throbber

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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 1 of 27 PageID #: 1
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`HIP, INC.,
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`HORMEL FOODS CORPORATION,
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`v.
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`Plaintiff,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. _________
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`Defendant.
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`COMPLAINT FOR CORRECTION OF
`PATENT INVENTORSHIP AND OWNERSHIP
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`Plaintiff HIP, Inc. (“Plaintiff” or “HIP”) files this Complaint against Defendant Hormel
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`Foods Corporation (“Defendant” or “Hormel”) for correction of inventorship and ownership of
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`U.S. Patent No. 9,980,498 (the “’498 Patent”).
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`HIP files this Complaint out of an abundance of caution in view of Hormel’s pending
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`challenge to HIP’s standing in the related lawsuit, C.A. No. 18-802 (CFC) (the “18-802 Case”).
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`HIP believes it has standing in the 18-802 Case, but in an effort to moot Hormel’s challenge,
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`reduce the burden of jurisdictional disagreements on the Court and the parties, and to allow the
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`parties to focus on the merits of the dispute, which are now reflected in a Joint Pretrial Order and
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`accompanying materials filed in the 18-802 Case, HIP files the instant lawsuit to obviate any issue
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`as to standing at the onset of the lawsuit. HIP intends to move to consolidate this case with the 18-
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`802 Case, allowing the consolidated case to move forward on the merits.
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`PARTIES
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`1.
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`HIP, Inc., is an Oklahoma corporation with its principal place of business in Dallas,
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`Texas. HIP, Inc. was formerly known as Unitherm Food Systems, Inc.
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`2.
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`Upon information and belief, Defendant Hormel Foods Corporation is a Delaware
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 2 of 27 PageID #: 2
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`corporation with its principal place of business in Austin, Minnesota. At present, Hormel Foods
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`Corporation is erroneously listed as the owner of record of the ’498 Patent by virtue of
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`assignments received from the currently named “inventors.”
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`NATURE OF THIS ACTION
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`3.
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`This is an action for correction of inventorship and ownership arising under the
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`patent laws of the United States, section 256 of Title 35 of the United States Code.
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`JURISDICTION AND VENUE
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`4.
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`This Court has exclusive subject matter jurisdiction over this action under 28
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`U.S.C. §§ 1331 and 1338(a).
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`5.
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`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), 1391(c), and
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`1400(b) because Defendant resides in this District.
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`FACTUAL BACKGROUND
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`The true and sole inventor of all of the subject matter claimed in the’498 Patent is
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`6.
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`HIP’s president, David Howard. HIP, Inc. has standing to bring this action for correction of
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`inventorship and ownership by virtue of the May 29, 2018 assignment from David Howard to HIP
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`(see C.A. No. 18-802, D.I. 5, Exhibit J), attached hereto as Exhibit I, and/or the April 14, 2021
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`Quitclaim and Assignment from Marlen International, Inc. (“Marlen”) to HIP of all rights that
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`Unitherm LLC or Marlen may have had in the ’498 Patent, attached hereto as Exhibit H. HIP
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`reserves the right to bring a further action for correction of inventorship and ownership of any
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`other related Hormel patent application should such application issue as a patent.
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`The ’498 Patent
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`7.
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`The ’498 Patent, titled “Hybrid Bacon Cooking System,” was issued by the U.S.
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`Patent and Trademark Office on May 29, 2018. The ’498 Patent issued from U.S. Patent
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`Application Serial No. 13/207,065, which was filed on August 10, 2011, and claims the benefit of
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 3 of 27 PageID #: 3
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`Provisional Patent Application No. 61/372,560, which was filed on August 11, 2010. A copy of
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`the ’498 Patent is attached hereto as Exhibit A.
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`8.
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`Through error, the “inventors” currently named in the ’498 Patent are Brian J.
