Case: 19-1522   Document: 44     Page: 1   Filed: 04/03/2020




   United States Court of Appeals
       for the Federal Circuit
                 ______________________

         INTELLISOFT, LTD., A DELAWARE
                   CORPORATION,
       Plaintiff/Counterclaim Defendant-Appellant

         BRUCE BIERMAN, AN INDIVIDUAL,
           Counterclaim Defendant-Appellant

                            v.

  ACER AMERICA CORPORATION, A CALIFORNIA
    CORPORATION, ACER INCORPORATED, A
            TAIWAN CORPORATION,
       Defendants/Counterclaimants-Appellees
              ______________________

                       2019-1522
                 ______________________

    Appeal from the United States District Court for the
 Northern District of California in No. 4:17-cv-06272-PJH,
 Judge Phyllis J. Hamilton.
                  ______________________

                  Decided: April 3, 2020
                 ______________________

      AARON MARTIN PANNER, Kellogg, Hansen, Todd, Figel
 & Frederick, P.L.L.C., Washington, DC, argued for plain-
 tiff/counterclaim defendant-appellant and counterclaim
 defendant-appellant. Also represented by COLLIN WHITE.
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 2                     INTELLISOFT, LTD. v. ACER AMERICA CORP.




      MATTHEW GORDON BALL, K&L Gates LLP, San Fran-
 cisco, CA, argued for defendants/counterclaimants-appel-
 lees. Also represented by JASON NATHANIEL HAYCOCK;
 THEODORE J. ANGELIS, JEFFREY CHARLES JOHNSON, Seat-
 tle, WA; ANDREW SPIELBERGER, Balaban And Spielberger
 LLP, Los Angeles, CA.
                 ______________________

     Before DYK, O’MALLEY, and CHEN, Circuit Judges.
 DYK, Circuit Judge.
     Intellisoft, Ltd. (“Intellisoft”) and its president Bruce
 Bierman (collectively, “appellants”) sued Acer America
 Corporation and Acer Inc. (collectively, “Acer”) in Califor-
 nia state court, asserting various state law claims, includ-
 ing misappropriation of trade secrets. After more than
 three years of litigation, Acer sought to plead a patent in-
 ventorship counterclaim under federal law and thereafter
 removed the action to the United States District Court for
 the Northern District of California. The district court de-
 nied Intellisoft’s motion to remand and later entered final
 judgment in favor of Acer.
     We conclude that the district court erred by holding
 that removal was proper under 28 U.S.C. §§ 1441 and
 1454. We thus reverse the district court’s decision refusing
 to remand, vacate the district court’s judgment, and re-
 mand to the district court with instructions to remand the
 action to California state court.
                         BACKGROUND
    This case originated from a business relationship be-
 tween the appellants and Acer dating back to the early
 1990s. At that time, the appellants allegedly shared with
 Acer trade secrets concerning computer power manage-
 ment technology under a non-disclosure agreement
 (“NDA”). According to the appellants, the NDA allowed
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                      3



 Acer’s use of their “Confidential Information” only to “di-
 rectly further” the evaluation of Intellisoft’s product for li-
 censing and restricted Acer from “manufactur[ing] parts or
 components incorporating the Confidential Information.”
 J.A. 406; Appellants’ Br. 5. The appellants claim that they
 discovered in the early 2010s that Acer had applied for a
 patent that incorporated their trade secrets and became
 the owner of U.S. Patent No. 5,410,713 (“the ’713 patent”).
 The appellants concluded that Acer had misappropriated
 their trade secrets and violated the NDA.
     In March 2014, the appellants filed suit against Acer
 in California state court, asserting that Acer misappropri-
 ated their trade secrets by incorporating them into patent
 applications that issued as the ’713 patent and three other
 related patents (“the ’713 patent family”). 1 The complaint
 also asserted that Acer unlawfully “incorporate[ed] [their]
 Confidential Information, products, and/or technology in
 Acer products without having a license.” J.A. 392. The
 complaint alleged various other state law claims as well.
      In May 2015, Bierman assigned his ownership interest
 in the trade secrets to Intellisoft and dismissed his claims
 in the state court action. On September 25, 2015, Intelli-
 soft filed the operative Fourth Amended Complaint in state
 court. On October 26, 2015, Acer filed an answer.
       In September 2017, Intellisoft produced three expert
 reports concerning liability and damages on the trade se-
 cret claim. First, Intellisoft’s expert Irving Rappaport con-
 cluded that “trade secret and confidential information
 described in the [’]713 [patent] family . . . were created by
 . . . Bierman,” J.A. 2213, and “[he] should have been named
 [at least] as a co-inventor of the [’]713 patent,” J.A. 2237.
 During his deposition, Mr. Rappaport stated that “this is



