United States Court of Appeals 

for the Federal Circuit ______________________ 

JOHN PRESTON, DIRECTLY AND DERIVATIVELY,

AS SHAREHOLDER OF ELECTROMAGNETICS 

CORPORATION, A DELAWARE CORPORATION, 

CONTINUUM ENERGY TECHNOLOGIES, LLC, A 

DELAWARE LIMITED LIABILITY COMPANY,

Plaintiffs-Appellees

v.

CHRISTOPHER NAGEL, IDL DEVELOPMENT, 

LLC,

Defendants-Appellants

______________________ 

2016-1524

______________________ 

Appeal from the United States District Court for the 

District of Massachusetts in No. 1:15-cv-13592-WGY, 

Judge William G. Young.

______________________ 

Decided: June 1, 2017

______________________ 

 JOSEPH M. CACACE, Todd & Weld LLP, Boston, 

MA, argued for plaintiffs-appellees. Also represented by 

HOWARD M. COOPER. 

 KEVIN PAUL MARTIN, Goodwin Procter LLP, Boston, MA, argued for defendants-appellants. Also repre-
2 PRESTON v. NAGEL

sented by ROBERTO M. BRACERAS; MICHAEL GAVIN STRAPP, 

DLA Piper US LLP, Boston, MA. 

______________________ 

Before DYK, TARANTO, and HUGHES, Circuit Judges.

HUGHES, Circuit Judge. 

The district court remanded this case to state court 

for a lack of subject-matter jurisdiction. Because 28 

U.S.C. § 1447(d) bars review of the district court’s decision to remand, we dismiss this appeal.

I 

Plaintiffs (collectively, Preston) filed a complaint 

against Defendants (collectively, Nagel) in Massachusetts 

Superior Court alleging fifteen state-law claims. Nagel 

answered the complaint and filed eleven counterclaims 

under the Declaratory Judgment Act seeking declarations 

of non-infringement of several patents held by plaintiff 

Electromagnetics Corporation. Nagel also removed the 

case to the United States District Court for the District of 

Massachusetts under 28 U.S.C. § 1441, the general removal statute, and 28 U.S.C. § 1454, the patent removal 

statute. Preston moved to remand. The court determined 

that it lacked subject-matter jurisdiction because Preston’s state-law claims did not arise under federal law and 

Nagel’s patent counterclaims did not present a justiciable 

case or controversy under Article III. It therefore remanded the case to Massachusetts Superior Court. Nagel 

timely appealed.

II

A 

Nagel seeks review of the district court’s decision to 

remand this case. Under 28 U.S.C. § 1447(d), “[a]n order 

remanding a case to the State court from which it was 

removed is not reviewable on appeal or otherwise,” sub-
PRESTON v. NAGEL 3

ject to statutory exceptions not applicable here. This

reviewability bar “applies equally to cases removed under 

the general removal statute, § 1441, and to those removed 

under other provisions.” Kircher v. Putnam Funds Tr., 

547 U.S. 633, 641 (2006). Because § 1447(d) is to “be read 

in pari materia with § 1447(c),” it “preclude[s] review only 

of remands for lack of subject matter jurisdiction and for 

defects in removal procedure.” Powerex Corp. v. Reliant 

Energy Servs., Inc., 551 U.S. 224, 229–30 (2007); see 

Quackenbush v. Allstate Ins. Co., 517 U.S. 706, 711–12 

(1996); Thermtron Prods., Inc. v. Hermansdorfer, 423 U.S. 

336, 345–46 (1976). As the district court found no procedural flaws, [J.A. 131–34], we must determine if it “relied

upon a ground that is colorably characterized as subjectmatter jurisdiction.” Powerex, 551 U.S. at 234. If it did, 

“appellate review is barred by § 1447(d).” Id.

Here, the district court remanded the case because it 

found that it lacked subject-matter jurisdiction over 

Preston’s state-law claims and that Nagel’s patent counterclaims did not present an Article III case or controversy because they failed to satisfy the immediacy 

requirement of MedImmune, Inc. v. Genentech, Inc., 549 

U.S. 118, 126–27 (2007).1 At oral argument, Preston 

conceded that this was a remand based on subject-matter 

jurisdiction. Oral Argument at 13:10–13:21, 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

16-1524.mp3. Thus, § 1447(d) facially controls, and we 

are precluded “from second-guessing the district court’s 

 

1 State-law claims may arise under federal law if a 

federal issue is “(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal 

court without disrupting the federal-state balance approved by Congress.” Gunn v. Minton, 133 S. Ct. 1059, 

1065 (2013) (citing Grable & Sons Metal Prods., Inc. v. 