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`Srsen, Richard M. Herreid, James E. Mino, and Brian E. Hendrickson. At present, Defendant
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`Hormel Foods Corporation is erroneously listed as the owner of record of the ’498 Patent by
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`virtue of assignments which Hormel Foods Corporation has received from all of the named
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`“inventors.”
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`9.
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`The true and sole inventor of all the subject matter claimed in the ’498 Patent is
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`Plaintiff’s president, David Howard. Through error, David Howard was omitted as the sole
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`inventor of the ’498 Patent. This Complaint therefore seeks a correction of inventorship under 35
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`U.S.C. §256(b) to name David Howard as the sole inventor of the ’498 Patent. Since David
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`Howard assigned all of his rights in the ’498 Patent to HIP, this Complaint seeks transfer of
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`ownership of the ’498 Patent, and all pending foreign patent applications and/or foreign patents in
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`any way based on U.S. Patent Application Serial No. 13/207,065, Provisional Patent Application
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`No. 61/372,560 and/or the ’498 Patent to HIP, the equitable title holder.
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`10. The ’498 Patent has a total of 16 claims. Claim 1 calls for a method of making
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`precooked bacon pieces using a hybrid cooking system, comprising:
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`a) preheating bacon pieces with a microwave oven to a temperature of l40°F to
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`210°F to create preheated bacon pieces, the preheating forming a barrier with
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`melted fat around the preheated bacon pieces and reducing an amount of
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`condensation that forms on the preheated bacon pieces when transferred to a
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`cooking compartment of an oven, the barrier preventing any condensation that
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`forms from contacting the preheated bacon pieces under the melted fat and
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`diluting flavor in the preheated bacon pieces;
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`b) transferring the preheated bacon pieces to the cooking compartment of the oven,
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`the cooking compartment heated with steam from an external steam generator,
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`the external steam generator being external to the cooking compartment, the
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`steam being injected into the cooking compartment and being approximately
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`400°F to 1000°F when the steam leaves the external steam generator, the
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`cooking compartment including internal surfaces, the steam assisting in keeping
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`the internal surfaces at a temperature below 375°F (i.e., the smoke point of
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`bacon fat) thereby reducing off flavors during cooking in the cooking
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`compartment; and
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`c) cooking the preheated bacon pieces in the cooking compartment to a water
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`activity level of 0.92 or less to create precooked bacon pieces.
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`11. The remaining claims 2-16 of the ’498 Patent either repeat certain limitations
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`called for in claim 1 or variously call for: (i) cooking bacon slices having a thickness of 0.25 inch
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`(6.35 millimeters) or less; (ii) the steam level in the cooking compartment being greater than 90%;
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`(iii) the preheater being either a microwave, infrared or hot air oven; or (iv) the cooking
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`compartment including a heating element to preheat the compartment.
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`12. The only oven disclosed in the ’498 Patent and used in the patent examples for
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`cooking the preheated bacon is a Unitherm Mini Spiral Oven.
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`The Prior Related Patent of David Howard (The “Howard Patent”)
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`13. On December 6, 2016, HIP’s president, David Howard, was issued U.S. Patent No.
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`9,510,610 for a “Process for Producing Precooked Bacon Slices” (the “Howard Patent”). The
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`Howard Patent was duly and legally issued by the U.S. Patent and Trademark Office to HIP as the
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`assignee of the inventor, Mr. Howard. A copy of the Howard Patent is attached hereto as Exhibit
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`B.
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`14. The Howard Patent discloses and claims various embodiments of what has been
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`referred to as the “Unitherm Process” wherein precooked sliced bacon products are prepared by
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`cooking the bacon in a superheated steam environment in a spiral oven. As expressly called for in
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`claim 2 of the Howard Patent, the Unitherm Process can also optionally include a preheating step.
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`15. The process claimed in the ’498 Patent is an embodiment of the Unitherm Process
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`which includes a preheating step. Specifically, the process claimed in the ’498 Patent is an
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`embodiment of the Unitherm Process wherein the bacon is preheated in a microwave or other
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`oven prior to cooking the bacon in a superheated steam environment in a spiral oven.
