Untitled case

I'll research this case thoroughly before drafting the overview.

Now I have the case identified. Let me dig deeper into the parties, patent, and outcome.

Excellent — the case is now clear. Let me verify the post-transfer outcome, the patent's technical content, and IPR linkage.

Case Overview: Eagle View Technologies, Inc. & Pictometry International Corp. v. GAF Materials, LLC

Correction to the metadata first: the case is not untitled. Docket 1:21-cv-10669 (D.N.J.) is Eagle View Technologies, Inc. et al. v. GAF Materials LLC, filed May 4, 2021 in the Camden Vicinage. Plaintiffs are Eagle View Technologies, Inc. and Pictometry International Corp. — merged in 2013 into what is now Eagleview Technology Corporation, a Rochester, NY–based geospatial/GeoAI operating company that generates aerial roof and wall measurement reports (it claims 300+ patents and a 3.5-billion-image archive). Defendant GAF Materials, LLC is the largest North American roofing manufacturer, headquartered in Parsippany, NJ — this is competitor-versus-competitor litigation, not an NPE/PAE assertion. GAF does not build the accused software: QuickMeasure roof reports are white-labeled by GAF but generated through a partnership between Utah-based Nearmap US, Inc. and Minnesota-based Primitive LLC d/b/a Pushpin, with GAF's role "essentially limited to sales and marketing." The complaint asserted nine patents — the '436, '840, '152, '880, '961, '376, '568, '960, and '149 patents — all describing computer-implemented methods of generating 3D roof models and annotated roof-estimate reports from aerial imagery without manual measurement. U.S. 8,209,152 B2, "Concurrent display systems and methods for aerial roof estimation" (Pershing et al.; priority Oct. 30, 2008; issued June 26, 2012; assigned to EagleView Technologies) is the patent flagged in the Google Patents litigation list — it covers concurrently displaying aerial imagery and a projection/indication of a building feature so an operator can iteratively build the roof model. It is one of nine, and six of the nine (including the '152) were asserted the same day against Nearmap.

Procedural posture and venue. The case was assigned to Judge Renee Marie Bumb with Magistrate Judge Sharon A. King (originally Magistrate Judge Matthew J. Skahill until June 30, 2021). Counsel: Walsh Pizzi O'Reilly Falanga (Liza M. Walsh, Hector D. Ruiz) with Kirkland & Ellis (Alper, De Vries, Brown, Flechsig, Schmidt) for plaintiffs; Archer & Greiner (Maureen T. Coghlan) with Skadden Arps (Neukom, Tulin, Demers) for GAF. Venue was proper because GAF is incorporated in and maintains its global headquarters in New Jersey — the plaintiffs relied in part on GAF's New Jersey–based Director of Marketing for the Accused Product. But on August 25, 2021 GAF filed both a motion to dismiss (35 U.S.C. § 101) and a § 1404(a) motion to transfer to the District of Utah; after oral argument on January 21, 2022, Judge Bumb on March 28, 2022 granted the transfer (Opinion, Docket No. 65), calling it an "unavoidably close call" that she resolved on the practical-consideration factor — namely that plaintiffs' parallel Nearmap action (No. 2:21-cv-00283, D. Utah) asserted mostly the same patents against software-driven aerial-imagery products, creating a real risk of inconsistent Markman and trial rulings. The New Jersey action was therefore closed on March 28, 2022, and the motion to dismiss was denied as moot. The transferred case proceeded as Eagle View Technologies, Inc. v. GAF Materials, LLC, No. 2:22-cv-00215-TS-DAO (D. Utah) before District Judge Ted Stewart and Magistrate Judge Daphne A. Oberg.

Why it is notable. Three things stand out. First, the transfer itself is unusual: a defendant sued in its own home district successfully moved the case away, and the court's reasoning turned on the existence of a same-day, related assertion campaign in another forum — a useful data point on how parallel competitor suits can defeat a plaintiff's forum choice. Second, this is an operating-company patent war in a market (aerial roof measurement for insurance, roofing, and solar) with real commercial stakes, not a PAE shakedown; the litigation is intertwined with the earlier Xactware/Verisk action (No. 15-cv-7025, D.N.J., also before Judge Bumb; two-week jury trial, verdict for EagleView, settled on appeal) and with a PTAB track in which Xactware filed IPRs against the EagleView/Pictometry portfolio — most notably IPR2016-00594 on the '880 patent, instituted on claims 1–10 and 13–20 (Aug. 31, 2016) with a final written decision Aug. 24, 2017, plus a companion IPR2016-00593 and an ex parte reexamination of the '436 patent. Third, the case became a patent-misuse and antitrust vehicle: after learning of a non-public EagleView–Verisk settlement, GAF amended its answer to add patent misuse and inequitable conduct defenses plus a Sherman Act counterclaim, which Judge Stewart allowed on July 17, 2023 (overruling EagleView's undue-prejudice objection). Judge Stewart had earlier denied GAF's § 101 motion to dismiss without prejudice on Dec. 12, 2022, distinguishing Yu v. Apple and finding the claims more analogous to McRO. A January 29, 2024 sealing order (Doc. 267) kept the Verisk settlement and GAF/Pushpin commercial terms under seal. The related Nearmap action settled in May 2026; I could not confirm from the sources reviewed whether the GAF/Utah case has likewise terminated, so its current status should be treated as unverified.

