Geotag appealed the district court’s decision: (1) dismissing Google’s declaratory judgment complaint while retaining jurisdiction over GeoTag’s infringement counterclaims; and (2) granting summary judgment of non-infringement by Google. In response to the filing of Google’s declaratory judgment action, GeoTag filed an infringement counterclaim against Google and filed a motion to dismiss Google’s complaint for lack of subject matter jurisdiction. GeoTag further contended that its counterclaim, being compulsory, rather than permissible, should also be dismissed if Google’s complaint is dismissed. The district court held that it did have subject matter jurisdiction over Google’s complaint, and, even if did not, GeoTag’s counterclaims are permissive and therefore the court would retain jurisdiction over them in any event.
The Federal Circuit affirmed the jurisdictional issues, but for different reasons. First, it held that, because jurisdiction is based on 28 U.S.C. § 1338(a), which presents issues unique to patent law, Federal Circuit law applies, not the law of the regional circuit. Next, the court held that, because the district court retained jurisdiction over GeoTag’s counterclaims, it did not need to determine whether the court also had jurisdiction over Google’s declaratory judgment complaint. Moreover, because GeoTag had actually charged Google with infringement, there was a case or controversy adequate to support jurisdiction. As to GeoTag’s argument that because its counterclaims are compulsory, the district court could not retain jurisdiction over its counterclaims if it dismissed Google’s complaint, the court held that it has never addressed the issue of whether a counterclaim’s status as compulsory or permissive is relevant to retaining jurisdiction and nothing in the text of Section 1338 suggests that Congress conditioned its grant of jurisdiction on the compulsory or permissive nature of the counterclaim.
Lastly, the court affirmed the district court’s grant of summary judgment of non-infringement, because Google’s accused methods differed from the claimed methods.
Microsoft Corporation v. Geotag, Inc., Case No. 2015-1140 (April 1, 2016); Opinion by: Wallach, joined by Lourie and Stoll; Appealed From: United States District Court for the District of Delaware, Andrews, J. Read the full opinion here.
