Wawrzynski v. H.J. Heinz Company ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
DAVID WAWRZYNSKI,
Plaintiff-Appellant,
v.
H.J. HEINZ COMPANY, H.J. HEINZ COMPANY,
L.P., AND HEINZ GP LLC,
Defendants-Appellees.
______________________
2012-1624
______________________
Appeal from the United States District Court for the
Western District of Pennsylvania in No. 11-CV-1098,
Judge Arthur J. Schwab.
______________________
Decided: September 6, 2013
______________________
H. WILLIAM BURDETT, JR., Boyle Burdett, of Grosse
Pointe Park, Michigan, argued for plaintiff-appellant.
With him on the brief was EUGENE H. BOYLE, JR.
ROBERT L. BYER, Duane Morris LLP, of Philadelphia,
Pennsylvania, argued for defendants-appellees. With him
on the brief was MATTHEW C. MOUSLEY.
______________________
2 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
Before NEWMAN, PLAGER, and PROST, Circuit Judges.
PLAGER, Circuit Judge.
This is or is not a patent case, depending on one’s
time frame. It came to us on appeal from a District Court
summary judgment that the plaintiff had failed to prove
infringement of his patent. It leaves us as a transfer to
the applicable regional circuit on the ground that plain-
tiff’s case from the beginning was not a patent infringe-
ment case.
In the case as it came to us, David Wawrzynski ap-
peals two rulings from the United States District Court
for the Western District of Pennsylvania, each granting
summary judgment in favor of H.J. Heinz Company, H.J.
Heinz Company, L.P., and Heinz GP LLC (collectively
referred to as “Heinz” or “Heinz Company”). In the first
ruling the district court concluded that federal patent law
preempted the state law claims that Mr. Wawrzynski
alleged in his complaint, and in the second ruling the
district court concluded that Heinz did not infringe a
patent owned by Mr. Wawrzynski.
The central dispute between the parties is whether
Mr. Wawrzynski’s complaint alleges a patent issue at all.
Heinz contends that it does; Mr. Wawrzynski contends
that it does not. The outcome of this dispute directly
affects our jurisdiction to decide the appeal, and we sua
sponte directed the parties to address the question of
jurisdiction. Both parties assert that we do have jurisdic-
tion—albeit under different theories. For the reasons that
follow, we conclude that both parties are mistaken be-
cause, under the law that applied when this suit was
filed, our subject matter jurisdiction over patent disputes
derives solely from the complaint, not from any counter-
claim. Therefore, we do not have jurisdiction over the
merits of this appeal, and order it transferred to the
circuit court with general jurisdiction, the United States
Court of Appeals for the Third Circuit.
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 3
BACKGROUND
Mr. Wawrzynski is an entrepreneur and food-
innovator who owns and operates his own food delivery
company. Mr. Wawrzynski’s interest in food led him to
design and develop a method for dipping and wiping a
food article in a specially configured condiment package.
He sought patent protection for his method and in 1997
was awarded U.S. Patent No. 5,676,990 (the ’990 patent).
The patent is entitled “Method of Food Article Dip-
ping and Wiping in a Condiment Container.” The written
description of the ’990 patent illustrates a condiment
container that has a flexible cap with a slitted opening in
it. A user introduces a food article, such as a French fry,
into the container through the slit and dips it into the
condiment. As the food article exits the container, the
flexible cap wipes away excess condiment from the food
article, reducing the likelihood of a drip or spill.
Mr. Wawrzynski subsequently decided to present his
condiment packaging ideas to the Heinz Company, includ-
ing his concept, which he called the “Little Dipper,” so in
March 2008 he sent Heinz a letter soliciting a meeting.
Included in the letter were promotional materials that
depicted and described a condiment container similar to
the condiment container depicted in the ’990 patent. Mr.
Wawrzynski’s letter referenced the ’990 patent and stated
that features of the Little Dipper were subject to his
patent.