     1  The three related patents are U.S. Patent Nos.
 5,870,613; 5,884,087; and 5,903,765.
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 4                    INTELLISOFT, LTD. v. ACER AMERICA CORP.




 not an inventorship dispute case. It just happens to be the
 facts in this case.” J.A. 1794.
      Second, Intellisoft’s expert Robert Zeidman opined that
 “Intellisoft’s trade secrets were disclosed by Acer in the pa-
 tent specifications,” pointing to the written description and
 claims of the ’713 patent family as corresponding to various
 aspects of the purported trade secrets. J.A. 2276. He also
 concluded that Acer’s computer products could not comply
 with the Advanced Configuration and Power Interface
 (“ACPI”), an industry power management standard, with-
 out using the technology disclosed in the ’713 patent fam-
 ily. Because the ’713 patent family incorporated the trade
 secrets, Mr. Zeidman concluded that the computer prod-
 ucts “would [have] need[ed] to incorporate Intellisoft’s
 trade secrets.” J.A. 2276–77.
     Lastly, Intellisoft’s expert Brian Napper, relying on
 Mr. Zeidman’s report, and assuming that all Acer comput-
 ers complied with the ACPI industry standard and incor-
 porated the trade secrets, calculated damages based on a
 theory that Acer should have paid Intellisoft royalties for
 using the trade secrets.
     Trial was scheduled to begin in November 2017. On
 October 30, 2017, Acer “e-filed” a “Cross-Complaint of Acer
 Defendants for Declaratory Relief” against the appellants,
 seeking a declaration that “Bierman properly was not
 named as an inventor of any of the ’713 Family of Patents
 and . . . is not entitled to an inventorship correction under
 35 U.S.C. § 256.” J.A. 622. Referring to Mr. Rappaport’s
 expert report and deposition, Acer alleged that “Bierman
 [was] asserting an inventorship claim,” J.A. 624, and
 sought declaratory relief that “Bierman properly was not
 named as an inventor of [the ’713 patent family],” J.A. 622.
     In California state court, a party may file a “cross-com-
 plaint” setting forth a “cause of action he has against any
 of the parties who filed the complaint . . . against him.”
 Cal. Civ. Proc. Code § 428.10(a). Such a “cause of action”
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                     5



 is equivalent to a counterclaim under the Federal Rules of
 Civil Procedure Rule 13. Acer was required to “obtain leave
 of court to file [the] cross-complaint” because it had already
 filed its answer to Intellisoft’s complaint. See Cal. Civ.
 Proc. Code § 428.50(c). The state court confirmed that
 Acer’s “Cross-Complaint is considered lodged (pending ap-
 proval of a stipulation & proposed order for filing of same,
 or absent a stipulation & order, an ex parte application/or-
 der).” J.A. 1388 (emphasis in original).
      Also on October 30, 2017, Acer removed the action to
 the United States District Court for the Northern District
 of California under (1) 28 U.S.C. § 1441 providing removal
 of an action which the district court would have original
 jurisdiction and (2) 28 U.S.C. § 1454 providing removal of
 an action where a party asserts a patent counterclaim. In
 its Notice of Removal, Acer stated that section 1441 re-
 moval was proper because Intellisoft’s state law claim for
 trade secret misappropriation arose “under federal patent
 law—specifically, 35 U.S.C. § 256.” 2 J.A. 303. Acer’s basis
 for section 1441 removal was also Mr. Rappaport’s opinion
 that “Bierman should have been named as an inventor” un-
 der federal patent law. J.A. 302. Acer asserted that re-
 moval was proper under section 1454 because its cross-
 complaint alleged a patent inventorship claim. After re-
 moval, on November 20, 2017, Acer filed a First Amended
 Counterclaim, seeking a declaration under 35 U.S.C. § 256
 that Bierman properly was not named an inventor of the
 ’713 patent family. Acer alleged that Intellisoft “intended




