stating that “a counterclaim – which 18 appears as part of the defendant’s answer, not as part of the plaintiff’s complaint – cannot serve as 19 the basis for [federal question] jurisdiction”; declining to “transform the longstanding well- 20 pleaded-complaint rule into the ‘well-pleaded-complaint-or-counterclaim rule’”
How later courts described this case
- stating that “a counterclaim – which 18 appears as part of the defendant’s answer, not as part of the plaintiff’s complaint – cannot serve as 19 the basis for [federal question] jurisdiction”; declining to “transform the longstanding well- 20 pleaded-complaint rule into the ‘well-pleaded-complaint-or-counterclaim rule’”
- holding that “ ‘[Ijinguistic consistency’ ” required that the same “arising under” test be applied to the jurisdictional statute for patent claims, 28 U.S.C. § 1338(a), as is used for the general federal jurisdiction statute, 28 U.S.C. § 1331
- holding that “‘[l]inguistic consistency’” required that the same “arising under” test be applied to the jurisdictional statute for patent claims, 28 U.S.C. § 1338 (a), as is used for the general federal jurisdiction statute, 28 U.S.C. § 1331
- holding that a federal defense cannot establish federal jurisdiction, and also “declin[ing] to transform the longstanding well-pleaded-complaint rule into the ‘well-pleaded-complaint-or-counterclaim rule’”
Written by the judges who cited it.
The 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 compulsory 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 *840 ment counterclaim, unlike a patent issue raised only as a defense, 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 authority entirely untouched. I would attend, instead, to the unique context at issue, and give effect to Congress’ endeavor to grant the Federal Circuit exclusive appellate jurisdiction at least over district court adjudications of patent claims. See Dreyfuss, supra, at 36.
In the instant case, however, no patent claim was actually adjudicated. For that sole reason, I join the Court’s judgment.