[00:00:00] Speaker 02:
The final argued case this morning is Hipf, Incorporated, versus Hormel Foods Corporation, 2022, 1696.

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Mr. O'Shea.

[00:00:11] Speaker 02:
Good morning, Your Honors.

[00:00:14] Speaker 00:
May it please the Court.

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My name is Tim O'Shea.

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I'm with the law firm, Fredrickson & Byron, on behalf of the appellant, Hormel Foods Corporation.

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With my time here with you this morning,

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focus my argument primarily on the two legal errors that the district court made with respect to adding David Howard of HIP as a co-inventor to Hormel's 498 patent.

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And then finally, I'll briefly touch upon the district court's clearly erroneous determination that Mr. Howard's oral testimony regarding his alleged contribution of infrared preheating was sufficiently corroborated.

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With respect to the first legal error by the district court, the district court applied the incorrect legal analysis in finding that Mr. Howard's alleged contribution of infrared heating was not well known or in the state of the art solely by looking at the language of the claims in the 498 patent.

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And at trial, when Hormel's counsel asked the district court if it was going to,

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address the prior art as it relates to the infrared preheating contribution, the district court said it would not.

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And that's at appendix 37 through 39.

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What the district court found was that because claim five of the 498 patent was different in scope than claim one, that answers the question of the state of the art because Hormel got a patent

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And the district court's analysis didn't end there.

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It went so far as to say, simply because Hormel claimed an intervention as it was written in claim five of the 498 patent and got a patent on it, that Hormel has to, quote, pay the consequences, end quote.

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And that's at appendix 40.

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The district court's legal analysis is fundamentally incorrect and inconsistent with this court's precedent regarding joint inventorship.

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It's well established.

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that to qualify as a co-inventor, a person cannot simply come in and describe to the inventors what was well-known or in the state of the art.

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What was Mr. Howard's alleged contribution?

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Infrared?

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The alleged contribution that was made by Mr. Howard was preheating with an infrared oven.

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And here, the district court- I'm sorry.

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And that's it.

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That's it.

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Right.

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HIP had argued for other contributions that Mr. Howard had made.

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And as to all the others, the district court found that they were, in fact, not contributions.

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So this is incredibly narrow at this point, right?

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That's correct.

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And it also found that in the course of rejecting, what is it?

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350 degree alleged contribution or something like that, that that was actually not his contribution, but that in fact, that was inconsistent with the basic, the core of the invention that Ormel made, which is something that keeps anything hotter than that outside of the cabin, the second cap, right?

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Which a, a,

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red hot heating element would not do.

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And this whole thing was about getting rid of that charred taste on bacon.

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Yes, getting rid of the off flavor.

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And the district court also said that there was no actual evidence supplied by HIP for the significance of saying one of the things you could use for the preheating step is infrared.

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That's correct.

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And that's one of the second legal errors that I was going to get to, is the district courts made us express finding a fact that HIP did not put on any evidence that would establish that the infrared preheating was significant, but then nonetheless went ahead and found that it was significant.

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And that was the second error that I will touch upon.

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I understand your argument simply to be that the district court used completely the wrong analytic construct, that the fact that claim five is different from claim one is irrelevant to this inquiry, and that the other side put on no evidence that would satisfy the correct test.

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That's correct, Your Honor.

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Therefore, we shouldn't remand.

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The other side shouldn't get another bite of the apple.

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Your honor, our Hormel's position is that the district court's legal analysis was incorrect by looking solely to the claims in the patent with respect to ignoring the state of the art, as well as ignoring the other element that's needed.

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These are on steps one, two, and three of PANU.

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You started with step three, but step one, two, and three, the same answer on all three.

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That's correct, Your Honor.

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And the reason Hormel is asking not only that the district court's decision be vacant, but should be reversed because the undisputed trial record shows that the home prior patent application discloses infrared preheating, which is the alleged contribution Mr. Howard made to the 498 patent.

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That's undisputed.

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HIP did not rebut that evidence that Holm disclosed infrared preheating at trial.

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And HIP also did not rebut that in its opposition here on appeal.

