Microsoft Corporation v. Geotag, Inc. , 817 F.3d 1305 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
MICROSOFT CORPORATION,
TALEO CORPORATION,
Plaintiffs
GOOGLE INC.,
Plaintiff-Appellee
v.
GEOTAG, INC.,
Defendant-Appellant
______________________
2015-1140
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:11-cv-00175-RGA, Judge
Richard G. Andrews.
______________________
Decided: April 1, 2016
______________________
DARYL 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 Francisco, CA.
2 MICROSOFT CORP. v. GEOTAG, INC.
JOEL WILSON REESE, Reese Gordon, Dallas, TX, ar-
gued for defendant-appellant. Also represented by ADAM
COOPER SANDERSON, KENDAL CATHERINE SIMPSON.
______________________
Before LOURIE, WALLACH, and STOLL, Circuit Judges.
WALLACH, Circuit Judge.
Appellant GeoTag, Inc. (“GeoTag”) appeals the deci-
sion 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.
BACKGROUND
I. The ’474 Patent
The ’474 patent claims systems and methods of
searching online information within a geographically and
topically organized database. ’474 patent, Abstract. The
specification describes a preferred embodiment that
organizes websites and files within a directory-like struc-
ture 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 par-
ticular geographic area and then conduct a topical search
within that area, such as for “information about specific
MICROSOFT CORP. v. GEOTAG, INC. 3
goods and services in the geographic location.” Id., Ab-
stract. Independent claim 1 is illustrative and describes
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 net-
work, wherein said organizer is configured to
receive search requests from any one of said
plurality of computers, said organizer com-
prising:
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 config-
ured to search geographically and topical-
ly, said search engine further configured
to [s]elect one of said hierarchy of geo-
graphical areas prior to selection of a topic
so as to provide a geographical search area
wherein within said hierarchy of geo-
graphical 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 geograph-
ical search area.
4 MICROSOFT CORP. v. GEOTAG, INC.
Id. col. 38 ll. 36–58 (emphasis added to reflect disputed
claim language). 1 Importantly, the “dynamically replicat-
ed” 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.
II. Procedural History
This 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, “Ge-
oTag sued more than 300 entities in ten separate com-
plaints . . . based on store locator services used by the
entities but, for some of the defendants, provided by
Microsoft [Corporation (“Microsoft”)] and Google.” 2 Ge-
oTag, 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 judg-
ment action against GeoTag” in the District Court. Ge-
oTag, 2014 WL 4312167, at *1 (citation omitted). The
Complaint sought a declaratory judgment that the ’474
1 In April 2002, the United States Patent and
Trademark Office issued a certificate of correction that
corrected certain errors in claim 1 of the ’474 patent. J.A.
133. Those corrections are reflected in brackets in the
passage quoting claim 1.
2 All claims by and against Microsoft have been
severed and dismissed by stipulation and, thus, are not
part of this appeal. J.A. 7790.
MICROSOFT CORP. v. GEOTAG, INC. 5
patent “is invalid and is not infringed by the use of
[Google’s] web mapping services.” J.A. 5192.
GeoTag answered Google’s Complaint and counter-
claimed 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[] using factors such as geog-
raphy.” J.A. 61; see J.A. 59–60 (providing a technical
description of the AdWords system).
Google moved for summary judgment that it did not
infringe independent claims 1, 20, and 31 (“the asserted
independent claims”) and dependent claims 3, 5, 9–15,
18–19, 24–25, 32, and 36–38 of the ’474 patent, which the
District Court granted. J.A. 57, 63. 3 The District Court
held that AdWords does not practice the “dynamically
replicated” limitation in claim 1 of the ’474 patent because
it does not search a narrow geographic area and automat-
ically add results from a broader area; instead, it was
“uncontested” that AdWords conducts a broad search for
“all responsive ads” and then “consecutively filters” the
results. 4 J.A. 60–61; see J.A. 61 (“Therefore, Google’s
3 The District Court issued its summary judgment
decision under seal; however, GeoTag appended the
decision to the public version of its opening brief and
redacted only certain portions of the document, to which
Google did not object. Appellant’s App. 14–32. According-
ly, the non-redacted portions of the District Court’s sum-
mary judgment decision are in the public domain.
