David Wawrzynski v. HJ Heinz Co , 574 F. App'x 99 ( 2014 )


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  •                                                 NOT PRECEDENTIAL
    UNITED STATES COURT OF APPEALS
    FOR THE THIRD CIRCUIT
    _____________
    No. 13-4100
    _____________
    DAVID WAWRZYNSKI,
    Appellant
    v.
    H.J. HEINZ COMPANY; H.J. HEINZ COMPANY, L.P.; HEINZ GP LLC.
    _____________
    On Appeal from the United States District Court
    for the Western District of Pennsylvania
    District Court No. 2-11-cv-01098
    District Judge: The Honorable Arthur J. Schwab
    Submitted Pursuant to Third Circuit L.A.R. 34.1(a)
    July 7, 2014
    Before: SMITH, VANASKIE, and SHWARTZ, Circuit Judges
    (Opinion Filed: July 21, 2014)
    _____________________
    OPINION
    _____________________
    SMITH, Circuit Judge.
    David Wawrzynski (“Wawrzynski”), an inventor and business owner
    residing in Michigan, brought this suit for breach of implied contract and unjust
    enrichment against H.J. Heinz Company, H.J. Heinz Company, L.P., and Heinz GP
    LLC (collectively, “Heinz”). The United States District Court for the Western
    District of Pennsylvania ruled that Wawrzynski’s claims were preempted by
    federal patent law and granted summary judgment to Heinz. The District Court
    subsequently also granted summary judgment to Heinz on its counterclaim seeking
    a declaration of non-infringement on a patent owned by Wawrzynski, and entered
    final judgment in favor of Heinz. For the reasons set forth below, we will vacate
    the judgment, reverse the District Court’s rulings on the summary judgment
    motions, and remand to the District Court.
    In 1997, Wawrzynski was issued Patent No. 5,676,990 for a “Method of
    Food Article Dipping and Wiping in a Condiment Container” (the “‘990 Patent”).
    See Joint Appendix (“J.A.”) 299a–303a. The ‘990 Patent involves a process for
    dipping and wiping a food article in a specially designed condiment container. The
    summary of the ‘990 Patent describes a condiment container composed of a body,
    a flexible cap, and a tear-away strip attached to the cap. J.A. 299a. When the tear-
    away strip is removed, a slit is formed in the cap, allowing an article of food to be
    dipped into the condiment. When the consumer removes the food article from the
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    container, the slit edges wipe away excess condiment from the food article, thereby
    reducing the chances that the condiment will drip or spill. 
    Id. Based on
    ideas contained in the ‘990 Patent, Wawrzynski developed and
    marketed an idea for a new condiment packet, which he dubbed the “Little
    Dipper.” Wawrzynski describes the Little Dipper as “a condiment package into
    which [a consumer] could dip a food article and the top of the container would
    wipe off any excess condiment back into the container.” First Am. Compl. ¶ 33,
    J.A. 136. Significantly, although Wawrzynski acknowledges that the Little Dipper
    “evolved” from the process embodied in the ‘990 Patent, the method protected by
    the ‘990 Patent is “separate and distinct” from the Little Dipper. Appellant’s Br. 6.
    In March 2008, Wawrzynski sent correspondence and promotional materials
    to several individuals at Heinz in an effort to market the Little Dipper. See First
    Am. Compl. ¶¶ 34–36, J.A. 136a–137a; see also J.A. 263a–269a. Wawrzynski met
    with Heinz representatives in April 2008. According to Wawrzynski, during this
    meeting he presented to Heinz his idea for a dual-function condiment container
    that would allow the consumer to either dip food into the condiment or squeeze out
    the condiment. Appellant’s Br. 2, 6. Wawrzynski also claims that during this
    meeting he presented Heinz with graphic designs of the Little Dipper, suggested
    that the new dual-function condiment container should have a “catchy name,” and
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    discussed his ideas for a promotional campaign to publicize the new condiment
    container. Appellant’s Br. 6.
    Wawrzynski asserts that the ideas he presented at this meeting were a major
    breakthrough for Heinz. He alleges that Heinz had been trying—without success—
    to develop a new ketchup packet for approximately four years prior to this
    meeting. Wawrzynski claims that, after his meeting with the company’s
    representatives, Heinz was able to successfully develop a new ketchup packet
    (called the “Dip & Squeeze”) using his packaging and marketing ideas. First Am.
    Compl. ¶ 47, J.A. 138a. However, Wawrzynski alleges that, although Heinz
    understood that it would have to pay him if it used his ideas, Heinz failed to
    compensate him. 
    Id. ¶¶ 48–49,
    J.A. 138a–139a.
    Wawrzynski filed suit against Heinz in Michigan state court, alleging
    claims of (1) breach of implied contract and (2) unjust enrichment, based on
    Heinz’s failure to compensate him for using his ideas and marketing strategies in
    developing and promoting the Dip & Squeeze. Heinz removed the case to the
    United States District Court for the Eastern District of Michigan. The Eastern
    District of Michigan subsequently granted Heinz’s motion to transfer venue to the
    Western District of Pennsylvania.
    In September 2011, Heinz brought two counterclaims against Wawrzynski,
    seeking declaratory relief that (1) the Dip & Squeeze did not infringe on the ‘990
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    Patent, and (2) the ‘990 Patent was invalid and unenforceable. In his answer to
    Heinz’s counterclaims, Wawrzynski emphasized that he “does not assert that Heinz
    infringes on the ‘990 Patent.” J.A. 345-1. Wawrzynski also submitted, as an
    attachment to his answer to the counterclaims, an executed Covenant Not to Sue in
    which he “unconditionally and irrevocably covenant[ed] to refrain from making
    any claim or demand, or from commencing, causing, or permitting to be
    prosecuted any action in law or equity, against Heinz . . . on account of a cause of
    action for infringing the ‘990 Patent based on any of Heinz’ current and/or
    previous product designs . . . .” J.A. 347a.