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With respect to the significance, again, that's turning to the second legal error.

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Again, HIP cannot dispute the court's factual finding.

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Well, if we were to decide this case on problems one or two of PANU, there's less work

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that has to be done that if you do it on part three on state of the art and whatnot, because there could be some argument that Holm doesn't necessarily teach the state of the art.

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It's three years old and nobody's using it.

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My point is that there seems to me to be more work that has to be done in the analytic side on step three of BANU than on one and two.

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That's fair, Your Honor.

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But it is Hormel's position that those are two independent legal errors that the district court made.

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With respect to... Well, I just had a question.

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I was trying to figure out where the district court got the idea from that it should depart from HANU and a three-part analysis under our case law and instead should simply, as you said, create an issue for the federal circuit by

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using the claim instruction.

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You certainly didn't suggest that.

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Did you understand it?

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And I looked at the briefing below.

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I didn't see any party directly raising this to the judge.

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Your Honor, neither party raised the standard that would go against the PANU standard.

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The district court took it upon itself in issuing its order and adding Mr. Howard as a co-inventor of the 498 patent

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that it's solely looking at the difference in scope between claim five and claim one as the basis for its decision with respect to what is in the state of the art and also whether there's significance.

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And that's what Hormel submits as being two independent legal errors.

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Your Honor, with respect to the second legal error.

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This is just simply a suit to correct the ownership, right?

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Yes, so Hormel.

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Not an infringement suit with this as a defense.

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This is a peer correction and inventorship that HIP brought under 256.

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HIP claimed at trial that Mr. Howard was the sole inventor of the 498 patent.

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The district court correctly found that he was not the sole inventor.

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And then he also, in the alternative, claimed that he was a co-inventor.

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And as Your Honors pointed out,

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a plethora of various items in which he claimed to be a co-inventor.

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The district court rejected it except for this one small piece with respect to preheating with an infrared on it.

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You don't challenge the district court's finding that Mr. Howard was the inventor of the infrared.

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You only challenge the corroboration, is that correct?

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No, Your Honor.

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Hormel is challenging that the

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alleged contribution to infrared preheating, Mr. Howard's oral testimony was not sufficiently corroborated.

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The district court... Is there a lack of corroboration, not the fact of the testimony?

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It's not the fact of the testimony, but also the fact that Holm discloses infrared preheating.

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Your position is essentially that this patent isn't about infrared.

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That's correct, Your Honor.

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You can look to the 498 patent that's in the record and

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The patent is about microwave preheating to solve two problems that existed in the prior art processes for cooking precooked bacon.

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And the 498 patent addressed that with the flavor dilution problem.

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And then as your honor pointed out, the sort of off flavor, grilled flavor.

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The infrared preheating is not what made this patentable.

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And it also was disclosed three years before Mr. Howard's alleged disclosure to Hormel

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in the home patent application.

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Younger, the last point that I'll briefly touch on is the district court's third error.

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I'm not that interested in the corroboration point, so I would ask you about a doctrinal point in your limited time.

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PANU, maybe uniquely, I'm not sure uniquely, but somewhat,

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exceptionally, refers to the possibility of a significant contribution to reduction to practice as a basis for being a co-inventor.

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Some of our other cases like Eli Lilly say it has to be significant contribution to conception.

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I don't think that distinction is particularly at issue here, unless you tell me it is, but I can't quite find

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an opinion of ours that says it really does have to be only a significant or have to be a significant contribution to conception that significant contribution to reduction of practices cannot itself be enough.

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Can you enlighten me on the doctrine at all?

[00:11:08] Speaker 00:
Your Honor, my understanding at Pennu is that the

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contribution has to be significant to the conception.

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I know Panu refers to ore reduction to practice.

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And so what that issue here is, is whether HIP was able to meet its heavy burden of clear and convincing evidence under Panu that Mr. Howard's alleged contribution of infrared preheating was significant to the conception.

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And here the district court expressly found that HIP has not put on any record evidence of significance with respect to... Was a separate argument here made by HIP that the contribution was significant, if not to conception, then to reduction to practice?

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No, Your Honor.