Heinz alleges that it had been developing a new
ketchup package around this same time. The Heinz
Company invited Mr. Wawrzynski to meet with its repre-
sentatives in April of 2008 to present his product ideas.
Mr. Wawrzynski contends that during this meeting he
shared with Heinz’s representatives the idea of creating a
‘dual function’ product, one that permitted a consumer to
either dip a food article into the condiment or separately
squeeze out the condiment.
4 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
After the April meeting Mr. Wawrzynski sent Heinz
additional promotional materials and requested another
meeting. Heinz responded that the company was not
interested in Mr. Wawrzynski’s product ideas and did not
wish to receive additional information from him. Months
later, the Heinz Company released its new “Dip &
Squeeze®” packet. The Dip & Squeeze® packet, as its
name suggests, allows a user to pull a tab to reveal a well
of sauce for dipping, or the user can rip off an end of the
packet to dispense sauce by squeezing.
On October 5, 2010, Mr. Wawrzynski filed a lawsuit
against the Heinz Company in Michigan state court
asserting claims relating to the Dip & Squeeze®. Heinz
countered by removing the action to the United States
District Court for the Eastern District of Michigan on the
basis of diversity jurisdiction. Mr. Wawrzynski filed an
amended complaint, including allegations of breach of an
implied contract and unjust enrichment based on Heinz’s
alleged use of Mr. Wawrzynski’s ideas for condiment
packaging, and for use in advertising and promoting the
Dip & Squeeze®. The amended complaint in its general
allegations referenced Mr. Wawrzynski’s patent.
Heinz then filed a motion to transfer the case from the
Eastern District of Michigan, and it was transferred to
the United States District Court for the Western District
of Pennsylvania, where it was assigned to Judge McVerry.
During this same time, Heinz filed an answer, affirmative
defenses, and a counterclaim that alleged, amongst other
things, that Heinz did not infringe the Wawrzynski pa-
tent and that the patent was invalid.
In response, Mr. Wawrzynski filed a motion to dismiss
Heinz’s counterclaim on the grounds that the counter-
claim did not present a case or controversy under federal
law since Mr. Wawrzynski’s complaint was asserting state
law claims, not patent infringement. Judge McVerry
denied Mr. Wawrzynski’s motion to dismiss, concluding
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 5
that the case implicated the ’990 patent. Because Judge
McVerry thought that the case involved the Wawrzynski
patent, he then transferred it to the Western District of
Pennsylvania’s Patent Pilot Program where it was as-
signed to Judge Schwab.
On March 16, 2012, Mr. Wawrzynski filed an answer
to Heinz’s counterclaim in which he restated that he was
not suing Heinz for infringement of the ’990 patent. He
followed this with a covenant not to sue Heinz on the
basis of the ’990 patent, and shortly thereafter filed
another motion to dismiss Heinz’s counterclaim. Mr.
Wawrzynski again argued that the counterclaim did not
present a case or controversy because he had admitted in
his answer that he was not suing Heinz for infringement
of the ’990 patent, and further had provided Heinz with a
covenant not to sue on the ’990 patent.
Judge Schwab denied Mr. Wawrzynski’s second mo-
tion to dismiss. He concluded that Mr. Wawrzynski’s
admission and covenant were “manufactured” and did not
change the fact that Mr. Wawrzynski’s complaint made
allegations based upon the ’990 patent. Wawrzynski v. H.
J. Heinz Co., No. 11-cv-1098, 2012 U.S. Dist. LEXIS
59487, *13–14 (W.D. Pa. Apr. 27, 2012).
Heinz now filed a motion for summary judgment, ar-
guing that Mr. Wawrzynski’s other claims were preempt-
ed by federal patent law. The district court granted the
motion. Wawrzynski v. H. J. Heinz Co., No. 11-cv-1098,
2012 U.S. Dist. LEXIS 68740 (W.D. Pa. May 16, 2012).
Heinz then moved for summary judgment on its counter-
claim of non-infringement. Finding that it had jurisdic-
tion to decide the matter, the district court granted
Heinz’s motion. Wawrzynski v. H. J. Heinz Co., No. 11-cv-
1098, 2012 U.S. Dist. LEXIS 85690 (W.D. Pa. June 20,
2012).
