The Federal Circuit Court of Appeals has determined that the law in effect before the America Invents Act (AIA) was enacted applied to a dispute filed before that date, and, under the pre-AIA version of 28 U.S.C. § 1295, because the complaint did not arise under patent law, the Federal Circuit lacked jurisdiction to decide whether a district court properly entered summary judgment on patent infringement, an issue raised in the counterclaim. Wawrzynski v. H.J. Heinz Co., No. 2012-1624 (Fed. Cir., decided September 6, 2013). So ruling, the court ordered a transfer of the appeal to the Third Circuit, observing that nothing in federal patent law stood in the way of the plaintiff’s pursuit of his state law-based claims.
The issue arose in a case filed by a man who allegedly shared a packaging and marketing concept with a condiment manufacturer that later informed him it was not interested in pursuing his product ideas. After the company released packaging purportedly similar to the plaintiff’s concept, he filed a lawsuit against it in state court alleging breach of an implied contract and unjust enrichment. In a counterclaim, the company alleged that it did not infringe the plaintiff’s patent and that the patent was invalid. The plaintiff answered the counterclaim by stating that he had not sued the company for patent infringement, and he subsequently covenanted not to sue the company on the basis of the patent. Still, the federal district court, to which the case had ultimately been removed and transferred, granted the company’s motion that the state law-based claims were preempted by federal patent law and its motion for summary judgment on its counterclaim of non-infringement.
The Federal Circuit rejected the plaintiff’s argument that it could exercise jurisdiction under the post-AIA version of § 1295, which gives federal courts jurisdiction over appeals based on a civil action “in which a party has asserted a compulsory counterclaim arising under any Act of Congress relating to patents.” According to the court, the date the complaint was filed, and not the date on which the counterclaim was filed, determined whether the AIA version of the law applied.
The court also rejected the defendants’ argument that, even under the pre-AIA version of the law, the court had jurisdiction, because, in the company’s view, the complaint was based on the plaintiff’s assertion of his patent against it. The court found that the complaint (i) did not once use the words “infringe,” “infringed,” “infringement,” “infringer,” or “infringing”; (ii) asserted state-law claims and sought state law-based damages; (iii) was not replete with references to the plaintiff’s patent; (iv) relied on marketing ideas not included in the patent; and (v) was filed in state court, “not in federal court where he would have filed if he wanted to assert patent infringement.”