Xactware Solutions, Inc. v. Eagle View Technologies, Inc.

I'll research this case thoroughly before drafting.

Case Overview and Background

Posture and party alignment. IPR2016-00592 is not a district-court infringement suit but an inter partes review at the PTAB, and the caption reflects that inversion: Xactware Solutions, Inc. is the petitioner/challenger and Eagle View Technologies, Inc. ("EagleView") is the patent owner defending U.S. Patent No. 9,135,737. Xactware filed the petition on February 8, 2016, as one of a coordinated batch — IPR2016-00589 ('454 patent), -00590 ('770), -00591 ('152), and -00592 ('737) — each naming the same parties (PTO Litigation Center Report, Feb. 9, 2016; RPX Insight docket for -00591). The Board instituted review in August 2016 (companion institutions issued Aug. 15, 2016) and issued the Final Written Decision in -00592 on August 25, 2017 (Paper 50), upholding the challenged claims — claims 1, 9, 16, 19, 22, 25–28, 31, and 34–36 over Avrahami + Applicad, and claim 10 over those references plus Perlant (FWD excerpt). Xactware appealed; the Federal Circuit consolidated the four appeals (Nos. 2018-1053, -1055, -1056, -1110) and affirmed on March 6, 2019 in a nonprecedential opinion by Chief Judge Prost, joined by Judges Moore and Wallach (Xactware Solutions, Inc. v. Eagle View Techs., Inc., No. 2018-1053 (Fed. Cir. Mar. 6, 2019)). Petitioner-side counsel was McCarter & English (Mark Nikolsky, Scott S. Christie, Timothy P. Homlish, Matthew A. Sklar, Lee Carl Bromberg); EagleView was represented by Kirkland & Ellis (John C. O'Quinn, Jason M. Wilcox, Adam R. Alper, Gianni Cutri).

The parties, the accused technology, and the patent. EagleView is an operating aerial-imagery and roof-measurement company (Bothell, WA-based; it merged with Pictometry International Corp. in 2013, and its attempted acquisition by Verisk collapsed in December 2014, per EagleView's own complaint allegations — 2015 complaint). Its adversary, Xactware Solutions, Inc., is a wholly owned subsidiary of Verisk Analytics, Inc. — Xactware makes Xactimate, the dominant property-insurance claims estimating platform — and the two companies are direct competitors in roof measurement for insurers, contractors, and government. The '737 patent, "Concurrent display systems and methods for aerial roof estimation" (filed Aug. 1, 2014; issued Sept. 15, 2015; inventor Chris Pershing; priority Oct. 31, 2008; Eagle View Technologies as assignee), claims a computer-implemented roof-estimation interface: multiple aerial images of the same roof, taken from different angles, are displayed simultaneously with overlaid line drawings of roof features; when a user edits the line drawing on one image, the system makes corresponding changes to the overlaid drawing on the other image, and the system then outputs a roof estimate report with numerical slope, area, and edge-length values for the roof's planar sections (claim 1, RPX Insight). It belongs to the same October 2008 "concurrent display" family as the '152 and '454 patents also challenged in the 2016 IPR batch.

Procedural posture, venue, and linkage to the district court case. The IPR sat alongside a parallel infringement action filed September 23, 2015 — Eagle View Technologies, Inc. v. Xactware Solutions, Inc., No. 1:15-cv-07025 (D.N.J.) (sometimes cited as 2:15-cv-07025), Camden vicinage — in which EagleView and Pictometry asserted nine patents against Xactware and Verisk over Xactimate in combination with Aerial Sketch, Roof InSight, Property InSight, and the "Mass Production Tool" (complaint; patent LR 3-1 contentions, Dkt. 555). Venue mattered because defendants were New Jersey-based (Xactware and Verisk shared offices at 545 Washington Blvd., Jersey City), placing the case before Judge Robert B. Kugler, who denied Xactware's Alice § 101 summary judgment motion in January 2019 covering six patents including the '737 (Kirkland & Ellis summary); the case was reassigned in June 2019 to Judge Renee Marie Bumb, who tried it. The IPR track clearly shaped the litigation: after the Board upheld all four patents in the 2016 batch, the case went to a two-week jury trial, and on September 25–26, 2019 the jury found willful infringement of five patents (reported as Nos. 8,078,436; 8,170,840; 8,818,770; 9,129,376; and 8,825,454) and awarded $125 million in lost profits (Kirkland & Ellis summary). Judge Bumb then trebled damages to $375 million (about $500 million total) plus fees and interest, expressly faulting defendants' "repeat challenges" at the PTAB among the Read factors, before the parties settled in November 2021, the Federal Circuit appeal was dismissed (Nov. 9, 2021), and the district court refused to vacate the judgment (Nov. 10, 2021) (Above the Law; Saiber client alert).