     2    Intellisoft also pleaded claims for breach of con-
 tract, intentional misrepresentation and fraudulent con-
 cealment, and accounting in its Fourth Amended
 Complaint. Acer argues only that the trade secret claim
 raised a federal issue.
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 6                    INTELLISOFT, LTD. v. ACER AMERICA CORP.




 to . . . try numerous other patent law issues, including pa-
 tentability, patent validity, claim construction, and patent
 infringement.” J.A. 1283.
     On November 27, 2017, Intellisoft moved the district
 court to remand the action to state court. Intellisoft argued
 that there was no disputed federal issue because its state
 law trade secret claim did “not require determination of in-
 ventorship” under federal patent law and Acer’s cross-com-
 plaint was not “[o]perative” due to Acer’s failure to obtain
 leave of court. Intellisoft, Ltd. v. Acer Am. Corp., No. 17-
 CV-06272 (N.D. Cal. 2017), ECF 21 at 2, 12, 20.
      The district court denied Intellisoft’s motion to remand.
 It held that section 1441 removal was proper because In-
 tellisoft “ha[d] only advanced one theory of liability and
 that theory necessarily raise[d] substantial patent law is-
 sues,” J.A. 16, and the case “boil[ed] down to an inventor-
 ship dispute,” J.A. 12. The district court concluded that
 “the inventorship issue [wa]s not just an alternate theory
 that [the] plaintiff might [have] use[d] to show liability and
 damages” but was the “only theory of its case.” J.A. 10.
 The district court also held that section 1454 removal was
 proper, reasoning that the statute did not require the pa-
 tent counterclaim to be pleaded in an operative pleading
 and that it did not matter “[w]hether or not defendants’
 cross-complaint was allowed by the [state] court.” J.A. 17–
 18.
      Having declined to remand the case to state court, in
 December 2018, the district court granted summary judg-
 ment in favor of Acer with respect to Intellisoft’s state law
 claims, reasoning that Intellisoft failed to prove under fed-
 eral patent law that Bierman was the inventor of the
 ’713 patent family claims. Based on this failure, the dis-
 trict court concluded that Intellisoft could not show trade
 secrets ownership and damages. It also held that the
 claims were time barred. The parties thereafter stipulated
 to an entry of judgment on the inventorship counterclaim
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                     7



 in favor of Acer. In February 2019, the district court en-
 tered final judgment in favor of Acer based on its summary
 judgment on Intellisoft’s state law claims and the parties’
 stipulation regarding Acer’s inventorship counterclaim.
     The appellants appeal, arguing that removal was im-
 proper and seeking a remand to state court. We have ju-
 risdiction under 28 U.S.C. § 1295(a)(1).
                         DISCUSSION
                   I. Section 1441 Removal
      We first consider whether removal was proper under
 section 1441. That section generally provides that “any
 civil action brought in a State court of which the district
 courts of the United States have original jurisdiction, may
 be removed by the defendant or the defendants, to the dis-
 trict court of the United States.” 28 U.S.C § 1441(a). Sec-
 tion 1338(a) of Title 28 provides in part that the “district
 courts shall have original jurisdiction of any civil action
 arising under any Act of Congress related to patents.” The
 propriety of section 1441 removal depends here on whether
 Intellisoft’s state law claims could be brought in federal
 court pursuant to section 1338. We review de novo
 whether the district court had section 1338 jurisdiction,
 and apply Federal Circuit law. Microsoft Corp. v. GeoTag,
 Inc., 817 F.3d 1305, 1311 (Fed. Cir. 2016).
     When a plaintiff brings only a state law claim, as here,
 the district court will have original jurisdiction “over [the]
 state law claim . . . if a federal issue is: (1) necessarily
 raised, (2) actually disputed, (3) substantial, and (4) capa-
 ble of resolution in federal court without disrupting the fed-
 eral-state balance approved by Congress.” Gunn v. Minton,
 568 U.S. 251, 258 (2013). The Supreme Court has ex-
 plained that only a “special and small category” of cases
 would meet all four requirements. Id. (quoting Empire
 Healthchoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 699
 (2006)).
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 8                    INTELLISOFT, LTD. v. ACER AMERICA CORP.




