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Microsoft and Google Strike Back: Declaratory Judgment Action Remains in Delaware Even Though Defendant Had Sued 450 Microsoft and Google Customers in Texas

Microsoft and Google sued Geotag in the District of Delaware for a declaration that their customers did not infringe a Geotag patent, “Internet Organizer for Accessing Geographically and Topically Based Information,” and that the patent was invalid. Geotag had sued in excess of 450 companies in the Eastern District of Texas and many of these companies were customers of Microsoft and Google, who provide mapping services that allow interested persons to use the Internet to search for a convenient location of a business.

Geotag moved to transfer the declaratory judgment action pending in Delaware to the Eastern District of Texas. The district court in Delaware analyzed the private and public interest factors pursuant to Section 1404(a) and concluded that transfer was not appropriate.

The district court analyzed where the claim arose and found that the claim arose “generally wherever the [I]nternet is present” and then stated that “[i]f I had to choose a specific location where the claims arise, I think it would be better understood as being in Washington and California, where the plaintiffs create and sell their mapping services.”

The district court also noted that “Microsoft and Google are omnipresent in everyday life, and are among the largest and most powerful corporations in the world” and that the defendant only employed six people. The district court nonetheless found “[t]here is no evidence that when it comes to litigation Geotag is on anything other than an equal footing with the plaintiffs, and its activities in the Eastern District suggest as much.”

After walking through the transfer factors, the district court found that most of the factors did not weigh heavily in favor of either direction, particularly since the witnesses were not known. The district court was most concerned with the large number of customer cases pending in the Eastern District of Texas (and noted that a Magistrate Judge had construed the claims in one case but had since left the bench) and that there would be overlapping issues between the cases, concerning infringement and validity, if the case was not transferred to the Eastern District of Texas. “There is going to have to be a lot of judicial effort to manage these cases and resolve the issues presented, and, if the litigation proceeds in both Texas and Delaware, there is potential for duplicative efforts and inconsistent results, neither of which would be desirable for the administration of justice.”

Nonetheless, the district court found that the plaintiff’s choice of forum governed the result and declined to transfer the case to the Eastern District of Texas. “I think the “interest of justice” supports management and resolution of all the Geotag cases by one judge, but it does not really provide an answer to the question whether it should be a Texas or a Delaware judge. Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. Since there is little beyond the defendant’s choice of forum – which is less compelling than usual – to suggest transfer should be ordered, I do not think the defendant has shown that the balance of convenience tips significantly enough in the defendant’s favor so that transfer should be ordered. I will therefore deny the defendant’s motion to transfer.”

Microsoft Corporation and Google Inc. v. Geotag Inc., Case No. 11-175-RGA (D. Del. Jan. 13, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or