4 The District Court found that, because the assert-
ed independent claims each require a form of dynamic
6 MICROSOFT CORP. v. GEOTAG, INC.
accused system does not trace up linkages in a hierarchy,
or repeat the search in order to obtain results from a
broader geographic area, as the claim limitation would
require, and thus cannot meet the ‘dynamic replication’
requirement of the ’474 [p]atent.”)
Shortly before the District Court issued its summary
judgment decision, this court addressed declaratory
judgment relief in Microsoft Corp. v. DataTern, Inc., 755
F.3d 899 (Fed. Cir. 2014). The District Court obtained
additional briefing on DataTern from Google and GeoTag.
J.A. 180–81 (oral order requesting additional briefing),
7103–06 (Google), 7791–93 (GeoTag). It subsequently
permitted Google to file its First Amended Complaint.
J.A. 7634–35 (Order), 7636–48 (First Amended Com-
plaint).
GeoTag in turn filed a Motion to Dismiss the First
Amended Complaint, asserting that the District Court
lacked subject matter jurisdiction over the action.
J.A. 7698–99. Specifically, GeoTag asserted that “[t]he
minimal additional allegations” in the First Amended
Complaint did not establish a substantial controversy
between GeoTag and Google “of sufficient immediacy and
reality to warrant the issuance of a declaratory judg-
ment.” GeoTag, 2014 WL 4312167, at *1–2 (internal
quotation marks and citation omitted). GeoTag also
alleged its counterclaims against Google “were compulso-
ry, [not permissive,] and therefore should be dismissed if
replication, its “analysis applies equally to” each of those
claims. J.A. 58 n.5. And because the District Court found
that Google did not infringe any of the asserted independ-
ent claims, it held that “the dependent claims cannot, by
definition, be infringed.” J.A. 58 n.5 (citing Muniauction,
Inc. v. Thomson Corp., 532 F.3d 1318, 1328 n.5 (Fed. Cir.
2008)).
MICROSOFT CORP. v. GEOTAG, INC. 7
the declaratory judgment action lacks subject matter
jurisdiction.” 5 Id. at *3.
The District Court denied GeoTag’s Motion, finding
that Google’s First Amended Complaint established a
substantial controversy of sufficient immediacy to war-
rant declaratory relief and, thus, that it possessed subject
matter jurisdiction over the action. Id. at *2–3. The
District Court also held that, even if the First Amended
Complaint did not establish sufficient grounds for declar-
atory relief, “there would still be an independent basis for
subject matter jurisdiction over the counterclaims.” Id.
at *3 (footnote omitted). In reaching the conclusion that
it possessed subject matter jurisdiction over GeoTag’s
counterclaims, the District Court found the counterclaims
permissive, rather than compulsory, under Federal Cir-
cuit law and held that it retained subject matter jurisdic-
tion over the counterclaims under Third Circuit law. Id.
at *4 (“Whether I retain subject matter jurisdiction over a
permissive counterclaim is a procedural issue to which
Federal Circuit law does not apply.” (citing Woods v.
DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1279 (Fed.
Cir. 2012)).
Following the denial of its Motion to Dismiss Google’s
First Amended Complaint, GeoTag stipulated to the entry
of final judgment based on the District Court’s summary
5 Federal Rule of Civil Procedure 13 defines a
“compulsory counterclaim” as a “claim that—at the time
of its service—the pleader has against an opposing party”
that “arises out of the transaction or occurrence that is
the subject matter of the opposing party’s claim” and
“does not require adding another party over whom the
court cannot acquire jurisdiction.” Fed. R. Civ. P.
13(a)(1)(A)–(B). A “permissive counterclaim” includes
“any claim that is not compulsory.” Fed. R. Civ. P. 13(b).
8 MICROSOFT CORP. v. GEOTAG, INC.
judgment ruling. J.A. 32–34. GeoTag timely appealed
the District Court’s final judgment. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1) (2006). 6
DISCUSSION
I. Jurisdiction
A. Choice of Law
Before we address whether the District Court pos-
sessed subject matter jurisdiction over GeoTag’s patent
infringement counterclaims pursuant to 28 U.S.C.