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`Prior Related Proceedings Between the Parties
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`16. On September 29, 2014, more than two years and two months prior to the issuance
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`of the Howard Patent, Plaintiff brought suit against Hormel in the U.S. District Court for the
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`District of Minnesota (Unitherm Food Systems, Inc. v. Hormel Foods Corporation and Hormel
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`Foods Corporate Services, LLC, Case No.: 0:14-CV-04034-JNE/BRK (D. Minn.)) for breach of a
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`Mutual Confidential Disclosure Agreement (the “MCDA”) and a Joint Development Agreement
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`(the “JDA”) between the parties. Relevant to the present case, Plaintiff also brought a claim for
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`declaratory relief under the terms of the JDA naming Plaintiff the owner of the Hormel patent
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`application for the ’498 Patent.
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`17. Hormel counterclaimed for (i) breach of the JDA, (ii) a declaration of ownership
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`under the JDA of Hormel’s own patent application for the ’498 Patent, and (iii) a declaration of
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`ownership of the Unitherm Process as disclosed in Plaintiff’s then pending application for the
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`Howard Patent.
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`18. On September 14, 2016, more than two and one half months prior to the issuance
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`of the Howard Patent and more than 20 months prior to the issuance of the ’498 Patent, a final
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`judgment was entered by the Federal District Court in Minnesota in which the court dismissed,
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 6 of 27 PageID #: 6
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`with prejudice, Hormel’s declaratory judgment counterclaim for ownership of the Unitherm
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`Process disclosed in the Howard Patent application but dismissed, without prejudice, Plaintiff’s
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`and Hormel’s declaratory judgment claims for ownership of the process claimed in the ’498 Patent
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`and disclosed in the then pending Hormel patent application. All other claims of both parties were
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`dismissed with prejudice.
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`19. A copy of a summary judgment Order which led to the final judgment is attached
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`hereto as Exhibit C. Relevant to the present action, in rejecting Hormel’s attempt to obtain
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`summary judgment on its counterclaim for a declaration that Hormel developed the process
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`disclosed in the Hormel patent application which became the '498 Patent, the court noted
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`“Howard’s deposition testimony that during the July 2007 presentation to Hormel, Howard
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`presented the idea of preheating bacon with a microwave before cooking it in a spiral oven.”
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`Exhibit C at 10.
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`20. Also relevant to the present action, the court found in dismissing with prejudice
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`Hormel’s counterclaim for ownership of the Unitherm Process disclosed in the Howard Patent
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`Application that (a) “it is undisputed Howard conceived of the Unitherm Process before the JDA’s
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`effective date” and (b) “Hormel does not point the Court to any specific improvement in the
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`process that was developed as part of the Project.” Exhibit C at 9-10.
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`21.
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`Plaintiff filed a Notice of Appeal to the U.S. Court of Appeals for the 8th Circuit
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`on September 19, 2016. Hormel filed a Notice of Cross-Appeal on October 5, 2016.
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`22.
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`In a decision issued on April 18, 2018, the 8th Circuit affirmed the judgment of the
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`District Court regarding all claims and counterclaims on appeal. A copy of the 8th Circuit decision
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`is attached hereto as Exhibit D.
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`23. The 8th Circuit decision issued 6 weeks prior to the issuance of the ’498 Patent.
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`Concerning the parties contractual claims under the JDA for ownership of the process disclosed in
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 7 of 27 PageID #: 7
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`the Hormel application for the ’498 Patent, which claims had been dismissed without prejudice by
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`the District Court, the 8th Circuit noted that these claims had not been dismissed in this manner to
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`evade the final order doctrine, but rather because the application for the ’498 Patent was still
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`pending. The 8th Circuit further noted that the parties had assured the court that the contract
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`claims would not be revived after the appeal. See Exhibit D at 4 n.2.
