Litigation
Eagle View Technologies, Inc. v. GAF Materials LLC
2:22-cv-00215
- Filed
- 2022-03-28
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Google Patents' litigation list ties this Utah district case to US8209152B2, and DocketAlarm links the same GAF case to EagleView-related patents. The narrative could not verify exactly which patents, including whether the '152 patent, were asserted.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this case thoroughly before drafting.
Now let me dig into the PTAB proceedings, current status, and the transfer rationale.
Case Overview and Background
Parties. The plaintiffs are Eagle View Technologies, Inc. and Pictometry International Corp., two affiliates that merged in 2013 and today operate as Eagleview (EagleView Technology Corporation), headquartered in Rochester, New York. EagleView is a practice entity in the strict sense (an operating company, not an NPE/PAE or university): it sells aerial imagery and roof-measurement reports — its own account says more than 300 patents and 3.5 billion high-resolution images covering ~96% of the U.S. population — to insurers, contractors, and solar/government customers. The district court described the plaintiffs as owners of "nine patents-in-suit … [that] describe methods for estimating roofs and generating reports without manual measurement" (Doc. 104 at 1–2, Eagle View Techs., Inc. v. GAF Materials, LLC, No. 2:22-cv-00215-TS-DAO (D. Utah Dec. 12, 2022), https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/104](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0104)/0.pdf). The defendant, GAF Materials LLC, is the largest roofing and ventilation manufacturer in North America (a Standard Industries company). GAF is a customer, not a competitor, in the software stack: it does not develop the accused software, but "white-label[s]" roof-measurement reports that are actually produced through a partnership between Utah-based Nearmap and Minnesota-based Primitive LLC d/b/a Pushpin; GAF's role is "essentially limited to sales and marketing" (GAF brief quoted in Eagle View Techs. v. GAF Materials, LLC, Civ. No. 21-10669 (RMB/SAK), 2022 WL [transfer opinion, Mar. 25, 2022], https://www.casemine.com/judgement/us/6246d83a342cca047dbcf2b7).
Accused product. The accused instrumentality is GAF QuickMeasure, a roof-measurement report service GAF provides (largely free) through its contractor network. EagleView's complaint characterizes QuickMeasure as a rival to EagleView's own aerial roof reports in the construction, government, insurance, and solar markets, and alleges that the system ingests a top-plan aerial image plus a non-stereoscopic oblique image, correlates them, builds a 3D roof model with per-section slope/area/edge data, and emits an annotated report using "at least two different indicia" for different roof features (Compl. ¶¶ 47–75, analyzed at https://ai-lab.exparte.com/case/dct/utd/2:22-cv-00215/doc/analysis/11).
Patents asserted. Contrary to the case metadata (which lists only US 8,209,152), EagleView asserted nine patents: U.S. Pat. Nos. 8,078,436; 8,170,840; 8,209,152; 8,542,880; 8,670,961; 9,129,376; 9,514,568; 10,528,960; and 10,685,149 (Doc. 100, Exs. 1–9; Doc. 104). The '152 patent is therefore real but partial — one of nine. As GAF grouped them in its § 101 motion, the families run: the '880 patent ("automated image retrieval"); the '436 patent ("3D model generation" — generating a roof estimate report from correlated top-plan/oblique non-stereoscopic images); the '152 patent ("feature indication/model modification + image display/registration"); the '840 and '149 patents ("pitch indication/model modification"); and the '376, '961, '568 and '960 patents ("pitch determination"). Scale is notable: GAF told the court that EagleView asserted 69 claims across the nine patents and served 577 pages of final infringement contentions, calling it "one of the two largest patent suits ever to have reached the Markman stage" in the District of Utah in a decade — the other being EagleView's parallel case (Doc. 220, https://www.docketalarm.com/cases/Utah_District_Court/2--22-cv-00215/Eagle_View_Technologies_et_al_v_GAF_Materials_LLC/docs/220.pdf).
Posture and venue. The case was filed in the District of New Jersey on May 4, 2021 (No. 1:21-cv-10669-RMB/SAK), and on March 25, 2022 Judge Renee Marie Bumb granted GAF's § 1404(a) motion to transfer to the District of Utah, where EagleView's earlier case against Nearmap (No. 2:21-cv-00283) was already pending before District Judge Ted Stewart. The transferee case is 2:22-cv-00215-TS-DAO (Central Division), Judge Stewart presiding, Magistrate Judge Daphne A. Oberg on referral (Doc. 81–82). Venue matters because the court tied transfer to "practical considerations, including the existence of a related case in Utah involving similar patents … to avoid duplicative litigation and potential inconsistent rulings," and because the accused technology was built in Utah (Nearmap) and Minnesota (Pushpin) rather than New Jersey — even though GAF itself is New Jersey–based and EagleView preferred New Jersey. The cases were not consolidated (the court denied consolidation on April 13, 2022), so they proceeded on parallel tracks before Judge Stewart under D. Utah's Local Patent Rules (Doc. 354 applies LPR 4.5; Doc. 288 was an LPR 6.2 summary-judgment motion).
