EAGLE VIEW TECHNOLOGIES, INC. et al v. XACTWARE SOLUTIONS, INC. et al
OPINION. Signed by Judge Renee Marie Bumb on 2/16/2021. (dmr)
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[Docket No. 865]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
EAGLEVIEW TECHNOLOGIES, INC., et )
XACTWARE SOLUTIONS, INC., et
WALSH PIZZI O’REILLY FALANGA LLP
By: Liza M. Walsh, Esq.
Hector D. Ruiz, Esq.
Three Gateway Center
100 Mulberry Street, 15th Floor
Newark, New Jersey 07102
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
Civil No.: 1:15-cv-07025
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Patricia Carson, Esq.
Leslie M. Schmidt, Esq.
601 Lexington Avenue
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 F. Foley, Esq.
Thomas R. Fulford, Esq.
Wyley S. Proctor, Esq.
265 Franklin Street
Boston, Massachusetts 02110
GIBSON DUNN & CRUTCHER LLP
By: Mark A. Perry, Esq.
1050 Connecticut Avenue N.W.
Washington, District of Columbia 20036
Counsel for Defendants
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BUMB, UNITED STATES DISTRICT JUDGE:
Before the Court is Plaintiff’s (“EagleView” or
“Plaintiff”) Motion for Enhanced Damages under 35 U.S.C. § 284,
Attorneys’ Fees and Costs under 35 U.S.C. § 285, Pre- and PostJudgment Interest, Accounting, and Taxable Costs. [Docket No.
865]. For the reasons stated herein, the Court will grant, in
part, and deny, in part, the Motion. Specifically, the Court
will award Enhanced Damages to the maximum allowable extent,
award reasonable Attorneys’ Fees for a specified period, award
Pre- and Post-Judgment Interest as described herein, and refer
the Taxable Costs to the Clerk of Court. The Court will deny
Plaintiff’s request for an accounting of infringing sales.
On September 25, 2019, after a two-week trial, a jury found
that Defendants Verisk Analytics, Inc. (“Verisk”) and Xactware
Solutions, Inc. (“Xactware”) (collectively “Defendants”)
infringed on five of Plaintiff EagleView’s patents— U.S. Patent
Nos. 8,078,436 (the “’436 patent”), 8,170,840 (the “’840
patent”), 9,129,376 (the “’376 patent”), 8,825,454 (the “’454
patent”), and 8,818,770 (the “’770 patent”). [Docket. No. 796].
The jury awarded EagleView $125 million in compensatory damages
and found that Defendants’ infringement was willful. The Court
then enjoined Defendants from selling its infringing products.
[See Docket Nos. 800 and 842].
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Thereafter, Defendants filed a Motion for Judgment as a
Matter of Law and For a New Trial. [Docket No. 863]. In an
Opinion and Order dated September 9, 2019, the Court denied
Defendants’ Motion for a New Trial, upheld the jury’s finding of
willfulness, and allowed judgment on the verdict pursuant to
Fed. R. Civ. P. 50(b)(1). [See Docket Nos. 901 & 902]. The Court
now turns to the within Motion.
A. 35 U.S.C. § 284 – Enhanced Damages
EagleView first moves the Court to treble the jury’s
damages under 35 U.S.C. § 284 because of Defendants’ egregious
misconduct and deliberate strategy to harm its business. For the
reasons that follow, the Court will treble the jury’s award.
Section 284 provides that the Court “may increase the damages up
to three times the amount found or assessed.” 35 U.S.C. § 284.
Enhanced damages are “designed as a ‘punitive’ or ‘vindictive’
sanction for egregious infringement behavior.” Halo Elecs., Inc.
v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1932 (2016). The Court
should assess enhanced damages only if the infringer’s actions
were “willful, wanton, malicious, bad-faith, deliberate,
consciously wrongful, flagrant, or— indeed— characteristic of a
pirate.” Id. This assessment is to be made on a preponderance of
the evidence standard. Id. at 1934.
