Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc. - Oral Argument - March 19, 2002

Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc.

Media for Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc.

Audio Transcription for Opinion Announcement - June 03, 2002 in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc.

Audio Transcription for Oral Argument - March 19, 2002 in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc.

William H. Rehnquist:

We'll hear argument in next No. 01-408, The Holmes Group v. Vornado Air Circulation Systems, Inc.-- Mr. Dabney.

James W. Dabney:

Mr. Chief Justice, and may it please the Court: This case concerns how far the Federal Circuit can properly go in taking jurisdiction to the exclusion of the regional circuits.

In its recent construction of its appellate jurisdiction, the Federal Circuit has effectively taken the position that the defendant's answer containing a patent counterclaim acts like a super removal petition.

The Federal Circuit says that if the defendant in a non-patent suit files an answer that includes a patent counterclaim, that pleading automatically removes the plaintiff's non-patent suits from regional circuit jurisdiction and transfers it to Federal Circuit jurisdiction.

According to the respondent, that same pleading automatically has the effect of changing the substantive law governing non-patent claims in the plaintiff's non-patent suit from regional circuit to Federal Circuit law, and the decision below demonstrates that these principles apply even when a judgment is entered which doesn't address patent law at all.

The petitioner respectfully submits that the decision below is antithetical to what the Congress had in mind when it established the Federal Circuit.

Sandra Day O'Connor:

Well, Congress did want patent law to be uniform, didn't it?

James W. Dabney:


Sandra Day O'Connor:

I mean, that's why it placed the jurisdiction in the Court of Appeals for the Federal Circuit.

James W. Dabney:

--One... Mr.... Your Honor, one of the Congress' objectives in establishing the Federal Circuit certainly was--

Sandra Day O'Connor:

And to the extent that you then allow the other courts of appeals to deal with patent claims, you're defeating that uniformity goal.

James W. Dabney:

--Your Honor, the Congress in enacting 1295, according to this Court in Christianson, establishes not that every case in which a Federal patent claim is raised automatically goes to the Federal Circuit.

This Court in Christianson held... this Court in Christianson addressed the question, how do we know if a case belongs in the Federal Circuit?

That was the specific question raised in Christianson.

Citing the legislative history of 1295, this Court answered that question.

Cases fall within the exclusive jurisdiction of the Federal Circuit, this Court held, in the same sense that cases are said to arise under Federal... under Federal law for purposes of Federal question jurisdiction.

Antonin Scalia:

Mr. Dabney, has the Federal Circuit held that whenever there's a patent claim in a... in a... a patent issue in a counterclaim, it has jurisdiction?

Or must it be a compulsory counterclaim?

James W. Dabney:

The Federal Circuit has held in the DSC Communications case that permissive or compulsory, it doesn't matter.

Antonin Scalia:

It doesn't matter.

Ruth Bader Ginsburg:

But in this case--

William H. Rehnquist:

--In this case, it was compulsory.


James W. Dabney:

Your Honor, it is far from clear that the counterclaim in this case was in fact compulsory.

The... and the... and the Court can see that most clearly by looking at the answer that was actually filed in this case, which appears on pages 94 to 98 of the lodging.

The one thing that's conspicuously absent from the answer filed in this case was any counterclaim for trade dress infringement.

Well, if this was--

William H. Rehnquist:

But did... did the court of appeals say in this case that the... the counterclaim was compulsory?

James W. Dabney:

--The court of appeals did not say that.

There's absolutely nothing in the decision--