United States: Is A Patent Counterclaim Enough For Appeal To The Federal Circuit? It Depends

Wawrzynski v. H.J. Heinz Co.

Addressing the threshold question of subject matter jurisdiction sua sponte in the context of summary judgment of preemption of state law claims by federal patent law, the U.S. Court of Appeals for the Federal Circuit concluded that it lacked jurisdiction and transferred the case to the Third Circuit, finding that, under the pre-America Invents Act version of 28 U.S.C § 1295(a)(1), subject-matter jurisdiction over patent disputes derives solely from the complaint, not from any counterclaim, and the complaint did not plead a patent law issue. Wawrzynski v. H.J. Heinz Co., Case No. 12-1624 (Fed. Cir., Sept. 6, 2013) (Plager, J.).

Wawrzynski patented a method for dipping and wiping a food article in a specially configured condiment package having a flexible cap to wipe away excess condiment from the food article. Wawrzynski presented his condiment packaging ideas and promotional materials, partly covered by his patent, to the Heinz Company. Wawrzynski allegedly also shared with Heinz his idea of creating a "dual function" product that permitted a consumer to either dip a food article into the condiment or separately squeeze out the condiment. Heinz was allegedly developing a new ketchup package around this same time. Months after the meeting, Heinz released its new "Dip & Squeeze®" packet, which allowed a user to either pull a tab to reveal a well of sauce for dipping or rip off an end of the packet to dispense sauce by squeezing.

After Wawrzynski sued Heinz in state court for breach of implied contract and unjust enrichment predicated on Heinz's alleged use of Wawrzynski's ideas for condiment packaging, the case was removed to district court based on diversity jurisdiction.

The complaint referenced Wawrzynski's patent in its general allegations. Heinz answered with a counterclaim alleging invalidity and non-infringement of Wawrzynski's patent. Wawrzynski filed a motion to dismiss Heinz's counterclaim based on absence of a case or controversy under federal law since his complaint asserted state law claims, not patent infringement.
The district court denied Wawrzynski's motion, concluding that the case implicated his patent, and instead granted Heinz's summary judgment motion of non-infringement. The district court also granted summary judgment in favor of Heinz, ruling that federal patent law preempted the state law claims that Wawrzynski had alleged in his complaint. Wawrzynski admitted in his answer to Heinz's counterclaim that he had not sued Heinz for patent infringement, and further provided Heinz with a covenant not to sue on the patent. Wawrzynski's subsequent motion to dismiss Heinz' counterclaims was also denied. Wawrzynski appealed.

The Federal Circuit disagreed with Wawrzynski's contention that the Court had subject-matter jurisdiction under the AIA version of § 1295, which provides jurisdiction over appeals based on an action in which a party has asserted a compulsory counterclaim arising under patent laws, relying on Heinz's counterclaim of non-infringement. The Court found that even if Heinz's counterclaim were presumed compulsory, Wawrzynski's case did not meet the effective date requirement of the AIA version of § 1295 because his action commenced before September 16, 2011, upon the filing of the complaint.

Despite concluding it lacked jurisdiction over the merits of the issues on appeal, the Federal Circuit nevertheless analyzed and decided the underlying issues to complete its jurisdictional analyses, which required determining whether Wawrzynski's complaint alleged a patent issue. The Court found that the relief requested in the complaint aligned with state law claims; not a patent infringement claim. The Court explained that some of Wawrzynski's ideas and materials allegedly provided to Heinz were not found in his patent. The Court noted that its conclusion that the complaint did not present a well-pleaded patent law issue undercut the lower court's grant of summary judgment of preemption. The Court also agreed with Wawrzynski's position that there was no case or controversy remaining to support a judgment on the infringement issue.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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