    The District Court granted summary judgment in favor of Heinz on both
    Wawrzynski’s claims and on Heinz’s counterclaim for non-infringement. First, on
    May 16, 2012, the District Court granted Heinz’s motion for summary judgment as
    to Wawrzynski’s claims for breach of implied contract and unjust enrichment,
    concluding that these claims conflicted with federal patent law and thus were
    preempted. Subsequently, on June 20, 2012, the District Court granted summary
    judgment in favor of Heinz as to its first counterclaim, awarding a declaratory
    judgment that Heinz had not infringed on the ‘990 Patent, and permitted Heinz to
    withdraw its second counterclaim. The District Court then entered final judgment
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    in favor of Heinz on June 20, 2012, and closed the case. This timely appeal
    followed.1
    Upon reviewing the record before us, we conclude that the District Court
    erred in concluding that Wawrzynski’s claims are preempted by patent law. We
    also conclude that the District Court erred in granting summary judgment in favor
    of Heinz as to the counterclaim for a declaration of non-infringement.
    First, the District Court erred in granting summary judgment in favor of
    Heinz as to Wawrzynski’s claims for breach of implied contract and unjust
    enrichment. The basis for the District Court’s ruling was its erroneous conclusion
    that these state law claims conflict with federal patent law and thus are preempted.
    Federal patent law preempts state law claims to the extent that state law “stands as
    an obstacle to the accomplishment and execution of the full purposes and
    objectives of Congress” in enacting the patent laws. Aronson v. Quick Point Pencil
    Co., 
    440 U.S. 257
    , 262 (1979) (citations and internal quotation marks omitted). If a
    state law claim seeks “patent-like protection to intellectual property inconsistent
    with the federal scheme,” the state law claim is preempted. Dow Chem. Co. v.
    Exxon Corp., 
    139 F.3d 1470
    , 1475 (Fed. Cir. 1998). We disagree with the District
    1
    Wawrzynski initially appealed to the United States Court of Appeals for the
    Federal Circuit. On September 6, 2013, the Federal Circuit concluded that it did not have
    jurisdiction over this appeal and transferred the case to us, pursuant 28 U.S.C. § 1631.
    We have jurisdiction pursuant to 28 U.S.C. § 1291. We exercise plenary review over the
    District Court’s grant of summary judgment, viewing the facts in the light most favorable
    to the non-moving party. Dee v. Borough of Dunmore, 
    549 F.3d 225
    , 229 (3d Cir. 2008).
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    Court’s determination that Wawrzynski “is seeking patent-like remedies for his
    state law claims” and its conclusion that Wawrzynski’s state law claims conflict
    with federal patent law. J.A. 42a. Wawrzynski brought his suit in Michigan state
    court, alleging quasi-contract claims for breach of implied contract and unjust
    enrichment against Heinz. Wawrzynski’s complaint does not seek to recover for
    patent infringement; rather, the complaint requests “[d]amages . . . arising from
    Defendants’ failure to pay Mr. Wawrzynski for his concepts and ideas regarding
    new condiment packaging and marketing for new condiment packaging,” including
    “incidental damages, consequential damages, lost profits and exemplary damages.”
    J.A. 140a. Because Wawrzynski seeks to recover for the benefit that he allegedly
    conveyed on Heinz regarding his ideas for the design and marketing of a new
    condiment container—a benefit beyond the ideas embodied in the ‘990 Patent—
    and because his claims are not inconsistent with the federal patent scheme,
    Wawrzynski’s claims are not preempted by patent law. Thus, we will reverse the
    order of the District Court granting summary judgment in favor of Heinz on the
    basis of patent preemption.
    We also conclude that the District Court erred in granting summary
    judgment in favor of Heinz as to its counterclaim seeking a declaration of non-
    infringement on the ‘990 Patent. Based on its prior holding that Wawrzynski’s
    claims were preempted by patent law, and reasoning that there existed “conflicting
    7
    evidence” on whether Wawrzynski’s claims alleged patent infringement, J.A. 54a,
    the District Court determined that there existed a viable case or controversy on the
    issue of patent infringement. As indicated above, however, this premise was
    flawed. Wawrzynski’s complaint does not allege claims for patent infringement.
    Any lingering doubt on that issue was eliminated when Wawrzynski executed the
    Covenant Not to Sue, in which he unconditionally and irrevocably disclaimed any
    argument or claim that Heinz had infringed on the ‘990 Patent. See J.A. 347a. In
    light of these facts, there is no case or controversy on the issue of patent
    infringement, and thus the District Court did not have subject-matter jurisdiction to
    rule on Heinz’s counterclaim seeking a declaration of non-infringement. See Dow
    Jones & Co., Inc. v. Ablaise Ltd., 
    606 F.3d 1338
    , 1345–48 (Fed Cir. 2010); see
    also Already, LLC v. Nike, Inc., 
    133 S. Ct. 721
    , 726–29 (2013). Accordingly, we
    will reverse the order of the District Court granting summary judgment to Heinz on
    its counterclaim seeking a declaratory judgment as to non-infringement and direct
    that the District Court dismiss this counterclaim.
    For the reasons set forth above, we will vacate the judgment entered in favor
    of Heinz, reverse the orders of the District Court granting summary judgment to
    Heinz, and remand this matter for further proceedings.
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