     Addressing the first prong in the Gunn test, Acer con-
 tends that Intellisoft’s trade secrets misappropriation
 claim necessarily raised patent law issues: (1) Intellisoft
 had to prove Bierman is the sole inventor of the ’713 patent
 family to establish ownership of the trade secrets and (2)
 Intellisoft’s expert offered a claim construction and in-
 fringement analysis with respect to the ’713 patent family
 to show liability and damages.
     Acer’s arguments do not establish that Intellisoft’s
 trade secret claim necessarily raised patent law issues.
 First, Intellisoft did not need to prove inventorship under
 federal law to establish ownership. Although Intellisoft’s
 expert Mr. Rappaport stated that Bierman was an inventor
 of the claims in the ’713 patent family as a factual matter,
 Intellisoft did not need to prove that statement was true
 but needed to show only that Intellisoft by assignment from
 Bierman was the owner of the trade secrets. In other
 words, Intellisoft’s burden was to satisfy the ownership
 standards for trade secrets under California law rather
 than to prove that Bierman is the inventor of the ’713 pa-
 tent family, and ownership under state law did not require
 proof of patent inventorship. The ownership issue thus did
 not necessarily depend on patent laws.
     Second, Intellisoft did not need to establish patent in-
 fringement to prove trade secrets misappropriation. Here,
 Intellisoft’s expert Mr. Zeidman compared the trade secret,
 ’713 patent family, and ACPI standard to conclude that
 Acer misappropriated the trade secrets by incorporating
 them into the patents and Acer “would [have] need[ed] to
 incorporate [the] trade secrets” into its products to comply
 with the ACPI, a standard by itself that incorporated the
 trade secrets disclosed by the patents. J.A. 2277. Intelli-
 soft had to show only that Acer misappropriated (“used” or
 “disclosed”) the trade secrets under California state law.
 See Cal. Civ. Code § 3426.1. The ’713 patent family was
 only being used as evidence to support Intellisoft’s state
 law claims. This analysis required no construction of the
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                      9



