HIP, Inc., formerly known as Unitherm Foods Systems Inc., filed a complaint in the Delaware District Court on Thursday against Hormel Foods Corporation seeking to correct the invention and ownership of a patent for a hybrid bacon cooking system, U.S. Patent No. 9,980,498, or the ‘498 Patent.
The patented system in question allows for making pre-cooked bacon and contains 16 claims including preheating the bacon to prevent condensation, a spiral cooking compartment heated with steam, using a certain thickness of bacon, and heating to certain temperatures to reduce flavor loss. Before this process, precooked bacon was cooked in a conveyor microwave system.
The two parties have brought this question and similar questions to the court previously. HIP, a company that develops cooking processes and sells equipment, explained in the complaint that this filing is “out of an abundance of caution,” relating to a previous correction of patent lawsuit filed by the plaintiff in May 2018.
Morris, Nichols, Arsht & Tunnell LLP, counsel for HIP, said in a letter to Judge Colm Connolly who oversees the other case and attached a quitclaim and assignment assigning all rights to the patent, which may have been held by related entities including Unitherm and Marlen International, to HIP. The letter noted “HIP believes that the Quitclaim and Assignment moots any issue of standing that may have existed,” and explained that the new filing is meant to avoid issues about standing at the time the previous case was filed.
HIP claimed that its president, David Howard, is “the true and sole inventor of all of the subject matter claimed in the ‘498 Patent.” HIP alleged in the complaint that it has standing because Howard assigned ownership of the patent to the entity in May 2018.
The plaintiff claimed that the current patent errs by listing four other inventors other than Howard, and that Hormel is “erroneously listed as the owner of record” of the patent because the method was invented, and first patented, by the plaintiff. The complaint explained that Howard was issued U.S. Patent No. 9,510,610 titled “Process for Producing Precooked Bacon Slices” in December 2016 which described a similar process for preparing bacon in a spiral steam environment, and included an optional preheating step. HIP claimed that the ‘498 patent, which was issued over a year after Howard’s Patent, “is an embodiment” of the system in this patent, with the main difference being that the preheating step is not optional.
The legal conflict between the parties began in 2014 before either of the patents were issued when HIP sued Hormel for breach of a Mutual Confidential Disclosure Agreement, that matter also claimed that under the terms of the agreement, Plaintiff should be the owner for the ‘498 patent which Hormel was applying for at the time. That matter was appealed to the Eighth Circuit by the plaintiff in 2016, and the defendant filed a notice of cross-appeal. The Eighth Circuit determined six weeks before the ‘498 patent was issued that the district court had rightly dismissed the claims because the patent was still pending and further ruled on the contract claims which it said would not be revived.