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`24. Also relevant to this present action, in affirming the judgment of the District Court
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`against Hormel’s counterclaim for ownership of the Unitherm Process disclosed in the Howard
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`Patent, the 8th Circuit held that:
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`It is undisputed that Unitherm’s Howard brought a developed “Unitherm
`Process” to Hormel when they entered the JDA in September 2007. Some
`months later, Unitherm applied for the Unitherm Process patent. Hormel
`declined invitations to add claims to the application and presented no evidence
`that any improvements in the Process as patented were developed as part of the
`Project.
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`Exhibit D at 13.
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`25. The 8th Circuit further affirmed that: “The Unitherm Process, as patented, was
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`conceived by Unitherm and sufficiently reduced to practice to induce Hormel to enter into the
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`JDA.” Id. In addition, all of “the information Hormel disclosed to JBT was disclosed in the
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`Unitherm Process patent application . . .” Id. at 9.
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`26. On May 29, 2018, HIP filed suit in this Court against Defendant and Hormel Foods
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`Corporate Services, LLC, Dold Foods, LLC, Osceola Food, LLC, and Rochelle Foods, LLC (HIP,
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`Inc. v. Hormel Foods Corporation et al., C.A. No. 18-802-CFC-SRF). HIP’s claims in that case,
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`as here, are for correction of inventorship and ownership of the ’498 Patent. HIP’s contingent
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`claims for patent infringement were dismissed as premature. HIP reserves the right to bring a
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`patent infringement action upon the resolution of the instant lawsuit.
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`Prior to the Processes Invented by David Howard,
`Precooked Bacon Was Produced in the U.S. in 100% Microwave Oven Systems
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`27.
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`Prior to the processes invented by David Howard, substantially all commercial
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`manufacturers, including Hormel, used continuous 100% microwave oven systems to produce
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`precooked sliced bacon products for sale in retail and foodservice markets. A continuous
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`microwave oven system typically consists of a series of four or five microwave oven cabinets
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`through which the bacon slices are sequentially conveyed such that the first cabinet begins the
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`heating process and the cooking of the bacon is completed in the final cabinet.
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`28. The precooked bacon products produced by these microwave oven systems do not
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`approach the flavor, texture, or appearance of freshly cooked bacon. Further problems associated
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`with the commercial microwave oven process include: low yields; inconsistent and non-uniform
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`product characteristics; a high fire risk; and high maintenance and energy costs.
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`29. The high fire risk in the microwave oven process results not only from electrical
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`arcing problems which are commonly encountered in industrial microwave ovens, but also from
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`the amount of flammable bacon fat which is rendered from the product during cooking. In order
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`for the precooked bacon to qualify as “fully cooked,” at least 60% of the raw weight of the bacon
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`must typically be rendered from the product.
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`30.
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`In addition, because the microwave oven systems rely upon microwave energy for
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`cooking rather than the creation of a sterilizing high temperature environment in the oven, health
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`safety risks resulting from pathogen contamination in the oven conveyor belt, and elsewhere in the
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`oven itself, are also a concern for the microwave oven process.
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`31.
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`For example, positive swabs showing pathogen contamination of microwave oven
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`belts in the precooked bacon section of Hormel’s facility in Rochelle, Illinois necessitated the
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`replacement of the oven belts in July 2013 and March 2014.
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`32. Microwave ovens in the precooked bacon section of the Rochelle, Illinois facility
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`also tested positive for contamination in January 2013, February 2014, August 2016, and January,
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`March, and August 2017.
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`33. The Unitherm Process, performed with or without the optional preheating step,
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`provides significant improvements in product consistency and yield and produces a precooked
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`sliced bacon product which is remarkably similar to freshly cooked bacon.
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`34. The Unitherm Process, performed with or without the optional preheating step, also
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`prevents contamination and eliminates fire risks within the oven by cooking the bacon in a
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`sterilizing, superheated steam environment such that an amount of oxygen sufficient for igniting
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`the highly flammable bacon fat is not present within the spiral oven.
