                                                NOT PRECEDENTIAL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).
                                           6
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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