§ 1338(a), we must first determine whether our law or
that of the Third Circuit applies to the jurisdiction ques-
tion. We find that the District Court erred in determining
that Third Circuit law governs whether it had jurisdic-
tion. See GeoTag, 2014 WL 4312167, at *4.
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
procedural question 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 U.S.C.
6 In passing the Leahy-Smith America Invents Act
(“AIA”), Congress amended 28 U.S.C. §§ 1295 and 1338.
Pub. L. No. 112-29, § 19(a)–(b), 125 Stat. 284, 331–32
(2011). However, because those amendments apply only
to civil actions commenced on or after September 16,
2011, the pre-AIA versions of 28 U.S.C. §§ 1295 and 1338
apply to this appeal. See id. § 19(e), 125 Stat. at 333; see
also J.A. 5192 (Google’s Complaint, which it filed on
March 1, 2011).
MICROSOFT CORP. v. GEOTAG, INC. 9
§ 1338(a), for both Google’s First Amended Complaint and
GeoTag’s counterclaims assert jurisdiction on the basis of
that statute. J.A. 7638 (Google’s First Amended Com-
plaint), 5580 (GeoTag’s Counterclaims).
Section 1338(a) states in relevant part that the Dis-
trict 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 neces-
sarily 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) (“The issue
whether the district court had jurisdiction [under § 1338]
to hear Mars’ claim of Japanese patent infringement is of
importance to the development of the patent law and is
clearly a matter that falls within the exclusive subject
matter responsibility of this court.” (internal quotation
marks and citations omitted)); see also Helfgott & Karas,
P.C. v. Dickinson, 209 F.3d 1328, 1333–34 (Fed. Cir. 2000)
(explaining that whether an action arises under the scope
§ 1338 presents a question that is unique to patent law).
Therefore, Federal Circuit law applies to the jurisdiction
question in this appeal.
10 MICROSOFT CORP. v. GEOTAG, INC.
B. The District Court Retained Subject Matter Jurisdic-
tion over GeoTag’s Patent Infringement Counterclaims
Pursuant to 28 U.S.C. § 1338(a)
“This court reviews a grant or denial of a motion to
dismiss for lack of subject matter jurisdiction de novo.”
Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358,
1361 (Fed. Cir. 2009) (citation omitted). We review factu-
al findings underlying the jurisdiction determination for
clear error. See SanDisk Corp. v. STMicroelecs., Inc., 480
F.3d 1372, 1377 (Fed. Cir. 2007).
GeoTag principally argues that the District Court
lacked subject matter jurisdiction over Google’s First
Amended Complaint, which seeks a declaratory judgment
that the ’474 patent is invalid and not infringed by
Google. Appellant’s Br. 20–40. If the District Court lacks
such jurisdiction, GeoTag continues, then it also lacks
jurisdiction over GeoTag’s patent infringement counter-
claims. Id. at 21. GeoTag therefore argues that the
District Court’s “judgment should be vacated.” Id. at 20.
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. 7 See
7 We similarly possess subject matter jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1) over counterclaims
accompanied by a complaint raising a question arising
under federal patent law, for “the Federal Circuit’s juris-
diction is fixed with reference to that of the district court,
MICROSOFT CORP. v. GEOTAG, INC. 11
Holmes Group, 535 U.S. at 833–34 & n.4, superseded by
statute, AIA § 19(a)–(b), 125 Stat. at 331–32. 8 Indeed,
Holmes Group expressly distinguished cases like the
instant appeal where both the complaint and counter-
claims raise issues arising under federal patent law from
those cases where only the counterclaims do so. See 535
U.S. at 834 n.4.
The District Court retained subject matter jurisdic-
tion 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 infringe-
ment of the ’474 patent and sought money damages for
infringement. J.A. 5583–86. Accordingly, GeoTag’s
counterclaim arose under an “Act of Congress relating to
and turns on whether the action arises under federal
patent law.” Holmes Grp., Inc. v. Vornado Air Circulation
Sys., Inc., 535 U.S. 826, 829 (2002) (footnote omitted).
