reporting of’ “concepts that are well known and the current state of the art” is NOT the same as suggesting TO (or how) to include steps (items) with other steps (items).

Commissioning a prior art search report does not make the contributions of such reports into a state for considering inventorship.

Even the guidance (questioning, probing, even gentle nudging) from patent practitioners (which exists in most all specification writing exercises) does not make the one providing that guidance — the patent practitioner — into a coinventor.

Here though, we have members of the client team (putatively) doing more than that mere ‘reporting of what exists in the prior art.’

Secondary – and separate item for your consideration and comment: it can be said that generative AI (to distinguish over a mere computer reporting current state of art) does provide inventive aspects that are not (legally) traceable to other invention team members (read that as the humans that are permitted to obtain US patents).

AI — as is uncontested by me — is not permitted under US law to obtain a granted patent (I phrase it this way precisely because this is different than AI being a true inventor). I have drawn the parallel to the Naruto v. David Slater et al. case in which the non-human celebes crested macaques was undoubtedly the creator of the photograph, but was outside the bounds of copyright law to hold the legal copyright.

What then of proper listing of co-inventors with involvement of generative AI for patent rights?
Doreen Trujillo
September 2, 2023 03:05 pm
The court’s analysis traces back to Fina Oil, cited in Pannu. After stating that the statute places no minimum on the amount of contribution necessary to be a co-inventor, the court then preceded to try and assign limits.

Indeed, the paragraph from Fina duplicated below seems to suggest that, if a concept was well known, it does not afford one inventorship status for suggesting its inclusion in the invention.

“The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. See Sewall, 21 F.3d at 416, 30 USPQ2d at 1359. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art. See Hess, 106 F.3d at 981, 41 USPQ2d at 1787. The case law thus indicates that to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.”

I do not think that is what the court meant, as many inventions are the combination of old concepts applied in new ways.
Pro Say
September 1, 2023 04:43 pm
. . . yet another case of a large corporation stealing — and profiting greatly — with the valuable innovation of an individual inventor.

Enabled by the ends-justifies-the-means jurisIMprudence of Hormel’s friendly neighborhood CAFC.

Shocking . . . absolutely no one.
Pro Say
September 1, 2023 04:04 pm
“The petitioner ultimately told the High Court it should review the case because the CAFC is improperly reading requirements into Section 116(a) that aren’t there and that Congress never expressed …”

Akin to:

The petitioner ultimately told the High Court it should review the case because the CAFC (and the High Court) are improperly reading requirements into Section 101 that aren’t there and that Congress never expressed.