Guest Post by Jordan Duenckel. Jordan is a second-year law student at the University of Missouri, head of our IP student association, and a registered patent agent. He has an extensive background in chemistry and food science.
HIP, Inc., v. Hormel Foods Corp., 2022-1696, — F.4th — (Fed. Cir. May 2, 2023)
Joint inventorship requires a substantial contribution to the invention. In the decision HIP, Inc. vs. Hormel, Judge Lourie writes for a unanimous panel to reverse a district court’s determination of joint inventorship involving a new process for precooking bacon. US Patent 9,980,498 has four inventors that are employees of and assigned their interest to Hormel. HIP sued Hormel, alleging that David Howard was either the sole inventor or a joint inventor of the ’498 patent. The district court determined that Howard was a joint inventor based solely on his alleged contribution to the infrared preheating concept in independent claim 5.
Bacon is an interesting food with unique preservation and cooking properties. Being a cured product, for food safety reasons, no additional cooking of the bacon is needed when bought off the shelf in a refrigerated section. Of course, most people are not consuming the bacon without additional cooking and some companies will precook the product for consumer convenience. When precooking, Hormel is trying to avoid the loss of salt, and therefore flavor, through condensation and prevent the creation charred off flavors (as opposed to the desirable char on a steak).
In the process of viability testing the new method, prior to filing the application, the inventors consulted with David Howard of Unitherm, HIP’s predecessor, to discuss methods related to Unitherm’s cooking equipment to create a two-step process of preheating then a higher temperature step. After some difficulties, Hormel leased the equipment and returned to their own R&D lab. The method created, the subject matter of the ‘498 patent, involves a first step that allows the fat of the bacon to seal the surface of the bacon and prevent condensation. The charring was remedied by adjusting the heating method of the oven in the second step of high-temperature cooking. In Hormel’s product development, Hormel tried an infrared oven and a conventional spiral oven.
HIP argued that Howard contributed to the ‘498 patent in the preheating by hot air in claim 5 and/or preheating with an infrared oven in claim 5. Claim Five reads in the relevant part:
- 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 140º F. to create preheated meat pieces…
On appeal, Hormel argues that Howard’s contribution is well-known in the art and insignificant when measured against the full invention. With inventorship being a question of law, and the issuance of a patent creating a presumption of inventorship, an alleged joint inventor must provide clear and convincing evidence to substantiate their claim. In evaluating whether a significant contribution was made by Howards, the parties apply the test from Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). The test requires that the alleged joint inventor:
(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.
Analyzing the second Pannu factor, the Court found that the alleged contribution of preheating meat pieces using an infrared oven to be insignificant in quality because it was mentioned only once in the patent specification as an alternative heating method to a microwave oven and was recited only once in one Markush grouping in a single claim. In contrast, preheating with microwave ovens and microwave ovens themselves were prominently featured throughout the specification, claims, and figures. The examples and corresponding figures also employed procedures using preheating with a microwave oven, but not preheating with an infrared oven.
Infrared heating seems to have been an afterthought in the creation of the two-step precooking method. Whatever discussions Howard might have had about the importance of the infrared, Hormel seems to have focused on microwave heating to solve the condensation problem. From one step further back, it seems absurd to permit joint ownership by a cooking equipment manufacturer when the significant discoveries and refinements of the methods were made in Hormel’s R&D facility without Howard present. The prevention of condensation and avoiding the char flavor were both made independent of Howard’s contributions. Considering the second Pannu factor, the reversal of inventorship seems appropriate.
[OT] Although the Fed. Cir. Therasense decision significantly reduced the number of successful patent suit defenses of unenforceability for inequitable conduct in recent years, it was reportedly just obtained in a summary judgment in Glob. Tubing LLC v. Tenaris Coiled Tubes LLC, 2023 U.S. Dist. LEXIS 46067 (S.D. Tex. Mar. 17, 2023) against both parent and related “children” patents. [For not disclosing to PTO examiners an informed-as-relevant competitor’s prior sales brochure publication.] Interestingly, the Court graphicly noted that “the remedy for inequitable conduct is the ‘atomic bomb’ of patent law,” because “inequitable conduct regarding any single claim renders the entire patent unenforceable.” [A nice quote for further IC cases.] As also decided in this case, the “fruit of the poisonous tree” doctrine blows up related patents as well.
