EAGLE VIEW TECHNOLOGIES, INC. et al v. XACTWARE SOLUTIONS, INC. et al

Filing 841

OPINION. Signed by Judge Renee Marie Bumb on 10/18/2019. (dmr)

[Docket No. 816]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE

EAGLE VIEW TECHNOLOGIES, INC.,
et al.,
Plaintiffs,
v.

XACTWARE SOLUTIONS, INC., et
al.,
Defendants.

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APPEARANCES:
WALSH PIZZI O’REILLY FALANGA LLP
By: Liza M. Walsh, Esq.
Hector D. Ruiz, Esq.
Eleonore Ofosu-Antwi, Esq.
Three Gateway Center
100 Mulberry Street, 15th Floor
Newark, New Jersey 07102
and
KIRKLAND & ELLIS LLP
By: Adam R. Alper, Esq.
Brandon H. Brown, Esq.
Reza Dokhanchy, Esq.
555 California Street
San Francisco, California 94104
Michael W. DeVries, Esq.
333 South Hope Street
Los Angeles, California 90071
Patricia Carson, Esq.
Leslie M. Schmidt, Esq.
601 Lexington Avenue

Civil No.: 1:15-cv-07025
OPINION

New York, New York 10022
Gianni Cutri, Esq.
Kristina Hendricks, Esq.
Joel R. Merkin, Esq.
300 North LaSalle
Chicago, Illinois 60654
Counsel for Plaintiff

McCARTER & ENGLISH, LLP
By: Scott S. Christie, Esq.
Matthew A. Sklar, Esq.
Four Gateway Center
100 Mulberry Street
Newark, New Jersey 07102
Lee Carl Bromberg, Esq.
Thomas R. Fulford, Esq.
265 Franklin Street
Boston, Massachusetts 02110
and
GIBSON DUNN & CRUTCHER LLP
By: Mark A. Perry, Esq.
1050 Connecticut Avenue N.W.
Washington, District of Columbia 20036
Counsel for Defendants

2

BUMB, UNITED STATES DISTRICT JUDGE 1:
Approximately three weeks ago, a jury found that Defendants
Xactware Solutions, Inc. and Verisk Analytics, Inc. (“Defendants”)
willfully infringed six of Eagle View’s patents.

The jury awarded

lost profits damages of $125 million to Eagle View. 2

On September

26, 2019, this Court entered a temporary restraining order (“TRO”)
enjoining Defendants from, among other things, selling or offering
to sell their Property Insight, Roof Insight, Geomni Roof and Geomni
Property products [Docket No. 800] that are produced by computer
software programs which the jury found infringed Eagle View’s
patents.

Shortly thereafter, Eagle View filed the instant Motion

for a Permanent Injunction.
on October 8, 2019.

The Court held a hearing on the motion

Immediately following the hearing, the Court

extended the TRO to October 18, 2019 to allow Defendants to present
their equitable estoppel defense at an evidentiary hearing to be

1

Due to a combination of full trial calendars and judicial
vacancies resulting in a declared judicial emergency, this case
was reassigned from Senior District Judge Robert B. Kugler to the
undersigned for trial, which was held on September 9 through 25,
2019.

2

The jury also found that each patent at issue was not invalid.

3

held on October 18th.

A few days later, however, Defendants notified

the Court that they wished to withdraw their equitable estoppel
defense [Docket No. 835], and the parties agreed that there was no
longer a need for a hearing on that issue.

Thus, all that remains

for immediate adjudication is Eagle View’s Motion for Permanent
Injunction.

For the reasons stated herein 3, the motion will be

granted, in part, and denied, in part.
I.

BACKGROUND
Eagle View defines itself as a data analytics company, with the

“data” being derived from aerial imagery of roofs.

[Trial

Transcript, p. 705:24-706:1 (“A: . . . Eagle View is in the business
of capturing aerial imagery and then extracting roof measurements
from the imagery.”).

Eagle View’s patented processes are applied to

that data, and then a roof report is generated.
View’s “cornerstone product.”

This is Eagle

[Daga Sept. 26, 2019 Decl. ¶ 4]

In

contrast to Eagle View, less than half of one percent of Defendants’
revenue results from the generation of roof reports. [PTX-138; PTX-

3

This Opinion sets forth “the reasons why [the accompanying
injunction is] issued.” Fed. R. Civ. P. 65(d)(1)(A).

4

940; Dkt. No. 791-1, Exs. B–E]

It is Defendants’ generation of

their roof reports from their software programs that the jury found
to be infringing.
Putting Defendants’ willful infringement of Eagle View’s
patents aside, ironically, Defendants provide some business value to
Eagle View.

Through the parties’ contractual relationship,

Defendants run approximately 25% of Eagle View’s roof reports
through its Xactimate cost-estimator platform.
1506:17-25 (West Testimony)]

[Trial Transcript,

That is, in addition to the generation

of a roof report, a cost estimate to repair or replace the roof per
the measurements of that roof report is also prepared through
Defendants’ platform. [Trial Transcript, p. 2175:7-15 (Webecke
Testimony)]
2020.

This contractual relationship runs through December,

Suffice it to say it is indeed a paradoxical set of facts:

the parties in this hotly contested litigation before the Court are
business partners outside the courtroom, at least until the end of
next year.
The developed record of the parties’ relationship convinces
this Court that the effects of a denial of injunctive relief to
protect the patents at issue is far more consequential to Eagle
View, a company whose essential existence relies upon the income

5

generated as a result of the patented software, than to Defendants,
who are far more diversified.

[See infra at Section III., D.]

As

Eagle View’s CEO, Rishi Daga, explained at trial, Eagle View’s
patents are critically important to its business.

