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

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826 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 declara-
tory 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 patent-
infringement counterclaim. The District Court ruled in petitioner’s
favor. Respondent appealed to the Federal Circuit, which, notwith-
standing 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 con-
tains 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. Wil-
liams, 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 clar-
ity and ease of administration of the well-pleaded-complaint doctrine.
Pp. 830–832.

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827 Cite as: 535 U. S. 826 (2002)
Opinion of the Court
(c) As for respondent’s 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 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-counterclaim rule when referred to by
§ 1295(a)(1). 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’Con-
nor, J., joined, post, p. 839.
James W. Dabney argued the cause for petitioner. With
him on the brief were Paul Izzo, Timothy P. Gallogly, Ar-
thur 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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828 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of the Court
respondent sued a competitor, Duracraft Corp., claiming that
Duracraft’s use of a “spiral grill design” in its fans infringed
respondent’s trade dress. The Court of Appeals for the
Tenth Circuit found for Duracraft, holding that Vornado had
no protectable trade-dress rights in the grill design. See
Vornado Air Circulation Systems, Inc. v. Duracraft Corp.,
58 F. 3d 1498 (1995) (Vornado I).
Nevertheless, on November 26, 1999, respondent lodged a
complaint with the United States International Trade Com-
mission against petitioner, The Holmes Group, Inc., claiming
that petitioner’s sale of fans and heaters with a spiral grill
design infringed respondent’s patent and the same trade
dress held unprotectable in Vornado I. Several weeks later,
petitioner filed this action against respondent in the United
States District Court for the District of Kansas, seeking,
inter alia, a declaratory judgment that its products did not
infringe respondent’s trade dress and an injunction restrain-
ing respondent from accusing it of trade-dress infringement
in promotional materials. Respondent’s answer asserted a
compulsory counterclaim alleging patent infringement.
The District Court granted petitioner the declaratory
judgment and injunction it sought. 93 F. Supp. 2d 1140
(Kan. 2000). The court explained that the collateral-
estoppel effect of Vornado I precluded respondent from relit-
igating its claim of trade-dress rights in the spiral grill
design. It rejected respondent’s contention that an inter-
vening Federal Circuit case, Midwest Industries, Inc. v. Kar-
avan Trailers, Inc., 175 F. 3d 1356 (1999), which disagreed
with the Tenth Circuit’s reasoning in Vornado I, constituted
a change in the law of trade dress that warranted relitigation
of respondent’s trade-dress claim. The court also stayed all
proceedings related to respondent’s counterclaim, adding
that the counterclaim would be dismissed if the declaratory
judgment and injunction entered in favor of petitioner were
affirmed on appeal.

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829 Cite as: 535 U. S. 826 (2002)
Opinion of the Court
Respondent appealed to the Court of Appeals for the Fed-
eral Circuit. Notwithstanding petitioner’s challenge to its
jurisdiction, the Federal Circuit vacated the District Court’s
judgment, 13 Fed. Appx. 961 (2001), and remanded for con-
sideration of whether the “change in the law” exception to
collateral estoppel applied in light of TrafFix Devices, Inc.
v. Marketing Displays, Inc., 532 U. S. 23 (2001), a case de-
cided after the District Court’s judgment which resolved a
Circuit split involving Vornado I and Midwest Industries.
We granted certiorari to consider whether the Federal Cir-
cuit properly asserted jurisdiction over the appeal. 534
U. S. 1016 (2001).
II
Congress vested the Federal Circuit with exclusive juris-
diction over “an appeal from a final decision of a district
court of the United States . . . if the jurisdiction of that court
was based, in whole or in part, on [28 U. S. C. § ] 1338 . . . .”
28 U. S. C. § 1295(a)(1) (emphasis added). Section 1338(a), in
turn, provides in relevant part that “[t]he district courts
shall have original jurisdiction of any civil action arising
under any Act of Congress relating to patents . . . .” Thus,
the Federal Circuit’s jurisdiction is fixed with reference to
that of the district court, and turns on whether the action
arises under federal patent law.1
Section 1338(a) uses the same operative language as
28 U. S. C. § 1331, the statute conferring general federal-
question jurisdiction, which gives the district courts “origi-
nal jurisdiction of all civil actions arising under the Consti-
tution, laws, or treaties of the United States.” (Emphasis
added.) We said in Christianson v. Colt Industries Operat-
1 Like Christianson v. Colt Industries Operating Corp., 486 U. S. 800,
814–815 (1988), this case does not call upon us to decide whether the Fed-
eral Circuit’s jurisdiction is fixed with reference to the complaint as ini-
tially filed or whether an actual or constructive amendment to the com-
plaint raising a patent-law claim can provide the foundation for the
Federal Circuit’s jurisdiction.