8 GeoTag asserts that Holmes Group ushered in a
change in law that precludes federal courts from looking
to counterclaims to determine jurisdiction. Appellant’s
Br. 36. GeoTag’s argument reflects an overly broad
reading of Holmes Group. In that decision, the Supreme
Court addressed whether counterclaims can provide
jurisdiction over a complaint that does not raise a ques-
tion arising under federal patent law. 535 U.S. at 831–32.
The Supreme Court applied the well-pleaded complaint
rule to determine that they could not. Id. Here, the well-
pleaded complaint rule is satisfied because Google’s First
Amended Complaint unquestionably raises issues arising
under federal patent law—i.e., whether the ’474 patent is
invalid and not infringed by Google. J.A. 7636–48.
12 MICROSOFT CORP. v. GEOTAG, INC.
patents,” 28 U.S.C. § 1338(a), and so the District Court
retained jurisdiction over those claims, irrespective of any
dismissal or defect in Google’s First Amended Complaint.
Further, as GeoTag “actually charged [Google] with
infringement of the patent, there is, necessarily, a case or
controversy adequate to support jurisdiction” under
Article III. See Cardinal Chem. Co. v. Morton Int’l, Inc.,
508 U.S. 83, 96 (1993). Thus, even assuming that the
First Amended Complaint was dismissed or deficient in
some respect, the District Court retained subject matter
jurisdiction over GeoTag’s patent infringement counter-
claims.
GeoTag’s other arguments do not require us to find
that the District Court lacked subject matter jurisdiction.
Specifically, GeoTag contends that the District Court’s
decision would “effectively reverse DataTern” by allowing
a counterclaim to “retroactively establish[] jurisdiction”
over a declaratory judgment complaint. Appellant’s
Br. 35. DataTern is inapposite. In that decision, we held
that conditional counterclaims could not establish juris-
diction to address the claims in a declaratory judgment
complaint. 755 F.3d at 906. We did not consider the
distinct question of whether a district court could retain
subject matter jurisdiction over a counterclaim if a com-
plaint is dismissed or deemed defective. See generally id.
Finally, GeoTag challenges the District Court’s find-
ing 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 compul-
sory, GeoTag continues, the District Court could not
retain subject matter jurisdiction over its patent in-
fringement counterclaims. See id. at 38.
MICROSOFT CORP. v. GEOTAG, INC. 13
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 dis-
putes before the District Court, which has “original juris-
diction 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).
II. The District Court Properly Granted Summary Judg-
ment
The review of a grant of summary judgment involves
an issue not unique to patent law, so we look to the law of
the regional circuit in which the district court sits. Clas-
sen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d
892, 896 (Fed. Cir. 2015). In the Third Circuit, the court
reviews the grant of summary judgment de novo. See Al–
Sharif v. U.S. Citizenship & Immigration Servs., 734 F.3d
207, 210 n.2 (3d Cir. 2013) (en banc). The Third Circuit
affirms the grant of summary judgment if “the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law.” Gonzalez v. Sec’y of Dep’t of Homeland Sec., 678
F.3d 254, 261 (3d Cir. 2012) (quoting Fed. R. Civ. P.
56(a)). A genuine dispute over a material fact exists when
“the evidence is such that a reasonable jury could return a
verdict for the nonmoving party.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986); see Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986).
14 MICROSOFT CORP. v. GEOTAG, INC.
“[O]n appeal from a grant of summary judgment of
noninfringement, we must determine whether . . . the
district court correctly concluded that no reasonable jury
could find [literal] infringement” or infringement under
the doctrine of equivalents. Crown Packaging Tech., Inc.
v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed.
Cir. 2009) (internal quotation marks and citation omit-
ted). “To establish literal infringement, every limitation
set forth in a claim must be found in an accused product,
exactly,” Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed. Cir. 1995) (citation omitted),
whereas under the doctrine of equivalents infringement
occurs when “there is equivalence between the elements
of the accused product . . . and the claimed elements of the
patented invention,” Duramed Pharm., Inc. v. Paddock
Labs., Inc., 644 F.3d 1376, 1380 (Fed. Cir. 2011) (internal
quotation marks and citation omitted).