To Eagle View,

having patent protection means
small companies like [Eagle View] . . . spen[d] a lot of
time, energy, money . . . and do research and development,
create new technology, and then file a patent . . . so then
[it] can go and build a business and grow a business. And
if [those patents are not enforced] then any big company can
come steal your idea and crush you.
[Trial Transcript, p. 800:17-801:1]

The CEO’s fears were born out

by the trial evidence: in September, 2015, Defendants announced in
their formal, written business strategy that they viewed Eagle View
as a “threat” [PTX-530.0023], and so they set out to “aggressively”
erode Eagle View’s market share and undercut Eagle View’s prices.
[PTX-530.0001]

Indeed, within three years of the 2015 Five Year

Business Strategy, Defendants had successfully eroded Eagle View’s
market share by as much as 20% [Trial Transcript, p. 1511:2-10] and
undercut Eagle View’s prices by as much as 50%. [Trial Transcript,
p. 1504:17-18]

In short, the record evidence supports a finding

that Defendants deliberately set out to, and did cause, irreparable
harm to Eagle View.

Further, as explained below, Defendants have

6

provided the Court little assurance that, going forward, Defendants
will not continue their aggressive business strategy of what the
jury has found to be willful infringement and unfair competition.
Unless an injunction issues, there remains, in this Court’s mind, a
possibility that Eagle View could be pushed out of business
altogether.
II.

It is a risk this Court is not willing to take.

LEGAL STANDARD
The Patent Act provides that injunctions “may” issue “in

accordance with the principles of equity.”

35 U.S.C. § 283.

“To

obtain a permanent injunction, ‘[a] plaintiff must demonstrate: (1)
that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance of
hardships between the plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not be disserved
by a permanent injunction.’”

TEK Glob., S.R.L. v. Sealant Sys.

Int’l, Inc., 920 F.3d 777, 792 (Fed. Cir. 2019) (quoting eBay, Inc.
v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)).

7

A patentee must

establish each of these eBay factors for an injunction to issue.
Amgen, Inc. v. Sanofi, 872 F.3d 1367, 1381 (Fed. Cir. 2017). 4
III. ANALYSIS
A.

Irreparable injury

“To prove irreparable injury, a patentee must show (1) that
absent an injunction, it will suffer irreparable harm, and (2) that
a sufficiently strong casual nexus” connects the alleged irreparable
harm “to the [] infringement.”

Presidio Components, Inc. v. Am.

Tech. Ceramics Corp., 875 F.3d 1369, 1383 (Fed. Cir. 2017). 5

“To

determine whether the patentee will suffer irreparable harm absent
an injunction, the court may consider factors such as the nature of
competition between the patentee and the infringer, the willingness
of a patentee to license, and any lost sales the patentee has
proven.”

Id.

The court may also consider the harm to the

patentee’s reputation in the market.

See Douglas Dynamics, LLC v.

Buyers Prod. Co., 717 F.3d 1336, 1344 (Fed. Cir. 2013) (“Irreparable

4

Cert. denied, 139 S. Ct. 787, 202 L. Ed. 2d 568 (2019).

5

Cert. denied, 139 S. Ct. 144, 202 L. Ed. 2d 24 (2018), and cert.
denied, 139 S. Ct. 73, 202 L. Ed. 2d 23 (2018).

8

injury encompasses different types of losses that are often
difficult to quantify, including lost sales and erosion in
reputation and brand distinction.”).

The record before this Court

amply supports a finding of each of these factors.
i.

Competition between the parties

The trial evidence establishes that the market for roof reports
is essentially a two-player market consisting of Eagle View and
Defendants.

Both are each other’s direct competitors. [Trial

Transcript, p. 792:22-794:12 (Daga Testimony, “Q: . . . [D]oes Eagle
View have any effective competitors other than the defendants? A:
No.”), p. 1491:2-3 (West Testimony, “Q: Are there any other [roof
report] alternatives [other than Defendants and Eagle View] in the
marketplace?

A: No, there are not.”), p. 1511:2-10 (“Q: . . . what

is EagleView’s market share[?]

A: I would say somewhere between 80

and 90 percent. . . . Who has the other 10 to 20 percent?
defendants.”)] 6

6

A: The

With respect to the insurance carrier portion of the

The undisputed fact that the Federal Trade Commission did not
approve the parties’ proposed merger lends further support to this
Court’s finding that the market for roof reports effectively
consists of two players: Defendants and Eagle View.

9

market, Defendants’ own witness, Xactware’s President, Mike Fulton,
testified that Eagle View is Defendants’ only “significant or
relevant” competitor. [PTX-961, Deposition Transcript at 251:7-17]
Indeed, in opposition to the instant motion, Defendants concede that
the insurance carrier portion of the market is a two-player market,
arguing that only the construction contractor portion of the market
is not a two-player market.

[Dkt. No. 825, Opposition Brief, p. 6] 7

However, the evidence does not support a finding, by a preponderance
of the evidence, that there are other significant or relevant
competitors to Defendants and Eagle View in the construction
contractor portion of the market.
regard is vague and undeveloped.

Defendants’ evidence in this
Defendants’ expert, Philip Green,

in his declaration filed in opposition to the instant motion 8, merely

7

[See also Oct. 8, 2019 Hearing Transcript, p. 44 (“MR. PERRY: . .
. In the insurer market . . . our point is not that it is not a
two-player market, to be clear. There are two players, Eagle View
and Xactware.”]

8

Defendants elected not to call Mr. Green to testify at the
permanent injunction hearing, although the Court provided
Defendants the opportunity to do so. [Oct. 8, 2019 Hearing
Transcript, p. 3, 90-91]

10

identifies three companies--“RoofShots/Roofers”, “SkyMeasure”, and
Home Depot-- which he asserts, in conclusory fashion, “offer reports
that are based on imaging such as that used by Eagle View and
Xactware.”