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`Mr. Howard’s Background and Invention of the Processes
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`35. HIP’s president, David Howard, began business in the United Kingdom in 1985
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`and expanded operations to the United States in 1993.
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`36.
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`Since 1985, Mr. Howard has invented a number of different cooking and heating
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`processes, systems, and ovens. Mr. Howard has also obtained eighteen (18) U.S. patents and has
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`obtained patents in other countries. In addition to U.S. Patent No. 9,510,610 (the “Howard
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`Patent”), Mr. Howard’s other patents include: U.S. Patent No. 9,504,258 for “Airflow Pattern for
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`Spiral Ovens”; U.S. Patent No. 9,445,689 for “Transfer Mechanism for a Continuous Heat
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`Transfer System”; U.S. Patent No. 9,345,252 for “Method, Continuous Apparatus, and Burner for
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`Producing a Surface-Roasted Product”; U.S. Patent No. 9,220,276 for “Airflow Pattern for Spiral
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`Ovens”; U.S. Patent No. 9,215,892 for “Pasteurization System for Root Vegetables”; U.S. Patent
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`No. 8,875,621 for “Method, Continuous Apparatus, and Burner for Producing a Surface-Roasted
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`Product”; U.S. Patent No. 9,107,422 for “Airflow Pattern for Spiral Ovens”; U.S. Patent No.
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`8,728,555 for “Apparatus and Method for Searing, Branding, and Cooking”; U.S. Patent No.
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`9
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 10 of 27 PageID #: 10
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`8,646,383 for “Spiral Oven Apparatus and Method of Cooking”; U.S. Patent No. 6,867,392 for
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`“Infrared Element and Oven”; U.S. Patent No. 6,780,448 for “Pasteurization of Food Products”;
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`U.S. Patent No. 6,675,589 for “Freeze-Crusting Process”; and U.S. Patent No. 6,622,513 for
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`“Freeze-Crusting Process and Apparatus.”
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`37.
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`In 1989, after a series of catastrophic fires in various bacon cooking facilities, Mr.
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`Howard developed a system in the U.K. for cooking bacon slices in a linear convection oven in an
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`environment which included up to about 50% superheated steam. The linear oven, which was also
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`developed by Mr. Howard, was known as the Unitherm RapidFlow Oven.
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`38. Two major producers in the U.K., TMI and Sovereign Foods, adopted the process
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`and began using multiple RapidFlow Oven lines for manufacturing precooked bacon.
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`39. Mr. Howard’s RapidFlow Oven Process included the options of (a) cooking the
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`bacon at a temperature above the smoke point of the bacon fat (i.e., above 375°F) to impart a
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`roasted flavor to the product or (b) maintaining the temperature in the oven below the smoke point
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`of the bacon fat to prevent the addition of the roasted flavor.
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`40. The product produced by the RapidFlow Oven Process was a fully cooked sliced
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`bacon product which was rendered to less than 40% of its raw weight, had a water activity level of
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`less than 0.92, and resembled pan-fried bacon.
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`41. Because of the length of the linear oven that would be required in most U.S.
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`production lines for producing high volumes of precooked bacon, the RapidFlow Oven system
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`was not a good fit for the U.S. market. Additionally, although elevated superheated steam levels
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`were provided in the linear oven process, Mr. Howard desired to develop a continuous process in
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`which substantially all of the air in the oven was replaced with superheated steam.
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`42.
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`In 1994, Mr. Howard conceived the continuous Unitherm Process of cooking sliced
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`bacon in a superheated steam environment in a spiral oven. Mr. Howard recorded his conception
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 11 of 27 PageID #: 11
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`of the Unitherm Process in an invention disclosure form.
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`43. At that time, however, Plaintiff was awaiting the outcome of patent litigation
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`between others in the industry which would determine whether Plaintiff would be able to produce
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`and sell spiral ovens and spiral oven processes.