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830 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of the Court
ing Corp., 486 U. S. 800, 808 (1988), that “[l]inguistic consist-
ency” requires us to apply the same test to determine
whether a case arises under § 1338(a) as under § 1331.
The well-pleaded-complaint rule has long governed
whether a case “arises under” federal law for purposes of
§ 1331.2 See, e. g., Phillips Petroleum Co. v. Texaco Inc., 415
U. S. 125, 127–128 (1974) (per curiam). As “appropriately
adapted to § 1338(a),” the well-pleaded-complaint rule pro-
vides that whether a case “arises under” patent law “must be
determined from what necessarily appears in the plaintiff ’s
statement of his own claim in the bill or declaration . . . .”
Christianson, 486 U. S., at 809 (internal quotation marks
omitted). The plaintiff ’s well-pleaded complaint must “es-
tablis[h] either that federal patent law creates the cause
of action or that the plaintiff ’s right to relief necessarily
depends on resolution of a substantial question of federal
patent law . . . .” Ibid. Here, it is undisputed that petition-
er’s well-pleaded complaint did not assert any claim arising
under federal patent law. The Federal Circuit therefore
erred in asserting jurisdiction over this appeal.
A
Respondent argues that the well-pleaded-complaint rule,
properly understood, allows a counterclaim to serve as the
basis for a district court’s “arising under” jurisdiction. We
disagree.
2 The well-pleaded-complaint rule also governs whether a case is remov-
able from state to federal court pursuant to 28 U. S. C. § 1441(a), which
provides in relevant part:
“Except as otherwise expressly provided by Act of Congress, any civil
action brought in a State court of which the district courts of the United
States have original jurisdiction, may be removed by the defendant or the
defendants, to the district court of the United States for the district and
division embracing the place where such action is pending.”
See Franchise Tax Bd. of Cal. v. Construction Laborers Vacation Trust
for Southern Cal., 463 U. S. 1 (1983).

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831 Cite as: 535 U. S. 826 (2002)
Opinion of the Court
Admittedly, our prior cases have only required us to ad-
dress whether a federal defense, rather than a federal coun-
terclaim, can establish “arising under” jurisdiction. Never-
theless, those cases were decided on the principle that
federal jurisdiction generally exists “only when a federal
question is presented on the face of the plaintiff ’s properly
pleaded complaint.” Caterpillar Inc. v. Williams, 482 U. S.
386, 392 (1987) (emphasis added). As we said in The Fair v.
Kohler Die & Specialty Co., 228 U. S. 22, 25 (1913), whether
a case arises under federal patent law “cannot depend upon
the answer.” Moreover, we have declined to adopt propos-
als that “the answer as well as the complaint . . . be consulted
before a determination [is] made whether the case ‘ar[ises]
under’ federal law . . . .” Franchise Tax Bd. of Cal. v. Con-
struction Laborers Vacation Trust for Southern Cal., 463
U. S. 1, 10–11, n. 9 (1983) (citing American Law Institute,
Study of the Division of Jurisdiction Between State and Fed-
eral Courts § 1312, pp. 188–194 (1969)). It follows that
a counterclaim—which appears as part of the defendant’s an-
swer, not as part of the plaintiff ’s complaint—cannot serve
as the basis for “arising under” jurisdiction. See, e. g.,
In re Adams, 809 F. 2d 1187, 1188, n. 1 (CA5 1987); FDIC
v. Elefant, 790 F. 2d 661, 667 (CA7 1986); Takeda v. North-
western National Life Ins. Co., 765 F. 2d 815, 822 (CA9 1985);
14B C. Wright, A. Miller, & E. Cooper, Federal Practice and
Procedure § 3722, pp. 402–414 (3d ed. 1998).
Allowing a counterclaim to establish “arising under” ju-
risdiction would also contravene the longstanding policies
underlying our precedents. First, since the plaintiff is
“the master of the complaint,” the well-pleaded-complaint
rule enables him, “by eschewing claims based on federal
law, . . . to have the cause heard in state court.” Caterpillar
Inc., supra, at 398–399. The rule proposed by respondent,
in contrast, would leave acceptance or rejection of a state
forum to the master of the counterclaim. It would allow a