That is the current state of play. Mr. Wawrzynski
now appeals the district court’s ruling that his state law
6 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
claims are preempted by federal patent law, arguing that
his dispute with Heinz relates to issues that were sepa-
rate and distinct from his patent. Mr. Wawrzynski also
appeals the district court’s ruling that it had subject
matter jurisdiction over Heinz’s counterclaim. He argues
that he never alleged patent infringement, and in any
event the district court erred because his covenant not to
sue and admissions of non-infringement divested the
district court of jurisdiction to decide non-infringement.
Heinz counters that this case is Mr. Wawrzynski’s at-
tempt to assert his patent under a guise of state law.
Heinz contends that the district court correctly decided
that Heinz did not infringe the ’990 patent given Mr.
Wawrzynski’s admissions of non-infringement.
DISCUSSION
A.
As earlier noted, the dispute whether there is or is not
a claim of patent infringement in this case implicates the
threshold question of whether we have subject matter
jurisdiction over this appeal. Wyden v. Comm’r of Patents
& Trademarks, 807 F.2d 934, 935 (Fed. Cir. 1986) (stating
that our jurisdiction is a “threshold question to be cleared
in every case”). Under our jurisdictional statute,
28 U.S.C. § 1295, if the case is one arising under the
Federal patent laws, we do; if the case is one purely of
state law claims, not involving a patent issue, we do not.
We must independently assure ourselves of our jurisdic-
tion over an appeal “even though the parties are prepared
to concede it.” Bender v. Williamsport Area Sch. Dist.,
475 U.S. 534, 541 (1986).
Accordingly, prior to oral argument we requested that
the parties address (1) whether the pre- or post-America
Invents Act (AIA) version of 28 U.S.C § 1295(a)(1) governs
this case; and (2) whether this court has jurisdiction
under the governing version of § 1295(a)(1). See Leahy-
Smith America Invents Act, Pub. L. No. 112-29, § 19(b),
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 7
(e), 125 Stat. 284, 331-33 (2011). We also reminded the
parties of Holmes Group, Inc. v. Vornado Air Circulation
Systems, Inc., 535 U.S. 826 (2002) (addressing the ques-
tion of jurisdiction over patent law counterclaims) and
Christianson v. Colt Industries Operating Corp., 486 U.S.
800 (1988) (addressing the question of jurisdictional
allocation between circuit courts). At oral argument, both
parties maintained that we have jurisdiction, although
they did so under different theories. We will address each
party’s jurisdictional theory in turn.
1.
Mr. Wawrzynski argues that this court has appellate
jurisdiction under 28 U.S.C. § 1295 as set forth in the
AIA. Pub. L. No. 112-29, § 19(b), 125 Stat. 284, 331-32
(2011). Amongst other things, the AIA version of § 1295
gives us jurisdiction over appeals based on a civil action
“in which a party has asserted a compulsory counterclaim
arising under any Act of Congress relating to patents.”
Id. Mr. Wawrzynski contends that Heinz’s counterclaim
of non-infringement meets this requirement.
Mr. Wawrzynski’s jurisdictional theory has several
problems. Even assuming that Heinz’s counterclaim was
compulsory, Mr. Wawrzynski’s case does not meet the
effective date requirement of the AIA version of § 1295,
which applies to “any civil action commenced on or after
the date of the enactment of this Act,” which is September
16, 2011. Pub. L. 112–29, § 19(e), 125 Stat. 284, 333. Mr.
Wawrzynski’s complaint was filed and the “action com-
menced” prior to this date. The plain language of § 1295
provides no exceptions to its effective date requirement.
