This case addresses the requirements necessary to establish a prima facie case to correct inventorship under 35 U.S.C. § 256.
Background
Hormel Foods appealed the District Court's ruling that David Howard should be added as a joint inventor on its patents.
Standard of Review
"Inventorship is a question of law that [the Federal Circuit] review[s] without deference." The Federal Circuit "review[s] facts underlying inventorship for clear error."
Claimant's Burden of Proof and Requirements to Establish a Prima Facie Case
Under the Pannu factors, to qualify as a joint inventor, "an alleged joint inventor must prove by clear and convincing evidence" that an alleged joint inventor (i) "contributed in some significant manner to the conception of the invention[,]" (ii) "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 (iii) "did more than merely explain to the real inventors well-known concepts and/or the current state of the art."
Issue
Whether Mr. Howard is a joint inventor based on the significance of his alleged contribution.
Holding
Mr. Howard is not a joint inventor because he has not made any significant contribution to the invention.
Reasoning
Mr. Howard is not a joint inventor because his alleged contribution was not significant when measured against the scope of the full invention. "[T]he specification, claims, and figures [of the patent-at-issue] illustrate that Howard's alleged contribution . . . is insignificant in quality when measured against the dimension of the full invention." For example:
- Mr. Howard's contribution is "mentioned only once in the" specification of the patent-at-issue "as an alternative";
- Mr. Howard's contribution is "recited only once in a single claim" of the patent-at-issue. Further, such contribution is recited in a Markush group;
- The "[s]ummary of the invention" of the patent-at-issue does not mention Mr. Howard's contribution; and
- No figure or recited example described Mr. Howard's contribution.
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