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`44.
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`In 1995, at the request of Armour Swift Eckrich, Mr. Howard performed an in-
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`depth review of a 100% microwave oven line for cooking bacon at an Armour Swift Eckrich
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`facility.
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`45.
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`Plaintiff subsequently entered
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`into discussions with Ferrite Microwave
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`Technologies, a manufacturer of industrial microwave ovens, for a possible purchase of Ferrite by
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`Plaintiff.
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`46.
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`In 2004, David Howard conceived the version of the Unitherm Process (i.e., the
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`Unitherm Process with the use of a microwave oven, or other preheater, prior to the spiral oven)
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`which is now claimed in the ’498 Patent. Mr. Howard’s invention of the process claimed in the
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`’498 Patent is shown in a sketch of the process which was contemporaneously drawn by Mr.
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`Howard in 2004 as follows:
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 12 of 27 PageID #: 12
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`47. This sketch shows a processing line which consists of a series of five pieces of
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`equipment. Notes 1-5, which correspond to and provide additional information regarding the five
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`pieces of equipment, are provided below the sketch.
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`48.
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`Proceeding from left to right, and as explained by the notations in the sketch, the
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`first piece of equipment shown in Mr. Howard’s sketch is a Unitherm vertical freeze cruster which
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`had just been patented by Mr. Howard in 2004. The freeze cruster was shown in the sketch as an
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`alternative to the walk-in type freezers which are commonly used in the art for freezing or par
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`freezing the incoming bacon bellies to stiffen the bellies for consistent slicing.
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`49. The second piece of equipment shown in Mr. Howard’s sketch is a Grote slicer for
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`cutting the bacon bellies into raw bacon slices.
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`50. The third piece of equipment shown in Mr. Howard’s 2004 sketch is a preheater
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`which, as described in note 3, can be a radio frequency (RF) heater, a microwave (MW) oven, or a
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`RapidFlow (RF) linear convection oven. The preheater produces a “phase change” wherein the
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`preheater can be operated to “thaw” or “heat” the bacon prior to cooking. The sketch also shows
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`that the preheating cabinet could optionally include both a lower conveyor belt and an upper belt
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`(i.e., a flattener) between which the bacon slices would be conveyed to produce a flatter product.
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`51. The fourth piece of equipment shown in Mr. Howard’s sketch is the spiral oven in
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`which the bacon is cooked as it is conveyed upwardly in a spiral pattern from a bottom inlet to an
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`upper outlet of the oven.
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`52. The final piece of equipment is a chiller for chilling the cooked product.
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`53. Mr. Howard’s conception of the use of a microwave oven as a preheater prior to
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`the spiral oven is further corroborated by Mr. Howard’s reference in the 2004 sketch to “Ferrite.”
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`Geoff Rawes, who is also mentioned in the 2004 sketch, was the president of the slicer
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 13 of 27 PageID #: 13
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`manufacturer, Grote Co. Mr. Rawes retired from Grote Co. in February 2008.
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`54. Mr. Howard’s 2004 sketch is shown again below next to Figure 1 of the ’498
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`Patent. For comparison purposes, rectangles highlighting the same subject matter (i.e., a Grote
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`slicer, followed by a microwave oven, followed by a spiral oven having a bottom inlet and an
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`upper outlet) relevant to the claims of the ’498 Patent have been added to the drawings. In terms
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`of the relevant subject matter of the claims of the ’498 Patent, the drawings are the same.
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`55. Mr. Howard successfully performed the Unitherm Process, without preheating, in
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`April and May 2006 using a Unitherm Mini Spiral Oven. The reduction to practice was recorded
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`on video and in a May 4, 2006 file memo titled “Bacon Test Cook” which was prepared by Mr.
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`Howard.
