Litigation

Verisk Analytics, Inc. et al. v. Eagle View Technologies, Inc. et al.

Dismissed on settlement

21-1048 (lead), 21-1049, 21-1743

Terminated
2021-11-08

Patents at issue (5)

8825454
8078436PTAB: final decision
8170840
8818770
9129376

Summary

Verisk and Xactware appealed the District of New Jersey judgment in the EagleView patent action. The Federal Circuit heard oral argument but the parties settled before decision; the consolidated appeals were dismissed and closed on November 8, 2021.

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 across multiple sources to build a verified overview.

Good foundation. Now let me verify the patents, the appeal branches (21-1049, 21-1743), and the oral argument/settlement.

Case Overview: EagleView v. Xactware/Verisk (D.N.J. 1:15-cv-07025 → Fed. Cir. Nos. 21-1048, 21-1049, 21-1743)

I. The parties. This is a competitor-vs-competitor patent fight, not an NPE/PAE assertion. On the patent-owner side are EagleView Technologies, Inc. (Bellevue/Bothell, Wash.) and its affiliate Pictometry International Corp. — operating companies that build aerial imagery, data-analytics and GIS products, including the roof-measurement reports insurers and roofing contractors use to price claims. EagleView is the assignee of most of the asserted patents; Pictometry (which EagleView describes as a subsidiary) owned others in the original complaint. On the defense side are Verisk Analytics, Inc. (Nasdaq: VRSK, Jersey City, N.J.) and its wholly-owned subsidiary Xactware Solutions, Inc. (Lehi, Utah), the maker of Xactimate, the dominant estimating platform in U.S. property-insurance claims, along with Roof InSight, Property InSight and the later Geomni-branded products. The parties have a long, acrimonious history: Verisk agreed in 2014 to acquire EagleView for roughly $650 million, then abandoned the deal after the FTC raised antitrust concerns that it would create a near-monopoly in U.S. rooftop aerial measurement; EagleView's later filings and the trial court's opinions describe Verisk/Xactware as having copied EagleView's technology rather than competing, and the trial court's enhancement opinion cited an internal Verisk strategy document labeling EagleView a "threat" to be "aggressively" undercut (EagleView press releases; Kirkland & Ellis summary of Law360 coverage; Ins. J. 11/8/2021). The underlying suit was filed in September 2015 as Eagle View Technologies, Inc. and Pictometry Int'l Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., No. 1:15-cv-07025 (RMB-SAK).

II. Accused technology and asserted patents. The accused products were Xactware/Verisk's own aerial roof-measurement and property-data offerings — Xactimate with "Aerial Sketch" (v.2), Roof InSight, Property InSight, Geomni Roof, Geomni Property, and Verisk's 360Value valuation product — which EagleView alleged used its patented photogrammetric pipeline: registering oblique aerial images into a shared 3D grid, generating a 3D roof model, determining roof-plane pitch, and outputting an annotated roof-estimate report without anyone climbing the roof with a tape measure. The five patents carried into the appeal (per case metadata) are: U.S. 8,078,436 ("Aerial Roof Estimation Systems and Methods") — generating a roof estimate report, i.e., top-plan line drawings of the roof annotated with pitch/area/edge-length values, from aerial images; U.S. 8,170,840, 8,818,770 and 9,129,376 (all "Pitch Determination Systems and Methods for Aerial Roof Estimation," a common continuation family) — user-interface tools (e.g., a pitch-determination "marker"/"envelope tool") for measuring and adjusting the pitch of a planar roof section overlaid on an aerial image and storing/outputting the result; and U.S. 8,825,454 ("Concurrent Display Systems and Methods for Aerial Roof Estimation") — concurrently displaying an operator-specified roof feature across multiple images of the same roof as the model is built (asserted claim 26). The complaint originally asserted additional patents (e.g., the '152, '732, '737, '880), but the case narrowed to this set by trial.

III. Procedural posture and venue. Filed in the District of New Jersey (Camden Vicinage) and assigned to then-Chief Judge Robert B. Kugler, who handled the Markman ruling (Dec. 5, 2017, Dkt. 332), § 101 motions and early dispositive practice; the case was reassigned in June 2019 to Judge Renee Marie Bumb, who presided over trial and all post-trial proceedings (Magistrate Judge Sharon A. King, "SAK"). Venue in D.N.J. mattered for two reasons: Verisk is headquartered in New Jersey and did not contest personal jurisdiction or venue (Xactware's answer admits this as to Verisk), making D.N.J. a durable forum; and the district has Local Patent Rules and a track record of shepherding patent cases to trial. After a 12-day trial beginning September 9, 2019, the jury on September 25, 2019 found willful infringement, rejected the invalidity defenses, and awarded $125 million in lost profits. The court entered judgment (Dkt. 799) on Sept. 26, 2019, issued a TRO the same day, and entered a permanent injunction (Dkt. 842) on October 18, 2019 barring sale/use of the enjoined products and "any products not more than colorably different." On February 16, 2021, Judge Bumb granted enhanced damages to the maximum extent — trebling to $375 million (total exposure ≈ $500 million with interest), plus § 285 fees from the motions-in-limine stage and pre-judgment interest at the prime rate from Sept. 23, 2015 (Dkt. 909/910). Verisk/Xactware noticed appeals on Oct. 14, 2020 (Docs. 902/903 → Nos. 21-1048 and 21-1049) and Mar. 15, 2021 (Doc. 911 → No. 21-1743); the three were consolidated on Mar. 30, 2021 with 21-1048 as lead. A panel of Judges Taranto, Clevenger and Chen heard argument on October 8, 2021.

