WILMINGTON, Del. – A federal court judge invalidated a patent covering a process for producing precooked bacon slices because the patent didn’t specify how an individual should determine whether the finished product resembles pan-fried bacon.
David Howard, president of Dallas, Texas-based HIP Inc., created of a process for producing precooked bacon slices in a spiral oven. He sued Hormel Foods Corp., Austin, Minnesota, for allegedly infringing on his patent for a hybrid bacon cooking system.
Court documents state that Howard developed a process for producing precooked bacon in a spiral oven. He filed for a patent in February 2012 and it was granted on Dec. 6, 2016. Unitherm also received a European patent for the same process in December 2012.
Before Howard filed the patent, however, he approached Hormel to gauge interest in his bacon cooking system. In 2007, Unitherm and Hormel entered into a joint development agreement. Hormel and Unitherm conducted tests for cooking bacon in a mini-test spiral oven owned by Unitherm and which Hormel leased in July 2008 to continue work on development of a spiral oven using superheated steam to cook bacon. Hormel ended the joint development agreement in April 2010 but had purchased the test oven before terminating that agreement, according to court documents. But Hormel “…did not inform Plaintiff that Hormel intended to continue to use the Unitherm Mini Spiral Oven and the hybrid process to cook bacon.
“Rather, Hormel intentionally led Plaintiff falsely to believe that Hormel would not be using the Unitherm process, in any form, or the Unitherm Mini Spiral Oven to cook bacon.” Howard sued Hormel in the US District Court for the District of Delaware in June of 2018.
But US District Court Judge Colm Connolly invalidated Howard’s patent in a ruling filed on June 24. In his opinion, Connolly said Howard’s patent “…does not define the term “resembling pan-fried” bacon product.” Neither the claims nor the written description of the patent clarify the scope of the term or provide any objective criteria to identify or measure the distinguishing features of pan-fried bacon.”
As a result, the patent fails to meet a requirement of US patent law for definiteness. “The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear, so the public is informed of the boundaries of what constitutes infringement of the patent,” according to the US Patent Office website. “A secondary purpose is to provide a clear measure of what applicants regard as the invention…”
Hormel argued in a counterclaim that the patent was unenforceable, in part, due to the “resembling pan-fried bacon product” language in the patent. Connolly agreed.
“The patent’s specification, however, does not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance or color of pan-fried bacon,” Connolly wrote in his opinion. “Nor does the specification identify objective criteria to distinguish pan-fried bacon from microwaved bacon.”
Citing the testimony of a witness for HIP Inc., Connolly noted the witness “…was never able to define or explain cogently the “certain” taste, color, crispness, and aroma…” of pan-fried bacon. “His inability to do so makes sense, because, as he admitted, there are no “crispometers” or other objective tools or criteria to measure or identify the sensory parameters of pan-fried bacon.”