2014 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

7-21-2014

David Wawrzynski v. HJ Heinz Co

Precedential or Non-Precedential: Non-Precedential

Docket No. 13-4100

Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_2014

This decision is brought to you for free and open access by the Opinions of the United States Court of Appeals for the Third Circuit at Villanova

University School of Law Digital Repository. It has been accepted for inclusion in 2014 Decisions by an authorized administrator of Villanova

University School of Law Digital Repository. For more information, please contact Benjamin.Carlson@law.villanova.edu.

Recommended Citation

"David Wawrzynski v. HJ Heinz Co" (2014). 2014 Decisions. Paper 750.

http://digitalcommons.law.villanova.edu/thirdcircuit_2014/750
NOT PRECEDENTIAL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.
2

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 tearaway 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 
3

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 
4

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 
5

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 
6

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).
7

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 noninfringement on the ‘990 Patent. Based on its prior holding that Wawrzynski’s

claims were preempted by patent law, and reasoning that there existed “conflicting 
8

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.