[Dkt. No. 825-2, Green Decl. ¶ 18] 9

This evidence is

insufficient because Defendants provide no evidence that any of the
three vendors are bona fide competitors to Eagle View and
Defendants.

Even if this Court were to assume-- which it does not--

that the reports “offered” by these companies are comparable to
Eagle View’s roof reports in terms of similarity and accuracy 10,

9

The trial testimony of Defendants’ corporate designee, Edmund
Webecke, was even more vague: “Q: On the contractor side, what is
your understanding of the number of competitors to Eagle View and
Xactware in providing Roof Reports? A: Originally, there were
quite a few smaller companies doing this service. . . . And there
are a number of service companies out there that have, over the
years, provided reports or dimensions of roofs through their
service.” [Trial Transcript, p. 2316:2-12] [See also, Trial
Transcript, p. 3100:5-12 (Green Testimony: “A: . . . We’ve heard
about . . . SkyTek, SkyMesh, Roof Shots, those kind of companies
help sells [sic] roof reports to contractors. . . . [Y]ou really
can’t see what’s going on in the contractor market. There’s so
many of them, you don’t know what they’re buying.”)].

10

[See Trial Transcript, p. 1756:18-20 (Arnold Testimony explaining
that “accuracy problems” render some of Defendants’ proposed
noninfringing alternatives “uncompetitive alternative[s].”)]

11

nothing in the record provides any information concerning how many
reports these alleged competitors actually sell or have sold.

In

the absence of such evidence-- and in light of Eagle View’s evidence
to the contrary 11--

the Court concludes that these companies’

presence in the roof report market is de minimus, and therefore
Defendants’ proffered evidence does not alter this Court’s finding
that the entire market for roof reports (the insurer and
construction contractor portions combined) functions as a two-player
market for purposes of assessing irreparable harm.
Indeed, some of the strongest evidence of the present
competitive landscape is what has happened since this Court entered
its temporary restraining order: rather than turning to some third,
non-infringing provider of roof measurements, Defendants’ roof

11

[Trial Transcript, p. 1898:15-20 (Arnold Testimony, “A: . . . the
only commercially relevant choices for people who are buying this
type of roof report, is either Eagle View or Xactware, and there
are some examples of smaller players out there that have come in
and out of the market, but they have no meaningful share.”); p.
1922:10-15 (Arnold Testimony, “A. American Modern was an Eagle
View customer, it went to SkyMeasure, and then it returned to
Eagle View. So that tells me they tested it out, they did not
find it to be acceptable, and they came back to [Eagle View]. So
it looks to me as though SkyMeasure is not able to measure up to
the competition that’s presented by Xactware and Eagle View.”]

12

report customers-- insurers and construction contractors alike-have returned to Eagle View.
817-2, ¶¶ 5-10]

[Daga Oct. 1, 2019 Decl., Docket No.

As counsel for Eagle View correctly observed at the

permanent injunction hearing, Defendants have not provided any
evidence of even a single customer choosing an option that was not
Defendants or Eagle View.
14, 77]
versa.

[Oct. 8, 2019 Hearing Transcript, p. 11,

Thus, Defendants’ gain is Eagle View’s loss, and vice
Cf. Presidio Components, 875 F.3d at 1384 (“Since March 17,

2017, the injunction against [the infringer] from selling [the
infringing product] has been in effect.

Based on the evidence

presented to this Court, it appears that, fortuitously, this
injunction may have created the hypothetical market necessary to
determine whether consumers would purchase [the patent holder’s
product] in the absence of [the infringer’s product].

On remand,

the district court should consider whether consumers have turned to
noninfringing alternatives to the [patent holder’s product] . . .
after the [the infringing product] became unavailable or whether
[the patent holder’s] sales of the [patented product] have increased
because the [infringing product] is no longer on the market.”).
ii. Eagle View’s lost sales and lost market share to
Defendants

13

Eagle View has also proven that it has lost highly valuable
customers to Defendants because of Defendants’ ability to undercut
Eagle View’s price.

[Trial Transcript p. 1504:17-18 (West

Testimony) (“we consistently see the defendants’ products in the
market at 30 to 50 percent below Eagle View’s pricing.”)]

Indeed,

the trial evidence demonstrated that Defendants intended to
aggressively compete, head-to-head, with Eagle View with the express
goal of luring away Eagle View’s customers and decreasing Eagle
View’s market share.

As mentioned, in September 2015, Defendants

created a “Five Year [Business] Strategy” which set forth “how”
Defendants planned to “aggressively grow [their roof report] market
share”: “[t]here is nothing more important at this time that [sic]
to support and sell Roof InSight to US markets and beyond where
possible. . . . [Eagle View] is very active in the market . . . . We
need to erode their market share by selling Roof InSight right
now[.]”

[PTX-530.0001, p. 14, 21-22]

Defendants specifically

identified insurance customers State Farm and Nationwide as business
Defendants sought to “take,” from Eagle View thereby “hav[ing] [a]
significant impact on the competition.” [Id. at p. 14-15]
Defendants also planned to “be aggressive on price.” [Id. at p. 23]

14

The trial evidence further supports a finding that Defendants
were successful in achieving their acquisitive goals.

Nationwide

did, in fact, switch to Defendants, as did MetLife, USAA, Travelers,
and Country Financial, among others. [Trial Transcript, p. 797:18798:2 (Daga Testimony), p. 1483:23-1485:24 (West Testimony); Daga
Oct. 1, 2019 Decl. ¶ 7].

Why these customers did so is clear:

Defendants were offering their roof reports “at a significantly
lower price.” [Trial Transcript, p. 1485:6-9, 1488:19-25 (West
Testimony)]
Moreover, although Eagle View did not completely lose all of
its customers to Defendants, Eagle View was nonetheless forced to
lower the prices it offered to both its insurance and construction
customers in order to compete with Defendants.