This may be an interesting test of the claim by the PTO Office of enrollment and Discipline that they read all patent decisions in which IC is found, to conduct follow-up disciplinary investigations. Also, possibly another test of Texas bar disciplinary enforcement effectiveness if the prosecuting attorney was a member?
Thanks for highlighting, Paul.
I’m still waiting for news of John Eastman’s disbarment in California.
Likewise, but perhaps John Eastman’s CA bar disciplinary proceeding is being impacted by apparently being a likely JD Special Counsel target as the alleged “brains” of the failed phony state electoral vote submissions & outgoing-VP vote-overthrow scheme?
The Sydney Powell TX Bar situation is more surprising to me, in view of apparently baseless and un-investigated District Court formal complaint filings of fraud allegations coupled with her later filed admission, in her ongoing defamation trial, of their incredibility? But as the old saying goes, “the law grinds slowly but finely,” at least in most states, and in many federal courts, and far more judicial and disciplinary action is pending, and yet to even start, re this whole big topic of voting fraud allegations by lawyers.
Happy Cinco de Patentlyo!
Great article Jordan. Thank you for writing it. Figuring out if you need to add an employee as an inventor is always a critical decision in almost every patent application thus making your contribution highly relevant and practical.
Jr;
This may be a function of your role in the process.
For a large majority of our clients (in two separate vectors), the “criticality” of our role in the process is merely asking questions at the intake process – nominally, “Is this list all of the people that have contributed?” And “what are the levels of contribution?”
The first to capture all possible, and the second to delineate the spectrum of legal inventors from more contibutors.
I agree with Jr’s praise of the article, but what I think it (and the underlying case, of course) really highlights is the complications that may arise around inventorship when third parties, like the consultant here, were involved.
>Comment on LinkedIn
Boo.
But to answer your questions, yes, yes, no for the same reason I end with a copyrighted image if I take a picture using a point-and-shoot camera under a sign that says “Kodak Picture spot.” To borrow a line, there are many just like it, but this one is mine.
Respond to MyInfoYourInfo.com and receive a free coupon for 50% a one year subscription!
DC: Do I deserve to “own” this image?
Dude I will pay you 0.1 cents for all rights to that image if you respond to me in 10 seconds.
You (likely, and merely) jest, but your offer could cost you much more than a pretty penny.
Of course, if you actually were knowledgeable of the state of the art, you would be well aware of that.
“your offer could cost you much more than a pretty penny.”
Did you copyright this gibberish? You “deserve” to “own” it.
Lol – not gibberish at all.
And oh, by the way, related to a past comment on the speed of adoption….
link to weforum.org
Includes 5 day to one million user graph
OC,
Another “boo” from you in view of another post to LinkedIn?
We certainly run the danger of sacrificing vigor for politeness.
Say “La Vee.”
Happy May the Fourth be with you day. Oops, I meant to say Happy Rule 36 day (6 issued today).
Yes, 6; with none of the we-don’t-owe-you-an-explanation panels including the Honorable Judge Newman.
So who’s not doing their job?
Well, one thing’s for sure from this decision:
Someone’s bacon got cooked, and it wasn’t the pig’s.
You could say HIP’s arguments at CAFC lacked sizzle.
A (potential) interesting “inventor” aspect that crosses over to the “AI as inventor (co-inventor) discussion is the aspect of:
“(3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.”
First, I would remind folks that “well-known” and “current state of the art” are different measures. Compare Berkheimer.
Second, IF the “generative” aspect of (evolving) AI is going to be 1gn0red or discounted, then the bar of obviousness (as dictated by that other non-human legal fiction of Person Having Ordinary Skill In The Art FOR State of The Art) becomes — necessarily — EVERYTHING “in that black box” that some (quite possibly random) person coming by to open the box legally obvious.
It is the quantum ABOVE any and every thing “in the box” that must be judged as “invention.”
Methinks those that are against AI as inventor may not like the necessary consequences.
Methinks those that are against AI as inventor may not like the necessary consequences.
Methinks people would engage your hypotheticals more often if you used plain English and avoided stuffing your commentary with your typical asides and self-referential comments.