IV. Why the case is notable. Three things make it a standard citation. First, the Alice/§ 101 risk on appeal: the district court had thrice rejected eligibility challenges (most notably a Jan. 29, 2019 ruling that the claims "are directed to an improvement in the functioning of a computer" solving "the specific problem of generating a roof repair estimate without direct human measurement"), but at oral argument the Federal Circuit panel pressed hard the other way — Judge Chen asking whether the claims could be done with pen and paper, Judge Clevenger suggesting image correlation was conventional — leading Law360 to report the panel "appeared to call into question" the $375M win (Law360, Oct. 8, 2021; Above the Law, Nov. 2021). Second, the IPR linkage: Xactware filed more than a dozen IPR petitions against nine EagleView patents (including IPR2016-00582 ('436), -00587 ('376), -00589 ('454), -00590 ('770), -00591 ('152), -00593 ('732)); the PTAB upheld nearly all challenged claims and the Federal Circuit affirmed on March 6, 2019 — a "serial attack" that both strengthened EagleView's validity story and fed the district court's vexatious-litigation/Read-factor findings supporting treble damages. Third, the settlement and vacatur fight: on November 5–8, 2021 the parties filed a Rule 60(b) stipulation resolving all disputes, dismissed the appeal, and announced a long-term commercial/co-innovation agreement in which Verisk affirmed the EagleView patents are "valid, subsisting and enforceable" — a notable outcome that preserved the patent estate rather than risking an invalidation ruling. The district court then mooted the injunction, fee motion and contempt proceedings but declined to vacate the jury's infringement verdict, invoking the finality of judgments. The practical lesson — that an adverse oral argument can convert a $500M judgment into settlement leverage overnight — has made this case a recurring teaching example on appellate risk in patent litigation.

Sourcing caveats: Party roles above are drawn from the district-court docket and EagleView/Verisk public statements (CourtListener docket 4517885; Unified Patents Case 2021-1048 portal; Insurance Journal 11/8/2021; EagleView litigation timeline). Note one caption inconsistency: the case metadata lists the appeal as "Verisk Analytics, Inc. et al. v. Eagle View Technologies, Inc. et al.," while the Federal Circuit docket and cert. list the lead appeal as Eagle View Technologies, Inc. v. Xactware Solutions, Inc.; the consolidated official caption appears to have been revised in the Mar. 30, 2021 consolidation order. I have not independently verified the precise per-patent damages apportionment or the confidential settlement amount — neither appears to have been disclosed. The district court's specific ruling on the motion to vacate the judgment is reported via secondary commentary (Above the Law, Nov. 2021) rather than a primary opinion I retrieved.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case across the district court, Federal Circuit, and PTAB records.

Good foundation. Let me dig into the district court docket, the IPR proceedings, and the earlier related litigation.

Now let me pin down the Markman ruling, the stay motion, the JMOL/new trial and fee rulings, and the PTAB docket details.

Note on caption orientation

The metadata caption (Verisk as plaintiff, EagleView as defendant) is the Federal Circuit's styling of Appeals Nos. 21-1048/21-1049/21-1743, in which Verisk/Xactware were the appellants (the Federal Circuit docket lists "Defendant/Appellant: Verisk Analytics, Inc. and Xactware Solutions, Inc.; Plaintiff/Appellee: Pictometry International Corp. and Eagle View Technologies, Inc."). In the district court, the patentee was the plaintiff: Eagle View Technologies, Inc. and Pictometry International Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., No. 1:15-cv-07025 (RBK/JS, later RMB/SAK) (D.N.J.). I treat EagleView as plaintiff/patentee below.

1. Pre-suit background (2008–2015)

Date Event
2008-11 EagleView and Xactware enter an integration agreement (EagleView preloads data through Xactware's network; 1M warrants; 8% qualified-revenue fee).
2012 EagleView sues Xactware for breach of contract/injunctive relief in the W.D. Wash., No. C12-1913-RSM. Preliminary injunction entered 2012-12-19 and extended through trial by the Ninth Circuit. Partial summary judgment for Xactware denied 2013-11-06. This contract case ran until Feb. 2016, overlapping the patent case. (opinion)
2012 EagleView also sues competitor Aerialogics for patent infringement — later relevant because the Thornberry depositions from that case were produced in 2016 and used to support an inequitable-conduct/inventorship theory.
2013–2014 Verisk negotiates a $650M acquisition of EagleView, conducting patent due diligence (later the basis for EagleView's willfulness theory). FTC challenges the deal; the parties abandon it in Dec. 2014.
2014-08-27 Ex parte reexamination certificate (C1) issues for the '436 patent.

2. Filing and initial pleadings (2015)

  • 2015-09-23 — EagleView and Pictometry file the original complaint in D.N.J. (No. 1:15-cv-07025) against Xactware and Verisk, asserting seven of nine patents: '436, '840, '152, '880, '770, '732, '454. Willfulness is pleaded based on Verisk's due-diligence review of the portfolio. (complaint)
  • 2015-10-08 — Verisk served with the summons and complaint (per Verisk's 10-Q disclosure). (SEC filing)
  • 2015-11-30 — First Amended Complaint asserts infringement of all nine patents, adding the '376 and '737 patents.
  • Answer & counterclaims (Dkt. 39) — Defendants generally deny infringement and assert declaratory-judgment counterclaims of non-infringement and invalidity as to each asserted patent, plus an equitable estoppel counterclaim/affirmative defense (based on the 6-year business relationship and merger-contract § 324 representations) and, later, an inequitable conduct counterclaim (omitted co-inventor Carlson / the '061 Kennedy patent). (Answer excerpt)
  • 2015-12-09/10 — Rule 16 conference; first scheduling order (Dkt. 38) mirrors the Local Patent Rules; initial amendment-of-pleadings deadline 2016-09-06 (later extended five times, ultimately to 2017-05-16).

3. Pre-trial motions of substance

3.1 § 101 motion to dismiss (denied)

  • Filed by Defendants in Feb. 2016 (contemporaneously with the first wave of IPR petitions), arguing every asserted patent claims ineligible subject matter under Alice.
  • 2016-08-02 — denied without prejudice: Judge Kugler held the parties' submissions "clearly identified a number of factual disputes and raised issues about the meanings of the claims," leaving the court "unable to develop a 'full understanding of the basic character of the claimed subject matter.'" Eagle View Techs., Inc. v. Xactware Sols., Inc., No. 15-7025, 2016 WL 4154136 (D.N.J. Aug. 2, 2016) (Dkt. 104). (opinion PDF)

3.2 Partial stay to narrow the case (2016-05-04)

Order (Dkt. 75) stayed all depositions and the parties' Markman submissions but denied a broader discovery stay; the court flagged the "inordinate number of claims asserted" and ordered the parties to meet and confer to reduce 153 asserted claims and 63 claim terms to reasonable numbers, warning it would revisit the stay if circumstances changed.