Darue Eng’g & Mfg., 545 U.S. 308, 313–14 (2005)).
4 PRESTON v. NAGEL

jurisdiction determination regarding subject matter,” 

Vermont v. MPHJ Tech. Invs., LLC, 763 F.3d 1350, 1353 

(Fed. Cir. 2014), “no matter how plain the legal error in 

ordering the remand,” Briscoe v. Bell, 432 U.S. 404, 413 

n.13 (1977).

B 

Recognizing that § 1447(d) would ordinarily bar reviewability here, Nagel asks us to hold that an exception 

exists “where, as here, defendants invoked § 1454 to 

remove patent claims over which federal courts have 

exclusive jurisdiction.” Appellants’ Br. at 17. In support, 

Nagel relies on Osborn v. Haley, 549 U.S. 225 (2007), to 

argue that the America Invents Act (AIA) overrides

§ 1447(d)’s bar. We disagree.

1 

In Osborn, the Supreme Court determined that remands of certified Westfall Act cases are reviewable, 

despite § 1447(d)’s bar on appellate review of remand 

orders. Id. at 243. Under the Westfall Act, when federal 

employees are sued for common-law torts that occurred in

the course of their official duties, the United States is 

substituted as the defendant after the Attorney General 

certifies that the employee had acted within the scope of 

his or her federal employment. 28 U.S.C. § 2679(d)(1)–(2). 

That certification “conclusively establish[es] scope of office 

or employment for purposes of removal,” id. § 2679(d)(2), 

and by extension, exclusive federal jurisdiction, Osborn, 

549 U.S. at 231. Unlike the ordinary case, in which the 

“federal district court undertakes a threshold inquiry” of 

“whether complete diversity exists or whether the complaint raises a federal question,” in a certified Westfall 

Act case, “no threshold determination is called for” because “the Attorney General’s certificate forecloses any 

jurisdictional inquiry.” Id. at 243. Thus, the Court concluded that remands of certified cases are reviewable. Id.

at 244. The Court reasoned that the conclusive nature of 
PRESTON v. NAGEL 5

the Attorney General’s certification for removal purposes 

“would be weightless” if a district court could “remand a 

removal action on the ground that the Attorney General’s 

certification was erroneous.” Id. at 242; see also Gutierrez 

de Martinez v. Lamagno, 515 U.S. 417, 433 n.10 (1995)

(explaining that Congress adopted the Westfall Act language making certification “conclusiv[e] . . . for purposes 

of removal” to “foreclose needless shuttling of a case from 

one court to another”).

However, the Court defined this exception to the

§ 1447(d) bar narrowly to avoid “collid[ing] head on with 

§ 1447(d), and with [prior] precedent.” Osborn, 549 U.S. 

at 244. Noting that because appellate review is “scarcely”

permitted, it held that courts should review remand 

orders ordinarily governed by § 1447(d) only “in the 

extraordinary case in which Congress has ordered the 

intercourt shuttle to travel just one way—from state to 

federal court.” Id. at 243–44.

2 

According to Nagel, the AIA makes this case similarly 

“extraordinary.” Congress included several provisions in 

the AIA to strengthen federal courts’ jurisdiction over 

patent claims in response to the Supreme Court’s decision 

in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., which held that the Federal Circuit lacked 

jurisdiction to hear appeals from cases “in which the 

complaint does not allege a claim arising under federal 

patent law, but the answer contains a patent-law counterclaim.” 535 U.S. 826, 827, 831–32 (2002). After Holmes 

Group, some believed that only the state courts could hear 

patent-law counterclaims in the same action as a plaintiff’s state-law claims. See, e.g., Green v. Hendrickson 

Publishers, Inc., 770 N.E.2d 784, 793–94 (Ind. 2002) 

(relying on Holmes Group to find that state courts have 

jurisdiction to entertain copyright counterclaims with 

reasoning that applies to patent counterclaims); Report of 
6 PRESTON v. NAGEL

the Ad Hoc Committee to Study Holmes Group, Inc. v. 

Vornado Air Circulation Systems, Inc., 12 Fed. Cir. B.J. 

713, 715 (2003) (“Under Green, no federal court will have 

jurisdiction to adjudicate patent claims asserted for the 

first time in responsive pleadings when the plaintiff’s 

claims arise under state law, absent diversity jurisdiction.”).2

Members of Congress expressed that Holmes Group

could “lead to an erosion in the uniformity or coherence in 

patent law that has been steadily building since the 

[Federal] Circuit’s creation in 1982,” H.R. Rep. No. 109-

407, at 5 (2006), and therefore made three changes in the 

AIA to address federal jurisdiction of patent claims: (1) 28 

U.S.C. § 1338(a) was strengthened to clarify that state 

courts had no jurisdiction over “any claim for relief arising 

under any Act of Congress relating to patents”; (2) the 

Federal Circuit’s exclusive jurisdiction was extended to 

include cases with compulsory patent counterclaims, see

28 U.S.C. § 1295(a)(1); and (3) a provision was added to 

permit a party to remove to federal court a case in which

any party asserts a patent claim, see 28 U.S.C. § 1454. 