I know I’m wasting my time here, but your biggest problem isn’t the ideas that you bring to the table. Rather, your biggest problem is your inability to clearly convey your message.
Translation: “Wah”
You (supposedly) are a big boy, right? Your whine is noted, as is the ability of most any big boy to adjust, and not let what you whine about prevent you from addressing the merits therein.
I know I’m wasting my time here…
As predictions go, this is what they call a “<a href="link to dictionary.com; rel=nofollowlead pipe cinch.”
I do wonder what Greg’s fascination is with the Moscow drone attack (and why he feels compelled to hide the hyperlink)…
Maybe because he believes you are easily triggered by his hidden hyperlinks, and he finds it amusing when you are triggered.
Meh, no on several levels.
Supposedly – per him, he cannot see my responses.
Also, my responses are hardly “triggered.”
Snowflake admitted he got paid to post but won’t say how much Yuan. Now comes the shifty tell.
This actually made me smile, but not likely for the intent you had with the posting.
For example (and we have been over this quite a few times), my enterprising is simply not from my posts. To be explicit, I do not get paid to post and have never indicated such.
I have stated and affirmed that I have set up an enterprise to get paid for YOUR choice of posts.
As for “yuan,” we also have been over this many times, as I have provided the dollar value for the types of your choices of posts, and also have provided that I simply do not provide exchange rates (given that they are both in flux, and available to you in the web were you truly interested).
Or was this merely more of your cyber-stalking?
Ah, given as Greg “professes” to being not able to even see my posts, his comment can be taken for what it is: a mindless ad hominem attack.
By the by, the “waste of time” is Wt’s empty whine. Why bother with an empty whine and not address the plain notion provided that if the generative aspects of AI are denied, then the non-human person of the legal fiction of PHOSTIA necessarily includes ALL that which the AI provided?
It is not as if I am the only one advancing this — had Wt (or Greg) taken part in the one or more USPTO AI sessions, they would be well aware of these and similar views having been expressed.
But if they only want to whine….
then the non-human person of the legal fiction of PHOSTIA necessarily includes ALL that which the AI provided?
You see how using plain language makes your point clearer? It seems my “whine” has paid off by getting you to more clearly state your position.
Your position is that PHOSITA is a “non-human person.” I don’t subscribe to that position. Consequently, I don’t believe in the follow-on proposition that PHOSITA “necessarily” includes AI capability. At best, PHOSITA possibly includes AI capability. However, the legal meaning of the term “person” depends upon the statute.
The following is the language of 35 USC 103:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
As can be seen, the statute refers to “a person having ordinary skill in the art” (POSITA).
In KSR, the Supreme Court stated “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” The “not an automaton” is troublesome language for your position as I don’t think anyone would disagree with the assertion that AI is an automaton. The counter-argument to this would be that this factual finding (by SCOTUS) preceded creative AIs (and therefore does not apply to current AIs), but I suspect that this Supreme Court (or any foreseeable composition thereof) will NOT ascribe the characteristic of “creative” to AIs (for at least both political/philosophical reasons). Consequently, this language represents one big hurdle for you to overcome.
Another issue is that this POSITA has average (i.e., ordinary) knowledge, ability, and awareness. One could easily argue that an AI is not “average.” This is from Environmental Designs v. Union Oil, 713 F.2d 693 (Fed. Cir. 1983): “The examiner must ascertain what would have been obvious to one of ordinary skill in the art at the time the invention was made, and not to the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the art at hand”. I think that a judge could easily add AI to that list of what a POSITA is not.
Yet another issue is even if a POSITA included an AI you have still have to make a showing that an AI-assisted POSITA is capable of creating something different than a non-AI-assisted POSITA. How do you even make that showing?
Given all of this , I am pretty comfortable in believing that a Court will determine that a POSITA does NOT include AI capability. A finding otherwise would rock the boat far too much.
You are, of course, free to believe otherwise. However, I believe you are making a mistake in believing that a PHOSITA necessarily includes AI. If you want to disagree, then I would be more than happy to entertain your counter-arguments — so long as they are clearly stated.
I don’t think anyone would disagree with the assertion that AI is an automaton.
