HIP, Inc. v. Hormel Foods Corporation

This case presents an intractable conflict between the plain language of 35 U.S.C. § 116(a) (“joint inventions”) and requirements for joint inventorship added by the Federal Circuit since Congress amended Section 116(a) in 1984. Section 116(a) does not impose any express lower limit on the quantity or quality of inventive contribution to be a co-inventor. The Federal Circuit initially construed amended Section 116(a) to require only identifying who conceived subject matter and whether that subject matter is recited in a claim. Subsequently, the appellate court added the requirement that a joint inventor’s contribution be not insignificant in quality when measured against the dimension of the full invention. The district court found that Petitioner’s president was a joint inventor of Respondent’s patent, because his contribution met the “not-insignificant-in-quality” requirement. Respondent included his contribution in its patent specification and used it to expand the scope of its broadest claim. The Federal Circuit reversed, based on the quantity of disclosure included in the patent specification. The questions presented are:

1. Whether joint inventorship requires anything more than a contribution to conception that is stated in a patent claim.

2. Whether, under Section 116(a), a claimed and enabled contribution to conception can be deemed insignificant in quality based on the quantity of disclosure in the specification.