3.3 Motion to stay pending IPR (filed 2016-09-08; denied)

Defendants moved to stay pending the recently instituted IPRs. In opposition and in the eventual ruling, the court noted the landscape had shifted: Plaintiffs' 2016-09-16 amended contentions cut asserted claims from 153 → 46 and patents from nine → seven, leaving IPRs instituted on only four of the 46 asserted claims; the PTAB had also denied three requests for reconsideration. The motion was denied (opinion at Dkt. 150), with the court not persuaded the IPRs would simplify the case enough to justify a stay. (Dkt. 150 opinion) — I could not independently verify the exact denial date from a primary source; the opinion post-dates 2016-11-22.

3.4 Inequitable conduct: dismissed, then leave to amend denied

  • 2018-03-28 — Judge Kugler granted Plaintiffs' motions to dismiss and strike Defendants' inequitable-conduct counterclaim and affirmative defense (dismissal without prejudice). See 2018 U.S. Dist. LEXIS 51192.
  • 2018-02-09 — Defendants moved to amend (Dkt. 374/376) to add (i) an inventorship defense (Dave Carlson allegedly omitted as co-inventor on the six asserted patents, based on Carlson's 2017-09-28 and Pershing's 2017-11-07/08 depositions and interrogatory answers served 2017-12-21 and supplemented 2018-01-21), and (ii) a new inequitable-conduct defense.
  • 2018 (Dkt. 432) — leave to amend denied as untimely (filed ~9 months after the last amendment deadline and 17 months after the first, and post-Markman). (Dkt. 432 opinion)

3.5 Equitable-estoppel summary judgment (denied)

Defendants moved in Aug. 2018 (Dkt. 459) to hold EagleView's claims barred by equitable estoppel. Judge Kugler denied it (Dkt. 547/548), finding EagleView's pre-suit conduct showed "just the opposite" of silence — serial informal infringement warnings beginning in 2012 — and expressing "astonishment that defendants would have invested heavily in developing flagship software when relying solely on the apparent inaction of a business partner that had already sued them for contract breach." (Dkt. 547 opinion) Exact decision date not verified; it precedes the Jan. 2019 § 101 ruling.

3.6 Second § 101 summary-judgment motion (denied)

Defendants renewed Alice invalidity by summary judgment in Aug. 2018 as to six patents. 2019-01-29 — denied. The court held the claims are "directed to an improvement in the functioning of a computer" that "solve the specific problem of generating a roof repair estimate without direct human measurement of a roof," and that it had not been shown by clear and convincing evidence that the claims were abstract or lacked an inventive concept. (Kirkland summary) This is also the ruling the court later relied on in denying JMOL.

3.7 Motions in limine / motion to strike

  • 2019-02-19 — Court granted EagleView's motion to strike one of Defendants' non-infringement defenses.
  • Pre-trial MIL ruling (Dkt. 754) — excluded Defendants' DTX-160 (EagleView-internal emails containing offensive material and an "Urban Dictionary" exchange about Xactware's street address). The court later called the attempted use of DTX-160 evidence of the defense's weakness, and its pursuit of disallowed inequitable-conduct/inventorship evidence during trial was a factor in the eventual fee finding.

3.8 No transfer motion

I found no § 1404(a)/§ 1406 motion to transfer or § 1400(b) venue challenge in the record; Venue/jurisdiction was pleaded and Defendants did not contest personal jurisdiction over Verisk for the case, while reserving other objections.

4. Claim construction (Markman)

  • 2017-12-05 — Judge Kugler issues the Markman Opinion and Order (Dkt. 332), construing a narrowed set of terms out of the original 63. (The docket number is also identified in later opinions as the vehicle for the pretrial Daubert rulings.)
  • Constructions that proved outcome-relevant at trial:
    • '840 — "modify a model based on the operation of a pitch determination marker": the court ruled a wireframe may be a pitch determination marker. Defendants' contrary theory (their wireframe is not "operable to indicate pitch") was rejected at trial and also violated MIL No. 815.
    • '454 — "displaying … at least one first visual marker … in a same display window as the first aerial image" / "location of a … visual marker … in the second aerial image": the language requires two different aerial images; the court rejected reading in a "simultaneous display" requirement. Defendants nonetheless argued a simultaneity requirement at trial and were rebuffed.
    • '770 / claim terms addressing the first and second non-stereoscopic aerial images and the "moving"/"movement" limitations (later central to the Federal Circuit's 2019 IPR affirmance).
  • Both sides repeatedly litigated against the constructions at trial, and the court's fee opinion expressly criticized Defendants for "re-litigat[ing]" claim-construction issues in opening statement and expert examination.

5. Discovery milestones with strategic significance

Date Milestone
2016-02 Plaintiffs produce Thornberry deposition transcripts from the 2012 EagleView v. Aerialogics suit (foundation for the later inequitable-conduct theory).
2016-05-04 Depositions and Markman submissions stayed (Dkt. 75).
2016-09-16 Amended infringement contentions: 153 → 46 claims; nine → seven patents — the key event that defeated the first stay motion and simplified the case.
2017-09-28 / 2017-11-07–08 Depositions of founder Carlson and inventor Chris Pershing (inventorship).
2017-12-21 & 2018-01-21 Interrogatory answers/supplement on Carlson's contributions; a defense request to compel further supplementation was denied 2018-01-26 (Dkt. 363).
2018-08-01 EagleView drops the '152 patent from the case after the PTAB's adverse FWD in IPR2016-00591.
2019-06-03 Pretrial Order (Dkt. 674) — narrowed claims and accused products (Property InSight, Roof InSight, Aerial Sketch v.2, Geomni Roof/Property; "Mass Production Tool"); indirect-infringement contentions under § 271(b)/(g). (Dkt. 674)
2019-06–10 Reassignment to Judge Bumb (2019-06-25) and post-verdict expedited contempt discovery (2020–2021).

