Wawrzynski v H.J. Heinz Co.

The America Invents Act gives the Federal Circuit jurisdiction over civil actions where a party asserts a compulsory counterclaim related to patents when the civil action began after the effective date of the act.

Opinion (Plager): Wawrzynski developed and patented a condiment container. In 2008 he marketed the container to Heinz. In his promotional materials, Wawrzynski referenced his patent and stated that the design was subject to his patent. Several months later, H.J. Heinz Co. ("Heinz") released its own, similar container. In 2010, Wawrzynski filed suit against Heinz in Michigan state court. Heinz removed the case to federal court and transferred it to the Eastern District of Pennsylvania. Wawrzynski filed an amended complaint claiming breach of an implied contract and unjust enrichment. Heinz counterclaimed, alleging its product did not infringe the patent and that the patent was invalid. Wawrzynski moved to dismiss the counterclaims arguing they did not present a case or controversy because he only alleged state law claims, not patent infringement. The district court denied the motion. Heinz then moved for summary judgement arguing that Wawrzynski’s state law claims were preempted by federal patent law, which was granted. Wawrzynski appealed. The Federal Circuit has jurisdiction to hear appeals arising under Federal patent law; if the case only involves questions of state law, it does not. The America Invents Act gives the Federal Circuit jurisdiction over civil actions where a party asserts a compulsory counterclaim related to patents when the civil action began after the effective date of the act (Sep. 16, 2011). To overcome the time barrier, Wawrzynski argued that the date of Heinz’s counterclaim should control. Because the language of the statute referred to the date the action commenced, however, the Federal Circuit held that the relevant date was the date Wawrzynski filed suit, which predated the statute. Heinz argued the Court had jurisdiction because the case alleged patent infringement. The well pleaded complaint rule allows the plaintiff to avoid federal claims and choose to have his cause heard in state court. Because Wawrzynski’s complaint only contained two counts, one for breach of an implied contract, and the other for unjust enrichment, the Federal Circuit determined that his complaint did not allege a patent claim although it did reference his patent. Because the action commenced after the effective date of the America Invents Act and because Wawrzynski’s complaint did not allege a patent claim, the Federal Circuit held that it did not have jurisdiction to hear the appeal.