IPR2016-00587

I'll research this IPR and the underlying technology/parties.

Let me dig into the IPR itself and the parallel district court litigation.

Case Overview — IPR2016-00587 (Xactware Solutions, Inc. v. Eagle View Technologies, Inc.)

Correction to the prior summary: the petitioner is now confirmed. IPR2016-00587 was filed on February 8, 2016 by Xactware Solutions, Inc. against Eagle View Technologies, Inc. ("EagleView") as patent owner, challenging U.S. Patent No. 9,129,376. Both sides are operating companies, not NPEs: Xactware is the Jersey City–based property-insurance estimating software arm of Verisk Analytics (its flagship product is Xactimate, widely used by carriers and adjusters), while EagleView is a Bothell, WA–based aerial imagery/roof-measurement company that merged with Pictometry International Corp. in 2013 and sells roof measurement and estimate reports to insurers and contractors. The dispute is a direct competitor-on-competitor fight, and its origin story is unusual: Verisk agreed in 2014 to acquire EagleView for roughly $650 million but abandoned the deal after FTC concerns that it would create a "virtual monopoly" in U.S. rooftop aerial measurement, after which EagleView sued Xactware and Verisk for infringement in 2015. (Law360, reprinted at Kirkland & Ellis, "Xactware Challenges to Rival's Patents End with a Whimper," Aug. 29, 2017.)

The patent and the IPR. The '376 patent, titled "Pitch Determination Systems and Methods for Aerial Roof Estimation," issued September 8, 2015 and claims priority to provisional application 61/197,904 (filed Oct. 31, 2008) via applications 12/467,244 (May 15, 2009) and 13/438,288 (Apr. 3, 2012). Technically, it covers a computer-assisted roof-modeling workflow: a "pitch determination marker" (in dependent claims, an "envelope tool" with movable spine and adjustable surfaces) is overlaid on a photographic aerial image of a roof, manipulated by a user until it aligns with a planar roof section, from which the system calculates the roof pitch and outputs a roof estimate report with top-plan model views annotated with slope, area, and edge-length values (see the D.N.J. pretrial order summarizing claims 20, 22, and 23, CourtListener, Eagle View Techs. v. Xactware Solutions, 1:15-cv-07025). The IPR petition asserted three obviousness grounds, all of which depended on the Verma reference (LIDAR point-cloud 3D roof modeling) to teach the recited pitch determination marker. On August 15, 2016, a 13-page Board decision denied institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108, finding that Xactware had "cite[d] several different portions of Verma without sufficiently explaining how these teachings come together" and that scattered disclosures were insufficient to show the claimed marker; a request for rehearing was also denied. The decision is available at https://www.eagleview.com/wp-content/uploads/2019/03/2016-08-15-014-376-Non-Institution-Decision-2016-587.pdf; the exact challenged claim set is not fully confirmed from the excerpt I could retrieve, but the decision addresses independent claims 11, 17, and 20, each of which recites the pitch determination marker.

Procedural posture and significance. The IPR sat alongside Eagle View Technologies, Inc. v. Xactware Solutions, Inc., No. 1:15-cv-07025-RBK-JS (D.N.J., Camden vicinage, before Judge Robert B. Kugler), filed September 23, 2015 — a home forum for Verisk/Xactware, which are New Jersey entities. In that case the accused technology is Xactware's rooftop aerial measurement offerings, specifically Xactimate with Aerial Sketch, Property Insight/Roof InSight, and the "Mass Production Tool" (per EagleView's Local Patent Rule 3.1 infringement contentions), while EagleView's asserted practice is its Render House/Twister engines and report families (PremiumReports, Wall Reports, QuickCoverage/Extended Coverage, QuickSquares, SolarReports, ClaimsReady). Xactware fired a broad IPR salvo — more than a dozen petitions against nine EagleView patents, with the Board instituting on six in August 2016; final decisions in August 2017 upheld most challenged claims, and the Federal Circuit affirmed in Xactware Solutions, Inc. v. Eagle View Technologies, Inc., Nos. 2018-1053, -1055, -1056, -1110 (Fed. Cir. Mar. 6, 2019) (nonprecedential), covering the '454, '770, '152, and '737 patents. The '376 was among the patents where review was never instituted. Xactware's follow-on petitions (IPR2016-01775; IPR2017-00021, -00025, -00027, -00034; IPR2017-00363) were all denied as well — several on discretionary § 314(a) grounds — and became a leading illustration of the PTAB's "no second bite at the apple" doctrine (Jones Day, "A Single Bite at the Apple," PTAB Litigation Blog, Apr. 28, 2017). The parallel litigation proceeded to a jury trial; the verdict sheet (Dkt. 796) and a post-trial opinion in the D.N.J. docket show the jury rejected Xactware/Verisk's invalidity and § 101 defenses and that their motion for a new trial was denied, with the court reasoning that the claims are directed to an improved non-stereoscopic roof-modeling technique rather than an abstract idea (CourtListener opinion in 1:15-cv-07025, citing Dkt. 57). Caveat: I could not verify from the sources retrieved the precise trial date, verdict amount, or the identity of the judge who authored the post-trial opinion; those details should be confirmed against PACER before being published. The case is notable for three reasons: it is a textbook example of antitrust review shaping patent litigation between two operating competitors in a narrow insurance-data market; it demonstrates the limits of an IPR blitz where the petitioner's lead reference (Verma, Hsieh, or a non-public Pictometry manual) does not map to user-interaction claim limitations; and the surviving EagleView patents have since underpinned EagleView's subsequent assertion campaigns and licensing posture in the aerial-imagery sector.

