Hormel Saves Its Bacon

Suggestion of another option for preheating bacon, made before the true invention occurred, did not rise to the level of an inventive contribution
Hormel wanted to improve its process for making precooked bacon. It reached out to HIP, a supplier of cooking equipment, to help in that endeavor. As part of the partnership, Hormel and HIP sought to jointly develop an oven with a two-step process for making the precooked bacon. The parties discussed, and HIP personnel suggested the use of, an infrared oven and a spiral oven, and it was later agreed that HIP would supply a spiral oven for testing.

It was then that Hormel, and Hormel alone, solved problems with the spiral oven supplied by HIP for testing. Hormel turned off electric elements in the oven that produced an off flavor, preheated the bacon with a microwave oven, and finished the precooked bacon using superheated steam.

Hormel then filed for a patent application to protect its idea for a microwave/steam oven process and was awarded a patent. But when it filed for its patent, Hormel mentioned options other than preheating with a microwave oven in the specification, including use of hot air or an infrared oven. One of the dependent claims set out those options, claiming “the group consisting of a microwave oven, an infrared oven, and hot air.” The Hormel inventors testified that they had not conceived of the preheating with an infrared oven limitation.

The district court found that HIP’s personnel should have been named as a joint inventor on Hormel’s patent, a decision that the Federal Circuit reversed. To qualify as a joint inventor, the omitted inventor must show, by clear and convincing evidence, that the 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.

The Federal Circuit found HIP could not meet factor (2) and did not reach factors (1) and (3), which were also argued as valid reasons for reversal. It felt that the specification, save isolated instances, was directed to the use of a microwave oven for preheating the bacon. And where it saw infrared heating discussed, the discussion was insignificant given the prominent discussion of use of a microwave oven.

So, how did the option for use of an infrared oven even make it into the patent specification and claims in the first place? The Federal Circuit opinion does not explain that. A theory could be that it was added by the patent prosecution attorney to “help” the applicant in hopes of expanding the scope of the patent. If that is what happened, it would highlight the risk of seeking a patent, not for what the inventors actually invented, but what the patent attorney hoped the inventors had invented. As another law firm, Rimon Law, mentioned, “A common misconception among patent applicants is that the broader the claim scope, the better the patent quality. While conceptually a broad patent claim offers broader protection, a broad claim is not only more difficult to get granted but also easier to get invalidated. … In the pursuit of a perfect patent, getting the claim scope right is arguably more important than getting a patent. But there is no absolute standard on what the right claim scope is. Whether the claim scope is right depends on several factors, for example, what the actual invention is, the level of prior art, the client’s budget, and last but not the least, the technical field.” Here, the patent specification exceeded the scope of the inventor's ideas and risked, not only invalidation, but the full right to own the patent.