Case 1:21-cv-00546-UNA Document 6 Filed 04/15/21 Page 1 of 2 PageID #: 103
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
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`(302) 658-9200
`(302) 658-3989 FAX
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`April 15, 2021
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`VIA ELECTRONIC FILING
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`KAREN JACOBS
`(302) 351-9227
`(302) 425-4681 FAX
`kjacobs@morrisnichols.com
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`The Honorable Colm F. Connolly
`United States District Judge
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, DE 19801-3555
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`Re: HIP, Inc. v. Hormel Foods Corporation, et al.,
`C.A. No.18-802-CFC-SRF and
`HIP, Inc. v. Hormel Foods Corporation,
`C.A. No. 21-546
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`Dear Judge Connolly:
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`We write on behalf of Plaintiff HIP, Inc. to inform the Court of HIP’s actions
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`to address the standing challenge brought by Hormel and to move this case forward
`to trial.
`As the Court is aware, HIP’s position throughout this litigation has been that
`all inventorship rights once held by David Howard in Hormel’s U.S. Patent No.
`9,980,498 (the “’498 Patent”) were retained by Mr. Howard and/or UFS Holdings
`Inc. (“UFS”) and assigned to HIP prior to the filing of this case, and were never
`assigned to Unitherm Food Systems, LLC (“Unitherm LLC”) or its successor-in-
`interest Marlen International, Inc. (“Marlen”). In an effort to clarify the intentions
`of the parties at the time of Marlen’s acquisition of Unitherm LLC, HIP and Marlen
`executed a Second Amendment to Contribution and Distribution Agreement on
`March 16, 2021, which set forth their understanding and intention that Mr. Howard
`(or HIP, f/k/a UFS) retained all rights in the ’498 Patent and did not contribute them
`to Unitherm LLC prior to its acquisition by Marlen in August 2017. (See D.I. 147.)
`Although HIP continues to believe that it possessed all rights ever held by Mr.
`Howard in the ’498 Patent at the time this case was filed, it desires to avoid the
`burden on the parties, third parties, and the Court of additional jurisdictional
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`Case 1:21-cv-00546-UNA Document 6 Filed 04/15/21 Page 2 of 2 PageID #: 104
`The Honorable Colm F. Connolly
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`Page 2
`April 15, 2021
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`discovery and related motion practice (see D.I. 151), and the delay in resolving the
`merits of this case. To that end, HIP and Marlen have executed the attached
`Quitclaim and Assignment, dated April 14, 2021. Ex. A. To the extent that, contrary
`to the intent of the parties, any rights in the ’498 Patent were transferred to Unitherm
`LLC, and subsequently Marlen, in the applicable agreements, the Quitclaim and
`Assignment unequivocally quitclaims and assigns any and all rights in the ’498
`Patent that Marlen or Unitherm LLC may have, or may have once had, to HIP,
`including, without limitation, any rights to claim inventorship or ownership in the
`’498 Patent. HIP believes that the Quitclaim and Assignment moots any issue of
`standing that may have existed.
` To avoid any issue as to whether the Quitclaim and Assignment confers
`standing as of the original filing of this case, HIP filed a new action today (C.A. No.
`21-546) asserting the same correction of inventorship and ownership claims asserted
`in this action, and intends to seek consolidation of the two actions so that they can
`proceed to trial on the merits. Ex. B. HIP has requested a conference with Hormel
`to determine whether it will drop its standing challenge in light of the Quitclaim and
`Assignment and whether it will agree to consolidation of the two actions.
`Counsel is available at the Court’s convenience to discuss the status of these
`cases.
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`Respectfully,
`/s/ Karen Jacobs
`Karen Jacobs (#2881)
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`cc: All Counsel of Record
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