In an attempt to clear this hurdle, Mr. Wawrzynski
argues that the filing date of the counterclaim, not the
lawsuit, should control. Mr. Wawrzynski asserts that
because Heinz filed its counterclaim on September 28,
2011, which was after the statute’s effective date, Heinz’s
counterclaim provides us with appellate jurisdiction. In
8 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
support, Mr. Wawrzynski cites to a Sixth Circuit case,
Static Control Components, Inc. v. Lexmark International,
Inc., 697 F.3d 387, 398–99 (6th Cir. 2012) cert. granted,
12-873, 2013 WL 182751 (U.S. June 3, 2013). He argues
that, based on this case, the Federal Circuit has jurisdic-
tion in certain “evolving circumstances,” and that Heinz’s
counterclaim presents such circumstances.
Though this is a creative argument, we do not think
that it is the law applicable to this case. The “evolving
circumstances” discussed in Static Control are suggested
in Christianson and Holmes, and involve instances in
which the court deems a claim to be part of the pleadings
because the parties have consented to litigate it. Static
Control, 697 F.3d at 398–99; Holmes, 535 U.S. at 829 n.l
(“[T]his case does not call upon us to decide whether the
Federal Circuit’s jurisdiction is fixed with reference to the
complaint as initially filed or whether an actual or con-
structive amendment to the complaint raising a patent-
law claim can provide the foundation for the Federal
Circuit’s jurisdiction.”); Christianson, 486 U.S. at 814–15
(“We need not decide under what circumstances, if any, a
court of appeals could furnish itself a jurisdictional basis
unsupported by the pleadings by deeming the complaint
amended in light of the parties’ ‘express or implied con-
sent’ to litigate a claim.”). The express or implied consent
theory left open by Christianson and Holmes does not fit
the facts of this case.
First, Mr. Wawrzynski cannot point to an express or
implied consent by the parties to litigate Heinz’s counter-
claim. Quite to the contrary, Mr. Wawrzynski moved on
two separate occasions to dismiss the counterclaim on the
basis of lack of jurisdiction. In order to divest the district
court of jurisdiction to rule on the counterclaim, Mr.
Wawrzynski went so far as to admit in his pleadings that
Heinz did not infringe the ’990 patent and to provide
Heinz with a covenant not to sue. Heinz certainly wished
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 9
to litigate its counterclaim, but one party’s consent is not
sufficient for us to deem the complaint amended.
Second, even if it could be said that now on appeal Mr.
Wawrzynski is providing express or implied consent, this
would not solve his jurisdictional problem under the AIA
version of § 1295. This version of § 1295 applies to law-
suits “commenced” on or after the effective date, Pub. L.
112–29, § 19(e), 125 Stat. 284, 333, and a lawsuit com-
mences upon filing of the complaint. Fed. R. Civ. P. 3.
Therefore, even if we deemed the complaint amended, the
lawsuit still “commenced” for jurisdictional purposes prior
to the AIA version’s effective date of September 16, 2011.
Because Mr. Wawrzynski’s appeal fails to satisfy the
effective date of the AIA version of § 1295, we do not have
appellate jurisdiction under this version of the statute.
2.
Heinz’s theory is that we have jurisdiction under the
pre-AIA version of § 1295. This version states, “[t]he
United States Court of Appeals for the Federal Circuit
shall have exclusive jurisdiction—(1) of an appeal from a
final decision of a district court of the United States . . . if
the jurisdiction of that court was based, in whole or in
part, on section 1338 of this title.” 28 U.S.C § 1295(a)(1)
(2006).
Heinz argues that Mr. Wawrzynski’s complaint as-
serted a federal question under 28 U.S.C. § 1338, and in
particular it asserted a claim of patent infringement
under § 1338(a): “The district courts shall have original
jurisdiction of any civil action arising under any Act of
Congress relating to patents, plant variety protection,
copyrights and trademarks.” According to Heinz, Mr.
Wawrzynski’s alleged claim of patent infringement gave
the district court jurisdiction under 28 U.S.C. § 1338(a),
which in turn provided us jurisdiction under § 1295(a)(1).