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And that's where the district court made it clear in its decision that it was basing the decision solely on the difference between claim five and claim one.

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and pointing out that this is an appeal issue for the federal circuit.

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And that's why we're submitting that those two legal errors are a basis for vacating and reversal.

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We'll send you a rebuttal for you.

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Thank you, Your Honors.

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Mr. Selinger.

[00:12:30] Speaker 04:
Good morning, Your Honors, and may it please the Court.

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The District Court correctly ruled as a matter of law that David Howard is a co-inventor

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because he contributed the specific preheating method of preheating meat pieces using an infrared oven before cooking the meat pieces in a separate cooking chamber.

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Mr. Selinger, if you look at this patent, it hardly mentions infrared.

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It doesn't mention it in the brief summary of the invention.

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It first mentions it in column five, along with

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Other methods.

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There are no examples showing a use of infrared.

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This plainly is a microwave.

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And the trial court simply relied on the difference between claim five and claim one.

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And claim five mentions, in a sort of Markush expression, infrared

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along with microwave and hot air.

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But that is nowhere indicated as a distinction in the patent.

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The patent doesn't seem to be about infrared.

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So how can Mr. Howard be a co-inventor of what is claimed and described in this patent?

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The short answer, Your Honor, is this.

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Yes, there is not a great deal.

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of disclosure in the specification.

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I just presided just about all there was.

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But with that said, Hormel and Hormel's lawyers elected to include the broader Marcouche claim in claim five.

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And I need to correct one statement.

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The judge did not find that he put on no evidence at appendix

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32.

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What the judge said is he did not recall that he put on no evidence about not insignificant.

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And we did put on the record reflects quite a bit of evidence from Mr. Howard, from Hormel inventors about the difference being significant.

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Hormel's

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Patent doesn't say so.

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No, the patent doesn't say so.

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But the trial testimony supports Chief Judge Connolly's conclusions.

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What can you cite to us in the record where there is the testimony that the judge said you didn't support?

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That I don't think is put on any testimony record.

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That doesn't establish these three things are significant.

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Right.

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And that point was made strongly

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I didn't see in your brief, citing line and page of testimony of significance.

[00:15:48] Speaker 04:
Well, we did, Your Honor.

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Can you help me?

[00:15:51] Speaker 04:
I can.

[00:15:55] Speaker 01:
Where did I miss that?

[00:15:56] Speaker 01:
This should be in the subsection from 34 to 37, right?

[00:16:00] Speaker 01:
And I'm not seeing it there.

[00:16:05] Speaker 04:
We talked about that.

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And let me just check.

[00:16:12] Speaker 02:
Your assistant is trying to give you something.

[00:16:15] Speaker 04:
Your helper here.

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I'm sorry.

[00:16:17] Speaker 04:
Thank you.

[00:16:19] Speaker 04:
So for example, on page 36.

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Where on 36?

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I'm sorry, on the brief.

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It says right at the bottom.

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It says, Hormel's reason for broadening claim five to include an infrared oven confirms

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expanding the preheating method to include an infrared oven is significant, citing Appendix 868, a testimony that Hormel included the infrared oven to prevent others from circumventing and getting around and copying what you are doing.

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And that's why it's included," end quote.

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That doesn't explain why it's equal to, better than, microwave or hot air.

[00:17:07] Speaker 04:
Well, in addition to that, let me.

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You can add a limitation to a claim, right, to help you with infringement.

[00:17:23] Speaker 04:
Now, you can, but that can make it significant, and I

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I want to say, well, we added infrared.

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So if somebody uses infrared, we can go after them.

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But why does infrared matter to the invention?

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Well, the inventor actually testified that.

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I don't want to use up my time.

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You're saying that the judge was wrong.

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You did produce evidence of significance.

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I did recognize this from your brief.

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Is there any other evidence that you supplied?

[00:18:01] Speaker 04:
We pointed to other evidence.

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Can you help us with you?

[00:18:05] Speaker 03:
We're specific about this, and I thank you.

[00:18:07] Speaker 03:
Have we got anything else to offer in pages 34 to 37?