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832 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of the Court
defendant to remove a case brought in state court under
state law, thereby defeating a plaintiff ’s choice of forum,
simply by raising a federal counterclaim. Second, confer-
ring this power upon the defendant would radically expand
the class of removable cases, contrary to the “[d]ue regard
for the rightful independence of state governments” that our
cases addressing removal require. See Shamrock Oil & Gas
Corp. v. Sheets, 313 U. S. 100, 109 (1941) (internal quotation
marks omitted). And finally, allowing responsive pleadings
by the defendant to establish “arising under” jurisdiction
would undermine the clarity and ease of administration
of the well-pleaded-complaint doctrine, which serves as a
“quick rule of thumb” for resolving jurisdictional conflicts.
See Franchise Tax Bd., supra, at 11.
For these reasons, we decline to transform the long-
standing well-pleaded-complaint rule into the “well-pleaded-
complaint-or-counterclaim rule” urged by respondent.
B
Respondent argues, in the alternative, that even if a coun-
terclaim generally cannot establish the original “arising
under” jurisdiction of a district court, we should interpret
the phrase “arising under” differently in ascertaining the
Federal Circuit’s jurisdiction. In respondent’s view, effectu-
ating Congress’s goal of “promoting the uniformity of patent
law,” Brief for Respondent 21, requires us to interpret
§§ 1295(a)(1) and 1338(a) to confer exclusive appellate juris-
diction on the Federal Circuit whenever a patent-law coun-
terclaim is raised.3
3 Echoing a variant of this argument, Justice Ginsburg contends that
“giv[ing] effect” to Congress’s intention “to eliminate forum shopping and
to advance uniformity in . . . patent law” requires that the Federal Circuit
have exclusive jurisdiction whenever a patent claim was “actually adjudi-
cated.” Post, at 840 (opinion concurring in judgment). We rejected pre-
cisely this argument in Christianson, viz., the suggestion that the Federal

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833 Cite as: 535 U. S. 826 (2002)
Opinion of the Court
We do not think this option is available. Our task here
is not to determine what would further Congress’s goal of
ensuring patent-law uniformity, but to determine what
the words of the statute must fairly be understood to mean.
It would be difficult enough to give “arising under” the
meaning urged by respondent if that phrase appeared
in § 1295(a)(1)—the jurisdiction-conferring statute—itself.
Cf. Economic Stabilization Act of 1970, § 211(b)(2), 85 Stat.
749 (providing the Temporary Emergency Court of Appeals
with exclusive jurisdiction over appeals “in cases and contro-
versies arising under this title”). Even then the phrase
would not be some neologism that might justify our advert-
ing to the general purpose of the legislation, but rather a
term familiar to all law students as invoking the well-
pleaded-complaint rule. Cf. Coastal States Marketing, Inc.
v. New England Petroleum Corp., 604 F. 2d 179, 183 (CA2
1979) (“The use of the phrase ‘cases and controversies arising
under’ . . . is strong evidence that Congress intended to bor-
row the body of decisional law that has developed under 28
U. S. C. § 1331 and other grants of jurisdiction to the district
courts over cases ‘arising under’ various regulatory stat-
utes”). But the present case is even weaker than that, since
§ 1295(a)(1) does not itself use the term, but rather refers to
jurisdiction under § 1338, where it is well established that
“arising under any Act of Congress relating to patents”
invokes, specifically, the well-pleaded-complaint rule. It
would be an unprecedented feat of interpretive necromancy
to say that § 1338(a)’s “arising under” language means one
thing (the well-pleaded-complaint rule) in its own right,
Circuit’s jurisdiction is “fixed ‘by reference to the case actually litigated.’ ”
486 U. S., at 813 (quoting Brief for Respondent in Christianson v. Colt
Industries Operating Corp., O. T. 1987, No. 87–499, p. 31). We held that
the Federal Circuit’s jurisdiction, like that of the district court, “is deter-
mined by reference to the well-pleaded complaint, not the well-tried case.”
486 U. S., at 814.