Procedural highlights and why it matters. GAF's § 101 motion to dismiss was denied without prejudice on December 12, 2022 (Doc. 104). GAF then obtained leave to add patent misuse and inequitable conduct defenses plus a Sherman Act § 1 antitrust counterclaim premised on a November 2021 confidential settlement and "integration" agreement between EagleView and Verisk/Xactware, which GAF alleges impermissibly broadened patent scope with anticompetitive effect (Doc. 161, https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/161](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0161)/0.pdf). Discovery orders compelled production of EagleView's prior Verisk/Xactware agreements and its FTC communications, on the theory that the FTC had challenged Verisk's proposed 2014 acquisition of EagleView because it would have created a single-player market for rooftop aerial measurement products (Doc. 266, https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/266](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0266)/0.pdf). Two other threads make the case notable: (1) PTAB linkage — Nearmap, not GAF, filed the IPRs, and on October 20, 2023 the Board invalidated all 20 claims of the '880 patent, a result GAF immediately wielded in its motion to narrow EagleView's asserted claims (Doc. 220); the Federal Circuit later affirmed that decision in Pictometry International Corp. v. Nearmap US, Inc. (my searches surfaced the opinion text but not a reliable reporter cite/date — treat the citation as unverified). (2) Market/antitrust context — EagleView is a serial, well-resourced enforcer against roof-measurement entrants (Xactware/Verisk, Nearmap, GAF, and Roofr in D. Del.), and GAF's antitrust/misuse counterattack converts this from a routine infringement suit into a test of whether patent settlements in this niche can be attacked as unlawful restraints. Claim construction was heard (or set) on August 26, 2025 before Judge Stewart on nine disputed terms, with expert testimony permitted (Doc. 354, https://law.justia.com/cases/federal/district-courts/utah/utdce/2:2022cv00215/[131262/354](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0354)/). I could not verify a trial date, verdict, or final disposition for the GAF case; one aggregator lists the docket as "Closed," but that is unsourced and I would not rely on it. Separately, EagleView and Nearmap announced a settlement of the 2021 Utah litigation on May 29, 2026 (https://www.eagleview.com/es/press-releases/eagleview-and-nearmap-reach-settlement-in-patent-dispute/), which resolves disputes between those companies and, as far as I can tell, does not itself dispose of the GAF case.
Sourcing caveats. Verified: party identities and roles, the nine-patent set, the QuickMeasure accusation and its Nearmap/Pushpin provenance, the § 1404(a) transfer and rationale, Judge Stewart/Magistrate Oberg, the Xactware trial history, the PTAB '880 invalidation, and the docket-event substance cited above. Not verified: any GAF-filed IPRs (I did not confirm any; the only Nearmap-era IPR I can confirm is the '880 one), the Federal Circuit citation for the '880 affirmance, current counsel-of-record from PACER, whether EagleView's corporate parent/ownership changed after the Vista-era acquisitions, and the case's ultimate resolution. Any statement about an EagleView verdict or settlement with GAF would be speculation at this point.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
I'll research the docket, opinions, PTAB proceedings, and current posture before drafting the chronology.
Key Legal Developments & Outcome Chronology — Eagle View Techs., Inc. v. GAF Materials LLC, No. 2:22-cv-00215-TS-DAO (D. Utah)
Important framing note. The case metadata lists a single patent (US 8,209,152) and a single filing date (2022-03-28). As the prior section established, both are partial: the '152 patent is one of nine asserted patents, and 2022-03-28 is the Utah re-docketing date after transfer — the case was actually filed in New Jersey on 2021-05-04. The chronology below therefore starts in New Jersey and carries the D. Utah docket numbers once transfer occurs.
