EagleView v. Xactware/Verisk Litigation Timeline
On October 18, 2019, the U.S. District Court for the District of New Jersey issued a permanent injunction against Xactware Solutions, Inc. and Verisk Analytics, Inc. The permanent injunction prohibited Xactware and Verisk from, among other things, making, offering to sell, selling, importing, and/or using any products made by the infringing processes, including Property Insight, Roof Insight, Geomni Roof, Geomni Property, and “any products not more than colorably different” from those products.
On October 8, 2019, the U.S. District Court for the District of New Jersey extends the temporary restraining order against Xactware Solutions, Inc. and Verisk Analytics, Inc. for least an additional 14 days as the Court considers implementation of a permanent injunction and other post-trial issues. The extended order will be in effect until at least October 18. As with the initial order, issued on September 26, Xactware and Verisk are prohibited from selling Property InSight, Roof InSight, Geomni Roof and Geomni Property and from selling or using Aerial Sketch version 2.
On September 26, 2019, the U.S. District Court for the District of New Jersey issues a temporary restraining order stopping, among other things, Xactware and Verisk’s sale of Property InSight, Roof InSight, Geomni Roof and Geomni Property, as well as their sale or use of Aerial Sketch version 2, after September 25, 2019. This order will be in effect until October 8, 2019, when the Court will hold a hearing on a permanent injunction.
On September 25, 2019, after a 12-day trial, the jury finds Xactware and Verisk liable for willfully infringing EagleView’s patents in the case, upholds the validity of EagleView’s patents and sides with EagleView on every issue in question. The verdict unequivocally confirms that Xactware and Verisk utilized EagleView’s innovations and technology without permission and in violation of U.S. patent law, and did so willingly. Awarding $125 million in damages to EagleView, the jury’s decision establishes that Xactware and Verisk engaged in a years-long attempt to illegally and unfairly compete by copying EagleView innovations. The jury’s decision can be found here and EagleView’s announcement can be found here.
On September 9, 2019, trial begins in the U.S. District Court for the District of New Jersey, where EagleView makes its case against Xactware and Verisk’s willful infringement of EagleView’s intellectual property (IP) and technological innovations. EagleView’s witnesses include Mr. Rishi Daga, CEO of EagleView; Mr. Chris Pershing, founder of EagleView and the inventor of the asserted patents; Mr. Hugh West, Vice President, Insurance Sales, at EagleView; Professor Robert Stevenson, an expert witness on the technology in the case; and Mr. Jonathan Arnold, an expert witness on the damages caused by Xactware and Verisk’s infringement of EagleView’s patents. Xactware and Verisk’s witnesses include Mr. Edmund Webecke, President of Verisk 3E; Mr. Jeffrey Lewis, Chief Operations Officer at Geomni; Dr. Joseph Mundy, an expert witness on the technology in the case; and Mr. Philip Green, an expert witness on the damages at issue. The trial lasts for 12 days.
On June 25, 2019, the trial is assigned to a new judge, Judge Renee Marie Bumb, also in Camden, New Jersey. Judge Bumb sets the case for trial beginning September 9.
On February 19, 2019, the Court grants EagleView’s motion to strike one of Xactware and Verisk’s non-infringement defenses.
On January 29, 2019, Xactware and Verisk again attempt to invalidate EagleView’s patent claims, again arguing that they are invalid as being directed to abstract ideas. The Court again denies their motion, holding that “the asserted claims are directed to an improvement in the functioning of a computer” in that they “solve the specific problem of generating a roof repair estimate without direct human measurement of a roof.” The Court further stated that the “claims rely on the concrete and specific technological solution of a computer’s correlating, with or without user input, different locations points on two, different, non‐stereoscopic aerial views of a roof section and then calculating via photogrammetric methods from the correlated aerial views a mathematical model of the roof section.” The Court went on to hold that as to the second step of the analysis, the claims’ correlation steps and the steps in which a user may change correlated locations in the aerial views give rise to a presumption of a specific implementation of photogrammetric methods combined with roof pitch estimation, which in turn suggests a specific inventive concept.” The Court’s decision can be found here.
On March 12, 2018, the parties agree that Geomni will be bound by the outcome of the trial. The parties’ stipulation can be found here.
On April 13, 14, 18, 19, July 18, August 14, 24, and 25, 2017, Xactware and Verisk lose their remaining IPRs concerning the EagleView patents (’436, ’770, ’454, ’737) and the Pictometry patents (’732, and ’880). All told, of the 153 claims challenged by Xactware and Verisk, 142 are confirmed as not invalid. This win was covered by multiple news outlets, as shown here and here. EagleView’s press release concerning this win can be found here.
On May 19, 2017, Xactware and Verisk agree with EagleView that the parties will narrow their respective assertions to prepare the case for trial. Xactware and Verisk propose to drop many of their arguments concerning the invalidity of EagleView’s patents, and EagleView correspondingly agreed to focus its assertions on a subset of the infringed claims. The parties’ joint stipulation, which notes that EagleView enters the stipulation solely “to present a more streamlined version of the case,” can be found here.
On September 21, September 30, and November 2, 2016, the Patent Office rejects Xactware and Verisk’s requests for rehearing, which had attempted to overturn the IPR losses noted above. An example of the Patent Office’s decision can be found here.
On August 15 and 16, 2016, the Patent Office rejects Xactware and Verisk’s IPR petitions as to three EagleView patents, concluding that Xactware and Verisk had not shown a reasonable likelihood that the claims of those patents were invalid. Examples of the Patent Office’s decisions can be found here, here, and here.
On August 2, 2016, the Court denies Xactware and Verisk’s motion to dismiss. A copy of the Court’s decision can be found here.
On February 9, 2016, nearly simultaneous with their first round of IPR petitions, Xactware and Verisk attempt to dismiss EagleView’s entire case, arguing that all of EagleView and Pictometry’s patents are invalid for being directed to abstract ideas.
Starting on February 8, 2016, Xactware and Verisk file Inter Partes Review (IPR) petitions, asking the United States Patent Office to declare all of EagleView and Pictometry’s patents invalid on a different basis, this time claiming that others had previously come up EagleView’s patent technology.
On September 23, 2015, EagleView initiates a lawsuit against Xactware and Verisk in the District of New Jersey, asserting that the Xactimate®, Roof InSight™, Property InSight™, and Aerial Sketch™ products infringe seven EagleView patents and two Pictometry patents. A copy of the complaint can be found here.