[00:18:13] Speaker 04:
Between 34 and?

[00:18:15] Speaker 03:
Well, I mean in your brief as a whole.

[00:18:16] Speaker 03:
Yes, I can.

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Just give me one.

[00:18:23] Speaker 04:
So Mr.

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Howard testified that it was not merely state of the art or well-known.

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And he explained why.

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And he, I'm trying to find the site here.

[00:18:52] Speaker 02:
Yes, sir.

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on a patent, our inventors of what is disclosed and claimed in the patent.

[00:19:04] Speaker 02:
Correct.

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And I get back to the patent again.

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The brief summary of the invention is almost a column long.

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It doesn't mention infrared.

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If you look at the detailed description of the invention, which is almost three columns, it's hardly a mention until the very end

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when it's mentioned along with these other means, without any distinction.

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How can the contributor to the infrared aspect be an inventor of this patent?

[00:19:44] Speaker 04:
It's a qualitative analysis, Your Honor, and the fact that

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Hormel elected to expand the claim.

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Hormel could have simply relied on doctrine of equivalence, but it didn't.

[00:19:58] Speaker 04:
It added a Marcoosh claim, which included not only the microwave, but also the infrared oven and hot air.

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And the testimony from Hormel

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employees.

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Mr. Howard, at Appendix 380, explained he added it because no one had ever done that before.

[00:20:40] Speaker 04:
Mr. Sersen, one of Hormel's inventors, said no one would ever use an infrared oven for preheating.

[00:20:50] Speaker 04:
But that is antithetical to the fact that the claim, that the broad claim added that Mark Kusch group.

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And by the way, we absolutely deny that, and we disputed that the Hormel expert opinion showed that home disclosed preheating or even browning of meat pieces in an infrared oven.

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And the Marcuse claim is very specific.

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It's a preheating process selected from the group consisting of, one of the ofs was infrared.

[00:21:40] Speaker 04:
Home, and I want to say two things about home.

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First, we're ignoring,

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We're moving away from what Hormel's expert actually testified about concerning Holm.

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It was only three pages at trial and it was nothing.

[00:22:01] Speaker 04:
The district court questioned Mr. Unoardino, the expert's credibility.

[00:22:08] Speaker 04:
Hormel says it doesn't matter, but it does because that's how the district court was educated on Holm.

[00:22:17] Speaker 04:
And if we actually, but even jumping to what Holm says, Holm figure six shows two elements.

[00:22:29] Speaker 04:
It's called a Browning chamber and a cooking chamber.

[00:22:35] Speaker 04:
The Browning chamber has superheated steam.

[00:22:41] Speaker 04:
The cooking chamber can be an infrared oven.

[00:22:47] Speaker 04:
Now, in paragraphs 76 and 78, which are not mentioned by Poor Mill's expert, that appendix 1407, the specification says, in addition to the browning chamber using superheated steam, that heat can be supplemented with an external source.

[00:23:13] Speaker 04:
And that external source can come from an infrared oven.

[00:23:18] Speaker 04:
But those paragraphs don't say you can preheat at all or even brown using only an infrared oven.

[00:23:31] Speaker 04:
And that's what the claim requires, the Marcuse claim consisting of.

[00:23:38] Speaker 04:
So let me go back to your honor's question.

[00:23:49] Speaker 04:
Because what the court has as evidence in addition to what the judge pointed to, the difference in the claim language, was in addition to Mr. Sersen's testimony that no one would ever use an infrared oven, but notwithstanding his belief, Hormel's patent counsel was sufficiently concerned about people using

[00:24:18] Speaker 04:
infrared ovens that he added the infrared limitation as to keep others from designing around.

[00:24:25] Speaker 04:
That's an appendix 867, 868.

[00:24:31] Speaker 04:
And Hormel's patent council expanded that after Hormel's Mr. Mueller, the food scientist, had accepted Mr. Howard's loan of an infrared oven

[00:24:43] Speaker 04:
for preheating meat products before cooking the meat products in a uniform spiral oven.

[00:24:49] Speaker 02:
Of course, we're not talking here about whether a use of an infrared oven would infringe claim five.

