MICROSOFT CORPORATION, TALEO CORPORATION, Plaintiffs GOOGLE INC., Plaintiff-Appellee
GEOTAG, INC., Defendant-Appellant
from the United States District Court for the District of
Delaware in No. 1:11-cv-00175-RGA, Judge Richard G. Andrews..
JOSEFFER, King & Spalding LLP, Washington, DC, argued for
plaintiff-appellee. Also represented by PAUL ALESSIO MEZZINA;
ADAM CONRAD, Charlotte, NC; ROBERT A. VAN NEST, ASIM
BHANSALI, MATTHIAS A. KAMBER, Keker & Van Nest, LLP, San
WILSON REESE, Reese Gordon, Dallas, TX, argued for
defendant-appellant. Also represented by ADAM COOPER
SANDERSON, KENDAL CATHERINE SIMPSON.
LOURIE, WALLACH, and STOLL, Circuit Judges.
Wallach, Circuit Judge.
GeoTag, Inc. (" GeoTag" ) appeals the decision of
the United States District Court for the District of Delaware
(" District Court" ) finding that it had subject
matter jurisdiction over (1) Appellee Google Inc.'s
(" Google" ) First Amended Complaint, which sought
a declaratory judgment that U.S. Patent No. 5,930,474 ("
the '474 patent" ) (J.A. 89-133) is invalid and not
infringed by Google; and (2) GeoTag's counterclaims,
which alleged that Google infringed the '474 patent.
See Microsoft Corp. v. GeoTag, Inc., No.
11-175-RGA, 2014 WL 4312167 (D. Del. Aug. 29, 2014). GeoTag
also challenges the District Court's decision granting
summary judgment that Google did not infringe the '474
patent. See Microsoft Corp. v. GeoTag,
Inc., No. 11-175-RGA (D. Del. Apr. 10, 2014) (J.A.
45-63). We affirm the District Court, although we find
jurisdiction on different grounds.
The '474 Patent
'474 patent claims systems and methods of searching
online information within a geographically and topically
database. '474 patent, Abstract. The specification
describes a preferred embodiment that organizes websites and
files within a directory-like structure of folders
categorized by geography and topic. Id. col. 19 ll.
52-57; see also id. fig.10. In that embodiment, an
Internet user may navigate to a folder labeled for a
particular geographic area and then conduct a topical search
within that area, such as for " information about
specific goods and services in the geographic location."
Id., Abstract. Independent claim 1 is illustrative
A system which associates on-line information with geographic
areas, said system comprising:
a computer network wherein a plurality of computers have
access to said network; and
an organizer executing in said computer network, wherein said
organizer is configured to receive search requests from any
one of said plurality of computers, said organizer
a database of information organized into a hierarchy of
geographical areas wherein entries corresponding to each one
of said hierarchy of geographical areas is further organized
into topics; and
a search engine in communication with said database, said
search engine configured to search geographically and
topically, said search engine further configured to [s]elect
one of said hierarchy of geographical areas prior to
selection of a topic so as to provide a geographical search
area wherein within said hierarchy of geographical areas at
least one of said entries associated with a [broader]
geographical area is dynamically replicated into at
least o[n]e narrower geographical area, said search engine
further configured to search said topics within said selected
geographical search area.
Id. col. 38 ll. 36-58 (emphasis added to reflect
disputed claim language). Importantly, the " dynamically
replicated" limitation occurs after the system conducts
a search within a limited geographic area. Id. col.
38 ll. 47-58. Through that limitation, the system includes
search results associated with the narrow geographic area and
then automatically adds results associated with a broader
geographic area. Id. col. 38 ll. 55-58.
appeal is an outgrowth of litigation that began in the United
States District Court for the Eastern District of Texas in
December 2010. In the Texas actions, " GeoTag sued more
than 300 entities in ten separate complaints . . . based on
store locator services used by the entities but, for some of
the defendants, provided by Microsoft [Corporation ("
Microsoft" )] and Google."  GeoTag,
2014 WL 4312167, at *1 (citation omitted). GeoTag alleged in
those actions that Google's customers infringed the
'474 patent. See, e.g., J.A. 5000.
In response to GeoTag's suits [in Texas against
Google's customers], Google . . . filed a declaratory
judgment action against
GeoTag" in the District Court. GeoTag, 2014 WL
4312167, at *1 (citation omitted). The Complaint sought a
declaratory judgment that the '474 patent " is
invalid and is not infringed by the use of [Google's] web
mapping services." J.A. 5192.
answered Google's Complaint and counterclaimed that
Google AdWords--an online platform for displaying
advertisements to users that conduct a search on Google's
website--directly infringes the '474 patent.
GeoTag, 2014 WL 4312167, at *1 (citation omitted);
J.A. 5577-87 (GeoTag's Answer and Counterclaims). In
relevant part, AdWords runs a search against its "
entire database" of ads, " yield[ing] all possible
results" that are then " progressively filtered