6. Trial, verdict, injunction

  • 2019-06-25 — Case reassigned from Judge Kugler to Judge Renée Marie Bumb (Dkt. 718); trial set for 2019-09-09.
  • 2019-09-09 — Twelve-day jury trial begins in Camden. EagleView witnesses: CEO Rishi Daga, founder/inventor Chris Pershing, VP Hugh West, technical expert Prof. Robert Stevenson, damages expert Jonathan Arnold. Defendants: Edmund Webecke, Jeffrey Lewis, technical expert Dr. Joseph Mundy, damages expert Philip Green.
  • 2019-09-25 — Jury verdict for EagleView on every issue: five asserted patents ('436, '840, '770, '454, '376) infringed willfully and not proven invalid; $125 million in lost profits and $0 reasonable royalty (the $0 royalty finding was later relied on to show the jury found causation/price erosion). (EagleView press release; timeline)
  • 2019-09-26 — Judgment entered (Dkt. 799); TRO bars sale of Property InSight, Roof InSight, Geomni Roof, Geomni Property and use/sale of Aerial Sketch v.2.
  • 2019-10-08 — TRO extended; permanent-injunction hearing.
  • 2019-10-18 — Permanent injunction entered (Dkt. 842; opinion Dkt. 841) — bars making/using/selling/importing the infringing roof-report products and "any products not more than colorably different"; the opinion found a two-player market, lost customers (Nationwide, MetLife, USAA, Travelers, Country Financial), price erosion, no acceptable non-infringing alternatives, no licensing, and irreparable harm/nexus. (PI opinion)
  • 2019-10 — Defendants withdraw the equitable estoppel defense by letter (Dkt. 835), after trial.

7. Post-trial motions (2019–2021)

  • 2019-11-12 — Defendants move for JMOL and a new trial; EagleView moves for enhanced damages and attorneys' fees under § 285. Execution of the money judgment was stayed pending resolution.
  • 2020-09-09 — Judge Bumb denies the new-trial motion in full (opinion of that date): the § 101 challenge, claim-construction disputes, willfulness (motive/opportunity/copying evidence, including the "Tour of Operation," the "perfectly comparable" internal statements, and the "develop similar solutions internally" acquisition memo) and the $125M lost-profits award (all four Panduit factors plus price erosion) all survive; defendants failed to show legal error or insufficient evidence. (opinion)
  • Fee/exceptional-case ruling — In a separate opinion the court held this is an exceptional case warranting some attorneys' fees, emphasizing (i) Defendants' re-litigation of PTAB-rejected art and claim-construction issues, (ii) new non-infringement theories raised for the first time at trial (roof "primitives," "metadata"), (iii) sandbagging on the merger-agreement § 324 language through the 30(b)(6) witness, (iv) the DTX-160 episode, and (v) pursuit of the withdrawn equitable-estoppel and disallowed inequitable-conduct theories. (opinion) I could not verify the exact date/docket of the final fee-award opinion; the fee motion was ultimately dismissed as moot on settlement (below). Whether enhanced damages were ever awarded on top of the $125M is likewise not confirmed in the materials I retrieved — I flag this as unresolved.
  • 2021 — Contempt proceedings: EagleView moved to initiate contempt for post-injunction violations; the court continued the motion in part pending expedited discovery.

8. Federal Circuit appeals and resolution

  • 2019-10-24 — Verisk/Xactware file a notice of appeal (per the parties' stipulation). The appeal matured/was docketed only after the post-trial motions were decided.
  • 2020-10-14 — Appeal docketed as No. 21-1048 (received 2020-10-09); No. 21-1049 consolidated as a member case 2020-10-19; No. 21-1743 added and consolidated 2021-03-30. (Fed. Cir. docket; Patexia docket)
  • 2020-11-04 — EagleView moves to dismiss/deactivate the appeals; denied 2020-12-15; opening brief filed 2020-12-24 (corrected 2020-12-30).
  • 2021-04-22 / 06-08 / 06-29 — Consolidation briefing schedule: appellants' opening (14,000 words), response (14,000 words), reply (7,000 words).
  • 2021-10-08 — Federal Circuit oral argument held; no decision issued.
  • 2021-11-05 — Parties file a Stipulation and Proposed Order (Dkt. 987) — they had settled, "resolv[ing] all issues between them without further litigation" — agreeing to simultaneously (i) dismiss the appeal and (ii) ask the district court under Rule 60(b)(5)–(6) to vacate the 2019 judgment, the permanent injunction, the damages, fees and costs, dismiss all claims with prejudice, and terminate the contempt proceedings.
  • 2021-11-08 / 2021-11-09 — Federal Circuit grants the joint dismissal of the appeals (Fed. R. App. P. 42(b)), each side bearing its own costs. The case metadata termination date is 2021-11-08; Judge Bumb's opinion recites that the dismissal was granted 2021-11-09. (Dkt. 987 stipulation)

9. Final disposition — the vacatur fight (2021-11-10)

Rather than rubber-stamping the settlement, Judge Bumb granted the stipulation only in part:

  • GRANTED: termination of EagleView's contempt motion and contempt proceedings (Rule 60(b)(5)); dismissal of EagleView's attorneys'-fees/costs/interest motion as moot; dismissal of the parties' underlying claims, counterclaims and defenses; and vacatur of the Permanent Injunction (no longer equitable to apply prospectively).
  • DENIED: vacatur of the September 26, 2019 judgment and the findings underlying the jury verdict — i.e., the $125 million judgment and the willfulness/infringement/validity findings were NOT vacated, despite the joint request. The court also dismissed the claims without prejudice rather than with prejudice as the parties had stipulated. (opinion/order; see also Saiber client alert, 2022-01-19)

Practical bottom line: the litigation ended in a confidential settlement with the injunction lifted and the appeals dismissed as moot, but the $125M judgment and the substantive infringement/willfulness rulings remain on the books as unvacated, non-precedential district-court determinations. The Federal Circuit issued no merits opinion in 21-1048/49/1743.

