In
The '498 patent included three independent claims, claims 1, 5 and 13. Claims 1 and 5 recited the following:
1. A method of making precooked bacon pieces using a hybrid cooking system, comprising:
preheating bacon pieces with a microwave oven to a temperature of 140ş F. to 210ş F. to create preheated bacon pieces, the preheating forming a barrier with melted fat around the preheated bacon pieces and reducing an amount of condensation that forms on the preheated 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 preheated bacon pieces;
transferring the preheated bacon pieces to the cooking compartment of the oven, the cooking compartment heated with steam from an external steam generator, the external steam generator being external to the cooking compartment, the steam being injected into the cooking compartment and being approximately 400ş F. to 1000ş F. when the steam leaves the external steam generator, the cooking compartment including internal surfaces, the steam assisting in keeping the internal surfaces at a temperature below 375 şF. 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.3
5. 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 140ş 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 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.4
In 2005,
After encountering difficulties with the spiral oven and testing at
HIP sued
- using superheated steam at a level of 90% or more in claims 3 and 12;
- heating the internal surfaces of the oven to a temperature less than 375ş F. in claim 1;
- preheating by hot air in claim 5; and/or
- preheating with an infrared oven in claim 5.6
The district court decided that Howard, by providing a contribution to the preheating with the infrared oven idea in independent claim 5, was a joint inventor of the '498 patent. The court ordered the United States Patent and Trademark Office to include Howard as a coinventor on the '498 patent and to issue a Certificate of Correction to publish Howard's coinventor status.
The court initially explained that to be considered a joint inventor, a person must make a substantial contribution to the claimed invention. HIP contended that Howard was a joint inventor because he:
- contributed in some significant manner to the conception of the invention;
- 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
- did more than merely explain to the real inventors well-known concepts and/or the current state of the art.7
The Federal Circuit agreed with
Instead of the insignificant description of preheating using an infrared oven, preheating using a microwave oven was discussed significantly throughout the specification, claims and figures. Specifically, the disclosed examples and relevant figures used procedures employing preheating with a microwave oven, not preheating with an infrared oven. The drawings also highlighted the significance of the microwave oven and the unimportance of the infrared oven. Therefore, the Federal Circuit held:
The court noted that the other Pannu factors need not be considered because the failure to satisfy any single Pannu factor was dispositive regarding the determination of inventorship.
Takeaways
In evaluating the second Pannu factor, the Federal Circuit held that the use of an infrared oven to preheat the meat pieces was insignificant because it was stated only once in the specification as an alternative heating method and was recited in a Markush group as an alternative to other preheating methods. The court remarked that it would be “absurd” to allow joint ownership by a manufacturer when the significant discoveries and refinements of the methods were made in a research facility separate from the manufacturer.
The HIP v.
The court was also clear that to be a joint inventor, the individual must satisfy all three Pannu factors, and failure to satisfy even just one of the factors will disqualify the individual from being considered a joint inventor. That is, to be a joint inventor, the individual must have:
- contributed in some significant manner to the conception of the claimed invention;
- 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
- done more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Footnotes
1.
2. Id., 66 F.4th at 1348.
3. Id., 66 F.4th at 1348.
4. Id., 66 F.4th at 1348.
5. Id., 66 F.4th at 1349.
6. Id., 66 F.4th at 1349.
7. Id., 66 F.4th at 1350 (citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473, 43 USPQ2d 1935 (Fed. Cir. 1997)).
8. Id., 66 F.4th at 1352-53 (quotation marks omitted).
Mr
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