In HIP, Inc. v. Hormel Foods Corp., Case No. 2022-1696 (Fed. Cir. May 2, 2023), the Federal Circuit made clear that merely contributing one element to a single independent claim of a patent is not enough to establish a person as a co-inventor, if the contributed element represents an “insignificant” feature. It was undisputed that food engineer David Howard had provided to patentee Hormel the idea of using an infrared oven for preheating bacon pieces in a two-step cooking method. According to the Federal Circuit, however, appellant HIP had not shown that the infrared preheating step was “a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention,” as required by the Court’s test for inventorship articulated in Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). The Court deemed Howard’s contribution insignificant because only one of three independent claims and one passage in the specification mentioned infrared preheating. In contrast, preheating using a microwave oven was recited in every claim and was discussed extensively in the written specification and drawings. Accordingly, the Federal Circuit reversed the district court’s decision ordering the Patent Office to list Howard as an inventor.
As the court reiterated, the Pannu test for inventorship requires an individual 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.” As the Hormel decision illustrates, this imposes a heavy burden on those bringing claims under 35 U.S.C. § 256 to list an un-named contributor as an inventor.