Phase 1 — Filing & Initial Pleadings (2021)
| Date | Event | Source |
|---|---|---|
| 2021-05-04 | Eagle View Technologies, Inc. and Pictometry International Corp. file the original complaint in D.N.J. (No. 1:21-cv-10669-RMB/SAK), asserting nine patents — including the '152 patent — against GAF's QuickMeasure roof-report product. | Transfer opinion, http://www.courtlistener.com/opinion/[9806370](/patent/9806370)/ |
| 2021-05-04 | Same day, EagleView files the parallel Nearmap suit in D. Utah (No. 2:21-cv-00283), asserting eight patents against separate Nearmap products. | Id. |
| 2021-07-23 | Amended Complaint filed in D.N.J., with substantively the same allegations. | Id. |
| 2022-12-27 | GAF files its original Answer (after transfer — see Phase 2). | Doc. 161 at 4 n.3 |
The transfer opinion confirms GAF's pleaded posture: GAF "does not make QuickMeasure reports, did not design or develop any of the QuickMeasure [s]oftware, and has never maintained or controlled any of the QuickMeasure [s]oftware"; reports are generated via a Nearmap (UT)/Primitive LLC d/b/a Pushpin (MN) partnership and merely white-labeled by GAF. That factual framing drove both the transfer motion and, later, GAF's supplier-discovery disputes.
Phase 2 — Transfer to Utah (2022)
| Date | Event | Source |
|---|---|---|
| 2022-03-25 | D.N.J. (Judge Renee Marie Bumb) grants GAF's 28 U.S.C. § 1404(a) motion to transfer to the District of Utah. Rationale: avoid duplicative litigation/inconsistent rulings with the pending Nearmap action, and the accused technology was built in Utah/Minnesota, not New Jersey — even though GAF is New Jersey–headquartered and EagleView preferred New Jersey. | Id.; Eagle View Techs. v. GAF Materials, LLC, Civ. No. 21-10669 (RMB/SAK), 2022 WL ___ (D.N.J. Mar. 25, 2022) (WL cite unverified) |
| 2022-03-28 | Case docketed in D. Utah as 2:22-cv-00215-TS-DAO (Central Division); Judge Ted Stewart presiding, Magistrate Judge Daphne A. Oberg on referral (Docs. 81–82). | Docket |
| 2022-04-13 | Court denies consolidation with the Nearmap action. | Eagle View Techs. v. Nearmap, 2:21-cv-00283, Dkt. 267 at 6 (cited in plaintiffs' Apr. 23, 2025 motion) |
Phase 3 — Threshold Motions: § 101 and Leave to Amend (2022–2023)
§ 101 motion to dismiss (Doc. 75 → Doc. 104).
- GAF moved to dismiss all nine patents as ineligible under Alice, grouping the families as: '880 ("automated image retrieval"); '436 ("3D model generation"); '152 ("feature indication/model modification + image display/registration"); '840 and '149 ("pitch indication/model modification"); and '376, '961, '568, '960 ("pitch determination").
- EagleView responded (Doc. 99, with a nine-patent appendix at Doc. 100); GAF replied (Doc. 101).
- 2022-12-12 — DENIED WITHOUT PREJUDICE (Doc. 104, https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/104](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0104)/0.pdf). The court held GAF "ha[d] not convinced the Court that the claims at issue are directed to abstract ideas," and failed to "meaningfully distinguish the patents at issue from McRO, Inc. v. Bandai Namco Games Am. Inc." EagleView then cited the GAF ruling as persuasive subsequent authority against a parallel § 101 attack in Eagle View v. Roofr (D. Del.), targeting the same '840 claims — showing the GAF eligibility win had cross-case effect.
Leave to amend — patent misuse, inequitable conduct, and a Sherman Act counterclaim (Doc. 161).
- GAF moved for leave on 2023-04-18 (before the amendment deadline), based on a November 2021 confidential EagleView–Verisk/Xactware settlement and "integration" agreement that GAF alleges impermissibly broadened patent scope with anticompetitive effect.
- EagleView did not oppose the patent misuse and inequitable conduct defenses but opposed the § 1 Sherman Act counterclaim as unduly prejudicial.
- 2023-07-17/18 — GRANTED in full (Doc. 161, https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/161](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0161)/0.pdf). The court found the antitrust claim's discovery substantially overlaps the infringement lost-profits inquiry (both require proof of no acceptable non-infringing substitutes) and the misuse defense; found no undue prejudice; and held bifurcation premature. Amended Answer and Counterclaims filed thereafter (Docs. 166/167 redacted, 169 sealed). (Also reported: IP Law Daily, Jul. 19, 2023, https://www.vitallaw.com/news/patent-d-utah-antitrust-counterclaim-added-to-aerial-photograph-patent-suit/ipm018c8e2928d1544c12af4a4e375fbfa4d2.)
This is the pivot point that converted a standard infringement case into a patent-misuse/antitrust test case.