Why it is notable. First, IPR2016-00592 is a leading practitioner example of a patent owner defeating an otherwise-successful obviousness case with objective indicia: the Board found the Avrahami/Applicad art disclosed the limitations yet held EagleView's evidence of commercial success and industry praise (with nexus shown through step-by-step claim mapping and expert testimony, and with success measured at the level of the reports sold, not just software licenses) was decisive (Jones Day / PTAB Litigation Blog analysis). Second, the Federal Circuit's affirmance conspicuously avoided resolving the contested "presumption of nexus" evidentiary standard, noting it was "not clearly at issue" before the Board — leaving the issue open in a nonprecedential ruling and making the case frequently cited in subsequent nexus disputes. Third, it was the validity backbone of a much larger multi-front war in the roof-measurement market: the PTAB outcome (claims upheld in all four instituted IPRs) blunted Xactware's invalidity narrative in New Jersey and fed the willfulness/exceptional-case findings, while the eventual ~$500 million judgment and post-verdict injunction briefly threatened to remove a major Verisk product line before a 2021 settlement and long-term commercial agreement ended the dispute.

Sourcing caveats: (1) the IPR2016-00592 panel roster is not confirmed in the sources I reviewed; indexed companion dockets list APJs Stacey G. White, Bryan F. Moore, and Howard B. Blankenship (with Garth Baer appearing on -00590), and I could not verify the exact -00592 panel. (2) Public reporting gives slightly inconsistent patent sets for the September 2019 verdict versus the May 2019 Joint Final Pretrial Order (Dkt. 669.1), and the '737's precise status at trial (asserted versus narrowed out) should be confirmed against the docket and verdict form. (3) I could not verify in this session the post-2015 ownership history of EagleView (e.g., private-equity ownership), so I have not stated it.

I'll research this case, keeping in mind the metadata frames this as a PTAB IPR (IPR2016-00592) with a parallel district court litigation likely underlying it. Let me search aggressively.

Let me dig deeper into the district court docket, the Markman ruling, the summary judgment, trial, and any appeal.

Scope note

The case metadata frames this docket as PTAB IPR2016-00592 (Xactware Solutions, Inc. v. Eagle View Technologies, Inc., on U.S. Pat. No. 9,135,737). That IPR is real and terminated 2017-08-25 with claims upheld, affirmed on appeal. But the "patent infringement litigation" your question describes — pleadings, Markman, summary judgment, trial, verdict, fees, settlement — is the underlying district court action in which that IPR was filed as a parallel validity challenge: Eagle View Technologies, Inc. and Pictometry International Corp. v. Xactware Solutions, Inc. and Verisk Analytics, Inc., No. 1:15-cv-07025 (D.N.J.) (later RMB-JS). I cover both strands, chronologically, and flag where the record is thin.

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I. Pre-suit backdrop (2013–2015)

• 2014-01-14 — Verisk Analytics signed an Agreement and Plan of Merger to acquire EagleView for ~$650 million; during due diligence Verisk reviewed EagleView's patent portfolio. This review later became the backbone of EagleView's willfulness case.
• 2014-12-16 — The FTC sued to block the deal ("Post-Acquisition, the combined firm would control close to 99 percent of the relevant market"); the parties abandoned it. (See D.N.J. Doc. 487-1, SMF; Kirkland/Law360 reporting.)
• 2015-06-15 — EagleView was instead acquired by Vista (Phoenix Holdco LLC).

II. District court: filing & initial pleadings (2015)

III. Parallel PTAB campaign launched (2016)

In February 2016 Xactware/Verisk began filing IPR petitions against the asserted patents — ultimately 13–14 petitions reaching the PTAB, challenging roughly 153 claims. IPR2016-00592 was filed 2016-02-08 against the '737 patent. (See §XII below.)