I'll research this case. Note that the metadata describes IPR2016-00587, a PTAB proceeding rather than a district court litigation — I'll investigate both the IPR and any parallel litigation involving U.S. Patent 9,129,376.

Found the parties. Let me dig deeper into the IPR outcome and the parallel litigation.

Excellent context. Now let me find the final disposition of the litigation and the Federal Circuit appeal, plus details on the '376 patent's role.

Key Legal Developments & Outcome — U.S. Patent 9,129,376 Litigation

Important framing note: The "case" in the metadata (IPR2016-00587) is a PTAB inter partes review petition, not a district court lawsuit. It was one of 15 IPRs Xactware filed against EagleView's rooftop-aerial-measurement patents. The underlying infringement litigation is Eagle View Technologies, Inc. and Pictometry International Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., No. 2:15-cv-07025 (RBK/JS) (D.N.J.). The '376 patent was asserted in that case and went to trial. I cover both tracks below.

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I. The IPR Track — IPR2016-00587 (the metadata case)

Outcome: The Board declined to institute review of the '376 patent. This is consistent with the Board's August 2016 rulings on Xactware's companion petitions, where it repeatedly found that the primary reference (Hsieh) did not qualify as a printed publication and therefore could not be prior art. EagleView's patents survived this challenge entirely.

Sources: PTO Litigation Center Report (Feb. 9, 2016); PTAB Decision Denying Institution, IPR2016-00587 (Aug. 15, 2016); PTAB Decision Denying Rehearing (Sep. 30, 2016), cited in the file histories printed on justia.com (e.g., U.S. Pat. 11,416,644 and 10,503,843).

Caveat: The 13-page institution-denial opinion itself is not directly retrievable in my searches. That the denial rested on the Hsieh printed-publication defect is inferred from the parallel August 2016 decisions (IPR2016-00582, -00586) applying the same reasoning; I could not confirm the '587 rationale verbatim. Treat the specific ground as less firmly sourced than the date and outcome.

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II. The District Court Litigation Track (D.N.J. No. 2:15-cv-07025)

Filing & initial pleadings

• 2015-09-23 — EagleView + Pictometry file the original complaint against Xactware (Verisk subsidiary) and Verisk, asserting seven patents; willfulness alleged based on Verisk's due-diligence review of the portfolio during the failed 2014 acquisition. (Served 2015-10-08.)
• 2015-11-12 — Defendants answer and file counterclaims seeking declaratory judgment of non-infringement and invalidity.
• 2015-11-30 — First Amended Complaint adds the '376 patent and '737 patent (nine patents total). The '376 patent issued 2015-09-08 (application filed 2014-07-31).
• Asserted claims of the '376 patent were claims 17, 20, and 23.
• 2017-05-18 — Defendants file a Second Amended Answer adding an inequitable conduct counterclaim (Count XIX); Plaintiffs move to dismiss/strike. (Opinion at D.E. 408; the '376 patent is listed among patents-in-suit.)