Phase 4 — Discovery Milestones with Strategic Significance (2023–2025)
| Date | Event | Source |
|---|---|---|
| 2023-06-08 / 2023-07-03 | GAF's short-form motion to compel (Doc. 141) — seeking (1) all EagleView–Xactware/Verisk agreements and (2) EagleView's FTC communications re Xactware/Verisk. Hearing held 2023-07-03; EagleView's untimeliness objection overruled for good cause. | Doc. 266 |
| 2023-10-03 (scheduled) | Fact-discovery close at the time of the amendment ruling. | Doc. 161 |
| 2024-01-29 | Motion to compel GRANTED in full (Doc. 266, https://cases.justia.com/federal/district-courts/utah/utdce/2:2022cv00215/[131262/266](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0266)/0.pdf). Court ordered production of the seven prior EagleView–Verisk/Xactware agreements referenced in the Nov. 2021 integration agreement, and the 2014 FTC communications (GAF alleged the FTC challenged Verisk's proposed 2014 acquisition of EagleView because it would have created a single-player rooftop aerial measurement market). Holding: broad antitrust discovery reaches acts "antedating the earliest possible date of the actionable wrong." | Doc. 266 |
| 2023–2024 | Sealing orders granted in both parties' favor (Doc. 267; and the 2024 order at https://www.courtlistener.com/opinion/[10220240](/patent/10220240)/). GAF sealed Pushpin commercial terms/pricing/purchase history and alternative-supplier analyses; EagleView sealed the Verisk settlement agreement and its software user guides. | Docs. 267, 2024 order |
| by 2025-04-23 | Fact discovery CLOSED in the GAF case (cited as GAF Case, Dkt. Nos. 228, 309, 347). Joint claim construction chart and status reports filed (Docs. 285, 293, 311, 314, 323). | Plaintiffs' Motion to Expedite, Eagle View v. Nearmap, 2:21-cv-00283, Dkt. 466 (Apr. 23, 2025) |
Strategic significance: the discovery rulings gave GAF the Verisk/Xactware contract chain and FTC file — the evidentiary backbone of both the misuse defense and the § 1 counterclaim — and the sealing fight established the confidentiality perimeter around the Nov. 2021 settlement.
Phase 5 — Motion to Limit Asserted Claims (2023)
- GAF moved to limit the asserted claims (or, alternatively, to expand Markman pages/terms), arguing EagleView's 577-page Final Infringement Contentions relied on 83 claims in violation of the Local Patent Rules, against 69 asserted claims across nine patents. GAF proposed capping at 32 claims and called the case "one of the two largest patent suits ever to have reached the Markman stage in this District in the last decade."
- 2023-11-10 — GAF's reply filed (Doc. 220, https://www.docketalarm.com/cases/Utah_District_Court/2--22-cv-00215/Eagle_View_Technologies_et_al_v_GAF_Materials_LLC/docs/220.pdf), invoking the '880 PTAB invalidation as a reason to force narrowing.
- Outcome of the narrowing motion is not verified in my search set. The later references to nine disputed claim terms in the Markman order (Doc. 354) are consistent with the court having tightened the case substantially, but I cannot confirm the exact cap adopted.
Phase 6 — Claim Construction / Markman (2025)
| Date | Event | Source |
|---|---|---|
| 2025-04-23 | EagleView moves to consolidate the Nearmap and GAF Markman hearings (and to expedite briefing on that motion); a Nearmap Markman hearing was set for 2025-05-07, with no GAF hearing yet set. (Prior consolidation had been denied 2023-03-14.) | Eagle View v. Nearmap, Dkt. 466 |
| 2025-07-25 | Order granting claim-construction hearing (Doc. 354, https://law.justia.com/cases/federal/district-courts/utah/utdce/2:2022cv00215/[131262/354](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=131262-0354)/). Nine disputed claim terms; argument in the order of the parties' Joint Claim Construction Chart and Status Report (Doc. 323); GAF to argue first; 3.5-hour hearing; expert testimony permitted; technology tutorial by LPR 4.5 written submission. | Doc. 354 |
| 2025-08-26 | Markman hearing held before Judge Stewart (Rm 8.300). | Doc. 354 |
Critical gap. My searches did not surface a claim-construction order construing the nine terms, nor any post-Markman scheduling order, trial date, verdict, or judgment. Given that the hearing occurred roughly 12.5 months before today's date (2026-09-12), a written construction order and further case management are highly likely to exist, but I could not verify them. This is the single biggest open item in the chronology.
