Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc. - 535 U.S. 826 (2002)


OCTOBER TERM, 2001

Syllabus

HOLMES GROUP, INC. v. VORNADO AIR CIRCULATION SYSTEMS, INC.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

No. 01-408. Argued March 19, 2002-Decided June 3, 2002

Petitioner filed a federal-court action, seeking, inter alia, a declaratory judgment that its products did not infringe respondent's trade dress and an injunction restraining respondent from accusing it of such infringement. Respondent's answer asserted a compulsory patentinfringement counterclaim. The District Court ruled in petitioner's favor. Respondent appealed to the Federal Circuit, which, notwithstanding petitioner's challenge to its jurisdiction, vacated the District Court's 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. 829-834.

(a) The Federal Circuit's 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 plaintiff's well-pleaded complaint. Christianson v. Colt Industries Operating Corp., 486 U. S. 800, 809. Because petitioner's well-pleaded complaint asserted no claim arising under patent law, the Federal Circuit erred in asserting jurisdiction over this appeal. Pp. 829-830.

(b) The well-pleaded-complaint rule does not allow a counterclaim to serve as the basis for a district court's "arising under" jurisdiction. To rule otherwise would contravene the face-of-the-complaint principle set forth in this Court's 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. 830-832.


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(c) As for respondent's alternative argument, that reading §§ 1295(a)(I) and 1338(a) to confer appellate jurisdiction on the Federal Circuit whenever a patent-law counterclaim is raised is necessary to effectuate Congress's goal of promoting patent-law uniformity: This Court's task is not to determine what would further Congress's goal, but to determine what the statute's 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 respondent's complaint-or-counterc1aim rule when referred to by § 1295(a)(I). Pp. 832-834.

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 II-A. STEVENS, J., filed an opinion concurring in part and concurring in the judgment, post, p. 834. GINSBURG, J., filed an opinion concurring in the judgment, in which O'CONNOR, J., joined, post, p. 839.

James W Dabney argued the cause for petitioner. With him on the brief were Paul Izzo, Timothy P. Gallogly, Arthur R. Miller, Marcia H. Sundeen, and Carol M. Wilhelm.

Peter W Gowdey argued the cause for respondent. With him on the brief were Christopher P. Murphy, Janine A. Carlan, Kenneth W Starr, and Daryl L. Joseffer. *

JUSTICE SCALIA delivered the opinion of the Court.

In this case, we address whether the Court of Appeals for the Federal Circuit has appellate jurisdiction over a case in which the complaint does not allege a claim arising under federal patent law, but the answer contains a patent-law counterclaim.

I

Respondent, Vornado Air Circulation Systems, Inc., is a manufacturer of patented fans and heaters. In late 1992,

* David W Long filed a brief for the Patent, Trademark, and Copyright Section of the Bar Association of the District of Columbia as amicus curiae.


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Full Text of Opinion

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