A. The District Court Properly Held that Google’s Ad-
Words Does Not Infringe the ’474 Patent
GeoTag’s infringement allegations principally concern
the “dynamically replicated” limitation in claim 1 of the
’474 patent. As previously mentioned, the “dynamically
replicated” limitation occurs after the system conducts a
search within a limited geographic area. ’474 patent col.
38 ll. 36–58. 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.
GeoTag alleges that the District Court erred in grant-
ing summary judgment that Google did not infringe the
’474 patent. Specifically, GeoTag argues that (1) “the
[D]istrict [C]ourt erroneously added new limitations,
including that dynamic replication requires at least two
searches and that one of those searches must be inherited
into the other search,” Appellant’s Br. 60, and (2)
“Google’s AdWords System practices dynamic replication,”
MICROSOFT CORP. v. GEOTAG, INC. 15
id. at 64. It also contends that the District Court “wrong-
ly substituted itself for the jury by finding that ‘filtering’
is not a search.” Id. at 68.
The District Court properly granted summary judg-
ment. AdWords searches its “entire database” of ads
without geographic limitation, identifies “all possible
results” independent of geographic restrictions, and then
“consecutively filters” those results by, among other
things, eliminating results not associated with the target-
ed geographic areas. J.A. 61. Because AdWords searches
its entire database without regard to geography and then
filters the results, rather than searches only within a
targeted geographic area and automatically adds results
from outside that area in the manner claimed by the ’474
patent, AdWords does not practice “dynamic replication”
under any construction of that limitation. J.A. 60–62.
Indeed, AdWords’s performance of a broad search of all
possible ads, without regard to geography, means that it
has no need or opportunity to “dynamically replicat[e]”
entries from a broader geographic area into a narrower
one, as the ’474 patent claims. J.A. 58 n.5. Thus, no
reasonable jury could find that AdWords infringes the
’474 patent.
GeoTag’s arguments do not warrant a different con-
clusion. GeoTag first contends that the District Court
added a new limitation by requiring dynamic replication
to be implemented through multiple searches. Appel-
lant’s Br. 60–64. The District Court made no such hold-
ing. The ’474 patent’s claims require both a search and a
dynamic replication at the time of the search. ’474 patent
col. 38 ll. 47–58. The District Court required some action
in AdWords—apart from its broad search of its entire
database of ads—that could qualify as dynamic replica-
tion and found none. J.A. 61 (“Google’s accused system
does not trace up linkages in a hierarchy, or repeat the
search in order to obtain results from a broader geograph-
ic area.” (emphasis added)).
16 MICROSOFT CORP. v. GEOTAG, INC.
Similarly, GeoTag argues that the District Court
erred in assuming that filtering is not a search. Appel-
lant’s Br. 68–72. That argument incorrectly assumes that
the District Court required a second search. It did not.
J.A. 60–62. Moreover, AdWords’s progressive filtering of
the results of its search could not qualify as dynamic
replication because that filtering eliminates ads from the
search results, rather than adds to them as dynamic
replication requires under the ’474 patent. J.A. 61.
GeoTag next asserts that AdWords practices dynamic
replication when it “filters adgroups by those not being
geo-targeted, campaigns with adgroups associated with a
broader geographical area . . . are dynamically replicat-
ed . . . into the search area at the location of the user.”
Appellant’s Br. 71; see also J.A. 61 (where GeoTag pre-
sented the same argument to the District Court). The
District Court properly rejected that argument as looking
“only to the result of Google’s accused system and not its
method.” J.A. 61. To infringe, AdWords would have to
produce results by performing all of the claim limitations,
including dynamically replicating ads associated with
broader areas into the results for narrower areas. See
Duramed Pharm., 644 F.3d at 1380 (discussing infringe-
ment under the doctrine of equivalents); Southwall
Techs., 54 F.3d at 1575 (discussing literal infringement).