[Trial Transcript,

p. 1489-96, 1503-04 (West Testimony); PTX-641] 12

12

Eagle View predicts that this pressure to maintain current,
artificially deflated prices for its roof reports (which resulted
from Defendants’ infringement) will continue into the future.
While Defendants dismiss this argument as speculative, the Court
disagrees. Eagle View’s evidence of past market conditions and
contract negotiations may be used to reliably predict what will
happen in the future. See TEK, 920 F.3d at 793 (“‘[p]ast harm to
a patentee’s market share, revenues, and brand recognition is

15

The effects of Defendants’ aggressive competition strategy
persist, post-verdict 13, to today.

Mr. Daga states that at least one

of Eagle View’s customers is delaying negotiations on a contract
renewal with Eagle View so that the customer may potentially take
advantage of a lower price offered by Defendants.

[Daga Sept. 26,

2019 Decl. ¶ 5-6]
This mountain of evidence notwithstanding, Defendants
erroneously assert that Eagle View’s market share has remained
constant over the relevant time period, and therefore assert that
Eagle View has not proven that it has lost market share to
Defendants.

This argument is not supported by the evidence.

Defendants’ own document, the “Five Year Strategy”, illustrates that
between 2013 and 2015, Defendants “command[ed] a ~10% market share

relevant for determining whether the patentee ‘has suffered an
irreparable injury.’” (quoting i4i, 598 F.3d at 861–62).
13

The Court notes that by awarding Eagle View $125 million in lost
profits damages, and $0 as a reasonable royalty, the jury
necessarily, and resoundingly, found that Defendants’ infringement
caused Eagle View to lose sales and/or caused Eagle View to lower
its prices.

16

vs. [Eagle View] for roof reports” in the US insurance carrier
market.

[PTX-530.0001, p. 21-22]

Similarly, the evidence shows

that Eagle View’s overall market share (insurance customers and
construction contractors combined) did not remain steady at 90%, as
Defendants assert.

[Trial Transcript, p. 1511:2-10 (West Testimony)] 14

low as 80%.
iii.

Rather, Eagle View’s market share has dipped as

Eagle View’s unwillingness to license its patents

It is undisputed that Eagle View has not licensed the patents
at issue.

This factor also weighs in favor of a finding of

irreparable harm.

See Presidio Components, 702 F.3d at 1363 (“The

district court correctly found [the patent holder’s] unwillingness
to license favored finding irreparable injury.”).

That Defendants’

opposition to Eagle View’s Motion completely ignores this fact is
quite telling.
iv.

14

Reputational harm

[See also, Trial Transcript, p. 3132:5-10 (Green Testimony: “Q:
In fact, since being sued four years ago this day, defendants have
increased their sales of their accused products, and their
revenues on sales of the accused products have increased year over
year over year, correct? A: Yes. They have had more sales, so
there’s greater revenue, we all agree.”)]

17

The evidence also demonstrates that Eagle View’s roof reports
have lost some of their “distinctiveness and market lure” as a
result of Defendants’ infringement.
1344.

Douglas Dynamics, 717 F.3d at

The confusion and uncertainty in the market created by

Defendants’ infringement has negatively impacted Eagle View’s
relationships and business negotiations with its customers. [Dkt.
No. 792-1, Sept. 22, 2019 Daga Decl. ¶¶ 4-7; see also Trial
Transcript, p. 1484:1-4, 1496:5-10 (West Testimony)]

Defendants

have not offered any contrary evidence.
The combined effect of these market conditions-- direct, twoplayer competition, Eagle View’s lost sales and market share to
Defendants, and Eagle View’s unwillingness to license its patents to
Defendants or anyone else-- as well as the harm to Eagle View’s
reputation in the market, taken altogether, strongly supports the
conclusion that Eagle View will suffer irreparable harm in the
future absent a permanent injunction.
v.

Nexus

Moreover, Eagle View has also adduced sufficient evidence that
the irreparable harm it will suffer absent an injunction is directly
attributable to Defendants’ infringement, thereby establishing the
nexus requirement.

As direct competitors in a two-player market,

18

Eagle View’s harm was clearly and directly linked to Defendants’
infringement of Eagle View’s patent property rights.

See Broadcom

Corp. v. Emulex Corp., 732 F.3d 1325, 1337 (Fed. Cir. 2013)(“‘Where
two companies are in competition against one another, the patentee
suffers the harm-- often irreparable-- of being forced to compete
against products that incorporate and infringe its own patented
inventions.’”) (quoting Douglas Dynamics).

Indeed, the jury

explicitly found the requisite nexus when they awarded Eagle View
$125 million in lost profits “because of” Defendants’ infringement.
[Docket No. 727]
The Court rejects Defendants’ contrary argument.

Defendants

correctly observe that the patented technology at issue is not roof
reports.

Defendants, however, then take the unsupported leap that

there is no causal nexus between the patented technology-- i.e.,
Eagle View’s software that produces roof reports-- and consumer
demand.

According to Defendants, consumers do not “want to buy roof

reports because they correlate points on stereoscopic roof images”
[Oct. 8, 2019 Hearing Transcript, p. 63], and so, Defendants reason,
this Court cannot find the requisite nexus between Eagle View’s
patented software and consumer demand.

19

The Court finds two flaws in this argument.

First, the patents

at issue all claim inventions that “generate,” “transmit” or
“output” a “roof estimate report.”