Heinz asserts that the district court had § 1338 jurisdic-
10 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
tion in addition to its diversity jurisdiction under
28 U.S.C. § 1332.
But Heinz’s theory of jurisdiction also has problems.
A district court’s federal question jurisdiction extends
over “only those cases in which a well-pleaded complaint
establishes either that federal law creates the cause of
action or that the plaintiff's right to relief necessarily
depends on resolution of a substantial question of federal
law.” Christianson, 486 U.S. at 808 (quoting Franchise
Tax Bd. of State of Cal. v. Constr. Laborers Vacation Trust
for S. Cal., 463 U.S. 1, 27–28 (1983)). The “well-pleaded
complaint” rule makes the plaintiff the “master of the
complaint,” and allows the plaintiff to “eschew[] claims
based on federal law [and] choose to have the cause heard
in state court.” Caterpillar Inc. v. Williams, 482 U.S. 386,
398–99, (1987).
Despite Heinz’s strenuous efforts to construe the com-
plaint to favor its theory of the case, and despite the fact
that the patent is referenced in the complaint, a close
review of Mr. Wawrzynski’s complaint, including its
counts and requested relief, confirms that Mr. Wawrzyn-
ski did not intend to assert his patent against Heinz. The
complaint contains only two counts, numbered “I” and
“II.” The first is for “Breach of Implied Contract” and the
second is for “Unjust Enrichment.” J.A. 127–28. Breach
of implied contract and unjust enrichment are state law
counts. The complaint does not have a count for patent
infringement or anything similar. Indeed, the complaint
has no further counts of any kind.
The language of a typical patent allegation is also no-
ticeably absent from the complaint and its counts. For
example, the complaint does not use, even a single time,
the words “infringe,” “infringed,” “infringement,” “infring-
er,” or “infringing.” The complaint and its counts do not
cite to 35 U.S.C. § 271 or any of its subsections; do not
discuss or allude to direct infringement, contributory
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 11
infringement, or induced infringement; and do not allege
that Heinz—or anyone else—made, used, offered to sell,
or sold the patented technology of the ’990 patent.
In addition to the counts, the relief requested by the
complaint aligns with state law claims, not a claim for
patent infringement. For example, the complaint asks for
“[d]amages . . . arising from Defendants’ failure to pay
[Plaintiff] for his concepts and ideas regarding new con-
diment packaging and marketing for new condiment
packaging.” J.A. 39. The complaint then requests, “inci-
dental damages, consequential damages, lost profits and
exemplary damages.” Id.A patent provides a right to exclude. 35 U.S.C. § 154.
A patent by itself does not create an agreement to pay.
Therefore, Mr. Wawrzynski’s assertion of a “failure to
pay” would be ill-fitting if he were alleging patent in-
fringement absent some sort of contractual or quasi-
contractual agreement. Moreover, the complaint requests
“incidental damages” and “consequential damages,” which
are typical contract-type damages. See Williston on
Contracts § 64:12 and § 66:55 (4th ed.). The complaint
does request “lost profits,” but this concept exists both in
patent law and in contract law, and therefore lends little
support to construing the claim as a claim for patent
infringement rather than a contract allegation given the
evidence to the contrary. The request for “exemplary
damages” also fails to uniquely identify a patent claim.
To support its jurisdictional theory, Heinz argues that
the complaint is replete with references to Mr. Wawrzyn-
ski’s patent. Heinz contends that the complaint must be
based on his patent because, without the patent allega-
tions, Mr. Wawrzynski’s complaint fails to state a claim.
In response, Mr. Wawrzynski argues that his patent is
part of the background of his action, but his patent nei-
ther discloses nor claims the ideas for which he is seeking
relief.
12 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
We observe that the complaint’s discussion of the ’990
patent is not nearly as extensive as Heinz purports it to
be. The complaint includes but three sentences that
reference the ’990 patent (see J.A. 124) in all of its eight
pages of text. And, as we noted above, none of these
sentences alleges or alludes to patent infringement.
