Facts of the Case

Vornado Air Circulation Systems, Inc., is a manufacturer of patented fans and heaters. In 1992, Vornado sued Duracraft Corp., claiming that Duracraft's use of a spiral grill design in its fans infringed Vornado's trade dress. Ultimately, the Court of Appeals found that Vornado had no protectible trade-dress rights in the grill design. Later, Vornado filed a complaint with the U.S. International Trade Commission, claiming that Holmes Group, Inc.'s sale of fans and heaters with a spiral grill design infringed Vornado's trade dress. Subsequently, Holmes filed a federal-court action, seeking a declaratory judgment that its products did not infringe Vornado's trade dress and an injunction restraining Vornado from accusing it of such infringement. In response, Vornado asserted a compulsory patent-infringement counterclaim. The District Court ruled in Holmes's favor. Vornado appealed to the Court of Appeals for the Federal Circuit, which, notwithstanding Holmes's challenge to its jurisdiction, vacated the District Court's judgment and remanded the case.

Question

Does the Court of Appeals for the Federal Circuit have 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?

Conclusion

No. In a 9-0 opinion delivered by Justice Antonin Scalia, the Court held that the appellate could not assert jurisdiction over such a case. Noting that the Court of Appeals for the Federal Circuit's jurisdiction is fixed and turns on whether an action is one arising under federal patent law, the Court reasoned that because the complaint asserted no claim arising under patent law, the court erred in asserting jurisdiction over the appeal. "By limiting the Federal Circuit's jurisdiction to cases in which district courts would have jurisdiction...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 plaintiff's...complaint. Because [Holmes's] complaint did not include any claim based on patent law, we vacate the judgment of the Federal Circuit," wrote Justice Scalia.