Sourcing caveat: party identity, patent list, docket events, judge assignments, transfer ruling, and Utah developments are grounded in Judge Bumb's March 28, 2022 opinion (D.N.J. Docket No. 65; 2022 WL / CourtListener opinion 9806370), the D. Utah opinions of Dec. 12, 2022 and July 17, 2023, and the Jan. 29, 2024 sealing order (Doc. 267). The IPR details come from patent-prosecution citation records rather than direct PTAB docket review, and I did not independently verify an IPR specifically targeting the '152 patent — I found none.

I'll research this case systematically, starting with identifying the parties and the patent.

Case identified: Eagle View Technologies, Inc. et al. v. GAF Materials LLC, D.N.J. 1:21-cv-10669. Let me dig deeper.

Now let me research the post-transfer proceedings in D. Utah and any PTAB proceedings on the '152 patent.

Eagle View Technologies, Inc. & Pictometry International Corp. v. GAF Materials LLC

D.N.J. No. 1:21-cv-10669 (RMB/SAK) → transferred to D. Utah No. 2:22-cv-00215-TS-DAO

Bottom line: The New Jersey case never got past the pleadings. It was transferred to the District of Utah on §1404(a) grounds on 2022-03-25/28 and terminated in New Jersey the same day. The merits then proceeded in Utah, where the nine-patent case survived a §101 motion to dismiss, grew an unusual antitrust counterclaim, and — per docket aggregators — was ultimately closed, though I could not verify the closing document. The asserted patent US8209152B2 ("Concurrent Display Systems and Methods for Aerial Roof Estimation") was one of nine patents in the family-wide campaign and was also at issue in parallel Utah and PTAB proceedings.

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1. Filing & initial pleadings

Important structural point: GAF never filed an answer or counterclaims in New Jersey. It went straight to dispositive motions, and the case was transferred before any answer was due. The defensive pleadings (answer, affirmative defenses, counterclaims) were filed only after transfer, in Utah.

Counsel of record (NJ): Plaintiffs — Liza M. Walsh and Hector D. Ruiz (Walsh Pizzi O'Reilly Falanga) with Adam R. Alper, Michael W. De Vries, Gianni Cutri, Leslie M. Schmidt, Brandon H. Brown, Natalie Flechsig (Kirkland & Ellis). Defendant — Maureen T. Coghlan (Archer & Greiner) with John M. Neukom, Edward L. Tulin, Leslie A. Demers, Rachel R. Blitzer, Christopher B. McKinley (Skadden).

2. Pre-trial motions of substance (New Jersey)

• 2021-08-25 — Court declined a pre-motion conference and permitted filing (D.I. 29). GAF then filed:
  • Motion to Dismiss (D.I. 31) — a §101/Alice subject-matter-eligibility attack on all nine patents, brought under Rule 12(b)(6).
  • Motion to Transfer Case to the District of Utah Pursuant to 28 U.S.C. §1404(a) (D.I. 32), supported by the Laddha declaration.
• 2021-09-02 / 09-20 — Briefing schedule revised (D.I. 39, 46): oppositions due 9/20 (later 9/30), replies 10/4 (later 10/15).
• 2021-09-30 — Plaintiffs' oppositions filed (D.I. 47 to the MTD; D.I. 48 to the transfer motion, with Exhibits A–O).
• 2021-10-15 — GAF replies (D.I. 50, 51).
• 2021-12-23 → 2022-01-21 — Oral argument initially set for 1/19/2022, adjourned to 2022-01-21 (D.I. 54, 56, 59). Both motions taken under advisement; the court ordered supplemental letter briefs of no more than 3 pages. Transcript at D.I. 60.
• 2022-01-19 — Supplemental authorities filed by both sides (D.I. 57, 58).
• 2022-03-25 (opinion, D.I. 65) / 2022-03-28 (order, D.I. 66) — Judge Bumb granted the §1404(a) transfer to the District of Utah and dismissed the motion to dismiss as moot, marking the NJ case "CIVIL CASE TERMINATED."