10. Parallel PTAB proceedings (Xactware/Verisk v. EagleView)

Defendants filed more than a dozen IPR petitions covering all nine asserted patents, challenging essentially every claim asserted against them.

Proceeding Patent Petition filed Outcome
IPR2016-00582 '436 2016-02-08 Institution denied; rehearing denied 2016-09-21
IPR2016-00586 '840 2016-02-08 Institution denied 2016-08-16
IPR2016-00587 '376 2016-02-08 Institution denied 2016-08-15
IPR2016-00589 '454 2016-02-08 Instituted 2016-08-15; FWD upholding challenged claims — affirmed by Fed. Cir. 2018-1053 et al. (2019-03-06)
IPR2016-00590 '770 2016-02-08 Instituted 2016-08-15; FWD upholding claims — affirmed
IPR2016-00591 '152 2016-02-08 Instituted; FWD 2017-08-14 holding claims 1, 3, 6, 9, 12–14, 16, 19, 22, 23 unpatentable — the only real petitioner win
IPR2016-00592 '737 2016-02-08 FWD; EagleView claims sustained — affirmed
IPR2016-00593 '732 2016-02-08 Instituted; FWD 2017-08-28 — no unpatentability shown (2020-08-28 citation: 2017 WL 3723073); affirmed on appeal (Nos. 2018-1093/1094)
IPR2016-00594 (Pictometry patent) 2016-02-08 FWD 2017-08-28 — no unpatentability shown (2017 WL 3671031)
IPR2016-01775 '436 2016-09-15 Institution denied
IPR2017-00021 '436 2016-10-05 Institution denied
IPR2017-00025 '770 2016-10-05 Institution denied
IPR2017-00027 '454 2016-10-05 Institution denied
IPR2017-00034 '152 2016-10-07 Institution denied 2017-04-13
IPR2017-00363 — 2016-11-30 Institution denied

Effect on the litigation:

  1. Failed to stay the case — the court denied the Sept. 8, 2016 stay motion, and by Sept. 7, 2017 EagleView could accurately claim that 13 of 14 challenges had been rejected in their entirety and ~93% of the 153 challenged claims survived. (EagleView update, 2017-05-08; Kirkland coverage, 2017-08)
  2. Shrank the case once — the '152 patent was dropped from the complaint on 2018-08-01 after the PTAB's adverse FWD.
  3. Fed the estoppel/narrowing dynamic — by trial, asserted patents had fallen from nine to seven to five and asserted claims from 153 to 46 to a handful.
  4. Undergirded the fee finding — because Defendants lost the same invalidity arguments at the PTAB (under the lower preponderance standard) and then re-pressed them at trial (clear-and-convincing), the court found the IPR history "burdened the Court and jury" and contributed to an exceptional-case fee award. The PTAB also credited Verisk's own CEO's public praise of EagleView's technology (from the 2013 acquisition call) as secondary-considerations evidence of non-obviousness.
  5. Appellate track: the PTAB decisions survived Federal Circuit review — Xactware Solutions, Inc. v. Eagle View Technologies, Inc., Nos. 2018-1053, -1055, -1056, -1110, decided 2019-03-06 (nonprecedential, affirming FWDs on the '454, '770, '152 and '737 patents and expressly declining to decide the "presumption of nexus" question). (opinion) Separate appeals (Nos. 2018-1093/1094) covered the '732 FWD.

11. Items I could not confirm (flagged rather than fabricated)

  • Exact decision date of the IPR-stay denial (Dkt. 150) — post-2016-11-22, likely December 2016.
  • Exact dates/docket numbers of the equitable-estoppel SJ denial (Dkt. 547/548) and the 2018 leave-to-amend denial (Dkt. 432).
  • Whether enhanced damages were awarded on EagleView's § 284 motion, and the amount/docket of the final attorneys'-fee award (the fee motion was still pending when the appeal was argued and was mooted by the settlement).
  • No ITC Section 337 investigation involving these parties was confirmed in my searches; if one exists, it is not reflected here.
  • Counsel (sourced to party press releases and Law360): for EagleView — Kirkland & Ellis (Adam Alper, Gianni Cutri, Mike De Vries, Brandon Brown, Leslie Schmidt, Kyle Calhoun; John C. O'Quinn on appeal) and Walsh Pizzi O'Reilly Falanga (Liza M. Walsh, Hector D. Ruiz, Eleonore Ofosu-Antwi); for Xactware/Verisk — McCarter & English (Scott S. Christie, Matthew A. Sklar, Ravin R. Patel, Lee Carl Bromberg, Thomas R. Fulford; Mark E. Nikolsky and Vadim E. Cherkasov in the IPRs). The Federal Circuit docket shows an appearance by "Mark A. [surname not captured]," which I could not verify fully.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for the plaintiffs/appellants in this matter.

I have a solid base. Let me verify the Federal Circuit docket specifics and the appellate/appearance details.

Let me verify the appellate appearances and the counsel transitions.

Threshold note on party designation

Before listing names, one posture point that matters for accuracy: the metadata in this matter labels Verisk Analytics, Inc. and Xactware Solutions, Inc. as the "Plaintiff(s)." On the actual court dockets, however, those two companies were the defendants in the underlying District of New Jersey case (D.N.J. No. 1:15-cv-07025-RMB-JS, Eagle View Technologies, Inc. v. Xactware Solutions, Inc.) and the Appellants at the Federal Circuit. The Justia Federal Circuit docket for 21-1048 expressly lists them as "Defendant / Appellant," with EagleView/Pictometry as "Plaintiff / Appellee" (Justia docket 21-1048). I have therefore covered counsel for both sides so the answer is usable no matter which party the request intends; the Verisk/Xactware team is listed first because that is the party named in the prompt's metadata.

