[ Scalia ]
[ Opinion of Stevens ]
[ Ginsburg ]
The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Petitioner filed a federal-court action, seeking, inter alia, a declaratory judgment that its products did not infringe respondents trade dress and an injunction restraining respondent from accusing it of such infringement. Respondents answer asserted a compulsory patent-infringement counterclaim. The District Court ruled in petitioners favor. Respondent appealed to the Federal Circuit, which, notwithstanding petitioners challenge to its jurisdiction, vacated the District Courts judgment and remanded the case.
Held: The Federal Circuit cannot assert jurisdiction over a case in which the complaint does not allege a patent-law claim, but the answer contains a patent-law counterclaim. Pp. 38.
(a) The Federal Circuits jurisdiction is fixed with reference to that of the district court, 28 U.S. C. §1295(a)(1), and turns on whether the action is one arising under federal patent law, §1338(a). Because §1338(a) uses the same operative language as §1331, which confers general federal-question jurisdiction, the well-pleaded-complaint rule governing whether a case arises under §1331 also governs whether a case arises under §1338(a). As adapted to §1338(a), the rule provides that whether a case arises under patent law is determined by what appears in the plaintiffs well pleaded complaint. Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 809. Because petitioners well pleaded complaint asserted no claim arising under patent law, the Federal Circuit erred in asserting jurisdiction over this appeal. Pp. 34.
(b) The well-pleaded-complaint rule does not allow a counterclaim to serve as the basis for a district courts arising under jurisdiction. To rule otherwise would contravene the face-of-the-complaint principle set forth in this Courts prior cases, see, e.g., Caterpillar Inc. v. Williams, 482 U.S. 386, 392, and the longstanding policies furthered by that principle: It would leave acceptance or rejection of a state forum to the master of the counterclaim rather than to the plaintiff; it would radically expand the class of removable cases; and it would undermine the clarity and ease of administration of the well-pleaded-complaint doctrine. Pp. 46.
(c) As for respondents alternative argument, that reading §§1295(a)(1) and 1338(a) to confer appellate jurisdiction on the Federal Circuit whenever a patent-law counterclaim is raised is necessary to effectuate Congresss goal of promoting patent-law uniformity: This Courts task is not to determine what would further Congresss goal, but to determine what the statutes words must fairly be understood to mean. It would be impossible to say that §1338(a)s arising under language means the well-pleaded-complaint rule when read on its own, but respondents complaint-or-counterclaim rule when referred to by §1295(a)(1). Pp. 67.
13 Fed. Appx. 961, vacated and remanded.
Scalia, J., delivered the opinion of the Court, in which Rehnquist, C. J., and Kennedy, Souter, Thomas, and Breyer, JJ., joined, and in which Stevens, J., joined as to Parts I and IIA. Stevens, J., filed an opinion concurring in part and concurring in the judgment. Ginsburg, J., filed an opinion concurring in the judgment, in which OConnor, J., joined.