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A finding of willfulness is a significant factor in this
analysis. The Federal Circuit has held both that willfulness
“is, without doubt, sufficient . . . to increase a compensatory
damages award,” Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 (Fed.
Cir. 1996) and that “[a] finding of willful infringement is a
prerequisite to the award of enhanced damages.” i4i Ltd. P’ship
v. Microsoft Corp., 598 F.3d 831, 858 (Fed. Cir. 2010), aff’d,
564 U.S. 91, 131 (2011). Here, the Court has already affirmed
the jury’s willfulness finding, [see Docket Nos. 901 & 902], and
the Court will rely on that finding as one of several factors in
1. The Read Factors
In Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir.
1992), the Federal Circuit established a list of factors for
district courts to evaluate when considering whether an
infringer’s behavior warranted enhanced damages. Although Read
was overruled in Halo, the Read factors still serve as “useful
guideposts” in the § 284 analysis. See, e.g., Apple Inc. v.
Samsung Elecs. Co., 258 F. Supp. 3d 1013, 1030 (N.D. Cal. 2017).
As such, the Court uses Read as a tool in reviewing Defendants’
conduct. Those Read factors are: (1) whether the infringer
deliberately copied the ideas or design of another; (2) whether
the infringer, when it knew of the other’s patent protection,
investigated the scope of the patent and formed a good-faith
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belief that it was invalid or that it was not infringed; (3) the
infringer’s behavior as a party to the litigation; (4)
defendant’s size and financial condition; (5) closeness of the
case; (6) duration of defendant’s misconduct; (7) remedial
action by the defendant; (8) defendant’s motivation to harm, and
(9) whether defendant attempted to conceal its misconduct. 970
F.2d at 827.
The first Read factor concerns whether Defendants
deliberately copied Plaintiff’s design. Here, the evidence
supports a conclusion that they did. As the Court noted at
trial, “the very unique relationship between the parties offered
fertile opportunity and grounds for Xactware to steal the
patent[ed] technology.” [Trial Tr. 1001:17-211]. Defendants now
contend that this “opportunity” cannot form the basis of
enhanced damages, because opportunity alone is insufficient to
establish “deliberate copying.” On this narrow point, the Court
agrees. But Defendants mistakenly contend that this fact ends
As noted above, “a party seeking enhanced damages under §
284 bears the burden of proof by a preponderance of the
evidence.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1339 (Fed.
“Tr.” refers to the trial transcript from September 5, 2019
to September 25, 2019.
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Cir. 2016). Plaintiff meets this burden when combining evidence
of Defendants’ “opportunity” with other facts. For instance,
Xactware’s Vice President Jeff Taylor— who did not testify at
trial— toured Plaintiff’s facilities as early as 2009,
acknowledged that he knew how Plaintiff’s technology worked, and
noted that Defendants ultimately created products nearly
identical to Plaintiff’s. [See PTX-6152]. The trial evidence
plainly showed that early in 2008, when Defendants started to
hear of EagleView’s products, they saw EagleView as a real
threat to their business. Indeed, Defendants admitted at that
time that they had two choices: either “adopt” EagleView’s
technology for themselves or work with EagleView. [PTX-269.003]
(“He [a long time customer] tells me that the EagleView system
is working very well and they are finding it to be a desirable
service, particularly on complex roofs ... He felt the accuracy
was impressive . . . He said at $50 per roof, he will use them
without question if the roof has any degree of complexity . . .
this service has the potential to displace a high number of
Xactware estimates . . . I guess this is a confirmation that we
should be working to either adopt it ourselves or work with
EagleView.”} EagleView presented evidence of what “adopting”
“PTX” and “DTX” refer to Plaintiff’s and Defendants’ trial
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EagleView’s technology meant3: when Taylor toured EagleView’s
business, he “took a few pictures of one of the technicians and
over the shoulder of them ...working with the software to
build a house model.” [Trial Tr. 606:20-607:54].
