A Message to Our Valued Customers Re: the Verisk/Xactware LitigationMarch 26, 2019
We write to update you on the status of our patent lawsuit against Verisk and Xactware. The case, which has been pending since 2015, is now scheduled to go to trial on June 10th in Camden, NJ. As we have previously reported, EagleView has won numerous significant victories during the past two years as Xactware and Verisk have attempted to invalidate EagleView’s patents or delay the proceedings. EagleView’s repeated successes have confirmed the strength of its patents while eliminating the final roadblocks to a jury trial regarding Xactware and Verisk’s unlawful use of EagleView’s patented technologies. These successes include:
- Over the past two years, the Patent Trial and Appeals Board (PTAB) has rejected 13 attempts by Verisk and Xactware to invalidate more than 150 of EagleView’s patent claims;
- Earlier this month, the Court of Appeals for the Federal Circuit upheld the PTAB’s decisions in EagleView’s favor, rejecting Xactware arguments as “unpersuasive”;
- Xactware and Verisk have twice asked the District Court to invalidate the asserted claims in the six EagleView patents at issue under 35 U.S.C. § 101, arguing that each patent claimed abstract ideas and lacked any inventive concept. In late January, the Court again rejected Xactware’s and Verisk’s arguments and denied their motion for summary judgment, clearing the way for EagleView’s case to finally go to trial; and,
- When the parties disputed the meaning and scope of EagleView’s patent claims, the district court sided with EagleView in all 10 of the parties’ disputes, rejecting Xactware and Verisk’s efforts to narrow the scope of EagleView’s patents.
In response, Xactware and Verisk are flooding social media with attempts to downplay these significant events, making a variety of statements that are incorrect. For example, Xactware and Verisk assert that EagleView “abandoned three patents and 142 claims” in the case. In reality, EagleView has consistently contended for years that Verisk and Xactware infringe each of the 153 claims that were originally asserted in this case. Although it is true that EagleView withdrew some claims, Verisk and Xactware agreed in a court filing that this withdrawal by EagleView was an administrative step “to present a more streamlined version of the case,” and not a reflection on the strength of the withdrawn claims. Xactware and Verisk didn’t win anything; the two sides simply agreed to reduce the number of claims in order to make the presentation of evidence more manageable for the jury.
Verisk also states that, prior to the lawsuit, “EagleView affirmed that Verisk was not infringing its intellectual property.” That is factually incorrect; in reality, EagleView has repeatedly informed Verisk and Xactware of its ongoing infringement and was forced to bring the present lawsuit when Verisk and Xactware refused to stop. Critically, Verisk and Xactware recently presented this very same position to the Court on a motion for summary judgment. The Court denied Verisk and Xactware’s motion and noted its “astonishment” that Verisk and Xactware could have held such a belief.
Lastly, Verisk asserts that it “was doing 3-dimensional modeling of buildings nearly 20 years ago and began imagery analytics in 2004 to bring innovation to our customers.” To the extent Verisk is attempting to imply that it independently developed EagleView’s patented technologies, that is incorrect; quite the opposite, when Verisk and Xactware first saw EagleView’s patented technologies, they repeatedly and very publicly praised EagleView for its innovations which led to Verisk making an attempt to acquire EagleView in 2014.
We have received many inquiries from customers for information about these proceedings, so we have created a resource page to provide access to the documents underlying the events in the case. EagleView will continue to protect its intellectual property and the innovations that deliver substantial benefit to its customers and looks forward to presenting its patent claims to the jury in June.
On June 25, 2019, the trial was assigned to a new judge, Judge Renee Marie Bumb, also in Camden, NJ. Judge Bumb has set the case for trial beginning September 9.