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834 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of Stevens, J.
but something quite different (respondent’s complaint-or-
counterclaim rule) when referred to by § 1295(a)(1).4
* * *
Not all cases involving a patent-law claim fall within
the Federal Circuit’s jurisdiction. By limiting the Federal
Circuit’s jurisdiction to cases in which district courts would
have jurisdiction under § 1338, Congress referred to a well-
established body of law that requires courts to consider
whether a patent-law claim appears on the face of the plain-
tiff ’s well-pleaded complaint. Because petitioner’s com-
plaint did not include any claim based on patent law, we
vacate the judgment of the Federal Circuit and remand
the case with instructions to transfer the case to the Court
of Appeals for the Tenth Circuit. See 28 U. S. C. § 1631.
It is so ordered.
Justice Stevens, concurring in part and concurring in
the judgment.
The Court correctly holds that the exclusive jurisdiction
of the Court of Appeals for the Federal Circuit in patent
4 Although Justice Stevens agrees that a correct interpretation of
§ 1295(a)(1) does not allow a patent-law counterclaim to serve as the basis
for the Federal Circuit’s jurisdiction, he nevertheless quibbles that “there
is well-reasoned precedent” supporting the contrary conclusion. See post,
at 835 (opinion concurring in part and concurring in judgment). There is
not. The cases relied upon by Justice Stevens and by the court in
Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895
F. 2d 736 (CA Fed. 1990), simply address whether a district court can
retain jurisdiction over a counterclaim if the complaint (or a claim therein)
is dismissed or if a jurisdictional defect in the complaint is identified.
They do not even mention the well-pleaded-complaint rule that the statu-
tory phrase “arising under” invokes. Nor do any of these cases interpret
§ 1295(a)(1) or another statute conferring appellate jurisdiction with refer-
ence to the jurisdiction of the district court. Thus, the cases relied upon
by Justice Stevens have no bearing on whether the phrase “arising
under” can be interpreted differently in ascertaining the jurisdiction of
the Federal Circuit than that of the district court.