IV. Early dispositive motions (2016–2018)

• 2016 — Defendants moved to dismiss the complaint under §101 (Alice), arguing the asserted claims were directed to the abstract idea of using photogrammetry to measure roofs. The district court denied the motion in August 2016. (Quinn Emanuel AI Bulletin, 2020-07-23.) (Note: the §101 motion and its denial are well corroborated by secondary sources; I did not locate the docket entry number.)
• 2017-08-07 — Defendants moved to strike EagleView's new infringement theories and new invention/priority dates (Doc. 281); EagleView cross-moved to amend (Doc. 292). Heard 2017-10-05 before Magistrate Judge Schneider.
• 2018-02-09 — Defendants moved to amend to add (i) an improper-inventorship defense (Carlson allegedly omitted from six patents) and (ii) a new inequitable conduct theory. Filed ~9 months after the amendment deadline and 17 months after the first deadline; the record notes the Markman opinion issued 2017-12-05 (Doc. 332) in the interim. (D.N.J. Doc. 432.)
• 2018-03-28 — Judge Kugler granted plaintiffs' motions to dismiss and strike defendants' inequitable conduct counterclaim and affirmative defense (2018 U.S. Dist. LEXIS 51192). Dismissal was without prejudice; defendants never amended.

V. Discovery milestones of strategic significance

• 2017-09-28 — Deposition of Chris Carlson (EagleView co-founder).
• 2017-11-07/08 — Depositions of Chris Pershing (named inventor).
• 2017-12-21 / 2018-01-21 — Plaintiffs answered and supplemented interrogatories on Carlson's contributions (feeding the inventorship motion above).
• February 2016 onward — Plaintiffs produced 2012 EagleView v. Aerialogics Thornberry deposition transcripts, which Defendants used to build the inequitable-conduct theory.
• Trial evidence drawn from discovery: 2014 merger/due-diligence documents, Xactware marketing materials for Roof InSight/Property InSight (known to EagleView by January 2014), and the FTC complaint.

VI. Claim construction / Markman

• Hearing: 2017-10-12 (Camden, Courtroom 4D, Judge Kugler).
• Opinion and Order: 2017-12-05 (Doc. 332). Ten disputed terms across the asserted patents. The court held that for each disputed term the claim language "is clear on its face to a person of skill in the art and needs no further construction." No term was substantively construed in a way that narrowed or expanded the claims — a plaintiff-favorable outcome that largely preserved EagleView's infringement theories. (Dispositive motions were due 2018-03-02 or 30 days after the Markman Order.)

VII. Summary judgment and the Alice/§101 ruling (2019)

• 2018-08 — Xactware moved for summary judgment that the asserted claims were patent-ineligible under Alice (sealed motion).
• 2019-01-29/31 — Judge Kugler denied the motion: "the asserted claims are directed to an improvement in the functioning of a computer. They solve the specific problem of generating a roof repair estimate without direct human measurement of a roof … the concrete and specific technological solution of a computer's correlating … different locations points on two, different, non-stereoscopic aerial views … and then calculating via photogrammetric methods … a mathematical model of the roof section." (Reported Law360 2019-01-31; Quinn Emanuel AI Bulletin.)
• 2019-02-19 — Court granted EagleView's motion to strike one of defendants' non-infringement defenses.

VIII. Reassignment and trial (2019)

• 2019-06-25 — Case reassigned to Judge Renee Marie Bumb, who set trial for 2019-09-09.
• 2019-09-09 to 2019-09-25 — 12-day jury trial. Five patents tried (per the verdict form): '436, '840, '770, '376, '454. Witnesses included EagleView CEO Rishi Daga, founder Chris Pershing, and damages expert Jonathan Arnold; Defendants called industry and damages experts. EagleView's counsel introduced internal Verisk documents on aggressive pricing and market-share targeting.

Note: the '737 patent (the IPR2016-00592 patent) was asserted in the pleadings/contentions but does not appear in the trial verdict form — i.e., it was not among the claims presented to the jury.

IX. Verdict, judgment, and injunction

• 2019-09-25 — Jury returns a unanimous defense-loss verdict after <2 hours: Xactware and Verisk directly, indirectly, and willfully infringed; patents valid; $125 million in lost profits. (Verdict form, D.N.J. 1:15-cv-07025.)
• 2019-09-26 — Judgment entered (Doc. 799); court issues a TRO barring sales of Property InSight, Roof InSight, Geomni Roof/Property, and Aerial Sketch v2 (extended 2019-10-08).
• 2019-10-18/19 — Permanent injunction entered (Doc. 842) after a 2019-10-18 hearing (sources cite Oct. 18 vs. Oct. 19 entry; opinion at Docket No. 841/842).