Pre-trial motions of substance

• 2016-05-04 — Court (Judge Kugler) grants in part a stay motion: all depositions and Markman submissions stayed; general discovery stay denied. Court notes "inordinate number of claims" (153 claims, 63 terms) and orders the parties to reduce them.
• 2016-08-02 — Motion to dismiss (Alice § 101) denied without prejudice — Eagle View Techs. v. Xactware Sols., 2016 WL 4154136 (D.N.J. Aug. 2, 2016).
• 2016-09-08 — Defendants' renewed motion to stay pending IPR. Denied; the court (and Magistrate Judge Schneider) expressed concern about Xactware's serial IPR filings and let the case proceed.
• 2016-11-30 — Discovery dispute hearing; Magistrate Judge Schneider questions the serial-petition strategy.
• 2017-05-19 — Joint Stipulated Order of Partial Dismissal with Prejudice: dismisses the '880 and '732 patents and certain claims of the remaining patents; asserted claims cut to 18.
• 2018-08-01 — EagleView drops the '152 patent; asserted claims reduced further.
• 2018-10-26 — Summary judgment motions fully submitted.
• 2018-12-06 — Court denies EagleView's motion to exclude a key prior art reference.
• 2018-12-20 — Court denies Xactware/Verisk's summary judgment motion of equitable estoppel.
• 2019-01-29 — Court denies Defendants' § 101 unpatentability summary judgment motion, holding the claims "are directed to an improvement in the functioning of a computer" and "suggest a specific inventive concept."
• Thereafter EagleView drops the '737 patent, leaving five patents and roughly six asserted claims — including the '376 patent — for trial.

Claim construction (Markman)

• Claim construction was stayed in May 2016 pending the IPR process, then progressed as the case moved toward trial. The parties ultimately reduced 63 disputed terms, but I could not locate a discrete published Markman order construing the '376 patent; treat any specific '376 construction as unsourced.

Discovery milestones of strategic significance

• 2016-09-16 — EagleView serves amended infringement contentions, cutting asserted claims from 153 to 46 and patents from nine to seven.
• 2017-05-19 — Stipulated dismissals narrow the case substantially.
• 2018 — Fact and expert discovery closed. Discovery was heavily litigated; the trial court later described it as "unnecessarily litigious and nasty."
• Key estoppel/practice evidence: Xactware's Aerial Sketch (2011), Roof InSight (2012), Property InSight (2015) product timelines; the failed 2014 Verisk–EagleView $650M acquisition (blocked by FTC, Dec. 2014); the 2015 Vista–EagleView deal.

Trial, verdict & post-trial motions

• September 2019 — Twelve-day jury trial in Camden, N.J.
• 2019-09-25 — JURY VERDICT: Xactware/Verisk willfully infringed six asserted claims across five patents (including the '376 patent); $125 million in lost-profits damages. The jury deliberated less than two hours.
• 2019-09-26 — Court enters the judgment and grants a TRO; 2019-10-18 the TRO is converted into a permanent injunction barring sales of Geomni Roof, Geomni Property, and Aerial Sketch in combination with Xactimate.
• 2019-11-12 — Defendants move for JMOL and a new trial; EagleView moves for enhanced damages and attorneys' fees.
• 2020-09-10 — Court denies the new-trial/JMOL motion (opinion referencing Alice in Wonderland).
• 2021-02-16 — Court enhances damages to the maximum under 35 U.S.C. § 284 — treble damages (+$375 million, ~$500M total) — plus § 285 attorneys' fees (from the joint pretrial order through trial), prejudgment interest at the prime rate from 2015-09-23, and post-judgment interest. The court called Defendants' conduct "egregious infringement behavior."

Appeal & final disposition

• Appeal — Xactware/Verisk appeal to the Federal Circuit; oral argument early October 2021. The panel focused on Alice § 101 patent-eligibility, creating real risk that the ~$500M judgment could be zeroed out.
• 2021-11-05 — Parties file a stipulated settlement (announced 2021-11-08): ends all litigation, vacates the $125M jury award, dismisses the appeal, lifts the permanent injunction, and includes a new long-term commercial/cooperation agreement. Defendants "affirm[ed] that the patents held by EagleView... are valid, subsisting and enforceable." Financial terms undisclosed.
• Post-settlement motion to vacate — Parties asked the court to vacate the judgment and injunction and dismiss with prejudice. The court (Judge Bumb):
  • Mooted the contempt and attorney's-fee motions;
  • Vacated the permanent injunction under Rule 60(b)(5);
  • Refused to vacate the jury judgment and underlying findings, citing finality and that "a jury trial is not a dress rehearsal"; and
  • Dismissed all claims/counterclaims with prejudice.
• Present posture: Fully settled and closed; the '376 patent remains valid, subsisting, and enforceable per the settlement affirmation.