1. Verisk Analytics, Inc. / Xactware Solutions, Inc. — Federal Circuit (Nos. 21-1048, 21-1049, 21-1743)

Appearance of record — Fed. Cir. Dkt. 4 (Oct. 20, 2020), superseded/updated by Fed. Cir. Dkt. 30 (Mar. 30, 2021):

Attorney Role Firm / office Notes
Mark A. Perry Lead / principal appellate counsel; argued Oct. 8, 2021 Gibson, Dunn & Crutcher LLP, Washington, D.C. Member of Gibson Dunn's appellate practice; admitted pro hac vice in the district court and the only filer of record on the Federal Circuit briefs (opening, reply, appendix, Fed. R. App. P. 28(j) responses). Docket text confirms "Arguing counsel: Mr. Mark Andrew Perry for Xactware Solutions, Inc. and Verisk Analytics, Inc." before the Taranto/Clevenger/Chen panel.
Ryan K. Iwahashi Of counsel / appellate Gibson, Dunn & Crutcher LLP, Washington, D.C. Named on the Dkt. 30 entry of appearance for appellants; no separate brief filings of record.
Kellam M. Conover Of counsel / appellate Gibson, Dunn & Crutcher LLP, Washington, D.C. Named on the Dkt. 30 entry of appearance for appellants.
Scott S. Christie Trial and post-trial counsel; listed in the Federal Circuit docket's "Represented By" field McCarter & English, LLP, Newark, N.J. Led Verisk/Xactware's defense through the 2019 trial and continued filing in the district court through the supersedeas bond and fee motions (May 2021). The Justia CAFC docket page for 21-1048 lists him under "Represented By"; I did not find a separate Fed. Cir. EOA filed by him in the entries I could retrieve.

Sources: Justia docket 21-1048; Unified Patents Case Portal, 2021-1048; Patexia docket summary (services.patexia.com).

Caveat: The Federal Circuit docket snapshots I could retrieve are the ones dated Oct.–Dec. 2020 (Justia) plus the 2021 entries surfaced through the Unified Patents/Patexia dockets. No Davis Polk or Flaster Greenberg entry of appearance in the appellate cases appears in those entries; all 2021 appellate filings of record were made by Mr. Perry.

2. Verisk / Xactware — District of New Jersey (No. 1:15-cv-07025), trial phase

These are the attorneys who appeared for the defendants/now-appellants through trial and post-trial motions (Dkt. 901 opinion, Sept. 9, 2020; Dkt. 863, Sept. 9, 2020):

Attorney Role Firm / office Notes
Scott S. Christie Lead trial counsel (local/N.J.) McCarter & English, LLP, Newark, N.J. (Four Gateway Center) Filed the substantive summary-judgment motions (Dkt. 459, 461, equitable estoppel; unpatentability motions, § 101 motions), the supersedeas bond letter (May 2021), and the fee-motion opposition. Longtime N.J. patent/IP litigator.
Matthew A. Sklar Trial counsel McCarter & English, LLP, Newark, N.J. Co-signer on the D.N.J. motions and the March 15, 2021 amended notice of appeal.
Ravin R. Patel Trial counsel McCarter & English, LLP, Newark, N.J. Appears on 2018 filings.
Lee Carl Bromberg Trial counsel McCarter & English, LLP, Boston, Mass. Veteran Boston patent trial lawyer; listed in N.J. Law Journal's 2019 Top Verdicts entry as defense counsel for Xactware/Verisk.
Thomas R. Fulford Trial counsel McCarter & English, LLP, Boston, Mass. Boston patent litigation group.
Wyley S. Proctor Trial counsel McCarter & English, LLP, Boston, Mass. Kirkland's Sept. 2019 press note lists him for the defense team.
Brian M. Seeve Trial counsel McCarter & English, LLP, Boston, Mass. Same.
Mark A. Perry Of counsel (appellate/federal) Gibson, Dunn & Crutcher LLP, Washington, D.C. Admitted pro hac vice; appears in the district court signature block as "Counsel for Defendants" alongside McCarter & English, and signed the March 15, 2021 amended notice of appeal (Dkt. 911).

Source: Dkt. 901 (opinion denying new trial), cases.justia.com PDF; Dkt. 863 order (Docket Alarm copy); Kirkland press item, "EagleView Scores $125 Million Award…".

3. Verisk / Xactware — settlement phase (2020–2021): a counsel change

The Nov. 5, 2021 stipulation that vacated the judgment and injunction and terminated the appeal (Dkt. 987) was signed by a different defense team:

Attorney Role Firm / office Notes
Jeffrey A. Cohen Local trial/settlement counsel Flaster Greenberg PC, Cherry Hill, N.J. Signed the stipulation for defendants.
Krishna A. Jani Local trial/settlement counsel Flaster Greenberg PC, Cherry Hill, N.J. Signed the stipulation.
Ashok Ramani Of counsel (IP litigation) Davis Polk & Wardwell LLP, Menlo Park, Cal. Listed "of counsel" on the stipulation for Verisk/Xactware; IP litigation partner, reported to have joined Davis Polk from Kirkland & Ellis in 2020 — I flag this firm move as reported, not confirmed on a primary source in my searches.
Micah G. Block Of counsel Davis Polk & Wardwell LLP, Menlo Park, Cal. Signed as of counsel on the stipulation and on the later sealing papers (Dkt. 1003).
Dana M. Seshens Of counsel Davis Polk & Wardwell LLP, New York, N.Y. Signed as of counsel on the stipulation.

Source: Dkt. 987 stipulation (archive.org PDF); Dkt. 1003 signature block (CourtListener).

4. EagleView Technologies, Inc. / Pictometry International Corp. — the D.N.J. plaintiffs and Federal Circuit appellees

Because the prompt's party labels are inverted relative to the dockets, this is the team that the courts call "Plaintiffs"/"Appellees":

Federal Circuit (Fed. Cir. Dkt. 8, Oct. 28, 2020) — Appellees:

Attorney Role Firm / office Notes
John C. O'Quinn Lead appellate counsel; argued Oct. 8, 2021 Kirkland & Ellis LLP, Washington, D.C. Filer of record on the appellees' response brief, certificate of interest, and the motion to dismiss/deactivate the appeals (Dkt. 12). Former senior DOJ official; frequent Federal Circuit and Supreme Court advocate.
Adam R. Alper Of counsel / trial lead Kirkland & Ellis LLP, San Francisco Lead trial counsel for EagleView at the Sept. 2019 jury trial.
Michael W. De Vries Of counsel Kirkland & Ellis LLP, Los Angeles Trial and appellate team.
Gianni Cutri Of counsel Kirkland & Ellis LLP, Chicago Trial and appellate team.
Brandon H. Brown Of counsel Kirkland & Ellis LLP, San Francisco Trial and appellate team.
Jason M. Wilcox Of counsel Kirkland & Ellis LLP Named on the Fed. Cir. EOA.
C. Alex Shank (Calvin A. Shank) Of counsel Kirkland & Ellis LLP Filed the appellees' docketing statement.