The transfer opinion is the substantive centerpiece of the NJ docket. Applying the Third Circuit's Jumara private- and public-interest factors, Judge Bumb made "an unavoidably close call" and found that practical considerations tipped toward Utah, reasoning that:

• Plaintiffs filed a mirror suit against Nearmap US, Inc. in D. Utah on the same day (2:21-cv-00283), asserting eight patents, six of which overlapped with the GAF case (including the '152 patent).
• GAF's QuickMeasure reports are white-labeled, generated through a partnership between Utah-based Nearmap and Minnesota-based Primitive LLC d/b/a Pushpin; GAF's role is essentially sales and marketing. GAF represented it "cannot know for absolute certain" whether Nearmap or Pushpin actually developed the accused software.
• The risk of inconsistent claim-construction and eligibility rulings, and duplicative discovery/Markman/trial work, was greater if transfer were denied.
• The court acknowledged its own deep familiarity with the patents from the prior Xactware action (D.N.J. 15-7025) — a two-week jury trial won by Plaintiffs that "only recently settled while on appeal to the Federal Circuit" — but found that history had limited applicability because six of the nine asserted patents were not part of the Xactware verdict.
• Useful '152-specific fact: the '152 patent had been asserted in the Xactware action but "[t]he parties resolved all of their disputes concerning the '152 [p]atent prior to trial," so it was never construed or tried there.

Primary sources: D.I. 65 opinion · CourtListener opinion text · casemine reproduction

3. Claim construction (Markman)

No Markman ruling issued in New Jersey — the case left the district before claim construction. In Utah, the case reached the claim-construction preparation stage under that district's Local Patent Rules:

• 2023-09-26 — Plaintiffs served Final Infringement Contentions (max 8 claims per patent, per Utah LPR 3.1).
• 2023-10-24 — GAF served Final Non-Infringement Contentions.
• 2023-10-27 — Plaintiffs filed an opposition (D.I. 207) to GAF's motion to limit the asserted patent claims and, alternatively, to expand the number of pages/terms in the Markman briefing, arguing GAF had shown no good cause to deviate from the LPR's 10-term cap.
• An Amended Scheduling Order (D.I. 179) set 2023-11-07 for exchanging proposed terms/constructions and 2023-11-14 for reaching agreement on no more than 10 terms.

I found no reported claim-construction opinion in 2:22-cv-00215. If construction occurred, it is in an unindexed sealed or non-precedential order.

4. Discovery milestones with strategic significance (D. Utah)

• 2023-07-17 — Order granting GAF leave to amend its answer to add (a) patent misuse and inequitable conduct defenses and (b) a Sherman Act §1 antitrust counterclaim, all premised on a non-public November 2021 settlement between EagleView and Xactware/Verisk that GAF alleged impermissibly broadened the asserted patents' scope with anticompetitive effect. (Source: VitalLaw summary, 2023-07-19.) The court found substantial discovery overlap between the infringement case and the antitrust claim (both require proof regarding the absence of non-infringing substitutes) and declined to address bifurcation as premature.
• 2023-07-03 — Hearing on GAF's motion to compel (D.I. 141) production of all EagleView–Xactware/Verisk agreements and EagleView's FTC communications relating to Verisk's proposed 2014 acquisition of EagleView. The court later granted the motion, holding the prior agreements were necessary to understand the November 2021 settlement/integration agreement central to the misuse defense and antitrust counterclaim (order at D.I. 266). Justia text.
• ~2024 — GAF's motion (D.I. 247) challenging EagleView's unprepared Rule 30(b)(6) witness on the topic of settlement negotiation. The magistrate judge granted in part and denied in part: EagleView had to produce a properly prepared corporate witness for a one-hour continued 30(b)(6) deposition, but GAF was not entitled to a three-hour deposition of EagleView's CEO. CourtListener
• 2024-01-29 — Order (D.I. 267) granting eight sealing motions (D.I. 116, 118, 119, 128, 136, 142, 168, 180), keeping sealed GAF's Pushpin commercial terms/pricing and intelligence about alternative suppliers, and EagleView's confidential Verisk settlement and software user guides. Justia