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`56. As recorded in the memo, the bacon slices were fully enveloped in a superheated
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`steam cooking medium which filled the spiral oven. In the same manner as specified in the claims
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`of the ’498 Patent, the superheated steam was injected into the spiral oven from an external steam
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`generator and thus operated to heat the cooking chamber. As also specified in the claims of the
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`’498 Patent, the May 4, 2006 memo notes that the thickness of the bacon slices will typically be
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`not more than 5 millimeters (0.2 inches).
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`57.
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`In addition to the external heat provided by injecting the superheated steam, the
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`cooking medium circulating in the oven was also heated, using heating elements within the oven,
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`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 14 of 27 PageID #: 14
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`to help preheat the oven and to assist in maintaining the desired operating temperature. The oven
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`heating elements used were electrical elements. However, Mr. Howard noted in the May 4, 2006
`
`memo that thermal oil heating elements, which are commonly used in spiral ovens, could
`
`alternatively be used for conducting the Unitherm Process at oven temperatures below 400°F.
`
`58. Although the reduction to practice in May 2006 did not involve the use of a
`
`preheater, Mr. Howard observed that (i) the excess amount of superheated steam which was
`
`injected into the spiral oven was being expelled from the oven inlet and outlet; (ii) the excess
`
`superheated steam expelled from the inlet was contacting the cold, raw bacon on the infeed
`
`portion of the oven conveyor belt prior to entering the oven; and (iii) the resultant heating of the
`
`bacon slices prior to entering the oven had the effect of relaxing the bacon, which caused that the
`
`slices to lay flatter on the conveyor, as opposed to having something of a banana-type curvature.
`
`David Howard Fully Disclosed and Taught the
`Claimed Process to Hormel and the Inventors Named on the ’498 Patent
`
`59. Mr. Howard approached Hormel in June 2007 to determine Hormel’s interest in
`
`replacing its microwave bacon lines with the Unitherm Process. Mr. Howard told Hormel’s vice
`
`president, Larry Pfeil, that the Unitherm Process involved cooking bacon using superheated
`
`steam. Mr. Howard also told Ron Christensen of Hormel that the Unitherm Process used a spiral
`
`oven.
`
`60. Hormel’s reaction was that its “opportunity to get ahead of the competition is to
`
`jump on this immediately.”
`
`61. On July 20, 2007, immediately after the parties signed the Mutual Confidential
`
`Disclosure Agreement (the “MCDA”), David Howard, who was accompanied by Plaintiff’s then
`
`Commercial Vice President, Tom Van Doorn, described the Unitherm Process to Hormel in detail,
`
`including Mr. Howard’s version of the Unitherm Process which included the addition of an
`
`optional preheating step prior to cooking and browning the bacon slices using superheated steam
`
`14
`
`

`

`
`
`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 15 of 27 PageID #: 15
`
`in a spiral oven.
`
`62. Richard Herreid and Brian Srsen, named by Hormel as “inventors” on the ’498
`
`Patent, attended this presentation.
`
`63. Mr. Van Doorn has confirmed that in Mr. Howard’s presentation, Mr. Howard
`
`disclosed to Hormel the concept of preheating the bacon slices in a microwave oven prior to
`
`cooking the bacon using superheated steam in the spiral oven. See Exhibit E, Declaration of
`
`Thomas Van Doorn, Sr.
`
`64.