Those reports, the evidence

shows, are in demand because of their accuracy (and resulting cost
savings) [Trial Transcript p. 1478-81, PTX-126], which accuracy is
the direct result of the claimed inventions. 15

That is, the roof

reports are accurate (and cost-effective) precisely because the
patented software correlates points on stereoscopic roof images.
Thus, when customers demand accuracy, they are, contrary to
Defendants’ argument, effectively demanding the patented software. 16

15

[See Trial Transcript, p. 495:21-24 (Pershing Testimony) (“I was
thinking through the problem of how I was going to-- how I was
going to use and correlate information from different photographs
in order to produce a coherent accurate model of a roof.”)]

16

In this way, this case is distinguishable from the car and cup
holder analogy discussed in Apple Inc. v. Samsung Elecs. Co., 735
F.3d 1352, 1368 (Fed. Cir. 2013) (“For example, consumers’
willingness to pay an additional $10 for an infringing cup holder
in a $20,000 car does not demonstrate that the cup holder drives
demand for the car. The question becomes one of degree, to be
evaluated by the district court.”). [See Oct. 8, 2019 Hearing
Transcript, p. 62-65] Defendants argue that customer demand for
cars is not driven by cup holder preference, and Defendants have
urged this Court to find that Eagle View’s patented software is
like a cup holder in a car. But the evidence does not support

20

Second, Eagle View has presented evidence that customers in the
market were aware that Eagle View’s patented technology was its
software, and, thus, sought out Eagle View for its patented
technology.

[PTX-444.0001-04 (California Business Journal article:

“Eagle View Measurements revolutionizes the roofing industry with a
unique innovation that saves roofing contractors time and money.”);
PTX-511.0001 (CNN Money headline: “One small company reinvents a $30
billion market”); PTX-173.0011-12 (Bloomberg article: “EagleView’s
Software Measures Rooftops With Photos From the Sky”); Trial
Transcript, p. 714:13-17 (Daga Testimony, “I thought it was amazing
that even before any real marketing efforts, even before any . . .
product launches . . . there were actually people who were spending
money to buy this digitized computer-based roof report.”), p.
1736:16-17 (Arnold Testimony, “A: I conclude that the patented
technology is driving demand for [Eagle View’s] product.”)]

such a finding. A car is infinitely more complex than a roof
report, and a cup holder certainly does not produce a car the way
Eagle View’s software generates a roof report.

21

The Court holds that Eagle View has established the first eBay
factor.
B.

Inadequate remedies at law

“Difficulty in estimating monetary damages is evidence that
remedies at law are inadequate.” i4i Ltd. P’ship v. Microsoft Corp.,
598 F.3d 831, 862 (Fed. Cir. 2010). 17

“[L]oss of market share, brand

recognition, and customer goodwill as the result of the defendant’s
infringing acts,” are all losses which the Federal Circuit has
recognized are “difficult to quantify.”

Id.

Concerning lost market share and lost profits, as discussed
above, Eagle View has presented ample evidence proving that it lost
market share and suffered price erosion as a result of Defendants’
infringement, and the jury’s award of lost profits necessarily means
that the jury found those facts as true.

While Defendants argue

that the jury’s award of lost profits demonstrates that loss of
market share and price erosion can be adequately compensated with
money damages, the Court disagrees.

17

The jury’s award of lost

Aff’d, 564 U.S. 91, 131 S. Ct. 2238, 180 L. Ed. 2d 131 (2011).

22

profits for past injury is not irreconcilably inconsistent with a
finding that money damages will be inadequate to remedy future
injuries for two related reasons.

First, that the jury was able to

award damages within a reasonable amount of certainty 18 does not, as
Defendants argue, necessarily lead to the conclusion that Eagle View
has been made whole for its past injuries resulting from Defendants’
infringement. 19

Defendants’ calculated and targeted price erosion

strategy has rendered it impossible to predict exactly what price
the market would have sustained absent Defendants’ infringement.
Second, an award of lost profits for past injury, of course,
cannot prevent future harm to Eagle View.

Having seen all of the

evidence of Defendants’ deliberate strategy of aggressive head-to-

18

As the Court instructed the jury in this case, “EagleView need
not prove the amount of damages with mathematical precision, but
it must prove the amount of damages with reasonable certainty.”
[Docket # 794, p. 53]

19

See generally, City of Walla Walla v. Walla Walla Water Co., 172
U.S. 1, 12 (1898)(“the remedy at law, in order to exclude a
concurrent remedy at equity, must be as complete, as practical,
and as efficient to the ends of justice and its prompt
administration, as the remedy in equity.”) (emphasis added); see,
e.g., TEK, 920 F.3d 789-794 (affirming jury’s award of lost
profits and also affirming the District Court’s imposition of a
permanent injunction).

23

head competition with Eagle View, and in light of the jury’s finding
of willful infringement-- which continued until this Court
temporarily restrained Defendants-- this Court has no confidence
that absent a permanent injunction, Defendants will not continue to
infringe Eagle View’s patent rights in a manner that will cause
additional long-term, irreparable harm to Eagle View.

The longer

Defendants are permitted to exploit their unlawful infringement, the
longer Eagle View will be unfairly forced to compete against its own
patented technology, and the longer Defendants will artificially and
unfairly depress the market price for roof reports, thereby
rendering impossible any reasonably accurate post-hoc valuation of
lost profits in the future, just as that same conduct has precluded
a more accurate valuation of past lost profits.
When the Court pressed Defendants on this issue, Defendants
were unable to provide the Court with evidence sufficient to allay
the Court’s concerns that the irreparable harm Eagle View fears will
not come to pass in the absence of an injunction.

In response to

the Court’s question, “[w]hat assurance do I have that the
defendants won’t take this, what I will call scorched earth tactic,
and snatch Eagle View’s customers absent an injunction?” Defendants

24

gave two answers: history and money damages. [Oct. 8, 2019 Hearing
Transcript, p. 50]

Both are unpersuasive.