This is an instance of “fighting the hypo.” The question of AI inventorship (or PHOSITA-hood) is only interesting in the first place if one assumes a degree of technological advancement in which it is not correct to characterize the AI in question as an “automaton.” I realize that this might well mean that the question has no present, practical relevance, but the point of the discussion is to explore the issue now, while thoughts on the matter will be impartial and untainted by self-interest.
I think that your exegesis of the §103 text is on the right track. As you note, §103 speaks of a “person having ordinary skill.” 1 U.S.C. §1 provides that “[i]n determining the meaning of any Act of Congress, unless the context indicates otherwise… the words ‘person’ and ‘whoever’ include corporations, companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals.” AI may not be fairly characterized as a corporation, company, association, firm, partnership, society, or joint stock company. Meanwhile, the holding of Thaler v. Vidal, 43 F.4th 1207, 1211 (Fed. Cir. 2022) is that “individual” does not reach as far as AI. The straightforward textual analysis, therefore, leads to the conclusion that AI is not part of the PHOSITA.
The straightforward textual analysis, therefore, leads to the conclusion that AI is not part of the PHOSITA.
And that will likely be the conclusion of the Courts. I don’t see any Court in this country wanting to go down a road that mixes AI with any type of characteristic generally associated with a person (hypothetical or not).
Trying to squint to see “is” absolutely misses the point of “informs” and the basis of that non-human legal fiction of PHOSITA by way of State of the Art.
Exactly as I have provided.
That’s an incredibly terse non-answer. Way to step up to the plate …. and do nothing.
Do not confuse terse and directly on point with being a non-answer (as YOU continue to clench tight your eyes).
While I agree that the courts are not going to construe “PHOSITA” to include an AI (unless and until Congress amends the statutes to reflect such an understanding of “PHOSITA”), it is also true that the current understandings of PHOSITA include a human who access to a microscope, or a human who has access to a computer, or a human who has access to a bunch of woodshop tools (etc.). I suppose that the public dissemination of LLM AIs is going to lead to a world in which the PHOSITA includes (for relevant art fields) a human with access to a LLM.
Perhaps that is not so very different in the outcomes that will result from the world in which the PHOSITA is the LLM? Hard to say, until we see the results play out.
Ah yes, a cursory miss on patent law (not seeing the floor of a PHOSITA while straining to want an (unnecessary) “is,”
Greg again hides more OMB-TDS.
“Consequently, this language represents one big hurdle for you to overcome.”
Your assertion aside (at least it is more than a mere whine), PHOSITA is a legal fiction.
It is NOT a real person — and NO Court will state that.
That is far more a hurdle for you than your supposed hurdle for me.
It is NOT a real person — and NO Court will state that.
However, it still is a person, and you’ve yet to identify any case law that implies that person can include an AI.
Hypothetical does not necessarily encompass artificial intelligence.
That is far more a hurdle for you than your supposed hurdle for me.
The language of “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” is directly on point. Nothing you’ve cited comes close.
Criminy – get rid of that filter…
Y our comment is awaiting moderation.
May 5, 2023 at 8:30 am
[Let] me correct that for you:
“The legal fiction of a Hypothetical person does not equal a real human person.
THAT is a necessary first step for you to grasp.
[emphasis omitted]
generative AI is NOT an automaton.
Your hurdle is simply not as high as you think it to be.
You would get this were you to unclench your eyes.
Further Wt, and for argument’s sake, we do “take” generative AI to be merely an automaton, then — necessarily — ALL that such AI can do is merely exhibit State of the Art, and you MISS as the legal fiction of PHOSITA is above an automaton.
State of the Art is what it is. That is the floor and not the ceiling.
Somehow though throughout this, you cannot get out of your own way.
The language of “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” is directly on point.
No, it is not on point. Once again, you are fighting the hypo. The real question assumes that the AI in question is more than a mere “automaton.”
I realize that you have a lot of experience with current AI technology, and like to point out—based on that experience—that AI is not nearly as clever at these hypos posit. That is all fine and fair. Nevertheless, the nature of a hypo is that it is not constrained to correspond to actual, present reality. A hypo is allowed to imagine a future in which the present realities have given way to newly emerged realities.
If you are content to consider only those technologies which are presently possible, then you are likely correct that those AIs cannot be inventors (or PHOSITAs). At that point, however, you are ducking the real question, not answering it.
Greg’s “fighting the hypo” translates to “eyes clenched tight.”