[00:24:58] Speaker 02:
We're talking about joint adventures.

[00:25:02] Speaker 04:
We are, and we're talking about a contribution which is not significant.

[00:25:09] Speaker 04:
What Chief Judge Connolly did is he compared claims one and five

[00:25:14] Speaker 04:
And I'm sure the court has seen that.

[00:25:17] Speaker 04:
And when he pressed Hormel's counsel during the argument, Hormel's counsel argued only two differences.

[00:25:26] Speaker 04:
And the fact that one of the three Marcuse group processes comes from Mr. Howard, I submit, is significant.

[00:25:43] Speaker 04:
Just by example, in the Ethicon case, Dr. Choi contributed one of two embodiments, and there was a means plus function limitation.

[00:25:57] Speaker 04:
The other limitation, the other embodiment came from the person who said Dr. Choi was not the inventor.

[00:26:04] Speaker 04:
And the court said, no, that contribution was sufficient.

[00:26:08] Speaker 02:
What's the consequence of Mr. Howard being a co-inventor here, a competitive company co-owning a patent?

[00:26:18] Speaker 04:
Well, Mr. Howard has retired and hip from the business.

[00:26:26] Speaker 04:
So he's not in the business of making meat products or selling equipment.

[00:26:34] Speaker 04:
He sold that business.

[00:26:35] Speaker 01:
Has he, has he licensed to HIP any interest he has in this matter?

[00:26:40] Speaker 04:
He has not.

[00:26:40] Speaker 04:
This is, uh, because he doesn't yet have, well, I say that we, there may be a quit claim deed, but which gave HIP standing in this lawsuit, but there has not been a, a license because he doesn't

[00:27:02] Speaker 04:
Until the Patent Office has been instructed to change inventorship, he has nothing to license.

[00:27:07] Speaker 04:
Or a sign.

[00:27:08] Speaker 04:
Or a sign.

[00:27:09] Speaker 04:
That's correct.

[00:27:10] Speaker 02:
Your time has expired, Mr. Selinger.

[00:27:12] Speaker 02:
Thank you very much.

[00:27:13] Speaker 04:
Thank you, Your Honor.

[00:27:14] Speaker 02:
Mr. O'Shea has two and three quarter minutes for a bottle if you need it.

[00:27:21] Speaker 00:
Thank you, Your Honor.

[00:27:22] Speaker 00:
Some brief rebuttal points.

[00:27:25] Speaker 00:
With respect to the district court's decision and the finding that HIP did not put on any evidence of significance, which is at pages 31 to 32, I think it's important to point out HIP did not appeal that finding by the district court.

[00:27:41] Speaker 00:
The other point I want to make briefly, Your Honor, is as you pointed out,

[00:27:46] Speaker 00:
The focus of both the specification and the claims of the 498 patent describe preheating with a microwave to solve a particular problem.

[00:27:56] Speaker 00:
And it's a method claim.

[00:27:57] Speaker 00:
And that shows the insignificance of the infrared oven.

[00:28:01] Speaker 00:
And under similar circumstances, this court, for example, in the Nartron case, determined a contribution to a claim limitation was not significant when it was measured against the full dimension of the claim invention.

[00:28:14] Speaker 02:
How do we evaluate the role of testimony before the district court compared with the disclosure and the patent?

[00:28:23] Speaker 00:
Can you repeat the question, Your Honor?

[00:28:25] Speaker 02:
Which governs?

[00:28:26] Speaker 02:
The disclosure or the testimony?

[00:28:30] Speaker 02:
A trial.

[00:28:32] Speaker 02:
The disclosure and the patent versus testimony, a trial.

[00:28:36] Speaker 00:
The disclosure, the patent, the 498 patent.

[00:28:39] Speaker 02:
Right.

[00:28:40] Speaker 02:
Patent at issue.

[00:28:41] Speaker 00:
Yes.

[00:28:42] Speaker 00:
And in Narachan, one of the things that this court listed as evidence of insignificance was the fact that the specification in that patent and the claims of that patent focused on other elements, and that the specification mentioned the contribution in that particular case only once as background and without any details.