As to history, Defendants repeatedly relied upon the asserted
“steadiness of [Eagle View’s] market share data.”
Hearing Transcript, p. 46, 50, 51, 54, 60]

[Oct. 8, 2019

However, as discussed

above, Defendants’ argument is not supported by the evidence; Eagle
View has lost market share to Defendants 20, and the Court has every
reason to believe that the trend will continue, unless halted by an
injunction, because taking Eagle View’s market share is Defendants’
expressly stated business strategy.
As to money damages, “[p]atent property rights are especially
difficult to protect with solely monetary relief because ‘a
calculating infringer may thus decide to risk a delayed payment to
obtain use of valuable property’ without the owner’s permission.”
Broadcom, 732 F.3d at 1338 (quoting Presidio, 702 F.3d at 1362–63).
Indeed, the evidence of Defendants’ Five Year Strategy and the
jury’s finding of willful infringement supports a finding that

20

As Defendants conceded at the injunction hearing, “nobody
disputes that . . . if it were proved, [] lost market share can be
irreparable.” [Oct. 8, 2019 Hearing Transcript, p. 61]

25

Defendants decided-- ultimately unwisely-- to take precisely the
risk that Presido and Broadcom identify.

This Court, sitting in

equity, will not allow such conduct to continue.
Moreover, Eagle View has put forth unrebutted evidence that its
reputation / brand recognition and goodwill in the marketplace have
been damaged as a result of Defendants’ infringement [Dkt. No. 7921, Daga Sept. 22, 2019 Decl. ¶¶ 4-7, see also Trial Transcript, p.
1484:1-4 (West Testimony)], and this Court finds that Eagle View’s
goodwill and reputation will more likely than not suffer continuing
damage in the future unless Defendants are enjoined from further
infringement.
The Court holds that Eagle View has established the second eBay
factor.
C.

The intersection of eBay factors one and two

While irreparable harm and the inadequacy of remedies at law
are two separate factors to be considered, they do intersect.

See

TEK, 920 F.3d at 792 (“The inherent difficulty of quantifying ‘loss
of market share, brand recognition, and customer goodwill’ and of
estimating monetary damages indicates that ‘remedies at law are
inadequate.’”) (quoting i4i, 598 F.3d at 862).

At this

intersection, the Court makes the following observation.

26

Defendants’ “aggressive” approach seemed to be more than just
business.

The Court carefully listened to the testimony of

Defendants’ Rule 30(b)(6) witness, Edmund Webecke.

Mr. Webecke

testified that Defendants’ business goal, specifically with respect
to Eagle View, was to “quiet the noise” that Eagle View, its only
competitor, was making in the market.

Specifically, Mr. Webecke

testified that the “fear or uncertainty and doubt that the
allegations of the patent infringement were causing in the market
with [Defendants’] customers” was “noise” that Defendants
specifically attempted to “quiet . . . in the marketplace” (when
Defendants unsuccessfully sought to acquire Eagle View.)
Transcript, p. 2355:19 – 2356:24 (Webecke Testimony)]

[Trial

Eagle View’s

evidence shows that that uncertainty and doubt in the market persist
to this day [see Daga Sept. 26, 2019 Decl. ¶ 7 (“Certain of our
former customers have indicated that they would like to return to
Eagle View’s products, but are hesitant to do so because they are
unclear about what the status of the litigation is.”)].

And,

Defendants have made it known that its litigation with Eagle View is
not over.

Thus, despite the jury’s verdict, the “noise” continues.

The Court is worried that Defendants, who appear to be driven by a
specific animus toward Eagle View, would continue their aggressive

27

business strategy to a point this Court is not comfortable allowing
it to go-- where Eagle View has lost the lion’s share of its
business to Defendants, perhaps to Eagle View’s ultimate demise.
Moreover, at the permanent injunction hearing, this Court
specifically asked Defendants, “can I be faulted, because I sat
through the trial, for concluding that I don’t have the trust [that
Defendants will not take Eagle View’s customers] given the corporate
mentality this Court witnessed?

Is that a factor I can consider?”

[Oct. 8, 2019 Hearing Transcript, p. 54:5-8]

Defendants answered,

“it’s not a matter of trust . . . . [I]t’s a matter of evidence.”
[Id. at p. 54:10-13]

The Court agrees with Defendants-- it is,

indeed, a matter of evidence.

The evidence conclusively

demonstrates that Defendants have successfully pursued their
aggressive strategy to take Eagle View’s customers and erode their
market share by at least 20%, leading this Court to have no
confidence that, absent an injunction, Defendants will no longer
desire to “quiet the noise” made by Eagle View and voluntarily
abandon their Five Year Strategy.
D.

Balance of relative hardships between the parties

“[T]he balance of hardships assesses the relative effect of
granting or denying an injunction on the parties[.]

28

[T]he district

court [should] consider[] several factors in its analysis”
“includ[ing] the parties’ sizes, products, and revenue sources.”
i4i Ltd., 598 F.3d at 862.

All three of these factors weigh in

favor of finding greater hardship on Eagle View in the absence of an
injunction.
It is undisputed that Eagle View is much smaller in size than
Defendants, and the evidence at trial established that Eagle View’s
primary product and primary source of revenue is its roof reports.
[Trial Transcript, p. 705:24-706:1 (“A: . . . Eagle View is in the
business of capturing aerial imagery and then extracting roof
measurements from the imagery.

We are a data analytics company.”);

Daga Sept. 26, 2019 Decl. ¶ 4 (“roof reports are [Eagle View’s]
cornerstone product”)]

In contrast, Defendants’ infringing products

comprise 0.4% of Defendants’ total revenues during the infringement
period.