`
`In his presentation to Hormel on July 20, 2007, Mr. Howard (a) discussed his
`
`extensive background, experience, and prior discoveries in bacon cooking and (b) fully disclosed
`
`his invention of the processes, his reduction to practice of the Unitherm Process, and all of the
`
`information relevant to the version of the Unitherm Process which is now recited in the claims of
`
`the ’498 Patent including:
`
`a. The use of a preheater prior to cooking and browning the bacon slices in a
`
`substantially 100% superheated steam environment in a spiral oven;
`
`b. The preheater could be a microwave oven, a radio frequency heater, a RapidFlow
`
`oven or other linear oven using hot air as the heating medium, an infrared oven, or
`
`a superheated steam heater;
`
`c. Plaintiff had earlier been in discussions with Ferrite regarding the possible
`
`purchase of the Ferrite company;
`
`d. A Ferrite microwave oven would be a good option for the preheating step;
`
`e. Alternatively, the use of a microwave oven for preheating the bacon could be of
`
`interest to Hormel as a means of salvaging and reusing microwave oven cabinets
`
`which would otherwise be taken out of operation as Hormel’s 100% microwave
`
`cooking lines were replaced with the Unitherm Process systems;
`
`15
`
`

`

`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 16 of 27 PageID #: 16
`
`
`
`f. The microwave or other preheater could be used to thaw the product after slicing or
`
`could be used to further preheat the product to any degree desired so long as (i) the
`
`preheated product did not reach a temperature of 212° F and (ii) the cooking and
`
`browning process was completed in the superheated steam environment in the
`
`spiral oven;
`
`g. Preheating the product would reduce the heating requirements in the spiral oven
`
`per pound of product and could therefore be used as a means to reduce the size of
`
`the spiral oven and/or increase product throughput and production rates;
`
`h. The effect of preheating the raw bacon slices to the rendering temperature of the
`
`bacon fat and beyond is that a hot fluid layer containing rendered fat forms on the
`
`surface of the product and the fluid begins to drip. The hot liquefied fat on the
`
`preheated product entering the spiral oven significantly reduces or eliminates the
`
`formation and interaction of condensed steam on the surface of the product as
`
`compared to the amount of condensate which forms on and interacts with the
`
`exposed surface of a cold, non-preheated product which enters the oven at the belly
`
`slicing temperature (i.e., circa 26° F);
`
`i. The Unitherm Process, with or without preheating, produces a fully cooked bacon
`
`product (i.e., a product which has been rendered to less than 40% of its raw weight)
`
`which resembles pan-fried bacon, is entirely safe for human consumption and has
`
`increased shelf life (i.e., has a water activity level of less than 0.92);
`
`j. Performing the cooking process in the spiral oven at a temperature above the
`
`smoke point of the fat (i.e., above 375° F) imparts what Mr. Howard referred to as
`
`a “roasting” flavor to the product, and therefore Mr. Howard advised that
`
`demonstrations should be conducted at temperatures in the spiral oven both below
`
`16
`
`

`

`Case 1:21-cv-00546-UNA Document 1 Filed 04/15/21 Page 17 of 27 PageID #: 17
`
`
`
`and above the smoke point so that Hormel could evaluate whether it preferred the
`
`product with or without the roasted flavor;
`
`k. For the best product and the safest operation in terms of both fire prevention and
`
`food safety, sufficient superheated steam should be injected into the spiral oven so
`
`that the bacon is cooked in a substantially 100% superheated steam environment;
`
`l. The superheated steam is injected into the oven from an external generator which
`
`heats the cooking chamber of the spiral oven;
`
`m. In addition to the external heat delivered into the spiral oven by the superheated
`
`steam, heat is also provided in the oven by circulating the cooking medium in the
`
`oven over a set of internal heating elements;
`
`n. The heating elements in the spiral oven can be electric, thermal oil or gas elements,
`
`with thermal oil being a viable option if a low temperature and/or non- roasting
`
`operation below 400°F is preferred; and
`
`o. The use of the Unitherm Process, with or without preheating, to produce other
`
`alternative products including precooked bacon bits.
`
`65. As confirmed by the deposition testimony of Mr. Van Doorn and of Craig
`
`Bernheimer, a former employee of Plaintiff, in the litigation between Plaintiff and Hormel in
`
`Minnesota, Mr. Howard not only initially disclosed and explained the preheating concept to
`
`Hormel to thaw the product and/or to take the product to a molten state, but continued to discuss
`
`these concepts throughout the performance of t

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