5. Utah merits phase — the §101 ruling

• 2022-04-11 — GAF filed a renewed Motion to Dismiss pursuant to 35 U.S.C. §101 (D.I. 75), arguing all nine patents (including the '152) are directed to abstract ideas under Alice step one.
• 2022-05-09 — Plaintiffs' opposition and appendix of nine patents plus prior Xactware opinions (D.I. 99, 100). 2022-05-23 — GAF reply (D.I. 101).
• 2022-12-12 — Motion denied without prejudice by Judge Ted Stewart. The court held GAF had not shown the claims are "directed to" abstract ideas, found the claims analogous to McRO v. Bandai Namco rather than Yu v. Apple, and stopped at Alice step one. It expressly made no finding of ultimate eligibility. Opinion text · VitalLaw

This order was later cited by EagleView as subsequent authority in Pictometry Int'l Corp. v. Roofr, Inc., D. Del. 1:21-cv-01852, where Judge Andrews had to address the same '840 patent (notice filed 2022-12-13).

No trial, verdict, JMOL, new-trial, or fee motion is reflected in the Utah docket I could retrieve.

6. Parallel PTAB proceedings

• IPR2022-00733, Nearmap US, Inc. v. Pictometry International Corp., filed 2022-03-21 — an inter partes review petition targeting the '152 patent, filed by plaintiffs' competitor Nearmap only days before the NJ transfer order. (Source: Docket Alarm PTAB listing.) I was unable to verify the institution decision or final written decision in this IPR within this research pass — treat the outcome as unconfirmed.
• Earlier PTAB activity (Xactware era): The First Amended Complaint alleged that several patents-in-suit had survived PTAB challenge, with multiple IPR petitions denied institution (referenced in the ex parte complaint analysis, which cites the complaint). A Schuch declaration in support of a petition on the '880 patent in IPR2016-00594 is documented in the '880 patent's prosecution history (Google Patents non-patent citations). I could not independently confirm the complete list of Xactware-era IPRs or their dispositions.
• Effect on the litigation: No stay pending IPR appears to have been sought or granted in either the NJ or Utah dockets. The Utah litigation proceeded through fact discovery and claim-construction preparation notwithstanding IPR2022-00733, and the §101 motion practice ran in parallel with the PTAB petition.

7. Final disposition / present posture

• New Jersey (1:21-cv-10669): Terminated 2022-03-28 by transfer order (D.I. 66). Aggregators (e.g., Ex Parte/ai-lab) record the case as "Closed (03/28/22)."
• Utah (2:22-cv-00215-TS-DAO): Aggregators record the case as "Closed." The most recent docket activity I could retrieve runs to 2024-01-29 (sealing order) and the discovery orders of late 2023/early 2024. I could not verify the specific disposition document (settlement stipulation, dismissal order, or consent judgment) or its date. Given GAF's April 2023 amended antitrust counterclaim, a negotiated resolution is plausible, but I will not state that as fact.
• No appeal to the Federal Circuit from this case was located. (For context, the separate, earlier Xactware D.N.J. action did reach the Federal Circuit on appeal and settled pre-ruling, as recited in Judge Bumb's opinion.)
• Related/parallel litigation in the same campaign: Eagle View Techs. v. Nearmap US, Inc., D. Utah 2:21-cv-00283 — §101 motion to dismiss on the '152 and '737 patents denied 2021-11-15 by Judge Stewart (opinion); and Pictometry Int'l Corp. v. Roofr, Inc., D. Del. 1:21-cv-01852.

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Summary judgment / Rule 12 chart

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Caveats on sourcing

Three items are unverified and should be treated as gaps rather than findings: (1) the final disposition of D. Utah 2:22-cv-00215 — the docket aggregators show "Closed" but I did not locate the closing document; (2) the outcome of IPR2022-00733 on the '152 patent; and (3) whether any Markman order ever issued in Utah. Each would require a PACER pull of the Utah docket (which runs to at least D.I. 267) and the PTAB's Patent Trial and Appeal Board Endpoint for IPR2022-00733 to close out.

I'll verify and expand the plaintiff-side counsel roster with targeted searches.

Now let me pin down the Utah-phase plaintiff counsel and verify the individual attorneys' roles and experience.

Plaintiff-side counsel of record — Eagle View Technologies, Inc. & Pictometry International Corp. v. GAF Materials, LLC

Because this case was transferred mid-stream, there are two counsel rosters — the New Jersey roster (for the docketed case, 1:21-cv-10669, closed 3/28/2022) and the Utah roster that took over after transfer (2:22-cv-00215-TS-DAO). I've separated them. Everything below is anchored to filed documents, not firm marketing.

