Microsoft Corporation et al. / Google Inc. v. Geotag, Inc.

Docket No. 2015-1140

April 1, 2016

Brief Summary: DC found to have jurisdiction under Federal Circuit law (28 USC § 1338(a)), not Third Circuit law, because the “question is unique to patent law”. It also found no error with the DC grant of SJ of no infringement (DC did not add new limitations or “improperly import[] parent-child limitation[s] into the asserted independent claims”.

Summary: GeoTag appealed DC had subject matter jurisdiction over Google’s complaint seeking a DJ that US 5,930,474 encompassing “systems and methods of searching online information within a geographically and topically organized database” is invalid and not infringed, and GeoTag’s counterclaims alleging infringement of the ‘474 patent by Google AdWords. Geotag also appealed DC grant of SJ of no infringement of the ‘474 patent by Google. The FC panel first concluded that the DC erred in determining that Third Circuit law governs whether it had jurisdiction, finding instead that “Federal Circuit law applies to the jurisdiction question in this appeal” because the “question is unique to patent law” (28 USC § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.”)), but concluded the DC had jurisdiction (“where a complaint and a counterclaim both raise issues arising under federal patent law, the district court may retain subject matter jurisdiction over the counterclaim pursuant to 28 U.S.C. § 1338(a), even if the district court later dismisses or finds a defect in the complaint that raises a question arising under federal patent law.”) Reviewing the grant of SJ under the law of the Third Circuit (as it involves an issue not unique to patent law, Classen Immunotherapies (FC 2015)), it found the DC properly concluded Google’s AdWords did not infringe the ‘474 claims (e.g., the DC did not add a new limitation; “the absence of evidence supporting a particular fact does not equate to affirmative evidence of a genuine dispute as to a material fact, such that a grant of summary judgment is improper” (Cf. Zenith Elecs., FC 2008); “GeoTag’s argument would read the dynamic replication limitation out of the ‘474 patent’s claims”). GeoTag also argued the DC “improperly imported [] parent-child limitation[s] into the asserted independent claims” but the FC panel found those constructions “played no role in its grant of” SJ. The DC decision was therefore affirmed.

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