Phase 7 — Parallel PTAB Proceedings
| Date | Event | Effect on the litigation |
|---|---|---|
| 2023-10-20 | PTAB invalidates all 20 claims of the '880 patent (an EagleView automated-image-retrieval patent). The IPRs were filed by Nearmap, not GAF. | GAF immediately wielded the decision in its motion to narrow asserted claims (Doc. 220), arguing the court "will need to devote considerable time to disputed claim terms from a patent that has been invalidated, and thus cannot be infringed." |
| (undated) | Federal Circuit affirmed the '880 invalidation in Pictometry International Corp. v. Nearmap US, Inc. | Affirmance solidified the '880 wipe-out; reporter cite/date unverified in my searches — treat that citation as unconfirmed. |
Sourcing limitation on PTAB. I could confirm only the '880 IPR as tied to this patent family. I did not find any GAF-filed IPR/PGR, and I did not find an IPR specifically targeting the '152 patent. Prior work in this case reached the same conclusion. Whether additional Nearmap IPRs (e.g., against the '436, '840, or pitch-determination patents) exist and their outcomes are unverified — this should be checked directly on the PTAB's Patent Trial and Appeal Board End-to-End (PTAB E2E) system and the USPTO Patent Public Search "litigation" tab.
Phase 8 — Final Disposition / Present Posture
I could not verify a final disposition of the GAF case. Specifically unconfirmed: any settlement between EagleView and GAF, any stipulated dismissal, any judgment, any JMOL/new-trial/fee motion, and any appeal to the Federal Circuit. No trial verdict, trial date, or post-trial order appears in my verified results.
Two data points that bear on posture but do not resolve it:
Nearmap settlement (2026-05-29). EagleView and Nearmap announced settlement of the 2021 Utah litigation (https://www.eagleview.com/es/press-releases/eagleview-and-nearmap-reach-settlement-in-patent-dispute/). This resolves disputes between EagleView and Nearmap; on its face it does not dispose of the GAF case, though it removes a related-case variable and could affect the DuPont/lost-profits narrative and the "acceptable non-infringing substitutes" theory central to both the infringement damages case and GAF's antitrust counterclaim.
"Closed" docket flag. At least one aggregator (UniCourt) lists a "Closed"-type status for 2:22-cv-00215, but this is unsourced and unreliable; I would not treat it as establishing dismissal. It may simply reflect a docket-maintenance artifact or the transfer.
Best current characterization of posture: Active and unresolved as of the last verified event. The case reached claim construction in August 2025 with nine terms in dispute, fact discovery closed, expert discovery and dispositive motions on the LPR track, and a live § 1 antitrust counterclaim and patent-misuse defense riding on the Verisk/Xactware settlement. The '152 patent — the sole patent in the case metadata — was one of the nine live patents as of the § 101 ruling and remained in the case through Markman.
What to verify next (ranked)
- Claim-construction order (post-2025-08-26) — search D. Utah CM/ECF and CourtListener for orders after Doc. 354; check the Nearmap parallel order (Dkt. ~467+) for cross-cited constructions.
- Trial/scheduling order and any LPR 6.2 summary-judgment rulings (a § 101 summary-judgment motion referenced as Doc. 288 in prior work should be tracked to disposition).
- Terminal docket entry — stipulated dismissal, settlement, or judgment; check Doc. numbers beyond ~354.
- PTAB E2E — confirm the full set of Nearmap IPRs (patent-by-patent, institution/FWD dates) and whether the '152 patent was ever challenged; confirm the Federal Circuit '880 affirmance citation.
- Nearmap settlement scope — whether it includes a license that could bear on GAF's indirect/contributory infringement exposure via the Nearmap–Pushpin supply chain.
Sourcing caveats
- Verified by primary sources: NJ filing and amended complaint; the § 1404(a) transfer and rationale; the Doc. 104 § 101 denial (with the McRO reasoning); the Doc. 161 grant of leave to add misuse, inequitable conduct, and the Sherman Act counterclaim; the Doc. 266 motion-to-compel ruling and its FTC/Verisk reasoning; the Doc. 354 Markman scheduling order (nine terms, 2025-08-26 hearing); the '880 PTAB invalidation date and its use in GAF's Doc. 220 reply; fact discovery closure and the joint claim construction filings.
- Not verified / flagged: the D.N.J. transfer opinion's Westlaw cite; the Federal Circuit '880 affirmance citation and date; the ruling on GAF's motion to limit asserted claims; any claim-construction constructions; any trial, verdict, judgment, fee award, or appeal; the existence of GAF-filed IPRs; and current counsel of record (counsel names appearing in the Apr. 2025 Nearmap motion are EagleView-side Gibson Dunn/Parsons Behle; GAF-side Ray Quinney & Nebeker appears on Doc. 220). Any statement that the case has settled, been dismissed, or gone to judgment would be speculation at this point.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Shearman & Sterling
- Matthew G. Berkowitz · lead counsel
- Patrick R. Colsher · PHV counsel
- Yue (Joy) Wang · PHV counsel
I'll research the plaintiff-side counsel of record through docket sources, firm announcements, and court opinions.
Let me dig into the docket sheet and firm-side sources to confirm plaintiff-side appearances.
I hit my research step limit, so here is what I can substantiate — and I'll be explicit about the parts I could not verify.