Whatever these sentences may purport, they fall far short
of a well-pleaded complaint of patent infringement. If the
complaint succeeds in adequately alleging any causes of
action—regarding which we have no opinion—those
causes are indubitably state law claims.
We also find support for Mr. Wawrzynski’s contention
that certain ideas and materials that he allegedly provid-
ed to Heinz are not found in his patent. Mr. Wawrzyn-
ski’s counts reference his marketing ideas. The
marketing materials he allegedly sent to Heinz provide,
for example, the “Little Dipper” name, a slogan, a discus-
sion of a “pull tab” design, and various graphical repre-
sentations of the Little Dipper with the Heinz logo. The
’990 patent does not explicitly disclose any of these things.
Furthermore, the procedural context in which Mr.
Wawrzynski filed his original complaint is consistent with
our conclusion that he intended to eschew federal law and
invoke state law. Mr. Wawrzynski filed his original
complaint in state court, not in federal court where he
would have filed if he wanted to assert patent infringe-
ment; the case ended up in federal court only because
Heinz removed the case on the basis of diversity jurisdic-
tion.
We conclude that Mr. Wawrzynski’s sparse back-
ground discussion of his patent does not make a well-
pleaded complaint for patent infringement, especially in
light of the evidence of clear intention on his part to
specifically assert counts under state law. Construing Mr.
Wawrzynski’s complaint to the contrary would turn the
well-pleaded complaint rule on its head, making Mr.
DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY 13
Wawrzynski the “master of nothing.” Caterpillar, 482
U.S. at 399. Because federal law does not create Mr.
Wawrzynski’s cause of action, we lack subject matter
jurisdiction over his appeal under the pre-AIA version of
§ 1295.
B.
We note that some of the issues underlying our juris-
dictional analyses also underlie the district court’s sum-
mary judgment merits analyses. To fully assess the
question of our jurisdiction, we necessarily have analyzed
and decided certain of these issues.
For example, we have concluded that the relief re-
quested in the complaint aligns with state law claims and
not a claim for patent infringement. We also found sup-
port for Mr. Wawrzynski’s contention that certain of the
ideas and materials he allegedly provided to Heinz are not
found in his patent. These conclusions, along with our
overarching conclusion that the complaint does not pre-
sent a well-pleaded patent law issue, undercut conclu-
sions relied upon by the district court to support its grant
of summary judgment of preemption. Accordingly, it
appears that nothing in federal patent law now stands in
the way of Mr. Wawrzynski pursuing his state law claims.
With regard to the district court’s finding of non-
infringement of the ’990 patent by Heinz’s ‘Dip &
Squeeze®’ packet, Mr. Wawrzynski’s responsive pleadings
contain both a concession that Heinz’s product does not
infringe and a covenant not to sue. Thus, it would appear
that in any event there is no case or controversy remain-
ing to support a subsequent judgment on the issue of
infringement.
14 DAVID WAWRZYNSKI v. H.J. HEINZ COMPANY
CONCLUSION
For the foregoing reasons, we conclude that we lack
jurisdiction over the merits issues in this appeal, 1 and
therefore, in the interests of justice, pursuant to 28 U.S.C.
§ 1631, we order a transfer of the appeal to the United
States Court of Appeals for the Third Circuit. 2
TRANSFERRED
1 We always have jurisdiction over a case to deter-
mine our jurisdiction. C.R. Bard, Inc. v. Schwartz, 716
F.2d 874, 877 (Fed. Cir. 1983).
2 The Third Circuit rather than the Sixth Circuit
appears to be the circuit of appropriate jurisdiction. The
case was initially removed to federal court under diversity
jurisdiction. Then in the Eastern District of Michigan, in
the Sixth Circuit, it was transferred to the Western
District of Pennsylvania, in the Third Circuit, where the
matter was adjudicated.