[00:29:02] Speaker 00:
And here the same circumstances apply even further, because infrared preheating is only listed once as a potential option for preheating.

[00:29:09] Speaker 00:
It's not even a requirement of the claim.

[00:29:12] Speaker 00:
Last point that I want to make, Your Honor, with respect to the home patent application that discloses the infrared preheating, at page 1407 of the appendix, paragraph 78, home is specifically explaining a two-step cooking process where browning is the preheat step before cooking in a second compartment.

[00:29:34] Speaker 00:
And if we look to that same paragraph, it's teaching that the different

[00:29:39] Speaker 00:
cooking chambers, there's two cooking chambers, can be heated with different heating sources and that the separate cooking source could be a microwave oven, a hot air oven, or an infrared oven.

[00:29:50] Speaker 00:
And that's at paragraph 78 of appendix 1407.

[00:29:53] Speaker 03:
Was infrared used in the browning first step?

[00:29:58] Speaker 03:
What Holm teaches is that in the browning... Your other side argued that the infrared was only in the second oven.

[00:30:05] Speaker 00:
Is he right about that?

[00:30:07] Speaker 00:
He's incorrect, Your Honor.

[00:30:08] Speaker 00:
If you look at paragraph 70... He's asking you that because that's what he said.

[00:30:12] Speaker 00:
Yes.

[00:30:12] Speaker 03:
And you're saying the question about whether or not browning is preheating, that was some expert said yes, and that isn't being contested.

[00:30:20] Speaker 03:
That's correct.

[00:30:21] Speaker 03:
So the first oven in the home is preheating.

[00:30:23] Speaker 03:
The question was, your other gentleman who's opposed to you here today, I heard him to say that the infrared was only used in that second oven.

[00:30:32] Speaker 03:
an external source in the second oven.

[00:30:34] Speaker 00:
And it could be used in either oven, the first or second under home.

[00:30:38] Speaker 00:
And if you look at paragraph 78 of appendix 1407, that clearly delineates that.

[00:30:44] Speaker 00:
And yes, Hormel's technical excerpt at trial.

[00:30:48] Speaker 03:
One further point you've got.

[00:30:49] Speaker 03:
I thought the presiding judge's last question was a very interesting one.

[00:30:54] Speaker 03:
What happens if you have a case in which you have a lot of expert testimony as to significance?

[00:31:00] Speaker 03:
saying, for example, well, infrared really does make a difference, yadda, yadda, yadda, right, in these methods in the Marcuse claim.

[00:31:08] Speaker 03:
But the patent itself is silent.

[00:31:11] Speaker 03:
I think that's what Judge Lurie was getting at, is there is a situation in which, even though there might be testimony as to significance, it's nowhere reflected in the document itself.

[00:31:21] Speaker 03:
Would you therefore ignore the testimony?

[00:31:24] Speaker 00:
Correct, you're right.

[00:31:25] Speaker 00:
This panel can look to the patent itself to determine.

[00:31:28] Speaker 03:
Do you have a case that suggests that?

[00:31:29] Speaker 03:
I think typically in these cases, testimony is what drives the case in the beginning because somebody shows up and says, whoa, I was the inventor.

[00:31:38] Speaker 00:
Right?

[00:31:39] Speaker 00:
And what I would submit to the panel is that it

[00:31:42] Speaker 00:
Under federal circuit law, it's HIPPS' burden to come in and show the significance of the alleged contribution.

[00:31:48] Speaker 00:
And here we have a specific factual finding by the district.

[00:31:52] Speaker 03:
Is it possible to make that showing on significance with evidence that is not in the patent, in the spec, or in the claims, but is purely expert testimony?

[00:32:02] Speaker 00:
Right, and here we have HIPP provided no expert testimony with respect to the significance.

[00:32:11] Speaker 00:
And as my colleague has just pointed out, the Tavery case, even in light of expert testimony, this court found that the element contributed was important to the invention, but still found there was no co-inventorship because of the lack of the significance of the alleged contribution.

[00:32:31] Speaker 02:
simply by looking to the pad.