EagleView also demonstrated at trial that Taylor, along
with Jeff Lewis and Brad Childs, were responsible for overseeing
the development of Defendants’ products. And, as the evidence
showed, Defendants’ Aerial Sketch v.2, Roof In Sight, and
Property In Sight were “very similar and pretty much identical
in most cases.” [Trial Tr. 795:18-796:2]. Whether this
conclusively proves “deliberate copying,” as Defendants urge, is
not the standard; the Court is satisfied that these facts meet
Plaintiff’s preponderance of the evidence burden as to this
factor. Therefore, this factor favors enhancement.
EagleView also presented evidence of what “working with”
meant. The parties attempted to do business together and entered
into a merger agreement. But, in 2014, the FTC blocked the
merger on competitive grounds. [See Trial Tr. 2376:13-25] (“But
ultimately the Federal Government decided that they would block
the merger . . . on competitive grounds. . . they wanted Verisk
and Pictomertry and EagleView to compete.”)
Christopher Pershing testified that, the day after Taylor’s
tour of the facilities, he e-mailed Taylor to ask that Taylor
not share the photos he took with anyone outside of Xactware.
[Trial Tr. 608: 17-24]. In response, Taylor said that he would
“destroy any picture that shows your machines as [he] was only
capturing memories of the trip.” [Trial Tr. 609: 11-16].
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The second Read factor asks whether Defendants, when they
knew of Plaintiff’s patent, investigated the scope of that
patent, and formed a good-faith belief that Plaintiff’s patent
was invalid or that Defendants had not infringed. The Court
finds that they did not. Defendants’ argument on this point is
largely just that they sought the advice of an attorney who
informed them that their products likely did not infringe on
Plaintiff’s patents. [Docket No. 870, at 19-20].
The Court, however, is unable to evaluate the scope of that
defense, or more precisely, Defendants’ bald statement.
Defendants contend only that after Plaintiff’s patent issued,
they “formulated an immediate strategy [which] included seeking
legal advice.” [Docket No. 870, at 20]. But Defendants have not
disclosed those communications, nor have they otherwise
substantiated their purported good-faith belief that they
somehow did not infringe.
Defendants’ argument relies on certain e-mail
communications. But these e-mails are unhelpful. One such e-mail
chain is a March 8, 2012 discussion between Edmund Webecke (an
Xactware Vice President) and Loveland (the Xactware President
and CEO). In this e-mail, Webecke tells Loveland about a
discussion he had with a Travelers representative. The
representative was concerned about a conversation he had with
EagleView, in which EagleView told him that it had a patent on
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roof measurements and that Aerial Sketch is infringing. Webecke
I reassured [the representative] that we
reviewed the EagleView patent . . . and do not
feel we are infringing. Also the patent may be
invalid due to prior art . . . . I have also
asked IP Counsel [redacted].
[DTX-4795] (emphasis added). This e-mail, without further
elaboration, is vague and says nothing of what was asked of
Defendants’ outside IP counsel, or whether legal advice was
rendered. Defendants also rely on an April 6, 2012, e-mail. [See
DTX-478]. In this e-mail chain, Loveland wrote:
the reason Chris [CEO of EagleView] requested
this call to me [Loveland} was to inform me that
their attorney did a specific review of Aerial
Sketch as it relates to the EagleView patents.
Chris wanted to inform me that their attorney
believes that Aerial Sketch does indeed infringe
on their patents and that as a “business partner”
he wanted to pass the news along to me. I let
him know that I was perplexed as to the timing
of this information . . . . I also let him know
that we have also had our attorneys review their
patent and Aerial Sketch that we do not believe
we infringe on their patent. In addition, I
informed him that we have an incredibly strong
prior art argument. Sketch was invented back in
1999 and for nearly a decade now we have had
underlay/overlay and import of satellite and
aerial imagery capabilities. He conceded that
even though they tried to a thorough review of
prior art in their patent issuance, there
certainly may have been other prior art out there
that they missed in the process. He seemed to
DTX-479 is Exhibit 2 to the Christie Declaration [Docket
No. 870-2, at 17].