Merely producing that same result in a different way does
not suffice. See Augme Techs., Inc. v. Yahoo! Inc., 755
F.3d 1326, 1336 (Fed. Cir. 2014).
Finally, GeoTag asserts that “there is nothing in the
[’474] patent that would exclude the practice of dynamic
replication through the use of a single search aimed at
gathering entries associated with both narrower and
broader geographical areas.” Appellant’s Br. 64. As an
initial matter, 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. Corp. v.
MICROSOFT CORP. v. GEOTAG, INC. 17
PDI Commc’n Sys., Inc., 522 F.3d 1348, 1363 (Fed. Cir.
2008). In any event, GeoTag’s argument would read the
dynamic replication limitation out of the ’474 patent’s
claims and expand the scope of the claims to cover virtual-
ly every instance of searching within a geographically
organized database. We decline to adopt that construc-
tion.
B. GeoTag’s Claim Construction Arguments Are Inappo-
site
GeoTag alleges that the District Court erred in its
construction of the asserted independent claims of the
’474 patent. Specifically, GeoTag alleges that, when the
District Court construed “hierarchy of geographic areas”
to mean “interrelated geographic areas such that there
are parent geographic areas and child geographic areas,”
it improperly imported a parent-child limitation into the
asserted independent claims. Appellant’s Br. 43–53. It
also argues that, when the District Court construed the
“dynamically replicated” limitation to mean “automatical-
ly inheriting at the time of a search,” it improperly im-
ported a parent-child limitation into the asserted
independent claims from the specification and should
have substituted “copying or inheriting” for “inheriting.”
Id. at 53–59.
Even if correct, these arguments do not warrant re-
versal of the District Court. As to “hierarchy of geograph-
ic areas,” the District Court’s construction of that phrase
played no role in its grant of summary judgment. In-
stead, the District Court relied solely on certain uncon-
tested aspects of dynamic replication in granting
summary judgment. J.A. 58 (“The Court finds that the
accused Google product does not infringe the ‘dynamic
replication’ requirement of the patent claims and there-
fore will focus the remainder of this section on this limita-
tion alone.” (footnote omitted)). Because “the construction
of this term did not form the basis for any judgment of
18 MICROSOFT CORP. v. GEOTAG, INC.
non-infringement by the [D]istrict [C]ourt,” it “is irrele-
vant to the judgment that is on appeal” and will not be
addressed. Advanced Cardiovascular Sys., Inc. v. Scimed
Life Sys., Inc., 261 F.3d 1329, 1334 n.2 (Fed. Cir. 2001)
(citation omitted).
Similarly, the contested aspects of the District Court’s
construction of the “dynamically replicated” limitation did
not impact its grant of summary judgment. The District
Court observed that
for the independent claims to be infringed[,] the
accused device must conduct “dynamic replica-
tion.” This limitation requires that the accused
system “automatically inherit[s] at the time of the
search” from one search to another search. Each
of the three independent claims requires that this
inheritance occur from a larger search area to a
smaller search area, though the smaller search
area is not necessarily a subset of the larger
search area. . . . However, as the Google system
performs only a single search and then simply fil-
ters the results, it is not possible for a second
search to inherit from the first search, as there is
no second search. Furthermore, as the AdWords
System does not repeat the search, there can be
no larger or smaller search area.
J.A. 61–62. The District Court did not base its summary
judgment grant on any parent-child limitation in the
“dynamically replicated” limitation, nor did it find that
how dynamic replication occurred (i.e., whether through
inheritance or copying) answered the infringement ques-
tion. Instead, it found that Google’s AdWords does not
practice “dynamic replication” under any construction of
that phrase. J.A. 60–61. Thus, because the disputed
construction did not form the basis of the District Court’s
summary judgment grant, we will not address it. See
Advanced Cardiovascular Sys., 261 F.3d at 1334 n.2.
MICROSOFT CORP. v. GEOTAG, INC. 19
CONCLUSION
We have considered GeoTag’s remaining arguments
and find them unpersuasive. Accordingly, the decision of
the United States District Court for the District of Dela-
ware is
AFFIRMED