Plaintiff-side counsel of record (Eagle View Technologies, Inc. & Pictometry International Corp.)
Bottom line: The plaintiff team in the D. Utah GAF case was the Shearman & Sterling LLP patent litigation group, appearing pro hac vice through D. Utah admission orders entered May 3, 2022 by Judge Ted Stewart, with a Utah firm serving as local counsel. The three pro hac vice names are confirmed by docket-entry text; the identity of the Utah local firm is not confirmed by anything I found, and I will not guess at it.
Confirmed pro hac vice admissions (plaintiff side)
| Attorney | Role | Firm / office (as of appearance) | Basis / note |
|---|---|---|---|
| Matthew G. Berkowitz | Lead trial/principal PHV counsel for plaintiffs | Shearman & Sterling LLP, Menlo Park, CA (1460 El Camino Real, 2nd Fl., Menlo Park, CA 94025) | D. Utah Doc. 95, order granting motion (Doc. 93) for admission PHV, signed May 3, 2022. Chambers/Benchmark-ranked patent litigator; "launched and spearheaded growth of the intellectual property litigation practice at Shearman & Sterling," now at Reichman Jorgensen Lehman & Feldberg LLP (Redwood Shores, CA) — so his Shearman-era appearance may have been superseded. |
| Patrick R. Colsher | PHV counsel for plaintiffs (both Eagle View and Pictometry) | Shearman & Sterling LLP, Menlo Park, CA | D. Utah Doc. 96, order granting motion (Doc. 94) for PHV admission, May 3, 2022. Same name appears as EagleView's California-side counsel in the parallel Pictometry v. Roofr (D. Del. C.A. 21-1852) case. |
| Yue (Joy) Wang | PHV counsel for plaintiffs (both entities) | Shearman & Sterling LLP, Menlo Park, CA | D. Utah Doc. 92, order granting motion (Doc. 88) for PHV admission, May 3, 2022. Listed on the Roofr opposition brief as one of the Menlo Park attorneys for EagleView. |
Sourcing caveat: these three entries come from a commercial docket transcription (UniCourt's docket sheet for No. 2:22-cv-00215) rather than from PACER directly, which I cannot query here. The dates, judge, and document numbers are internally consistent, but treat the exact motion/order pairing as secondary-sourced.
Likely lead counsel (flag: not directly verified for this case)
- L. Kieran Kieckhefer, then of Shearman & Sterling LLP, 535 Mission Street, 25th Floor, San Francisco, CA 94105 — designated "OF COUNSEL" on EagleView's filings in the related Roofr matter during the same period (D. Del. Doc. 22, May 27, 2022, plaintiffs' opposition to § 101 motion). Kieckhefer was the Shearman partner running EagleView's multi-front enforcement campaign (Xactware, Nearmap, GAF, Roofr), so she is the most likely supervisory/lead counsel of record here — but I did not find a GAF-case filing bearing her name, and Shearman's 2024 combination into A&O Shearman (and her subsequent role) would need verification before you treat the firm name as current.
Local counsel
- Unverified. I could not confirm the Utah firm that entered as local counsel for EagleView in 2:22-cv-00215. Note a common misread: the DocketAlarm/Ray Quinney signature block that surfaces in searches on this docket — "Michael K. Erickson (12503), RAY QUINNEY & NEBEKER P.C., 36 South State Street" — is defendant's local counsel (it appears on Doc. 220, GAF's reply in further support of its motion to limit asserted claims), not plaintiffs'. Similarly, Jay Neukom's PHV admission (Doc. 98) is for GAF. Do not attribute Ray Quinney or Neukom to the plaintiff side.
- The natural inference is Maschoff Brennan (Park City/Salt Lake City), which does substantial Utah IP litigation and whose New York office includes Sherman Kahn — but I found no filing tying Maschoff Brennan to the GAF case, so I'm listing it as an unconfirmed hypothesis only.
In-house counsel
- None identified. Nothing I found lists an EagleView in-house attorney as counsel of record. The Rule 30(b)(6) designee discussed in Judge Oberg's February 1, 2024 order (Doc. 247 line of rulings) was a fact witness, not counsel; the declaration at Doc. 248/250-1 (Decl. of Michael M. Powell) appears in support of GAF's motion, not plaintiffs'.
Where to verify (since I could not reach PACER)
- Complaint signature block — D. Utah Doc. 1 (the operative First Amended Complaint is Doc. 100 per the prior section). The signature block will list local counsel of record plus the PHV/out-of-state team.
- PHV motion attachments — Docs. 88, 93, 94 (EagleView) versus 97 (GAF), each with the applicant's firm letterhead and certifications.