[PTX-138; PTX-940; Dkt. No. 791-1, Exs. B–E] 21

As discussed

above, Defendants deliberately leveraged their size and attendant

21

[See also Trial Transcript, p. 2170:7-15 (Webecke Testimony: “A:
We have three main segments of our business. One [is] related to
insurance, which Xactware is part of. We have another section
that is related to financial services, and then a third segment of
Verisk’s business is related to energy and specialized markets.”)]

29

ability to undercut Eagle View’s prices to cause irreparable harm to
Eagle View.

The price erosion in the market that has occurred in

the past has rendered it impossible to know exactly what price the
market would have sustained absent Defendants’ infringement.
Allowing Defendants to continue to unfairly compete in the
marketplace will only compound this problem in the future, perhaps
so much so that Eagle View will be forced out of business.
Therefore, the Court concludes that Eagle View will suffer great
hardship in the absence of an injunction.
This extreme hardship to Eagle View is not outweighed by the
hardship Defendants assert they will suffer if an injunction is
issued.

Defendants claim that they will lose sales of noninfringing

products such as “wall, door, and window features,” [Dkt. No. 825-1,
Lewis Decl. ¶ 5]; Defendants’ own evidence establishes that the
sales of these noninfringing products presently cannot be
“unbundled” from the sales of the infringing roof reports. [Id.; see
also Dkt. No. 792-1, Daga Sept. 22, 2019 Decl. ¶ 4]

To the extent

that a decrease in the sale of these complimentary noninfringing
services or products is the natural consequence of Defendants’
ceasing to sell infringing roof reports, such a result is not
inequitable.

See i4i Ltd., 598 F.3d at 863 (“Similarly irrelevant

30

are the consequences to [the infringer] of its infringement, such as
the cost of redesigning the infringing products.

As we explained in

Broadcom, neither commercial success, nor sunk development costs,
shield an infringer from injunctive relief.

[An infringer] is not

entitled to continue infringing simply because it successfully
exploited its infringement.”).
The Court holds that Eagle View has established the third eBay
factor.
E.

The public interest

“[T]he touchstone of the public interest factor is whether an
injunction, both in scope and effect, strikes a workable balance
between protecting the patentee’s rights and protecting the public
from the injunction’s adverse effects.”

i4i Ltd., 598 F.3d at 863

(Fed. Cir. 2010).
Eagle View’s proposed injunction would effectively eliminate
one of only two roof report providers in the market.
assert that this will harm consumers in two ways.

Defendants

First, Defendants

question whether Eagle View will be able to expediently satisfy the
increased demand.

Second, Defendants predict that absent any

meaningful competition in the market, Eagle View will drastically

31

increase its prices, and consumers will have no choice but to pay
the higher prices.
As to the first issue, Eagle View has put forth evidence that
since the Court issued the TRO in this case, Eagle View has kept
pace with the increased demand for roof reports, processing roof
report orders from its construction customers “well within [Eagle
View’s] advertised turnaround time (which remains under 4 hours on
average).”

[Daga Oct. 1, 2019 Decl., Docket No. 817-2, ¶ 10]

Indeed, there is no evidence before this Court that Eagle View has
ever been unable to meet customer demand; the evidence establishes
that, historically, Eagle View has met the demand-- even the high
volume demands of its largest insurer customers. [Trial Transcript,
p. 1470:3-10 (West Testimony) (“A: . . . we do a lot of work around
natural catastrophes . . . an insurance company [] could have
several thousand or tens of thousands of claims that happen at one
time so the efficiency is a big deal. Q: . . . can Eagle View meet
Yes.”); Trial Transcript, p. 1758:7-9 (Arnold Testimony: “A . . .

32

Eagle View . . . did have the capacity and does have the capacity to
make and sell those additional roof reports [sold by Defendants.”)] 22
Defendants also suggest that issuing an injunction will remove
all market pressures that currently keep consumer prices low,
thereby resulting in significantly higher prices for consumers.

The

Court is not persuaded that Eagle View is more likely than not to
greatly increase its price for roof reports if an injunction is
issued.

Eagle View has demonstrated that it highly values its

reputation in the market and its customers’ goodwill [Dkt. No. 7921, Daga Sept. 27, 2019 Decl. ¶ 3; Trial Transcript, p. 1501:241502:2 (West Testimony)], and the record establishes that its
customers are highly price sensitive. [Dkt. No. 817-1 Arnold Decl. ¶
28 (“Having been accustomed to lower priced roof reports, customers

22

Defendants raise the specter of an unprecedented spike in
customer demand precipitated by a natural disaster, and speculate
that Eagle View might not be able to meet increased demand under
such circumstances. While Defendants’ concerns in this regard
lack evidentiary support at this time, in the event that such a
disaster does occur, and if there is evidence that Eagle View
cannot keep pace with demand, Defendants may seek an appropriate
modification of the injunction.

33

will likely resent the increased prices, which will negatively
impact Eagle View’s customer relationships and reputation in the
industry.”); Trial Transcript, 3114:1 (Green Testimony: “A: . . .
customers are price sensitive.”)]

Thus, this Court finds that even

with an injunction, an incentive remains for Eagle View to refrain
from gouging its customers. 23
Moreover, in a two-player market, increased prices that may
result from enjoining the one infringing player is not a sufficient
reason to deny an injunction.

Patent litigation between brand name

and generic pharmaceutical manufacturers is instructive on this
point.

23

In that context, the Federal Circuit has observed that “the

At the permanent injunction hearing, the Court suggested that the
Court might monitor Eagle View’s post-injunction conduct. Upon
reflection, the Court concludes that the more appropriate course
is to follow what Rule 60(b)(5) contemplates: Defendants may
apply to the Court for a modification of the injunction if the
equities so warrant. See Fed. R. Civ. P. 60(b)(5) (“On motion and
just terms, the court may relieve a party . . . from a[n] . . .
order [if] applying it prospectively is no longer equitable.”);
see generally, Horne v. Flores, 557 U.S. 433, 447 (2009) (“Rule
60(b)(5) may not be used to challenge the legal conclusions on
which a prior judgment or order rests, but the Rule provides a
means by which a party can ask a court to modify or vacate a
judgment or order if a significant change either in factual
conditions or in law renders continued enforcement detrimental to
the public interest.”).