Sources: Verisk Analytics Form 10-K (FY2019) and 10-Q filings; D.N.J. Docket (D.E. 14, 75, 79, 119, 408, 458, 799, 842); Eagle View Techs. v. Xactware Sols., 2016 WL 4154136 (D.N.J. Aug. 2, 2016); Law360 case docket; Quinn Emanuel AI Bulletin (July 23, 2020); Above the Law ("Treble the Trouble" 2021-03; "A Patent Slate Not Wiped Clean" 2021-11); Insurance Journal (2021-11-08).

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III. Parallel PTAB Activity on the '376 and Related Patents

• Xactware filed 15 IPRs against EagleView/Pictometry patents after the 2015 suit:
  • Institution denied (8): IPR2016-00582 ('436), -00586 ('840), -00587 ('376), -01775 ('436), -2017-00021 ('436), -00025 ('770), -00027 ('454), -00363 ('737).
  • Final written decisions for EagleView / affirmed (3): IPR2016-00589 ('454), -00590 ('770), -00592 ('737). Federal Circuit affirmed — Xactware Solutions, Inc. v. Eagle View Technologies, Inc., Nos. 2018-1053/-1055/-1056/-1110 (Fed. Cir. 2019-03-06) (nonprecedential), upholding validity with reliance on secondary considerations (industry praise — including Verisk CEO praise during the failed acquisition) and a presumption of nexus.
  • Final written decisions for EagleView (3): IPR2016-00593 ('732), -00594 ('880), -2017-00034 ('152).
  • One loss: IPR2016-00591 — claims 1, 3, 6, 9, 12–14, 16, 19, 22, 23 of the '152 patent held unpatentable (PTAB 2017-08-14); EagleView dropped the '152 patent from the case on 2018-08-01.
• Follow-on petitions denied on discretion: In April 2017 the Board used § 314(a) to deny institution of Xactware's second-wave petitions (IPR2017-00021, -00025, -00027, -00034) as "repeat challenges," citing the "potential inequity of Petitioner filing multiple attacks, adjusting along the way." This "serial" conduct later factored into the district court's § 284/§ 285 enhancement and fee findings.

Effect on the litigation: Because the '376 IPR was never instituted, the '376 patent faced no PTAB invalidation risk and survived to the jury trial, where it was among the patents found willfully infringed. Conversely, the PTAB losses (especially on the '152 patent) drove EagleView's narrowing of asserted claims. The Federal Circuit's 2019 affirmance of the Board's validity rulings strengthened EagleView's hand going into trial and supported its willfulness/enhancement narrative.

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IV. Bottom Line

• IPR2016-00587 outcome: Institution denied (2016-08-15); rehearing denied (2016-09-30). The '376 patent was never cancelled or narrowed via this IPR.
• Litigation outcome: EagleView won a $125M willful-infringement jury verdict (2019-09-25), trebled to ~$500M with fees and interest (2021-02-16), and a permanent injunction.
• Final disposition: Confidential settlement in November 2021 before the Federal Circuit ruled; the jury award was vacated and the appeal dismissed, but the court preserved the judgment record and dismissed all claims with prejudice, with the patents affirmed as valid and enforceable.

Sourcing note: Dates tied to the IPR2016-00587 petition (2016-02-08), the denial (2016-08-15), and rehearing denial (2016-09-30) are well documented. The specific ground of the '587 denial is inferred from companion decisions and should be verified against the 13-page opinion. A few items (the exact number of asserted '376 claims reaching trial, and any discrete Markman construction of the '376 claims) are less firmly sourced and are flagged as such.

I'll research this. Note upfront: the case as captioned is an IPR before the PTAB, not a district court action — so there is technically no "plaintiff." I'll identify the real parties and their counsel of record.

Petitioner is Xactware Solutions, Inc.; Patent Owner is Eagle View Technologies, Inc. (now EagleView). Let me get the counsel.

Important framing correction

The case you've given me — IPR2016-00587 — is not a patent infringement action. It is an inter partes review before the PTAB. There is no "plaintiff" and no "defendant." The parties are:

• Petitioner (the party who filed and thus initiated — the functional analog to a plaintiff): Xactware Solutions, Inc. (a Verisk Analytics subsidiary)
• Patent Owner (the respondent): Eagle View Technologies, Inc. (now EagleView Technologies, Inc.)

I confirmed this from the PTAB new-filings report for Feb. 8, 2016 and from the Board's own decisions citing the proceeding. Per that report, IPR2016-00587 was filed 2/8/2016 against U.S. Pat. No. 9,129,376, "Pitch Determination Systems and Methods for Aerial Roof Estimation," Tech Center 2100. The Board denied institution on Aug. 15, 2016 (13 pages), and denied rehearing on Sept. 30, 2016. (PTO Litigation Center Report, Feb. 9, 2016; Board decisions cited in the file histories of, e.g., U.S. Pat. 11,416,644).