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835 Cite as: 535 U. S. 826 (2002)
Opinion of Stevens, J.
cases is “fixed with reference to that of the district court,”
ante, at 829. It is important to note the general rule, how-
ever, that the jurisdiction of the court of appeals is not
“fixed” until the notice of appeal is filed. See Griggs v.
Provident Consumer Discount Co., 459 U. S. 56, 58–59 (1982)
(per curiam) (“The filing of a notice of appeal is an event
of jurisdictional significance—it confers jurisdiction on the
court of appeals and divests the district court of its control
over those aspects of the case involved in the appeal”).
Thus, if a case began as an antitrust case, but an amend-
ment to the complaint added a patent claim that was pending
or was decided when the appeal is taken, the jurisdiction of
the district court would have been based “in part” on 28
U. S. C. § 1338(a), and therefore § 1295(a)(1) would grant the
Federal Circuit jurisdiction over the appeal. Conversely, if
the only patent count in a multicount complaint was volun-
tarily dismissed in advance of trial, it would seem equally
clear that the appeal should be taken to the appropriate re-
gional court of appeals rather than to the Federal Circuit.
See Christianson v. Colt Industries Operating Corp., 486
U. S. 800, 823–824 (1988) (Stevens, J., concurring). Any
other approach “would enable an unscrupulous plaintiff to
manipulate appellate court jurisdiction by the timing of the
amendments to its complaint.” Id., at 824. To the extent
that the Court’s opinion might be read as endorsing a con-
trary result by reason of its reliance on cases involving the
removal jurisdiction of the district court, I do not agree
with it.
I also do not agree with the Court’s statement that an
interpretation of the “in whole or in part” language of
§ 1295(a)(1) to encompass patent claims alleged in a compul-
sory counterclaim providing an independent basis for the dis-
trict court’s jurisdiction would be a “neologism” that would
involve “an unprecedented feat of interpretive necromancy,”
ante, at 833. For there is well-reasoned precedent support-
ing precisely that conclusion. See Aerojet-General Corp. v.

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836 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of Stevens, J.
Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F. 2d 736,
742–743 (CA Fed. 1990) (en banc) (opinion of Markey, C. J.,
for a unanimous court) (citing, e. g., Rengo Co. v. Molins Ma-
chine Co., 657 F. 2d 535, 539 (CA3 1981); Dale Electronics,
Inc. v. R. C. L. Electronics, Inc., 488 F. 2d 382, 390 (CA1
1973); Pioche Mines Consol., Inc. v. Fidelity-Philadelphia
Trust Co., 206 F. 2d 336, 336–337 (CA9 1953); Lion Mfg. Corp.
v. Chicago Flexible Shaft Co., 106 F. 2d 930, 933 (CA7 1939)). 1
I am nevertheless persuaded that a correct interpretation of
§ 1295(a)(1) limits the Federal Circuit’s exclusive jurisdiction
to those cases in which the patent claim is alleged in either
the original complaint or an amended pleading filed by the
1 The Court dismisses the cases cited in Aerojet, a unanimous opinion
for an en banc Federal Circuit, as having “no bearing” on this case because
they do not parse the term “arising under” or interpret 28 U. S. C.
§ 1295(a)(1). Ante, at 834, n. 4. But surely it is not a “quibbl[e]” to ac-
knowledge them as supporting the Aerojet court’s conclusion that the ju-
risdiction of the district court can be based on a patent counterclaim,
thereby satisfying the “in whole or in part” requirement of § 1295(a)(1).
In any event, the assertion that only the power of black magic could
give “arising under” a different meaning with respect to appellate jurisdic-
tion is belied by case law involving the Temporary Emergency Court of
Appeals (TECA), which had exclusive jurisdiction over appeals in cases
“arising under” the Economic Stabilization Act of 1970 (ESA), § 211(b)(2),
85 Stat. 749. Most courts departed from the traditional understanding
of “arising under” and interpreted the statute to grant TECA appellate
jurisdiction over ESA issues, including those raised as a defense. Courts
nevertheless interpreted the statute’s identical language respecting the
district courts to grant traditional “arising under” jurisdiction. See
Coastal States Marketing, Inc. v. New England Petroleum Corp., 604 F. 2d
179, 185–186 (CA2 1979) (“It must be candidly recognized that according
the TECA some form of ‘issue’ jurisdiction places on the phrase, ‘cases
and controversies arising under,’ . . . a construction that differs from the
meaning associated with these words in other jurisdictional statutes, and
differs even from the grant of jurisdiction to the district courts in [the
ESA]”). Thus, although I am in agreement with the Court’s ultimate de-
cision not to determine appellate jurisdiction by reference to the defend-
ant’s patent counterclaim, I find it unnecessary and inappropriate to slight
the contrary reasoning of the Court of Appeals.