34

public interest in obtaining lower-priced pharmaceutical compounds
cannot justify entirely eliminating the exclusionary rights covered
by pharmaceutical patents.”

Mylan Institutional LLC v. Aurobindo

Pharma Ltd., 857 F.3d 858, 865 (Fed. Cir. 2017); see also, SanofiSynthelabo v. Apotex, Inc., 470 F.3d 1368, 1383–84 (Fed. Cir. 2006)
(affirming the district court’s conclusion “that the significant
public interest in encouraging investment in drug development and
protecting the exclusionary rights conveyed in valid pharmaceutical
patents tips the scales in favor of [the brand name company]” even
though the generic argued that “if the generic products were removed
from the market, consumers would be inclined not to purchase their
medication because of the accompanying price increase for the brand
name drug, leading to possible deaths.”).

The same logic applies in

this non-ANDA context where the market, like the ANDA context,
consists of only two competitors.
The Court holds that Eagle View has established the fourth and
final eBay factor.
F.

Terms of the Proposed Injunction

Although Defendants oppose the entry of any injunction, they
alternatively argue that Eagle View’s proposed injunction is

35

“overbroad and unlawful” in three ways. [Dkt. No. 825, Opposition
Brief, p. 33]
First, Defendants suggest that Eagle View’s proposed injunction
“attempts to extend the scope of the injunction far beyond” the four
product combinations adjudicated to infringe the patents at issue.
[Dkt. No. 825, Opposition Brief, p. 34]

The Court disagrees.

As

Eagle View observes, the proposed injunction tracks the jury
instructions and jury verdict about the scope of Defendants’
infringement and therefore is not overly broad.

Contrast Int’l

Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1316 (Fed. Cir. 2004)
(vacating permanent injunction that “applie[d] to many more devices
than those actually adjudicated.”). 24

24

The proposed injunction plainly does not, as Defendants argue,
enjoin Defendants from supplying aerial imagery in and of itself.
The entirety of the challenged clause prohibits Defendants from
“Supplying or causing to be supplied . . . (b) Xactimate in
combination with Property Insight or Roof Insight, or any products
made by these products, including Property Insight, Roof Insight,
Geomni Roof, and Geomni Property, and including the Mass
Production Tool, aerial imagery, and any components not more than
colorably different.” (emphasis added) Compare United
Construction Prods., Inc. v. Tile Tech, Inc., 843 F.3d 1363, 1372
(Fed. Cir. 2016) (affirming a permanent injunction the “plain
language” of which “prohibits all acts of infringement, with
specific hypothetical examples following the term ‘including.’”).

36

Second, Defendants assert that requiring Defendants to give
notice of the injunction to its customers is “inappropriate” in this
case.

While Defendants acknowledge that some courts have required

such notice, see, e.g., Crane Security Technologies, Inc. v. Rolling
Optics AB, 2018 WL 4039355 (D. Mass. 2018), they nonetheless contend
that, in this case “notice to customers would serve no purpose.”
[Dkt. No. 825, Opposition Brief, p. 34]

Eagle View, however,

counters that requiring notice to customers will help remedy the
confusion and uncertainty in the market concerning the parties’ roof
report products (“noise” according to Defendants)-- harm directly
caused by Defendants’ infringement.

The Court agrees with Eagle

View that requiring such notice to customers provides a valuable
remedy reasonably calculated to correct a portion of the harm caused
by Defendants’ infringement.

Accordingly, the Court will include

the proposed notice provision.
Third, Defendants object to Eagle View’s proposed requirement
that Defendants provide notice to Eagle View before launching what
Defendants assert will be a noninfringing alternative.

Although

tempting, the Court finds this proposed term unnecessary given the
nature of the market in this case and the parties’ ongoing
relationships with each other and their customers.

37

Eagle View will

most likely know from the market if Defendants intend to launch, or
have launched, a product which Defendants contend does not infringe
Eagle View’s patents.

At that time, Eagle View may apply to the

Court for any and all appropriate remedies including, but not
limited to, a temporary restraining order and contempt sanctions.
Moreover, the Court will require Defendants to notify their
customers of this permanent injunction ruling. The Court therefore
presumes that, in the event that Defendants offer for sale a roof
report generated from a supposedly non-infringing design-around,
Defendants’ customers will most likely carefully consider whether to
purchase such roof reports.

This is so because if Defendants’

design-around is ultimately found to infringe Eagle View’s patents,
Defendants’ customers who have purchased Defendants’ roof reports
could face liability themselves. 25

25

See generally, 35 U.S.C. § 271(b) (“Whoever actively induces
infringement of a patent shall be liable as an infringer.”); 35
U.S.C. § 271(g) (“Whoever . . . uses within the United States a
product which is made by a process patented in the United States
shall be liable as an infringer[.])”; see also, Permanent
Injunction Order accompanying this Opinion (permanently
restraining and enjoining, among other people, “those persons in
active concert or participation with [Defendants] who receive
actual notice of the [permanent injunction] order.”).

38

IV.

CONCLUSION
For the foregoing reasons, the Court will grant, in part, and

deny, in part, Eagle View’s Motion for a Permanent Injunction as
specifically set forth in the accompanying Order issued on this
date.

Dated: October 18, 2019

__ s/ Renée Marie Bumb _____
RENÉE MARIE BUMB
UNITED STATES DISTRICT JUDGE

39