Microsoft Corporation v. Geotag, Inc.
817 F.3d 1305
| Fed. Cir. | 2016Background
- GeoTag owns U.S. Patent No. 5,930,474, which claims systems/methods for geographically and topically organized searching; a key claim element requires that, after searching a narrower geographic area, the system "dynamically replicat[e]" results from a broader area into the narrower-area results.
- GeoTag sued numerous parties (including customers of Google) in Texas; Google filed a declaratory-judgment complaint in D. Del. seeking a ruling that the ’474 patent is invalid and not infringed by Google products.
- GeoTag counterclaimed in D. Del., alleging Google AdWords directly infringed the ’474 patent; AdWords searches the entire ad database then progressively filters results (rather than first searching a narrow area and then adding broader-area results).
- The District Court granted summary judgment of noninfringement, finding AdWords does not practice the patent’s "dynamic replication" limitation because it performs a broad search and filters rather than adding broader-area results into a narrower-area search.
- GeoTag moved to dismiss for lack of subject-matter jurisdiction over Google’s declaratory complaint; the District Court denied the motion and held it retained jurisdiction over GeoTag’s patent-counterclaims. GeoTag appealed.
- The Federal Circuit affirmed: it held Federal Circuit law governs the §1338(a) jurisdictional question; the court retained jurisdiction over GeoTag’s patent counterclaims; and the summary judgment of noninfringement was proper.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether D. Del. had jurisdiction over Google’s declaratory-judgment complaint under 28 U.S.C. §1338(a) | Google: Complaint raises patent questions (invalidity/noninfringement), so federal patent jurisdiction exists | GeoTag: First Amended Complaint’s allegations insufficient to create a substantial, immediate controversy warranting declaratory relief | Fed. Cir. did not need to resolve this question; Federal Circuit law governs the issue, but court affirmed District Court’s jurisdictional findings on alternative grounds (see counterclaims) |
| Whether §1338(a) allows the district court to retain jurisdiction over GeoTag’s patent counterclaims even if complaint were defective | Google: Both complaint and counterclaims invoke patent law; §1338(a) covers counterclaims that arise under patent law | GeoTag: Counterclaims cannot independently establish jurisdiction; counterclaims were compulsory so cannot rescue jurisdiction | Court: §1338(a) permits jurisdiction over counterclaims that arise under patent law; because GeoTag’s counterclaims plainly alleged patent infringement, the court retained jurisdiction |
| Relevance of counterclaim status (permissive vs compulsory) to retaining §1338(a) jurisdiction | District Court/Google: permissive status supports retention; permissive/compulsory distinction is procedural and irrelevant to §1338(a) scope | GeoTag: counterclaims were compulsory, which (it argued) prevents retention of jurisdiction | Court: Whether a counterclaim is permissive or compulsory does not affect §1338(a); statute confers original jurisdiction over civil actions arising under patent law regardless of counterclaim status |
| Whether summary judgment of noninfringement was proper ("dynamic replication" limitation) | Google: AdWords performs a single broad search of all ads and then filters results; it does not practice dynamic replication (which requires including narrow-area results then automatically adding broader-area results) | GeoTag: Dynamic replication can be met by actions of filtering or by a single search that effectively gathers both narrow and broad-area entries; District Court improperly required multiple searches/treated filtering as not a search | Court: Affirmed summary judgment—AdWords’ broad search-plus-filtering does not satisfy the patent’s dynamic-replication limitation (which requires adding broader-area results into a narrower-area search); no reasonable jury could find infringement |
Key Cases Cited
- Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir.) (treatment of declaratory-judgment/counterclaim jurisdiction matters)
- Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826 (Sup. Ct.) (well-pleaded complaint rule and limits of counterclaims to confer federal-question jurisdiction)
- Cardinal Chemical Co. v. Morton International, Inc., 508 U.S. 83 (Sup. Ct.) (case-or-controversy requirement supports counterclaim jurisdiction)
- Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir.) (when procedural questions implicate patent law, Federal Circuit law applies)
- Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358 (Fed. Cir.) (standard of review for dismissal for lack of subject-matter jurisdiction)
- Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308 (Fed. Cir.) (standard for reviewing summary judgment of noninfringement)
- Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir.) (literal infringement requires every claim limitation be present)
- Duramed Pharmaceuticals, Inc. v. Paddock Laboratories, Inc., 644 F.3d 1376 (Fed. Cir.) (doctrine of equivalents analysis)
- Augme Technologies, Inc. v. Yahoo! Inc., 755 F.3d 1326 (Fed. Cir.) (cannot show infringement by producing same result via different method)
- Advanced Cardiovascular Systems, Inc. v. Scimed Life Systems, Inc., 261 F.3d 1329 (Fed. Cir.) (appellate practice: do not address claim-construction issues that did not affect the judgment)