535 U.S. 826 (2002)
Vornado Air Circulation Systems, Inc., is a manufacturer of patented fans and heaters.1 In late 1992, Vornado sued a competitor, Duracraft Corp., claiming that Duracraft’s use of a spiral grill design in its fans infringed Vornado’s trade dress.2 The Court of Appeals for the Tenth Circuit found for Duracraft, holding that Vornado had no protectable trade-dress rights in the grill design.3
On November 26, 1999, Vornado lodged a complaint with the United States International Trade Commission against The Holmes Group, Inc., claiming that Holmes’s sale of fans and heaters with a spiral grill design infringed Vornado’s patent and the same trade dress held unprotectable in the prior case.4 Several weeks later, Holmes filed an action against Vornado in the United States District Court for the District of Kansas, seeking a declaratory judgment that its products did not infringe Vornado’s trade dress and an injunction restraining Vornado from accusing it of trade-dress infringement in promotional materials.5 Vornado’s answer asserted a compulsory counterclaim alleging patent infringement.6
The District Court granted Holmes the declaratory judgment and injunction it sought in a reported decision.7 The court stayed all proceedings related to Vornado’s counterclaim, adding that the counterclaim would be dismissed if the declaratory judgment and injunction entered in favor of Holmes were affirmed on appeal.8 Vornado appealed to the Court of Appeals for the Federal Circuit.9
Notwithstanding Holmes’s challenge to its jurisdiction, the Federal Circuit vacated the District Court’s judgment and remanded the case for further consideration.10 The Supreme Court granted certiorari to consider whether the Federal Circuit properly asserted jurisdiction over the appeal.11 The case reached the Supreme Court in 2001 and was decided the following year.12
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?13
Under 28 U.S.C. § 1295(a)(1), the Federal Circuit possesses exclusive jurisdiction over an appeal from a final district court decision if the district court's jurisdiction was based in whole or in part on 28 U.S.C. § 1338.14 Section 1338(a) confers district court jurisdiction over civil actions arising under federal patent laws.15 Linguistic consistency requires application of the same well-pleaded-complaint test used for general federal-question jurisdiction under 28 U.S.C. § 1331.16 That test asks whether the plaintiff's well-pleaded complaint establishes 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.17 A counterclaim, appearing only in the defendant's answer, cannot serve as the basis for arising-under jurisdiction.18
No. Holmes filed its complaint in the District of Kansas seeking only a declaratory judgment of noninfringement of Vornado's trade dress together with an injunction against further trade-dress accusations.19 Vornado responded with a compulsory counterclaim alleging patent infringement.20 Because Holmes's complaint presented no patent claim on its face, the district court's jurisdiction rested solely on the declaratory-judgment statute and not on § 1338.21 The Federal Circuit therefore lacked appellate jurisdiction under § 1295(a)(1) and should have transferred the appeal to the Tenth Circuit.22
The Federal Circuit erred in asserting jurisdiction over the appeal.23
Related opinions on this issue
Justice Stevens concurs in the judgment and joins Parts I and II-A of the opinion.24 He notes that appellate jurisdiction is not fixed until the notice of appeal is filed.25 An amendment adding a patent claim could confer jurisdiction on the Federal Circuit.26
Voluntary dismissal of the patent count would direct the appeal elsewhere.27 He agrees that the patent claim must appear in the plaintiff's pleading.28 This preserves the plaintiff's choice of appellate forum.29
It avoids expanding the Federal Circuit's caseload into trademark and copyright matters.30 It maintains clarity by limiting pleadings that trigger exclusive jurisdiction.31 Although uniformity in patent law is a countervailing interest, regional circuits already play a role.32
Occasional conflicts may usefully prompt Supreme Court review.33
Joined by Justice O'connor
Justice Ginsburg, joined by Justice O'Connor, would hold that a compulsory patent counterclaim adjudicated on the merits supplies the Federal Circuit with exclusive appellate jurisdiction, relying on the en banc Aerojet decision.34 She stresses that the question concerns only the allocation of authority among federal appellate courts.35 Congress intended the Federal Circuit to decide patent claims uniformly.36
Because no patent claim was actually adjudicated in this case, however, she joins the Court's judgment for that sole reason.37