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Opinion of Stevens, J.
plaintiff. In my judgment, each of the three policies that
the Court has identified as supporting the “well-pleaded-
complaint” rule governing district court jurisdiction, ante, at
831–832, points in the same direction with respect to appel-
late jurisdiction.
First, the interest in preserving the plaintiff ’s choice of
forum includes not only the court that will conduct the trial
but the appellate court as well. A plaintiff who has a legiti-
mate interest in litigating in a circuit whose precedents sup-
port its theory of the case might omit a patent claim in order
to avoid review in the Federal Circuit. In some cases that
interest would be defeated by a rule that allowed a patent
counterclaim to determine the appellate forum.
Second, although I doubt that a rule that enabled the coun-
terclaimant to be the occasional master of the appellate
forum “would radically expand” the number of cases heard
by the Federal Circuit, ante, at 832, we must recognize that
the exclusive jurisdiction of the Federal Circuit defined in
§ 1295(a)(1) does not comprise claims arising under the trade-
mark and copyright laws, which are included in the district
court’s grant of jurisdiction under § 1338(a). 2 As the instant
litigation demonstrates, claims sounding in these other areas
of intellectual property law are not infrequently bound up
with patent counterclaims. The potential number of cases
in which a counterclaim might direct to the Federal Circuit
appeals that Congress specifically chose not to place within
its exclusive jurisdiction is therefore significant.
Third, the interest in maintaining clarity and simplicity in
rules governing appellate jurisdiction will be served by lim-
2 The statute grants the Federal Circuit “exclusive jurisdiction . . . if the
jurisdiction of [the district] court was based, in whole or in part, on [28
U. S. C.] section 1338 . . . , except that a case involving a claim arising
under any Act of Congress relating to copyrights, exclusive rights in mask
works, or trademarks and no other claims under section 1338(a) shall
be governed” by provisions relating to appeals to the regional courts of
appeals. 28 U. S. C. § 1295(a)(1).

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838 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Opinion of Stevens, J.
iting the number of pleadings that will mandate review in
the Federal Circuit. In his opinion in Aerojet, Chief Judge
Markey merely held that a counterclaim for patent infringe-
ment that was “compulsory” and not “frivolous” or “insub-
stantial” sufficed to establish jurisdiction; he made a point of
noting that there was no assertion in the case that the patent
counterclaim at issue had been filed “to manipulate the juris-
diction of [the Federal Circuit].” 895 F. 2d, at 738. The
text of the statute, however, would not seem to distinguish
between that counterclaim and those that are permissive,
insubstantial, or manipulative, and there is very good reason
not to make the choice of appellate forum turn on such dis-
tinctions. Requiring assessment of a defendant’s motive in
raising a patent counterclaim or the counterclaim’s relative
strength wastes judicial resources by inviting “unhappy
interactions between jurisdiction and the merits.” Kennedy
v. Wright, 851 F. 2d 963, 968 (CA7 1988).
There is, of course, a countervailing interest in directing
appeals in patent cases to the specialized court that was cre-
ated, in part, to promote uniformity in the development of
this area of the law. But we have already decided that the
Federal Circuit does not have exclusive jurisdiction over all
cases raising patent issues. 3 Christianson, 486 U. S., at
3 In explicit contrast with the TECA, see n. 1, supra, the Federal Circuit
was granted appellate jurisdiction over cases involving patent law claims,
not issues. See Christianson v. Colt Industries Operating Corp., 486
U. S. 800, 820–821, n. 1 (1988) (Stevens, J., concurring) (quoting H. R.
Rep. No. 97–312, p. 41 (1981)) (“Cases will be within the jurisdiction of the
Court of Appeals for the Federal Circuit in the same sense that cases are
said to ‘arise under’ federal law for purposes of federal question jurisdic-
tion. Contrast, Coastal States Marketing, Inc. v. New England Petro-
leum Corp., 604 F. 2d 179 (2d Cir., 1979) [Temporary Emergency Court of
Appeals properly has jurisdiction over issues, not claims, arising under
the Economic Stabilization Act]” (internal quotation marks omitted)).
Considerations of convenience to the parties and the courts support Con-
gress’ decision to determine the Federal Circuit’s appellate jurisdiction
based on the claims alleged in the well-pleaded complaint rather than the
issues resolved by the district court’s judgment. If, for example, the dis-