 patent claims or proof that Acer’s products “infringed” the
 ’713 patent family under 35 U.S.C. § 271.
      Third, Intellisoft’s damages case did not necessarily de-
 pend on the resolution of patent law issues. Its expert Mr.
 Napper calculated damages in the form of royalties that In-
 tellisoft would have received from Acer for using the trade
 secrets since 1997, assuming a royalty rate from the par-
 ties’ 1992 software agreement. But this agreement was a
 software license for Intellisoft’s Bookmark product and it
 neither included a patent license nor referenced the ’713
 patent family. Mr. Napper’s damages calculation also pre-
 sumed that Acer’s products incorporated the trade secrets
 based on Mr. Zeidman’s analysis. To prove such damages,
 however, Intellisoft did not need to establish that Acer’s
 products infringed the ’713 patent family. Thus, the dam-
 ages issue also did not necessarily depend on the resolution
 of patent law issues.
     We have made clear that a plaintiff’s reliance on a pa-
 tent as evidence to support its state law claims does not
 necessarily require resolution of a substantial patent ques-
 tion.
     In Uroplasty, Inc. v. Advanced Uroscience, Inc., 239
 F.3d 1277 (Fed. Cir. 2001), the plaintiff alleged that its for-
 mer executive officer, who became the defendant’s chair-
 man, “used and divulged [the plaintiff’s] trade secrets . . .
 by acts that included the preparation and filing of [the de-
 fendant’s patent] application.” Id. at 1279–80. We held
 that “[t]he . . . patent may be evidence in support of [the
 plaintiff’s] allegations, but the mere presence of the patent
 does not create a substantial issue of patent law.” Id. at
 1280. Thus, the plaintiff’s reliance on a patent to prove
 misappropriation of trade secrets did not “necessarily de-
 pend[] on resolution of a substantial question of federal pa-
 tent law.” Id. at 1279–80 (quoting Christianson v. Colt
 Indus. Operating Corp., 486 U.S. 800, 809 (1988)). We have
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 10                   INTELLISOFT, LTD. v. ACER AMERICA CORP.




 reached similar conclusions in other cases. See Bd. of Re-
 gents, Univ. of Tex. Sys., ex rel. Univ. of Tex. at Austin v.
 Nippon Tel. & Tel. Corp., 414 F.3d 1358, 1362–63, 1365
 (Fed. Cir. 2005) (state law claim of tortious interference did
 not necessarily require resolution of a federal patent law
 issue just because the plaintiff sought to show ownership
 of information incorporated into its U.S. patent); Krauser
 v. BioHorizons, Inc., 753 F.3d 1263, 1265–67, 1269 (Fed.
 Cir. 2014) (state law claim of ownership of the defendants’
 dental systems allegedly incorporated in the defendants’
 patents did not depend on resolution of a federal patent law
 issue); id. at 1269 (“A claim of ownership does not neces-
 sarily require consideration of patent law inventorship.”
 (emphasis in original)).
     The Tenth Circuit likewise held that using a patent as
 evidence for a misappropriation claim does not give rise to
 section 1338 jurisdiction in Russo v. Ballard Med. Prod.,
 550 F.3d 1004 (10th Cir. 2008). In Russo, the plaintiff al-
 legedly shared trade secrets concerning catheter devices
 with the defendants under a confidential disclosure agree-
 ment. Id. at 1007–08. The plaintiff asserted that the de-
 fendants’ patents misappropriated his trade secrets. Id. at
 1010. The court held that “the fact that patents may be
 used as evidence in aid of a trade secret claim is not the
 same thing as raising a substantial (or really, any) question
 of federal patent law.” Id. (citing Uroplasty, 239 F.3d at
 1280).
     Because Intellisoft’s trade secret claim did not “neces-
 sarily depend[] on resolution of a substantial question of
 federal patent law,” Uroplasty, 239 F.3d at 1279 (quoting
 Christianson, 486 U.S. at 809), we need not address other
 prongs of the Gunn test. The district court did not have
 jurisdiction under section 1338(a), and the state law claims
 could not be removed under section 1441.
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                     11



