United States District Court, S.D. Alabama, Southern Division
F. MOORER UNITED STATES DISTRICT JUDGE.
before the Court is Defendants' Motion for Leave to
File Defendants' Supplemental Memorandum in Opposition to
Plaintiff's Motion to Remand. Doc. 33. In
Defendants' motion, they request the Court's
permission to file a supplement to their opposition to
Plaintiff's Motion to Remand because of subsequently
filed counterclaims that include a declaractory judgment of
inventorship that Defendats claim impacts the Court's
jurisdictional analysis. Id., ¶¶ 3-4. In
Defendants' Notice of Removal, they state the Court has
jurisdiction of this matter pursuant to 28 U.S.C. § 1331
and 28 U.S.C. § 1338(a).
argument that their counterclaim impacts the Court's
jurisdictional analysis is properly addressed by the Supreme
Court in Holmes Group, Inc. v. Vornado Air
Circulation Systems, Inc., 535 U.S. 862, 122
S.Ct. 1889, 153 L.Ed.2d 13 (2002):
Section 1338(a) . . . provides in relevant part that
“[t]he district courts shall have original jurisdiction
of any civil action arising under any Act of Congress
relating to patents . . . .” . . .
Section 1338(a) uses the same operative language as 28 U.S.C.
§ 1331, the statute conferring general federal-question
jurisdiction, which gives the district courts “original
jurisdiction of all civil actions arising under the
Constitution, laws, or treaties of the United States.”
(emphasis added). We said in Christianson v. Colt
Industries Operating Corp., 486 U.S. 800, 808108 S.Ct.
2166, 100 L.Ed.2d 811 (1988), that “[l]inguistic
consistency” requires us to apply the same test to
determine whether a case arises under § 1338(a) as under
The well-pleaded-complaint rule has long governed weather a
case “arises under” federal law for purposes of
§ 1331. See, e.g., Phillips Petroleum Co. v. Texaco
Inc., 415 U.S. 125, 127-28, 94 S.Ct. 1002, 39 L.Ed.2d
209 (1974) (per curiam). As “appropriately adated to
§ 1338(a), ” the well-pleaded-complaint rule
provides that whether a case “arises under”
patent law “must be determined from what necessarily
appears in the plaintif's statement of his own claim in
the bill or declaration . . . .” Christianson,
486 U.S. at 809, 108 S.Ct. 2166 (internal quotation marks
omitted). The plaintiff's well-pleaded complaint must
“establish[h] either that federal patent law creates
the case of action or that the plaintiff's right to
relief necessarily depends on resolution of a substantial
question of federal patent law . . . .” Ibid.
Holmes Grp., Inc., 535 U.S. at 829-30, 122 S.Ct. at
1893 (footnotes omitted).
Holmes Group, Inc., the Supreme Court stated in
response to the respondent's argument that the
well-pleaded-complaint rule allows a counterclaim to serve as
the basis for a district court's “arising
Admittedly, our prior cases have only required us to address
whether a federal defense, rather than a federal
counterclaim, can establish “arising under”
jurisdiction. Nevertheless, those cases were decided on the
principle that federal jurisdiction generally exists
“only when a federal question is presented on the face
of the plaintiff's properly pleaded
complaint.” Caterpillar Inc. v. Williams, 482
U.S. 386, 392, 107 S.Ct. 2425, 96 L.Ed.2d 318 (1987)
(emphasis added). As we said in The Fair v. Kohler Die
& Specialty Co., 228 U.S. 22, 25, 33 S.Ct. 410, 57
L.Ed. 716 (1913), whether a case arises under federal patent
law “cannot depend upon the answer.” Moreover, we
have declined to adopt proposals that “the answer as
well as the complaint . . . be consulted before a
determination [is] made whether the case ‘ar[ises]
under' federal law . . . .” Franchise Tax Bd.
of Cal. v. Construction Laborers Bacation Trust for Southern
Cal., 463 U.S. 1, 10-11 n.9, 103 S.Ct. 2831, 77 L.Ed.2d
420 (1983) (citing American Law Institute, Study of the
Division of Jurisdiction Between State and Federal Courts
§ 1312, pp. 188-193 (1969)). It follows that a
counterclaim-which appears as part of the defendant's
answer, not as part of the plaintiff's complaint-cannot
serve as the basis for “arising under”
jurisdiction. See, e.g., In re Adams, 809
F.2d 1187, 1188 n.1 (5th Cir. 1987); FDIC v.
Elefant, 790 F.2d 661, 667 (7th Cir. 1986); Takeda
v. Northwestern National Life Ins. Co., 765 F.2d 815,
822 (9th Cir. 1985); 14B C. Wright, A. Miller, & E.
Cooper, Federal Practice and Procedure § 3722, pp.
402-14 (3d ed. 1998).
Allowing a counterclaim to establish “arising
under” jurisdiction would also contravene the
longstanding policies underlying our precedents. First, since
the plaintiff is “the master of the complaint, ”
the well-pleaded-complaint rule enables him, “by
eschewing claims based on federal law, . . . to have the
cause heard in state court.” Caterpillar Inc.,
supra, at 398-99, 107 S.Ct. 2425. The rule proposed
by respondent, in contrast, would leave acceptance or
rejection of a state forum to the master of the counterclaim.
It would allow a defendant to remove a case brought in state
court under state law, thereby defeating a plaintiff's
choice of forum, simply by raising a federal counterclaim.
Second, conferring this power upon the defendant would
radically expand the class of removable cases, contrary to
the “[d]ue regard for the rightful independence of
state governments” that our cases addressing removal
require. See Shamrock Oil & Gas Corp. v. Sheets,
313 U.S. 100, 109, 61 S.Ct. 868, 85 L.Ed. 1214. 1941)
(internal quotation marks omitted). And finally, allowing
responsive pleadings by the defendant to establish
“arising under” jurisdiction would undermine the
clarity and ease of administration of the
well-pleaded-complaint doctrine, which serves as a
“quick rule of thumb” for resolving
jurisdictional conflicts. See Franchise Tax Bd.,
supra, at 11, 103 S.Ct. 2841.
For these reasons, we decline to transform the longstanding
well-pleaded-complaint rule into the
rule” urged by respondent.
Holmes Group, Inc., 535 U.S. at 831-32, 122 S.Ct. at
on the Supreme Court's decision in Holmes Group,
Inc., Defendants' request to file a supplement to
their response to the pending Motion to Remand to address the
jurisdictional effect of their counterclaims would run
counter to the longstanding well-pleaded-complaint-rule.
Accordingly, Defendants' Motion for Leave to File
Defendants' Supplemental Memorandum in Opposition to
Plaintiff's Motion to Remand (Doc. 33) is hereby
DENIED, and Defendants' Supplemental
Memorandum in Opposition to Plaintiff's Motion to Remand
(Doc. 34) is STRUCK pursuant to Fed.R.Civ.P.