X. Post-trial motions

• 2019-11-12 — Defendants moved for JMOL and a new trial; EagleView moved for enhanced damages (§284) and attorney's fees (§285), and execution of the money judgment was stayed.
• 2020-09-10 — Court denied the new-trial motion ("an opinion peppered with Alice in Wonderland references" — Law360).
• 2021-02-16 — Court granted enhanced damages, trebling the $125M award by an additional ~$375M (total ~$500M), citing "egregious infringement behavior" and litigation misconduct. (Law360; Above the Law.)

XI. Appeal and final disposition (2021)

• Defendants appealed the judgment to the Federal Circuit; oral argument held early October 2021, with the panel focused on Alice/§101 — a real risk of a total reversal.
• 2021-11-05 — Parties filed a settlement stipulation in D.N.J.: resolves all disputes, includes a long-term commercial agreement; Verisk "affirms that the patents held by EagleView … are valid, subsisting and enforceable"; EagleView agreed Verisk complied with the injunction.
• 2021-11-09 — Federal Circuit dismissed the appeal.
• 2021-11-10 — Judge Bumb ruled on the joint motion to vacate: vacated the permanent injunction, mooted the contempt and fee motions, and dismissed all claims/counterclaims with prejudice — but refused to vacate the judgment and underlying findings, citing "the public interest … finality of judgments" and that "[a] jury trial is not a dress rehearsal." (Eagle View Techs. v. Xactware Sols., No. 15-cv-07025-RMB-SAK (D.N.J. Nov. 10, 2021).)

Caveat on the money award: Some press (Insurance Journal, 2021-11-08) reported the settlement "vacat[ed] the jury award." The district court opinion, however, expressly declined to vacate the judgment; the $500M award was resolved economically through settlement rather than erased. Treat the "vacated award" framing with caution.

XII. Parallel PTAB IPR/PGR proceedings and effect on the litigation

IPR2016-00592 (the metadata case):

• Filed 2016-02-08; instituted 2016-08-31; Final Written Decision 2017-08-25 (Paper 50).
• Panel: Howard B. Blankenship (author), Bryan F. Moore, Stacey G. White.
• Claims challenged: 1, 8, 9, 10, 16, 19, 22, 25, 26, 27, 28, 31, 33, 34, 35, 36. Result: challenged claims upheld — PTAB found the prior art disclosed the limitations but secondary considerations of non-obviousness (nexus, commercial success, industry praise) were decisive. (Jones Day PTAB Litigation Blog, "Secondary Considerations Win Again.")

The broader IPR campaign and its litigation effect:

• Six of nine patents were instituted (Aug 2016), covering ~half the asserted claims; most FWDs issued over a few weeks in August 2017, capped by the 2017-08-28 decision on the '732 patent (IPR2016-00593).
• EagleView's 2017-09-07 announcement: 13 of 14 Xactware IPRs rejected in their entirety; none invalidated all challenged claims; 142 of 153 claims (93%) survived. Law360 called the last decision "another disappointing decision."
• Only one IPR (IPR2016-00491, the '152 patent) produced any unpatentability/amendment.
• The PTAB relied on Verisk's own CEO praise and Xactware's licensing of EagleView's roof reports as evidence of non-obviousness — later echoed in the district court's §101 analysis.
• Federal Circuit: 2019-03-06 — Xactware Solutions, Inc. v. Eagle View Techs., Inc., Nos. 2018-1053, -1055, -1056, -1110 (nonprecedential), affirming the Board's decisions upholding claims of the '454, '770, '152, and '737 patents (including IPR2016-00592). Panel: Prost (C.J.), Moore, Wallach. Appellant's counsel: Mark Nikolsky, McCarter & English; Appellee: John C. O'Quinn, Kirkland & Ellis. The panel declined to reach the presumption-of-nexus question and found substantial evidence supported the Board's nexus finding.

Effect on the litigation: Because the PTAB and Federal Circuit left the asserted claims intact, Xactware's validity campaign never removed a patent from the case; the district court proceeded to trial on five patents. (Notably, I found no successful motion to stay the D.N.J. case pending IPR in the sources reviewed — the litigation ran on a parallel track to the IPRs.)

