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 statutory phrase "arising under" invokes.
The conclusion that a state counterclaim converts a lawsuit into a "civil action arising under" the Copyright Act seems highly anomalous in view of the fact that 28 U.S.C. ยง 1331, conferring general federal question jurisdiction, uses the very same term "civil action arising under" other laws of the United States to include only those meeting the "well-pleaded complaint" test. Nevertheless, until very recently the logic and language of a consistent body of federal decisions appeared to preclude a state court from entertaining a counterclaim under copyright law. The leading case on this point was Aerojet-Gen. Corp. v. Mach. Tool Works, Oerlikon-Buehrle, Ltd., 895 F.2d 736 (Fed. Cir. 1990). Pursuant to 28 U.S.C. ยง 1295(a), the Federal Circuit has exclusive appellate jurisdiction over patent appeals from the district courts "if the jurisdiction of [the district court] was based, in whole or in part, on section 1338."
Holmes Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826, 830-33, 122 S.Ct. 1889, 153 L.Ed.2d 13 (2002). Prior cases holding to the contrary, e.g., Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle, Ltd., 895 F.2d 736, 742-43 (Fed. Cir. 1990), are therefore no longer good law on that point. See Telcomm Technical Servs., Inc. v. Siemens Rolm Commc'ns, Inc., 295 F.3d 1249, 1251-52 (Fed. Cir. 2002).
When the ISOs originally filed this appeal, our jurisdiction was predicated on the patent infringement counterclaim. See Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle, Ltd., 895 F.2d 736, 13 USPQ2d 1670 (Fed. Cir. 1990) (holding that a nonfrivolous, well-pleaded compulsory patent law counterclaim invoked the appellate jurisdiction of the Federal Circuit), overruled by Holmes Group, 122 S.Ct. at 1893. In the Supreme Court's intervening decision in Holmes Group, it held that the well-pleaded complaint rule endures no necromancy that would vest the statutory phrase "arising under" with a meaning that encompasses appellate jurisdiction for a case to be heard in the Federal Circuit based on a patent infringement counterclaim.
Furthermore, our analysis does not change when the possible basis for Federal Circuit jurisdiction resides in a counterclaim. See Aerojet Corp. v. Machine Tool Works, 895 F.2d 736, 742 (Fed. Cir. 1990) (en banc) ("The distinctions between complaints and counterclaims . . . can have no meaningful role in governing the direction of the appeal under the unique statute that created this court when the counterclaim arises under the patent laws."). Initially we note that U.S. Valves' claim for breach of contract does not state a patent law claim, thus the first prong does not apply. The second prong of Christianson's test โ whether relief depends on resolution of a patent law question โ presents a more difficult question.
In light of that policy and the plain language of section 1295(a)(1), we have held that our appellate jurisdiction extends to cases in which nonfrivolous claims of patent infringement have been raised in compulsory counterclaims. See Aerojet-General Corp. v. Machine Tool Works, 895 F.2d 736, 739-45, 13 USPQ2d 1670, 1672-78 (Fed. Cir. 1990) (in banc). While the court in Aerojet-General did not need to decide whether to apply that principle to permissive counterclaims, we see no sufficient basis in the language or purpose of section 1295(a)(1) to distinguish between compulsory and permissive counterclaims.
In enacting the Federal Courts Improvement Act of 1982, Pub.L. No. 97-164, 96 Stat. 25, which created this court, Congress made manifest its intent to effect "a clear, stable, uniform basis for evaluating matters of patent validity/invalidity and infringement/noninfringement," so as to "render more predictable the outcome of contemplated litigation, facilitate effective business planning, and add confidence to investment in innovative new products and technology." Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F.2d 736, 744, 13 USPQ2d 1670, 1677 (Fed. Cir. 1990) (in banc) (citing H.R. Rep. No. 97-312 at 20, 23 (1981), and S. Rep. No. 97-275, at 3-6 (1981), reprinted in 1982 U.S.C.C.A.N. 11, 13-16). To achieve those goals, we conclude, as we have already in Additive Controls, MCV, Imagineering, and Morganroth for the issues present in those cases, that validity and enforceability represent federal interests of great stake over which, when the other requirements of section 1338(a) are satisfied, we should exert our appellate jurisdiction under section 1295(a)(1) via section 1338(a) jurisdiction.
The Federal Circuit has also held that it has exclusive appellate jurisdiction "when a nonfrivolous well-pleaded compulsory patent law counterclaim is present in a case originally and properly filed in the district court." Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F.2d 736, 741 (Fed. Cir. 1990). See also Xeta, Inc. v. Atex, Inc., 825 F.2d 604 (1st Cir. 1987).
See, e.g., Technicon Instruments Corp. v. Alpkem Corp., 866 F.2d 417, 419-20, 9 USPQ2d 1540, 1541-42 (Fed. Cir. 1989) (antitrust counterclaim sole issue on appeal); Atari, Inc. v. JS A Group, Inc., 747 F.2d 1422, 1427, 223 USPQ 1074, 1077 (Fed. Cir. 1984) ( en banc) (copyright issue appealed separately). See generally Aerojet-General Corp. v. Machine Tool Works, Oerlikon-Buehrle Ltd., 895 F.2d 736, 741-45, 13 USPQ2d 1670, 1675-77 (Fed. Cir. 1990) ( en banc) (discussing the well-pleaded complaint rule in the context of Federal Circuit jurisdiction). Appellate jurisdiction is not with the Federal Circuit when no well-pleaded claim arising under the patent law is stated in the pleadings before the district court, Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 807-10, 108 S.Ct. 2166, 2172-74, 100 L.Ed.2d 811, 7 USPQ2d 1109, 1113-14 (1988), or when the patent claim is merely "transient," Schwarzkopf Development Corp. v. Ti-Coating, Inc., 800 F.2d 240, 245, 231 USPQ 47, 51 (Fed. Cir. 1986) (patent counterclaim dismissed without opposition during pleading stage). Accord, Unique Concepts, Inc. v. Manuel, 930 F.2d 573, 575, 18 USPQ2d 1654, 1656 (7th Cir. 1991) (jurisdiction of district court to enter judgment dismissing patent claim "came, in part, from (a well-pleaded complaint under) ยง 1338").
See U.S. Philips Corp. v. Windmere Corp., 861 F.2d 695, 8 USPQ2d 1885 (Fed. Cir. 1988), cert. denied, 490 U.S. 1068, 109 S.Ct. 2070, 104 L.Ed.2d 635 (1989) (antitrust counterclaim); Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 875, 228 USPQ 90, 99 (Fed. Cir. 1985) (citing Atari, 747 F.2d at 1438-1440, 223 USPQ at 1086-1087). We note in passing that a rationale upon which Atari was based, adherence to regional circuit law to promote uniformity in pendent substantive legal issues to avoid forum-shopping by litigants between our circuit and the regional circuit by the sequence in which claims and counterclaims are filed, has been undermined by our decision in Aerojet-General Corp. v. Machine Tool Works, 895 F.2d 736, 741-44, 13 USPQ2d 1670, 1675-77 (Fed. Cir. 1990) (in banc), which held that our exclusive jurisdiction over a case attaches at the time of the well-pleaded complaint, which includes the assertions in the counterclaim as well as in the claim. However, we have not deferred in the resolution of all procedural issues merely because that issue might separately arise in a case having nothing to do with the patent laws.