## Facts

- Hormel Foods Corp. owned a patent directed to a food-processing technology; Hormel personnel were named as inventors.
- HIP, Inc. asserted that an individual affiliated with HIP contributed to the invention and was improperly omitted as a co-inventor.
- HIP sued seeking correction of inventorship under 35 U.S.C. § 256, which would affect ownership rights in the patent.
- After trial-level factfinding, the district court found HIP’s individual to be a co-inventor and ordered correction of inventorship.
- Hormel appealed, disputing whether the alleged contributions were significant to the conception of any claimed invention and whether HIP met the applicable burden of proof.

## Issues

1. Whether the district court erred in concluding that HIP’s affiliated individual was a joint inventor under 35 U.S.C. § 116 and ordering correction of inventorship under 35 U.S.C. § 256.
2. Whether HIP proved by clear and convincing evidence that the individual made a significant contribution to the conception of at least one claim, rather than to unclaimed subject matter, obvious implementation details, or post-conception refinements.
3. Whether the evidence sufficiently corroborated that any alleged contribution mapped to specific claim limitations during the relevant conception timeframe.

## Decision

- The Federal Circuit reversed the district court’s judgment correcting inventorship.
- The court held that HIP failed to establish, by clear and convincing evidence, that its proposed inventor made a significant contribution to the conception of any claim of the patent.
- The court concluded that the district court applied an overly broad view of joint inventorship by crediting contributions to a broader development effort rather than to the claimed invention.
- The matter was remanded for proceedings consistent with the appellate decision.

## Legal Principles

- Joint inventorship requires a contribution in a significant manner to conception (or reduction to practice) of the invention as claimed; a contributor need not work on every claim but must contribute to at least one claim.
- A contribution must be more than explaining the state of the art, offering general suggestions, or supplying routine or obvious implementation choices once the core invention is known.
- Inventorship turns on claim-focused analysis; contributions to unclaimed features, commercial refinements, or after-the-fact optimization do not establish co-inventorship.
- Correction of inventorship under 35 U.S.C. § 256 requires proof by clear and convincing evidence, typically supported by corroboration linking the alleged contribution to claim elements at the time of conception.
- On appeal, joint-inventorship legal standards are reviewed de novo and underlying factual findings for clear error.

## Conclusion

The Federal Circuit rejected correction of inventorship because the asserted collaborator’s contributions were not shown, with clear and convincing and claim-specific proof, to be significant to the conception of any patented claim, leaving inventorship and ownership as originally issued to Hormel.


HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346 (Fed. Cir. 2023)