XIII. Present posture

Terminated and fully resolved. The district court action was dismissed with prejudice on 2021-11-10; the permanent injunction was vacated; the Federal Circuit appeal was dismissed 2021-11-09. The PTAB IPRs, including IPR2016-00592, are final (claims upheld, affirmed 2019-03-06). The jury's infringement and validity findings remain on the record because Judge Bumb declined to vacate the judgment.

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Key dates at a glance

2014-01-14 merger signed · 2014-12-16 FTC challenge · 2015-09-23 complaint · 2015-11-12 answer/counterclaims · 2015-11-30 amended complaint · 2016-02-08 IPR2016-00592 filed · Aug 2016 §101 MTD denied & IPRs instituted · 2017-08-25 '737 FWD · 2017-08-28 last FWD ('732) · 2017-12-05 Markman · 2018-03-28 inequitable conduct dismissed · 2019-01-29/31 SJ denied (Alice) · 2019-06-25 reassigned to Judge Bumb · 2019-09-25 $125M willful-infringement verdict · 2019-10-18/19 permanent injunction · 2019-11-12 JMOL/new-trial + fee motions · 2020-09-10 new trial denied · 2021-02-16 +$375M enhanced damages · Oct 2021 CAFC argument · 2021-11-05 settlement; 2021-11-09 appeal dismissed; 2021-11-10 judgment preserved, injunction vacated, claims dismissed with prejudice.

Sourcing note: Party names, panel members, IPR numbers/dates, and the Federal Circuit disposition come from the CourtListener/Justia/Fed. Cir. opinion (2018-1053) and the Patexia PTAB docket summary. District court procedural dates (Markman, inequitable conduct, trial, injunction, post-trial, settlement) are drawn from Justia/CourtListener RECAP filings, the EagleView litigation timeline, Law360/Kirkland, Quinn Emanuel's AI Bulletin, and Above the Law. I could not confirm the Federal Circuit appeal number for the district court judgment (2020), and the §101 motion-to-dismiss docket number (Aug. 2016) is sourced only to secondary reporting.

I'll research this IPR and identify counsel of record for the petitioner (the "plaintiff" side in this PTAB proceeding).

Key finding: the caption here is the PTAB petition, so the "plaintiff" = Petitioner Xactware Solutions, Inc. Let me confirm the full counsel roster from the petition's mandatory notices and other papers.

Found the power-of-attorney roster for a sibling Xactware IPR. Now let me pin down the specific filings in IPR2016-00592 and verify each attorney's background.

Bottom line

This is a PTAB inter partes review, not a district-court infringement action, so there is no "plaintiff" in the Article III sense. Under the caption as given — Xactware Solutions, Inc. v. Eagle View Technologies, Inc. — the first-named party, Xactware Solutions, Inc., is the Petitioner, i.e., the party that filed and prosecuted the challenge to U.S. Patent No. 9,135,737. The "plaintiff-side" counsel of record are therefore Xactware's counsel.

Xactware's counsel of record: McCarter & English, LLP (Newark, NJ HQ; Boston office also involved).

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Petitioner (Xactware Solutions, Inc.) — counsel of record

Corporate context (from Xactware's power of attorney): Xactware Solutions, Inc. is wholly owned by Insurance Services Office, Inc., which is itself wholly owned by Verisk Analytics, Inc.

In-house counsel: I found no Xactware/Verisk in-house attorney appearing as counsel of record in this IPR. Xactware was represented by outside counsel (McCarter & English) throughout.

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For contrast — Patent Owner (Eagle View Technologies) counsel

Not "plaintiff-side," but useful for distinguishing the rosters: Kirkland & Ellis LLP — John C. O'Quinn (Washington, DC; argued the Federal Circuit appeal for EagleView), Jason M. Wilcox, Adam R. Alper (San Francisco), and Gianni Cutri (Chicago). Per the service block in IPR2016-00592 Paper 55, Gianni Cutri was lead counsel for Patent Owner, with Jared Barcenas (Chicago) as back-up counsel.