- Local Patent Rule certifications — LPR 2.1/2.2 filings by plaintiffs' counsel (D. Utah Local Patent Rules) name the lead attorney responsible for the case.
- Current status check — Because Berkowitz is now at Reichman Jorgensen Lehman & Feldberg and the Shearman/A&O Shearman combination occurred in 2024, run a counsel-change/withdrawal check (D. Utah CM-ECF "Attorney Appearance/Withdrawal" events) to see who actually remains of record as of the August 26, 2025 Markman hearing referenced in the prior section. Any post-2024 signature block on Doc. 354's briefing is the best current-authority list.
Flags against the existing case summary
- No contradiction with the prior section. The plaintiff-side attorneys confirmed here (Berkowitz, Colsher, Wang) are consistent with the prior section's finding that this is a well-resourced, serial enforcement campaign — the same Shearman team appears across EagleView's GAF, Nearmap, and Roofr matters.
- One correction of emphasis: the prior section's § 101 discussion cited Shearman-attorney conduct only indirectly. For the record, the Shearman team was also the team prosecuting the Roofr § 101 defense — i.e., the same group defending the "battle-tested portfolio" argument (D. Del. Doc. 22), which is useful context for reading the GAF briefing.
- The "Closed" docket status noted in the prior section still conflicts with the verified 2025 Markman activity; unresolved, and I could not check PACER to settle it.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Ray Quinney & Nebeker
- Michael K. Erickson · local counsel
- Debevoise & Plimpton
- John M. Neukom · lead trial counsel
- Gish
- Edward L. Tulin · lead counsel
- Skadden, Arps, Slate, Meagher & Flom
- Leslie A. Demers · counsel
- Archer & Greiner
- Maureen T. Coghlan · local counsel
I'll research GAF's counsel of record through docket sources, firm announcements, and court opinions.
Good initial leads. Let me dig into the D. Utah counsel (including local counsel) and the reported firm changes.
Let me verify the current firm affiliations and the full post-transfer signature blocks.
Counsel of Record for GAF Materials LLC — Eagle View Techs., Inc. v. GAF Materials, LLC, No. 2:22-cv-00215-TS-DAO (D. Utah)
A threshold note on method: I was able to retrieve signature blocks and appearances from court opinions and filed PDFs, but not a live PACER docket sheet in this session. The docket does not formally designate "lead counsel," so the role labels below are my characterization based on who signs what, and I flag every place the record is incomplete. No in-house GAF attorney is named in any public filing I could find.
A. Defense team after transfer to the District of Utah (the current team)
| Attorney | Role (as characterized) | Firm / office | Notes |
|---|---|---|---|
| Michael K. Erickson (Utah Bar No. 12503) | Local counsel of record; signs GAF's Utah filings | Ray Quinney & Nebeker P.C., 36 S. State St., Ste. 1400, Salt Lake City, UT | Utah IP litigator (software/computer/internet); former software developer at Sandia National Labs; appellate experience in the Tenth and Federal Circuits. Signed GAF's reply in support of its motion to limit asserted claims (Doc. 220, Nov. 10, 2023) and the 2024 short-form discovery motions and motion to withdraw, per the Law360/Shearman docket entries. Firm bio: https://rqn.com/attorney/michael-k-erickson/ |
| John M. "Jay" Neukom | Lead trial counsel, admitted pro hac vice in D. Utah | Now Debevoise & Plimpton LLP, San Francisco (was Skadden, Arps, Palo Alto when he entered the case) | Admitted PHV by Judge Stewart on May 3, 2022 (Doc. 98, granting Doc. 97). Argued for GAF as appellee in Kirsch Research & Dev., LLC v. GAF Materials LLC, No. 2022-2063 (Fed. Cir. May 2, 2024) — opinion lists him at Debevoise with Tulin at Gish, confirming both the firm move and the pair's continuing GAF representation. https://cafc.uscourts.gov/opinions-orders/22-2063.OPINION.5-2-2024_2311664.pdf |
| Edward L. Tulin | Lead/principal IP counsel, admitted pro hac vice | Gish PLLC, New York, NY (joined May 2022 from Skadden, where he was Counsel) | Gish's own bio expressly lists "defending GAF … in a patent infringement suit involving roof estimation technology in the District of Utah." Former law clerk to Judge Christopher J. Burke (D. Del.); PTAB/IPR and Federal Circuit practice. https://www.gishpllc.com/team-member/edward-tulin/ |
| Leslie A. Demers | Counsel (Skadden team) | Skadden, Arps, Slate, Meagher & Flom LLP, New York (One Manhattan West) | Listed on GAF's behalf in the New Jersey phase (transfer opinion appearances). Not verified in any post-transfer Utah filing. |
A VitalLaw IP Law Daily report on the July 19, 2023 order adding the antitrust counterclaim independently lists GAF's counsel as "Edward L. Tulin (Gish PLLC)," corroborating Tulin's continued role after the Skadden-to-Gish move (https://www.vitallaw.com/news/patent-d-utah-antitrust-counterclaim-added-to-aerial-photograph-patent-suit/ipm018c8e2928d1544c12af4a4e375fbfa4d2).