District of New Jersey — local counsel:

Attorney Role Firm / office Notes
Liza M. Walsh Local counsel, lead Walsh Pizzi O'Reilly Falanga LLP, Newark, N.J. Declared herself counsel of record for EagleView/Pictometry and handled the TRO/contempt proceedings; signed the Nov. 5, 2021 stipulation for plaintiffs.
Hector D. Ruiz Local counsel Walsh Pizzi O'Reilly Falanga LLP, Newark, N.J. Same.
Eleonore Ofosu-Antwi Local counsel Walsh Pizzi O'Reilly Falanga LLP, Newark, N.J. Appears in the Dkt. 901 appearances block.
Patricia A. Carson, Leslie M. Schmidt (New York); Reza Dokhanchy (San Francisco); Joel R. Merkin, Kristina N. Hendricks (Chicago) Of counsel (pro hac vice) Kirkland & Ellis LLP Appear in the Dkt. 901 appearances block and/or the 2021 stipulation.

Sources: Fed. Cir. Dkt. 8 (Justia); Dkt. 901 appearances block; Dkt. 791 declaration (archive.org PDF); Kirkland press note (Sept. 2019).

Gaps and qualifications

  • No named in-house counsel. I found no Verisk or Xactware in-house attorney listed on any publicly available filing. If one appeared, it would be in sealed or non-public filings I could not retrieve.
  • Sealed filings. The docket contains substantial sealing activity (e.g., Dkt. 1003 and related briefing kept under seal pending appeal), and portions of the fee and contempt papers are sealed. Counsel lists drawn from those documents may be incomplete.
  • Appellate docket currency. The Justia copy of the 21-1048 docket was "last retrieved on December 10, 2020"; the 2021 entries I relied on come from the Unified Patents and Patexia aggregations. A live PACER pull of Fed. Cir. Nos. 21-1048/1049/1743 would confirm whether any additional attorney entered an appearance after March 30, 2021 (the last EOA I could verify) and whether Davis Polk/Flaster Greenberg formally appeared at the Federal Circuit.
  • Unauthorized or unverified items are flagged. The only items I have flagged rather than asserted are (a) whether Scott S. Christie filed a formal Federal Circuit EOA (his name appears in the docket's "Represented By" field) and (b) Ashok Ramani's firm move from Kirkland to Davis Polk. Everything else is drawn directly from docket text or court-filed PDFs cited above.

Bottom line: For the parties the prompt labels "plaintiffs" (Verisk Analytics / Xactware Solutions), the counsel of record are Mark A. Perry, Ryan K. Iwahashi, and Kellam M. Conover of Gibson Dunn (Washington, D.C.) on the consolidated Federal Circuit appeals, supported at trial and in the post-trial district court proceedings by McCarter & English (Scott S. Christie, Matthew A. Sklar, Ravin R. Patel — Newark; Lee Carl Bromberg, Thomas R. Fulford, Wyley S. Proctor, Brian M. Seeve — Boston) and, on the 2021 settlement papers, by Davis Polk & Wardwell (Ashok Ramani, Micah G. Block, Dana M. Seshens) with Flaster Greenberg (Jeffrey A. Cohen, Krishna A. Jani) as New Jersey counsel.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for the defendants (EagleView Technologies and Pictometry International) in these appeals and the underlying District of New Jersey litigation.

Let me dig deeper into the docket entries and firm affiliations.

Let me verify the individual attorneys' firm affiliations and check the consolidated appeals' docket entries.

Alignment caveat (read first)

The case metadata flips the party alignment relative to the district-court record: it lists Verisk Analytics / Xactware as Plaintiffs and EagleView Technologies / Pictometry International as Defendants. In the actual litigation, EagleView and Pictometry were the plaintiffs in D.N.J. and the Appellees on appeal; Xactware and Verisk were the defendants and Appellants (the CAFC docket sheet at Justia literally labels Verisk/Xactware "Defendant / Appellant" and EagleView/Pictometry "Plaintiff / Appellee"). Per your instruction I treat the metadata as authoritative, so Part A below answers for the parties the metadata designates as Defendants (EagleView and Pictometry). Because the alignment is genuinely ambiguous, I've also given the other side's counsel in Part B so you have the complete picture.

Part A — Counsel for the parties designated as Defendants (EagleView Technologies, Inc.; Pictometry International Corp.)

A-1. Federal Circuit, Nos. 21-1048 (lead) / 21-1049 / 21-1743 — counsel for Appellees

All Appellee-side counsel of record are Kirkland & Ellis LLP. Docket No. 8 (Oct. 28, 2020) is the operative entry of appearance:

"Entry of appearance for John C. O'Quinn; Adam R. Alper; Michael W. De Vries; Gianni Cutri; Brandon H. Brown; Jason M. Wilcox; C. Alex Shank as counsel for Appellees Eagle View Technologies, Inc. and Pictometry International Corporation."
(Justia CAFC docket, 21-1048; Patexia docket mirror)