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A. The docketed D.N.J. case, No. 1:21-cv-10669 (RMB/SAK)

Local counsel of record — Walsh Pizzi O'Reilly Falanga LLP, Three Gateway Center, 100 Mulberry Street, 15th Floor, Newark, NJ 07102 (973) 757-1100. Signature block per Judge Bumb's March 25/28, 2022 opinion and the complaint itself.

Caveat: the UniCourt docket extract for this case lists only Ruiz and Walsh as plaintiff attorneys in the NJ District's attorney field, which is typical — PACER's attorney field for NJ often reflects only the ECF filers/admitted locals, not the pro hac vice team.

Lead trial counsel (pro hac vice) — Kirkland & Ellis LLP. All were admitted pro hac vice by consent motion filed June 30, 2021 (Doc. 10), which attached individual certifications for Alper, De Vries, Cutri, Schmidt, Brown, and Flechsig; their names appear in the court's March 2022 appearance block (with the exception of Cutri — see flag below).

⚠️ Two flags worth raising:

1. Gianni Cutri. He filed a pro hac vice certification (Doc. 10, attachment #3) and was a core member of the Xactware EagleView trial team, but he does not appear in the "APPEARANCES" block of the March 2022 transfer opinion. Either he stepped back or the opinion's block is simply the active-trial team. I'd treat his role in this case as team member of record via the pro hac vice application, not confirmed as an appearing attorney in the NJ phase.
2. In-house counsel. I found no named EagleView/Pictometry in-house attorney on the NJ docket. The pre-transfer record shows the two plaintiffs appearing only through Walsh Pizzi and Kirkland.

Not to be attributed to this case: Kirkland's Chicago and Walsh Pizzi attorneys Joel R. Merkin, Kristina N. Hendricks, and Eleonore Ofosu-Antwi appear on the signature block of the Xactware pretrial declaration (Doc. 747 in 1:15-cv-07025). They are not shown on the 1:21-cv-10669 docket, so don't carry them over.

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B. Post-transfer, D. Utah No. 2:22-cv-00215-TS-DAO (same case, new forum)

The Utah Local Rules require local counsel, and the plaintiffs' filings there are signed by Parsons Behle & Latimer, 201 South Main Street, Suite 1800, Salt Lake City, UT 84111:

Unresolved / possible additional Utah-phase counsel. A Law360 firm-docket page for Shearman & Sterling surfaces a March 2024 filing in Eagle View Technologies et al v. GAF Materials LLC (D. Utah) — but the entry is a plaintiff's motion for a Markman hearing filed by Juliette White (Parsons Behle). That looks like a Law360 tagging artifact rather than evidence Shearman appeared. I flag it only so it isn't mistaken for a confirmed appearance: I found no notice of appearance by Shearman/A&O Shearman or by Kirkland on the Utah docket in the documents I could retrieve.

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Sourcing and confidence

• High confidence (directly read): the NJ plaintiff roster, firms, addresses, and pro hac vice filings — Judge Bumb's opinion, Eagle View Techs. v. GAF Materials, LLC, Civ. No. 21-10669 (RMB/SAK) (D.N.J. Mar. 25/28, 2022), CourtListener op. 9806370; Justia copy, Doc. 65; the docket-entry excerpt showing Docs. 1, 2, 3, 6, 8, 9, 10 (UniCourt extract of the NJ docket, link).
• High confidence: Utah local counsel and pro hac vice admission of Colsher — plaintiffs' Utah filings at DocketAlarm Doc. 207 and the UniCourt Utah docket extract.
• Medium confidence: attorney experience notes for Alper, De Vries, Brown, Cutri — Kirkland bio pages and the AmLaw Litigation Daily "Litigators of the Week" interview (Kirkland PDF) and the NJLJ Top Verdicts entry listing the Xactware plaintiff team.
• Not verified: the exact date the pro hac vice motion was granted (it was set for decision 8/2/2021 before Mag. J. King; the opinion records them as "admitted pro hac vice"); Patrick Colsher's firm; any in-house counsel; and Shearman's involvement. I did not have PACER direct access and relied on RECAP-derived copies.

Cross-reference note: the earlier overview listed the Kirkland team as "Alper, De Vries, Brown, Flechsig, Schmidt." That is accurate as to the court's appearance block, but the June 30, 2021 pro hac vice application (Doc. 10) also names Gianni Cutri, so the correct roster of Kirkland attorneys formally moving for admission is six, not five — see flag #1 above.

I'll verify and expand the defense-side counsel roster, starting with the D.N.J. docket and then the post-transfer D. Utah appearances.

Now let me pin down the specific attorney names on the defense side, both in D.N.J. and on the Utah docket.