So below I address counsel for the petitioner/initiating party plus, for completeness, the patent owner's counsel and the parallel district court plaintiff's counsel.

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⚠️ Sourcing caveat (read first)

Free public sources do not surface the IPR2016-00587 power of attorney, the Board's Notice of Filing Date Accorded, or a counsel-of-record caption page for this specific docket number. PTAB counsel-of-record data for 2016 proceedings lives in PTAB EndPoint / Docket Alarm / PACER-adjacent paid tools, and I could not pull the IPR2016-00587 caption sheet directly. What follows is drawn from:

1. A Law360 report on the companion IPR2016-00593 (same petitioner, same patent family, same Feb. 2016 petition wave, decided the same month), republished by Kirkland & Ellis; and
2. Law360/Kirkland coverage of the parallel D.N.J. litigation, Eagle View Technologies, Inc. v. Xactware Solutions, Inc., No. 2:15-cv-07025 (D.N.J.).

Because the same firms and individual attorneys appear across the whole Xactware/EagleView IPR campaign, these are strong indications of who appeared in −00587 — but I am not representing them as a verified counsel-of-record listing for that docket number, and I have not invented any names.

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1. Petitioner's counsel (Xactware Solutions — the initiating party)

Per the Law360 report on the companion proceeding: "Xactware is represented by Mark E. Nikolsky and Vadim E. Cherkasov of McCarter & English LLP." (Kirkland & Ellis, "Xactware Challenges to Rival's Patents End with a Whimper," reprinting Law360, Aug. 29, 2017)

Confidence: moderate. These two are consistently reported as Xactware's counsel for the co-filed IPR2016-00593 (Xactware v. Pictometry) and for the district court defense. Whether the identical pair signed the −00587 POA is not independently confirmed.

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2. Patent Owner's counsel (Eagle View Technologies — the respondent)

Same Law360 report (for the companion IPR): "EagleView is represented by Gianni Cutri, Jared Barcenas, Adam Alper, Michael De Vries, Justin Singh and Brandon Brown of Kirkland & Ellis LLP and by Marc Brockhaus, Jordan Sigale and Ann Robl of Dunlap Codding PC."

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3. The actual "plaintiff" — parallel district court action

If by "plaintiff" you mean the party that sued for infringement, that is Eagle View Technologies, Inc. (and subsidiary Pictometry International Corp.) in Eagle View Technologies, Inc. v. Xactware Solutions, Inc., No. 2:15-cv-07025 (D.N.J.) — filed 2015. There:

• EagleView's counsel: Kirkland & Ellis LLP, plus local counsel Walsh Pizzi O'Reilly Falanga LLP (Newark, NJ) — per Kirkland's own account of the 2019 trial. (Kirkland & Ellis, "Kirkland Raises the Roof for $125 Million," Oct. 2019)
• Xactware's counsel: McCarter & English LLP.
• Outcome: October 2019 jury verdict for EagleView — willful infringement by Xactware and Verisk, ~$125M, plus a post-verdict restraining order from Judge Renee Marie Bumb.

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Bottom line

• IPR2016-00587 has no plaintiff. The initiating party is petitioner Xactware Solutions, Inc.
• Best-supported petitioner-side representation: Mark E. Nikolsky and Vadim E. Cherkasov, McCarter & English LLP (Newark, NJ) — reported for the companion Xactware IPR and the D.N.J. defense.
• Patent-owner-side representation (EagleView): Kirkland & Ellis LLP (Cutri, Barcenas, Alper, De Vries, Singh, Brown) and Dunlap Codding PC (Brockhaus, Sigale, Robl).
• Caveat: I could not verify the IPR2016-00587 counsel-of-record caption/Power of Attorney from a free source, and nothing here should be treated as a substitute for the PTAB EndPoint docket sheet or PAIR for that trial number. If you need court-verified counsel for −00587 specifically, PTAB EndPoint or Docket Alarm is the correct source.

I'll research counsel of record. Note the framing issue: IPR2016-00587 is an IPR (petitioner vs. patent owner), so the "defendant" in the parallel infringement case is Xactware/Verisk. Let me pin down both.

Now let me verify the IPR-specific counsel and the later Davis Polk appearance, plus confirm Gibson Dunn/McCarter roles.

I have strong evidence on the district court defense team. Let me pin down IPR-specific counsel for both sides.