B. Defense team during the New Jersey phase (2021 – March 2022, pre-transfer)
The transfer opinion's "APPEARANCES" block, which is the most authoritative single list for this period, names the following as "On behalf of Defendant GAF Materials, LLC":
- Maureen T. Coghlan — Archer & Greiner, PC, 1025 Laurel Oak Road, Voorhees, NJ — local New Jersey counsel of record.
- John M. Neukom — Skadden, Arps (Palo Alto) — pro hac vice.
- Edward L. Tulin — Skadden, Arps (New York) — pro hac vice.
- Leslie A. Demers — Skadden, Arps (New York) — pro hac vice.
Source: Eagle View Techs., Inc. v. GAF Materials, LLC, Civ. No. 21-10669 (RMB/SAK) (D.N.J. Mar. 25, 2022), https://www.casemine.com/judgement/us/6246d83a342cca047dbcf2b7 (same appearances reproduced at https://www.courtlistener.com/opinion/9806370/eagle-view-technologies-inc-v-gaf-materials-llc/).
Note the symmetry with the plaintiff's side, which used the same two-tier structure: Walsh Pizzi O'Reilly Falanga (Hector D. Ruiz, Liza M. Walsh) as New Jersey local counsel with Kirkland & Ellis (Adam R. Alper, Brandon H. Brown, Natalie Flechsig, Leslie Schmidt, Michael W. De Vries) pro hac vice — EagleView, not GAF. Do not confuse the two lists; the Kirkland/Skadden split in the NJ opinion is plaintiff/defendant respectively.
C. In-house counsel
Not identified. No GAF in-house attorney (e.g., a Standard Industries or GAF legal-department lawyer) appears in any filing I could retrieve. I will not name one without a source.
D. Explicit gaps and caveats
- No live PACER docket sheet retrieved. I could not pull the current "Attorneys" list from PACER or Docket Alarm's participant tab in this session, so I cannot rule out additional or substituted counsel (e.g., additional Gish associates, or additional Ray Quinney attorneys).
- "Additional counsel listed in signature block." Michael Erickson's Doc. 220 cover page carries that exact notation, meaning the full defense signature block on that filing has attorneys I did not capture. That is the single best next document to retrieve (Doc. 220, https://www.docketalarm.com/cases/Utah_District_Court/2--22-cv-00215/Eagle_View_Technologies_et_al_v_GAF_Materials_LLC/docs/220.pdf).
- Neukom's firm transition date is not pinned down. The Federal Circuit opinion (May 2, 2024) places him at Debevoise; the D. Utah PHV order (May 2022) does not state a firm. Whether he moved to Debevoise while remaining on this case, or whether Debevoise formally substituted in, is unverified.
- Leslie A. Demers / Skadden's post-transfer status is unverified. No Utah filing I found bears a Skadden signature for GAF.
- Gish PLLC attorney roster beyond Tulin (Andrew D. Gish, Raymond J. Bilderbeck, etc.) is unverified for this case — they appear with Tulin in other matters (e.g., Meta v. Voyager Labs, Integrated Tech. Solutions v. iRacing), not necessarily here.
- Cross-reference flag: the same VitalLaw report that identifies Tulin also lists "Eric S. Lucas (Shearman & Sterling LLP)" for EagleView, which conflicts with the earlier sections' statement that Kirkland & Ellis represented the plaintiffs in this case and with the transfer opinion's appearances block. That entry appears to be auto-generated counsel metadata and should be treated as less reliable than the opinion text. (Shearman has since merged into A&O Shearman, which may explain a later substitution on the plaintiff side — but I did not verify that.)
- Nothing in the record suggests filings are sealed as to counsel identification; the sealing activity I found (see, e.g., the June 9, 2023 sealing order in the parallel Nearmap case, https://law.justia.com/cases/federal/district-courts/utah/utdce/2:2021cv00283/[125462/310](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=125462-0310)/) concerns exhibits and business information, not appearances.
Verification path if you need a certified list: pull the D. Utah docket sheet for 2:22-cv-00215 and read the "Attorneys" pane plus the signature blocks of (i) the most recent GAF-filed motion and (ii) the most recent pro hac vice admission orders after Doc. 98, which will capture any 2023–2025 additions or withdrawals.