Geotag loses at CAFC
As to jurisdiction, Madey v. Duke is cited:
“A procedural question
not unique to patent law”
is governed by the law of the regional circuit.
See, e.g., Madey v. Duke Univ., 307 F.3d 1351, 1358 (Fed. Cir.
2002). The denial of
a motion to dismiss
normally raises a
not unique to patent law.
See, e.g., Intel Corp. v. Commonwealth Sci. & Indus. Research Org.,
455 F.3d 1364, 1369 (Fed. Cir. 2006). However, the
motion to dismiss in this case requires the court to deter-
mine whether this dispute arises under 28 USC 1338(a).
Section 1338(a) states in relevant part that the District
Court “shall have original jurisdiction of any civil
action arising under any Act of Congress relating to
patents.” 28 U.S.C. § 1338(a). Whether a civil action
arises under an act of Congress related to patents necessarily
presents an issue that is unique to patent law. See
Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d
1356, 1359 (Fed. Cir. 1999) (en banc in relevant part) (“[A]
procedural issue that is not itself a substantive patent law
issue is nonetheless governed by Federal Circuit law if the
issue pertains to patent law, . . . if it bears an essential
relationship to matters committed to our exclusive control
by statute, . . . or if it implicates the jurisprudential
responsibilities of this court in a field within its exclusive
jurisdiction.” (internal quotation marks, brackets, and
citations omitted)); Mars Inc. v. Kabushiki-Kaisha Nippon
Conlux, 24 F.3d 1368, 1371 (Fed. Cir. 1994)
Therefore, Federal Circuit law applies to the jurisdiction
question in this appeal.
As to jurisdiction through counterclaims
With respect to its patent infringement counterclaims,
GeoTag alleges that they “cannot serve as an independent
basis for jurisdiction.” Appellant’s Br. 34. However,
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.
The District Court retained subject matter jurisdiction
over GeoTag’s patent infringement counterclaims
pursuant to § 1338(a), such that we need not determine
whether the District Court properly found that it had
jurisdiction over Google’s First Amended Complaint.
GeoTag’s counterclaims charged Google with infringement
of the ’474 patent and sought money damages for
infringement. J.A. 5583–86.
As to compulsory/permissive:
Finally, GeoTag challenges the District Court’s finding
that its counterclaims are permissive. In particular,
GeoTag alleges that, “[e]ven if a permissi[ve] counterclaim
could create jurisdiction, it makes no difference because
GeoTag’s counterclaims were compulsory.” Appellant’s
Br. 38 (discussing GeoTag, 2014 WL 4312167, at *3–4);
see id. at 38–40 (arguing that GeoTag’s counterclaims
were compulsory). Because its counterclaims are compulsory,
GeoTag continues, the District Court could not
retain subject matter jurisdiction over its patent infringement
counterclaims. See id. at 38.
But the CAFC said:
The District Court and GeoTag offer a distinction
based on counterclaim status that has no bearing on the
question of jurisdiction under 28 U.S.C. § 1338. We have
not addressed whether a counterclaim’s permissive or
compulsory status is relevant to retaining jurisdiction
under 28 U.S.C. § 1338. However, nothing in the text of
section 1338 suggests that Congress conditioned its grant
of jurisdiction to the District Court on the compulsory or
permissive nature of the counterclaim. 28 U.S.C.
§ 1338(a). Nor would the distinction make sense in disputes
before the District Court, which has “original jurisdiction
of any civil action,” § 1338(a) (emphasis added),
regardless of the counterclaim status, Fed. R. Civ. P.
13(a)–(b) (permitting parties to file compulsory and
permissive counterclaims before the District Court).
Bottom line: We have considered GeoTag’s remaining arguments
and find them unpersuasive. Accordingly, the decision of
the United States District Court for the District of Delaware