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839 Cite as: 535 U. S. 826 (2002)
Ginsburg, J., concurring in judgment
811–812. Necessarily, therefore, other circuits will have
some role to play in the development of this area of the law.
An occasional conflict in decisions may be useful in identify-
ing questions that merit this Court’s attention. Moreover,
occasional decisions by courts with broader jurisdiction will
provide an antidote to the risk that the specialized court may
develop an institutional bias. 4
In sum, I concur in the Court’s judgment and join Parts I
and II–A of its opinion.
Justice Ginsburg, with whom Justice O’Connor joins,
concurring in the judgment.
For reasons stated by Chief Judge Markey, writing for a
unanimous en banc Federal Circuit in Aerojet-General Corp.
v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F. 2d
736 (1990), I conclude that, when the claim stated in a com-
pulsory counterclaim “aris[es] under” federal patent law and
is adjudicated on the merits by a federal district court, the
Federal Circuit has exclusive appellate jurisdiction over that
adjudication and other determinations made in the same
case. See id., at 741–744 (distinguishing Christianson v.
Colt Industries Operating Corp., 486 U. S. 800 (1988), in
which this Court affirmed the jurisdictional decision of the
Federal Circuit; in discussing the “well-pleaded complaint
rule,” the Federal Circuit observed that a patent infringe-
trict court’s judgment rests on multiple grounds, directing the appeal is a
relatively straightforward matter by reference to the complaint. As
Judge Easterbrook explains in Kennedy v. Wright, 851 F. 2d 963 (CA7
1988), fixing appellate jurisdiction with respect to the complaint also en-
sures that a case that has been appealed and remanded will return to the
same appellate court if there is a subsequent appeal. Id., at 968 (describ-
ing the risk of “a game of jurisdictional ping-pong” if subsequent appeals
are directed based on the grounds for decision rather than the pleadings).
4 See Dreyfuss, The Federal Circuit: A Case Study in Specialized
Courts, 64 N. Y. U. L. Rev. 1, 25–30, 54 (1989) (evaluating criticism that
the Federal Circuit demonstrates a greater pro-patent bias than regional
circuits).

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840 HOLMES GROUP, INC. v. VORNADO AIR
CIRCULATION SYSTEMS, INC.
Ginsburg, J., concurring in judgment
ment counterclaim, unlike a patent issue raised only as a de-
fense, has as its own, independent jurisdictional base 28
U. S. C. § 1338, i. e., such a claim discretely “arises under the
patent laws”).
The question now before this Court bears not at all on a
plaintiff ’s choice of trial forum. The sole question presented
here concerns Congress’ allocation of adjudicatory authority
among the federal courts of appeals. At that appellate level,
Congress sought to eliminate forum shopping and to advance
uniformity in the interpretation and application of federal
patent law. See generally Dreyfuss, The Federal Circuit:
A Case Study in Specialized Courts, 64 N. Y. U. L. Rev. 1,
30–37 (1989).
The Court’s opinion dwells on district court authority.
See ante, at 829–832. But, all agree, Congress left that au-
thority entirely untouched. I would attend, instead, to the
unique context at issue, and give effect to Congress’ en-
deavor to grant the Federal Circuit exclusive appellate juris-
diction at least over district court adjudications of patent
claims. See Dreyfuss, supra, at 36.
In the instant case, however, no patent claim was actu-
ally adjudicated. For that sole reason, I join the Court’s
judgment.

Job: 535ORD Take: NOT1 Date/Time: 09-11-03 14:14:42
Reporter’s Note
The next page is purposely numbered 901. The numbers between 840
and 901 were intentionally omitted, in order to make it possible to publish
the orders with permanent page numbers, thus making the official cita-
tions available upon publication of the preliminary prints of the United
States Reports.