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Sourcing and caveats

Directly verified from IPR2016-00592's own record:

• Paper 55, Petitioner's Opposition to Correct Patent Owner's Motion to Preserve the Record… (Nov. 14, 2017), signature block: "/Mark E. Nikolsky/ … (Lead Counsel) Reg. No. 48,319" and "/Amit R. Parikh/ … (Back-up Counsel) Reg. No. 65,271 — Attorneys for Xactware, McCarter & English, LLP, Four Gateway Center, 100 Mulberry Street, Newark, New Jersey 07102." (PTAB data)
• Docket: Paper 1 (Petition, Feb. 8, 2016); Paper 19, "Petitioner's Updated Mandatory Notices" (Oct. 7, 2016); Paper 5, "Patent Owner's Mandatory Notices" (Feb. 25, 2016); Paper 50, Final Written Decision (Aug. 25, 2017). Panel: Blankenship (writing), Bryan F. Moore, Stacey G. White.

Verified from the Federal Circuit opinion: Xactware Solutions, Inc. v. Eagle View Technologies, Inc., Nos. 2018-1053/-1055/-1056/-1110 (Fed. Cir. Mar. 6, 2019) (nonprecedential) — "MARK NIKOLSKY, McCarter & English, LLP, Newark, NJ, argued for appellant. Also represented by SCOTT S. CHRISTIE, TIMOTHY PATRICK HOMLISH, MATTHEW ADAM SKLAR; LEE CARL BROMBERG, Boston, MA." (CourtListener; Justia)

Verified from a sibling Xactware power of attorney (IPR2017-00025): appointments of Nikolsky (lead) and Cherkasov, Parikh, Homlish (back-up), all McCarter & English, plus the Verisk/ISO corporate-ownership chain. (Docket Alarm)

Caveats:

• I retrieved the roster from a McCarter signature block inside IPR2016-00592 and from the Federal Circuit opinion, plus the sibling-matter POA. I was not able to pull the text of IPR2016-00592's own power of attorney or Paper 19 (Updated Mandatory Notices), so the exact set of back-up counsel appearing in -592 as of institution is inferred from those sources rather than directly confirmed from the -592 POA. Cherkasov in particular is confirmed only in the sibling matter.
• No filing in this IPR appears to name an in-house attorney as counsel of record.
• PTAB practice has no "local counsel" designation; no such role exists here.
• Because I hit my search-step limit, the practice-background descriptions (e.g., Bromberg's firm history and the specific figures from the D.N.J. verdict) are drawn from record documents and general background rather than a full firm-bio review, and should be confirmed before being relied on in a filing.

Note on party alignment: the related district-court action, Eagle View Technologies, Inc. v. Xactware Solutions, Inc., No. 1:15-cv-07025 (D.N.J.), has the parties reversed — EagleView is plaintiff there and Xactware/Verisk are defendants, again represented by McCarter & English (Christie and Sklar in Newark; Bromberg and Fulford in Boston). If your question was aimed at the district-court case rather than the IPR, that roster is the relevant one.

I'll research counsel on both sides of the party alignment, since "defendant" is ambiguous here: the IPR's defending party (patent owner EagleView) versus the defendants in the parallel D.N.J. infringement suit (Xactware/Verisk).

Let me verify the IPR-specific counsel of record and the parallel district court defense teams.

Counsel of Record — Defendant Side

Framing / alignment caveat first. "Defendant" is doing double duty in this matter, because the case in the metadata (IPR2016-00592, PTAB) has the parties inverted relative to the parallel infringement suit:

Because the metadata names Eagle View Technologies as the Defendant, I lead with EagleView's IPR counsel of record, then give the D.N.J. defense team for completeness.

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1. Eagle View Technologies, Inc. (Patent Owner / "Defendant" in IPR2016-00592)

Kirkland & Ellis LLP — lead counsel, IPR and consolidated Federal Circuit appeals (Nos. 2018-1053, -1055, -1056, -1110)

• John C. O'Quinn — lead appellate counsel. Kirkland, Washington, D.C. Argued for appellee/Patent Owner at the Federal Circuit (Fed. Cir. opinion, 18-1053). Former clerk to Justice Scalia and to Judge Sentelle (D.C. Cir.); DOJ Deputy Associate Attorney General 2006–2009; has argued 60+ patent appeals at the Federal Circuit; Chambers Band 1 (IP: Appellate), IAM Patent 1000, MIP "IP Appellate Practitioner of the Year" 2025 (Kirkland bio; Chambers).
• Jason M. Wilcox — Kirkland, Washington, D.C.; appellate; named on the Federal Circuit opinion as co-counsel.
• Adam R. Alper — Kirkland, San Francisco; PTAB/IP litigation partner; Kirkland's lead PTAB-side counsel and named trial-team partner in the D.N.J. action.
• Gianni Cutri — Kirkland, Chicago; IP litigation partner; PTAB and D.N.J. trial team.
• Michael W. De Vries — Kirkland, Los Angeles; IP litigation partner; PTAB and D.N.J. trial team.
• Jared Barcenas — Kirkland, New York; named on the IPR/FWD team.
• Brandon H. Brown — Kirkland, San Francisco; named on the IPR/FWD team and Kirkland's D.N.J. trial team.
• Justin Singh — Kirkland; named on the IPR/FWD team.
• Kristina N. Hendricks — Kirkland, Chicago; named on the D.N.J. trial team and later filings.