See Vermont v. MPHJ Tech. Invs., LLC, 803 F.3d 635, 

643–44 (Fed. Cir. 2015). 

3 

Nagel argues that the “Holmes Group fix” created the 

one-way “intercourt shuttle” that Osborn described. By 

depriving the state court of jurisdiction to hear patent 

claims (including counterclaims) and by creating a removal provision targeted at patent claims (and counterclaims), Congress created a vehicle for a defendant’s 

patent counterclaims to be heard in federal court along-

 

2 The defendant-counterclaimant always had the 

option to assert the patent claim in a separate action in 

federal court.
PRESTON v. NAGEL 7

side a plaintiff’s state-law claims. But nothing in the AIA

operates like the Attorney General’s certification under 

the Westfall Act, which was “[o]f prime importance to [the 

Supreme Court’s] decision” because it “foreclose[d] any

jurisdictional inquiry.” Osborn, 549 U.S. at 241, 243. 

Rather, here the district court was still required to “undertake a threshold inquiry” of “whether complete diversity exists or whether the complaint raises a federal 

question.” See id. at 243. Having done so, the district 

court concluded that it lacked subject-matter jurisdiction

because Preston’s claims arose under state law and Nagel 

did not establish that the counterclaims satisfied the 

Article III case-or-controversy requirement. Since the 

district court’s task was that of the “typical case,” the 

narrow exception of Osborn does not permit us to review 

the district court’s remand decision. 

Nagel further argues that we must be able to review 

the district court’s remand here to avoid a problem that 

the Supreme Court identified as potentially “serious”: the 

death knell of a claim subject to exclusive federal jurisdiction without federal review. See Kircher, 547 U.S. at 645–

46. Because the state court must dismiss Nagel’s patent 

counterclaims for lack of jurisdiction, see 28 U.S.C. 

§ 1338(a), Nagel argues that he will have been deprived of 

the opportunities to have his claims heard on the merits 

in any forum and to challenge the district court’s allegedly

erroneous basis for remand. But Nagel’s concern rings

hollow here, where, unlike in Osborn, Nagel has an alternative way to present his patent claims on the merits in 

federal court: a separate federal declaratory judgment 

action. See Oral Arg. at 7:50–8:05 (conceding that Nagel

could have filed a new federal case rather than asserting 

counterclaims). And any final decision in that case—

jurisdictional or on the merits—would be appealable here. 

Therefore, assuming that the district court’s MedImmune 

determination here was erroneous, Nagel has lost, at 

most, the ability to have his declaratory judgment claims 
8 PRESTON v. NAGEL

heard with Preston’s state-law claims. That result does 

not interfere with Congress’s primary objective in enacting the “Holmes Group fix”—maintaining uniformity in

patent law. See H.R. Rep. No. 109-407, at 5.

To the extent the AIA prefers that closely related 

state-law claims and patent-law counterclaims be heard 

together,3 it does not follow that we have jurisdiction to 

review remand decisions that require such claims to be 

pursued in separate forums. “Absent a clear statutory 

command to the contrary, we assume that Congress is 

aware of the universality of th[e] practice of denying 

appellate review of remand orders when Congress creates 

a new ground for removal.” Kircher, 547 U.S. at 641 n.8 

(quoting Things Remembered v. Petrarca, 516 U.S. 124, 

128 (1995)) (alteration in original). Though hearing the 

state-law and patent-law claims together may promote 

important interests such as efficiency and avoiding inconsistent judgments, we are not persuaded that the AIA 

commands us to favor these interests over § 1447(d) and 

the presumption of remand non-reviewability. Had 

Congress sought to permit review of remands like the one 

at issue here, it certainly knew how to do so. Id. (collecting examples). Thus, we leave it to Congress to grant us 

reviewability here if it sees fit.

III

Because § 1447(d) prohibits our review of the district 

court’s remand order, we dismiss the appeal for lack of 

subject-matter jurisdiction. 

DISMISSED

 

3 E.g., H.R. Rep. No. 109-407, at 18 (statement of 

Rep. Smith) (“The [removal] provision also promotes 

administrative efficiencies by obviating the need for a 

state litigant to file a second suit to address patent claims 

in federal court.”).