                  II. Section 1454 Removal
     Acer alternatively claims that removal was proper un-
 der section 1454 because of its inventorship counterclaim.
 Section 1454 provides:
     A civil action in which any party asserts a claim for
     relief arising under any Act of Congress relating to
     patents, plant variety protection, or copyrights
     may be removed to the district court of the United
     States for the district and division embracing the
     place where the action is pending.
 28 U.S.C. § 1454(a). We review de novo and apply Federal
 Circuit law on whether removal was proper under sec-
 tion 1454. See GeoTag, 817 F.3d at 1311.
     Acer argues that the language “action in which any
 party asserts a claim for relief” of section 1454 did not re-
 quire it to plead the counterclaim in an operative cross-
 complaint. According to Acer, what matters is that the
 cross-complaint was purportedly “filed”—received by the
 state court—regardless of whether it was legally operative.
 We disagree.
      We conclude that removal under section 1454, like re-
 moval under section 1441, requires that the claim support-
 ing removal must be contained in an operative pleading.
 Section 1441 allows removal if an action over which the dis-
 trict court would have original jurisdiction was “brought”
 in the state court. Courts have held that a claim is
 “brought” under section 1441 only after the claim support-
 ing federal jurisdiction is pleaded in an operative com-
 plaint as opposed to a proposed amendment. Sullivan v.
 Conway, 157 F.3d 1092, 1094 (7th Cir. 1998) (“Until the
 state judge granted the motion to amend, there was no ba-
 sis for removal. Until then, the complaint did not state a
 federal claim. It might never state a claim, since the state
 judge might deny the motion.”); Freeman v. Blue Ridge Pa-
 per Prod., Inc., 551 F.3d 405, 410 (6th Cir. 2008).
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 12                   INTELLISOFT, LTD. v. ACER AMERICA CORP.




      It is evident that “assert” in section 1454 has the same
 meaning as “brought” in section 1441. In section 1441,
 Congress provided that “[o]nly defendants against whom a
 [federal claim] has been asserted are required to join in or
 consent to the removal.” 28 U.S.C. § 1441(c)(2) (emphasis
 added). Thus, section 1441 itself uses the word “asserted”
 as equivalent to the term “brought.” Similarly, many other
 statutes assume that the “brought” language means that
 the claim giving arise to jurisdiction was asserted. See,
 e.g., 35 U.S.C. § 271(e)(5) (federal courts have “subject mat-
 ter jurisdiction in any action brought” under certain Hatch-
 Waxman provisions); 19 U.S.C. § 1337(f)(2) (the govern-
 ment may recover penalty in “a civil action brought” by the
 International       Trade      Commission);      28    U.S.C.
 § 1332(d)(1)(B), (3)(D) (class action definition and exercise
 of jurisdiction concern an action “brought” by one or more
 representatives). We conclude that removal based on an
 “asserted” claim for relief under section 1454 requires that
 it must be included in an operative pleading.
      A contrary interpretation would mean that the defend-
 ant’s time to file a notice of removal would begin to run
 even if the claim had no effect because it was yet to be made
 part of the case, and would “have the anomalous effect that
 the removed case lacks federal jurisdiction at the time that
 it is removed.” Freeman, 551 F.3d at 410; Carvalho v.
 Equifax Info. Servs., LLC, 629 F.3d 876, 885 (9th Cir. 2010)
 (“It is axiomatic that a case cannot be removed before its
 inception.”); Reyes v. Dollar Tree Stores, Inc., 781 F.3d
 1185, 1189 (9th Cir. 2015) (tentative class certification rul-
 ing had no “jurisdictional effect”). Consistent with this
 view, we have held that the defendant’s right to removal
 depends on the “pleading operative at the time” of removal
 and not on later amendments. Bd. of Regents, 414 F.3d at
 1360 n.* (citing Pullman Co. v. Jenkins, 305 U.S. 534, 537
 (1939)); see also Abada v. Charles Schwab & Co., 300 F.3d
 1112, 1117 (9th Cir. 2002).
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      Here, Acer’s cross-complaint was not a legally opera-
 tive pleading when it removed the action. Under California
 law, Acer could have filed the cross-complaint as a matter
 of right before or at the same time as its answer to the com-
 plaint. Cal. Civ. Proc. Code § 428.50(a). But, after that
 time, Acer was required to “obtain leave of court to file [the]
 cross-complaint.” Id. § 428.50(c). California courts have
 held that a pleading was “ineffective” where the party seek-
 ing to file the pleading did not obtain the required leave of
 court. People v. Oken, 324 P.2d 58, 61 (Cal. Ct. App. 1958);
 see also Morrow v. Carona, No. E030000, 2002 WL
 1832899, at *2 (Cal. Ct. App. Aug. 12, 2002) (unpublished).
 Acer admits that the cross-complaint was not legally oper-
 ative under state law and it would have “needed leave to
 amend to file the counterclaim.” Oral Argument 22:15–21,
 available at http://oralarguments.cafc.uscourts.gov/de-
 fault.aspx?fl=2019-1522.MP3. The district court itself
 agreed that “[Acer’s] cross-complaint did not become oper-
 ative . . . under the California Code of Civil Procedure.” J.A.
 4. Because Acer’s cross-complaint was not operative, it was
 never “asserted” under section 1454 and thus there was no
 basis for removal.
     We reach our conclusion by looking at state law not to
 interpret the patent statute but to determine whether a
 party satisfied the criteria set forth in that statute. This
 approach is consistent with Shamrock Oil & Gas Corp. v.
 Sheets, 313 U.S. 100 (1941), which concerned an earlier and
 different statute, § 28 of the Judiciary Code, 3 that allowed
 “the defendant or defendants” to remove based on diversity
 jurisdiction. Id. at 103–04. There the Supreme Court held
 that the word “defendant” was to be construed under Con-
 gress’s “own criteria, irrespective of local law,” and that its
 meaning excluded the plaintiff who initiated the action