Gee Wt, even your ally here (and as much as he strains to) just does not agree with you.
At that point, however, you are ducking the real question, not answering it.
I addressed the real question multiple ways.
First, let’s be clear … AI is just a super-sophisticated computer program. It is an automaton in the purest sense of the word.
Second, the “real question” revolves around how is a Court going to interpret a POSITA. With that in mind, what Court is going to interpret a POSITA to include artificial intelligence. There are some here that accuse others of having their eyes clenched tight, yet they never address the political/philosophical implications of a Court ruling that an a person of ordinary skill in the art includes artificial intelligence. This is the “do not pass Go, do not collect $200” moment. If you cannot pass Go, it really doesn’t matter what is on the other side of Go — you aren’t getting there.
Third, AI has yet to be shown that it is technically capable of inventing. Obviousness is essentially shorthand for saying that something should have been invented by someone else.
Fourth, no one has explained how a POSITA including AI would make a difference in the application of 103. To do so would require some knowledge as to how AI works and its capabilities, which appears to be lacking.
In short:
1) Legally, AI is neither an inventor nor one having ordinary skill in the art
2) Politically, I see zero impetus for having AI be declared as an inventor one having ordinary skill in the art — in the case that there are questions regarding 1)
3) Technically, I don’t see how AI is capable of being an inventor or one having ordinary skill in the art
4) Practically, I don’t see how a POSITA including AI makes a difference
Thaler has failed at 1) and all we have are naked allegations as to 3) — from a guy who is about as wacky as one can get. While a court is required to give factual allegations as to 3) the benefit of the doubt in a summary judgment context, that the court has done so says nothing about the actual validity of those allegations.
No one has stepped up to the place to address 2) or 4).
All four of your points are in error.
Legally AND factually.
Further, my point on State of the Art DOES address your point 2.
As to each of these points (especially point 4), you — embarrassingly — continue to clench tight your eyes.
For whatever little it is worth, I agree with you on 1, 2, & 4. As for #3, I certainly agree that you “don’t see how AI is capable of being an inventor.” Your unwillingness to entertain the hypothetical here has been made abundantly clear.
Fair enough, of course. You choose to discuss the practical and not the speculative. This is a perfectly reasonable choice. You will, please, indulge others of us, however, who choose to discuss the what-ifs of that which is presently science fiction, but which could become real in time.
Lol….
Your “Do Not Pass Go” analogy
F
A
I
L
S
(You may have landed on the “Go Directly To Jail” spot or chance card)
It really is a simple either/or dilemma for you.
Either AI (and here, especially, generative AI) IS inventive
OR
It can only show what is already a part of the State of The Art.
(Think floor – not ceiling).
Thus — as I already provided — if for argument’s sake, no level of inventiveness is permitted, it is a necessary conclusion that the AI portion must reflect already known State of The Art.
There would be no need then to chase ANY change by the courts in view of any AI.
It’s game over for you — by your own argument or by mine.
It really is, Heads I win, Tails you lose.
“AND” (actually “&”) I chuckle at Greg’s latest hidden signaling – vis a vis Wokeness and Dr. James Lindsay.
I certainly agree that you “don’t see how AI is capable of being an inventor.” Your unwillingness to entertain the hypothetical here has been made abundantly clear.
After drafting a dozen or so applications that involve hardcore AI concepts (and talking with many PhDs in the field), I’m confident in my opinion.
That being said, 1) and 2) are hurdles that need to be overcome before this hypothetical matures to anything beyond a hypothetical, and these will be much harder to overcome than 3) will be.
You will, please, indulge others of us, however, who choose to discuss the what-ifs of that which is presently science fiction, but which could become real in time.
They can indulge in 3) all they way, but they still need to get around to explaining 1) and 2) and 4). Notably, 2) and 4) have yet to be expounded upon by anyone.
“Notably, 2) and 4) have yet to be expounded upon by anyone [that I can see]”
Says the man, clenching tight his eyes.
Still.
I’m just as interested in the discussion of the the first step of the Pannu test when it comes to AI:
(1) contributed in some significant manner to the conception of the invention
As already noted Addy, your “interest” is shallow and lacks the grasp of DABUS.
You would do better learning to crawl before trying to fly.
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