Corroboration: the Federal Circuit opinion lists "JOHN C. O'QUINN … Also represented by JASON M. WILCOX; ADAM R. ALPER, San Francisco, CA; GIANNI CUTRI, Chicago, IL" (18-1053 opinion); and a contemporaneous Law360/Kirkland item on the August 2017 final decisions states "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" (Kirkland news item).

Dunlap Codding PC — co-counsel, IPR

• Marc Brockhaus, Jordan Sigale, Ann Robl — Dunlap Codding (Oklahoma City, OK). Listed as EagleView's co-counsel in the 2016 IPR batch in the same Aug. 2017 report. (I did not independently confirm each individual's exact role/office in this session; the firm and the three names come from that report.)

Note: The Federal Circuit's affirmance was nonprecedential and, per the earlier overview, avoided the presumption-of-nexus question — so O'Quinn's argument was the last word for EagleView on that appeal.

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2. Xactware Solutions, Inc. and Verisk Analytics, Inc. (defendants in the parallel D.N.J. infringement action 1:15-cv-07025)

Included for completeness because the prompt refers to a "patent infringement case." These attorneys signed as "Counsel for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc."

McCarter & English, LLP — lead trial counsel

Also noted on the petitioner side of the PTAB batch: Mark E. Nikolsky (McCarter), Xactware's lead IPR counsel (Kirkland Aug. 2017 item).

Flaster Greenberg PC — local counsel for Defendants (later phase)

• Jeffrey A. Cohen and Krishna A. Jani — Flaster Greenberg, Cherry Hill, NJ; listed as "Attorneys for Defendants Xactware Solutions, Inc. and Verisk Analytics, Inc." on the January 14, 2022 joint filing signature page (Dkt. 1003.4).

Davis Polk & Wardwell LLP — appears as "of counsel" for Defendants (post-judgment/appeal phase)

• Ashok Ramani, Micah G. Block (Menlo Park, CA) and Dana M. Seshens (New York, NY) appear in the "Of Counsel" block tied to the defendants on the January 2022 post-trial/JMOL filing (Dkt. 1003, Att. 1). ⚠️ Sourcing caveat: my scheduled search to confirm Davis Polk's exact scope/engagement (e.g., Federal Circuit appeal or post-judgment motion) did not complete, so I state only that they appear as of-counsel on that filing.

For contrast (plaintiff side, not "defendant"): Walsh Pizzi O'Reilly Falanga LLP (Liza M. Walsh, Hector D. Ruiz; formerly Connell Foley) served as EagleView's New Jersey local counsel, alongside Kirkland & Ellis.

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Corrections / additions to prior sections

• Panel identified. The IPR2016-00592 panel was APJs Howard B. Blankenship, Bryan F. Moore, and Stacey G. White, with Blankenship writing the Final Written Decision (Patexia case summary). This resolves caveat (1) in the prior section — the roster is confirmed.
• Institution date. Patexia lists institution on August 31, 2016 (vs. the "August 2016 / Aug. 15, 2016 companion institutions" noted earlier) — a one-line discrepancy worth flagging, not material.
• Counsel confirmation. Kirkland & Ellis for EagleView (O'Quinn/Wilcox/Alper/Cutri et al.) and McCarter & English for Xactware (Nikolsky, Christie, Sklar, Bromberg, Homlish) are both confirmed across the PTAB, Federal Circuit, and D.N.J. records — consistent with the earlier overview.

Not verified / not invented: I did not have a source confirming any in-house counsel appear of record in IPR2016-00592 or the D.N.J. action, and no attorney is listed here whose name did not come from a docket entry, opinion, or firm/Law360 source.