     3   This statute was codified as 28 U.S.C. § 71 at that
 time.
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 14                    INTELLISOFT, LTD. v. ACER AMERICA CORP.




 even if a counterclaim was asserted against him. Id. at
 104, 108. Similarly, here we construe “assert” in sec-
 tion 1454 under Congress’s criteria irrespective of how
 state courts would interpret that word.
      Treating an inoperative patent counterclaim as not be-
 ing “asserted” is consistent with Congressional policy.
 Congress intended to keep claims arising under patent
 laws out of state court proceedings by conferring jurisdic-
 tion to only federal courts. See 28 U.S.C. § 1338(a). Deny-
 ing leave to file a federal patent counterclaim in state court
 is fully consistent with the policy that patent claims should
 not be litigated in state courts. Any refusal to entertain
 federal patent claims in state court would serve the pur-
 pose of limiting state court jurisdiction over federal patent
 claims. We note that if the state court denied leave to file
 the patent counterclaim, Acer would still not have been de-
 prived of its claim because it had “an alternative way to
 present [its] patent claim[] on the merits in federal court: a
 separate federal declaratory judgment action.” Preston v.
 Nagel, 857 F.3d 1382, 1386 (Fed. Cir. 2017).
       As an alternative ground, Acer argues that its
 amended counterclaim filed in federal court after removal
 satisfied section 1454. There is no merit to this argument
 because we have repeatedly held that “[i]t is only the plead-
 ing operative at the time the petition to remove was filed
 . . . that is relevant to determining [the] right to remove[,]”
 not later amendments. Bd. of Regents, 414 F.3d at 1360
 n.* (discussing §§ 1338 and 1441 removal); Air Measure-
 ment Techs., Inc. v. Akin Gump Strauss Hauer & Feld,
 L.L.P., 504 F.3d 1262, 1268 n.8 (Fed. Cir. 2007) (same); see
 also Additive Controls & Measurement Sys., Inc. v. Flow-
 data, Inc., 986 F.2d 476, 477 (Fed. Cir. 1993). Section 1454
 includes no language that justifies a treatment different
 from other removal statutes.
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 INTELLISOFT, LTD. v. ACER AMERICA CORP.                   15



     Accordingly, we hold that Acer’s removal under sec-
 tion 1454 was improper because the October 30, 2017,
 cross-complaint was not legally operative.
                        CONCLUSION
     For the foregoing reasons, we vacate the district court’s
 judgment and reverse its denial of Intellisoft’s motion to
 remand. We need not resolve the question of whether re-
 moval was timely. On remand, the district court must re-
 mand the action to California state court. 4
         VACATED, REVERSED, AND REMANDED
                            COSTS
     Costs to the appellants.




     4    In ordering remand to state court, we, of course, do
 not express any opinion concerning the merits of Intelli-
 soft’s state law claims.