Attorney Role Firm / office Notes
John C. O'Quinn Lead / principal appellee counsel; argued the appeal Kirkland & Ellis LLP — Washington, D.C. Filed the appellees' motion to dismiss/deactivate (Dkt. 12, Nov. 4, 2020), the response brief (Dkt. 34, June 8, 2021), the amended certificate of interest (Dkt. 35), and the Sept. 16, 2021 oral-argument response. Argued for EagleView at the Oct. 8, 2021 argument (Law360, Oct. 8, 2021, as reposted at hotcopper.co.nz).
Adam R. Alper Co-lead trial counsel; appellee counsel on appeal Kirkland & Ellis LLP — San Francisco (555 California St.) Listed as co-lead trial counsel for EagleView/Pictometry in the NJLJ Top Verdicts report on the $125M verdict. Appears in the appearance blocks of D.N.J. opinions Dkt. 841 (Oct. 18, 2019) and Dkt. 909 (Feb. 16, 2021).
Michael W. De Vries Co-lead trial counsel; appellee counsel on appeal Kirkland & Ellis LLP — Los Angeles (333 South Hope St.) Co-lead trial counsel per NJLJ; argued key evidentiary issues at trial (trial transcript excerpts quoted in Dkt. 909).
Gianni Cutri Co-lead trial counsel; appellee counsel on appeal Kirkland & Ellis LLP — Chicago (300 N. LaSalle) Co-lead trial counsel per NJLJ.
Brandon H. Brown Co-lead trial counsel; appellee counsel on appeal Kirkland & Ellis LLP — San Francisco Co-lead trial counsel per NJLJ.
Jason M. Wilcox Appellee counsel of record on appeal Kirkland & Ellis LLP On the CAFC entry of appearance (Dkt. 8). Office location not confirmed from the sources retrieved in this search.
C. Alex (Calvin A.) Shank Appellee counsel of record on appeal Kirkland & Ellis LLP Filed the appellees' certificate of interest (Dkt. 9) and docketing statement (Dkt. 10) on Oct. 28, 2020 under the name "Calvin Shank." Office location not confirmed.

No separate local/regional counsel appears in the Federal Circuit. (The Federal Circuit has no local-counsel requirement, and none was entered.)

A-2. District Court, D.N.J. No. 1:15-cv-07025 (RMB-JS/SAK) — counsel for Plaintiffs EagleView and Pictometry

Appearance blocks in Judge Bumb's opinions (Dkt. 841, Oct. 18, 2019; Dkt. 909, Feb. 16, 2021):

Walsh Pizzi O'Reilly Falanga LLP — Newark, NJ (local counsel)

  • Liza M. Walsh — local counsel; e-filed the Nov. 5, 2021 vacatur/dismissal stipulation (Dkt. 987) — CourtListener
  • Hector D. Ruiz — of counsel
  • Eleonore Ofosu-Antwi — of counsel

Kirkland & Ellis LLP (national trial counsel)

  • San Francisco (555 California St.): Adam R. Alper, Brandon H. Brown, Reza Dokhanchy
  • Los Angeles (333 South Hope St.): Michael W. De Vries
  • New York (601 Lexington Ave.): Patricia Carson, Leslie M. Schmidt
  • Chicago (300 N. LaSalle): Gianni Cutri, Kristina Hendricks, Joel R. Merkin

Note: the NJ Law Journal's Top Verdicts entry expressly identifies Alper, Brown, Cutri and De Vries as "Co-Lead" P.C. counsel and Walsh as local counsel, and notes Pictometry was dismissed prior to trial — yet Pictometry remained a named Appellee in the Federal Circuit caption. (NJLJ Top Verdicts 2019, p. 7)

Part B — Counsel for the other side (Verisk Analytics; Xactware Solutions) — the district-court Defendants / Federal Circuit Appellants

Given the caption ambiguity, here is the mirror-image list in case your "defendants" question was aimed at these parties.

Federal Circuit (Appellants): Dkt. 30 (Mar. 30, 2021) — "Entry of appearance for Mark A. Perry; Ryan K. Iwahashi; Kellam M. Conover as counsel for Appellants Xactware Solutions, Inc. and Verisk Analytics, Inc." All Gibson Dunn & Crutcher LLP (Perry: 1050 Connecticut Ave. N.W., Washington, D.C.). Perry argued the Oct. 8, 2021 argument for Xactware and also filed the joint FRAP 42(b) dismissal motion on Nov. 5, 2021 (Dkt. 50).

District Court (Defendants):

  • McCarter & English, LLP — Newark, NJ (Four Gateway Center): Scott S. Christie; Matthew A. Sklar (also Ravin R. Patel on some filings)
  • McCarter & English, LLP — Boston (265 Franklin St.): Lee Carl Bromberg; Thomas R. Fulford; and on later filings Thomas F. Foley and Wyley S. Proctor
  • Gibson Dunn & Crutcher LLP — Washington, D.C. (1050 Connecticut Ave. N.W.): Mark A. Perry

Caveats and sourcing notes

  • No in-house counsel entered an appearance on either side in the Federal Circuit or the D.N.J. docket as reflected in the retrieved records. In-house counsel appear only as signatories to corporate documents (e.g., "Mr. Kenneth E. Thompson," in-house counsel for Defendants, signed the 2015 warrant cash-out agreement discussed at Dkt. 909, p. 47–48) — not as counsel of record.
  • Sealed/restricted material exists on the docket (attorneys'-eyes-only documents such as the Vista merger agreement DTX-483, privilege logs, and the withheld advice-of-counsel communications referenced at Dkt. 909, pp. 9–12 and 22). Entries of appearance and the attorney listings above, however, are drawn from public docket entries and published opinions. I found no indication that any appearance was filed under seal.
  • Primary sources used: Justia CAFC docket, 21-1048; Patexia docket mirror; Unified Patents CAFC portal, 2021-1048; D.N.J. opinions Dkt. 841 and Dkt. 909; Dkt. 987 stipulation; CourtListener Dkt. 989 (Nov. 10, 2021 vacatur order); NJLJ Top Verdicts 2019.
  • Not verified: individual office assignments for Jason M. Wilcox and C. Alex Shank, and any specific prior-case credentials for each attorney beyond their role in this matter. I did not independently confirm firm-bio pages for these attorneys within this research pass; treat those two office locations as unconfirmed rather than assumed. The Law360 oral-argument account was retrieved secondhand (a forum repost of the Law360 article) and should be re-verified against Law360 directly if it is load-bearing.