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quickly back away from the subject when I made
these points even though he left it as an open
issue. We both agreed to have an open dialogue
between the two of us on this subject in the
[DTX-478] (emphasis added). This e-mail likewise is not as
compelling as Defendants make it out to be. Clearly, there was a
question of infringement that lingered in Defendants’ minds.
Defendants prevented EagleView, throughout the course of
this case, from probing the good-faith reliance of counsel, and
Defendants have similarly prevented the Court from doing the
same now. The attorney-client privilege, however, cannot be used
as a shield and a sword to the detriment of another party. See
Supernus Pharm., Inc. v. TWi Pharm., Inc., 265 F. Supp. 3d 490,
517 (D.N.J. 2017), aff’d, 747 F. App’x 852 (Fed. Cir. 2018)
(“The mere involvement of counsel . . . does not permit
[Defendant] to invoke the privilege as both a sword and a
Perhaps most instructive, however, is Defendants’ own
internal assessment of the strength of EagleView’s patents which
sheds some light on this issue. On May 9, 2012, about one month
after the above e-mail and in a document entitled “Opportunity
Assessment” made in connection with Defendants’ offer to
purchase EagleView [Trial Tr. at 2390:19-23], Defendants
analyzed the pros and cons of acquiring EagleView:
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In our disciplined approach to acquisition . . .
. . Instead of acquiring EagleView, Verisk could
choose to develop similar solutions internally
and compete with [EagleView] . . . such
development . . . would require overcoming
[EagleView’s] IP protection and may involve
patent related litigation.
[PTX-623, at 10] (emphasis added). By their assessment, then,
Defendants appeared less than confident that they did not
infringe EagleView’s patents.
Moreover, Defendants offer no evidence showing that they
actually investigated whether they were infringing EagleView’s
patents or even instructed their employees to avoid infringing
EagleView’s patents. The best that Defendants can argue is that
investigating patents was outside the scope of the employees’
responsibilities— the employees referenced by EagleView. [Docket
No. 870, at 20-21]. Yet, the record is devoid of any evidence
that Defendants had someone investigate EagleView’s patents, a
fact that also weighs in favor of enhanced damages.
The third Read factor concerns the infringers’ behavior as
a party to the litigation. Indeed, the Court’s analysis of this
factor overlaps significantly with its exceptionality analysis
under § 285 below. As explained more thoroughly in that section
of this Opinion, [infra at 36], Defendants repeatedly acted in a
manner that ignored the weaknesses of their own arguments,
increased Plaintiff’s costs, and prolonged the litigation.
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Accordingly, the third Read factor significantly favors enhanced
The fourth Read factor asks the Court to evaluate
Defendants’ size and financial condition. Defendants challenge
this factor as “violat[ing] the Due Process and Equal Protection
Clauses to the United States Constitution, which ensure that all
parties are entitled to the same treatment under the law.”
[Docket No. 870, at 23]. The Court disagrees with this argument,
and notes that Defendants’ appear to misunderstand the factor. A
defendant’s financial condition “typically is used as a reason
not to grant enhanced damages to the fullest extent.” Power
Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 762
F. Supp. 2d 710, 722 (D. Del. 2011) (emphasis in original),
vacated on other grounds, 711 F.3d 1348 (Fed. Cir. 2013).
Indeed, courts “look at the financial condition of a defendant
to assess the degree to which trebling damages would severely
impair the defendant's ability to function[,]” id., not to
penalize a defendant for their financial success. Plaintiff’s
argument is only that Defendants could financially withstand
enhanced damages and there is no evidence before the Court to
dispute that proposition.
In addition to their constitutional argument, Defendants
also contend that their size and financial condition must be
considered relative to the Plaintiff, and that the Court should
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not consider the size or financial strength of Xactware’s parent
company in this analysis. The Court agrees with Defendants that
their size and financial condition should be considered relative
to EagleView but disagrees that it would be inappropriate to
similarly evaluate parent companies in this analysis. In fact,
Defendants cite cases for this position that undermine their own
argument. For example, Defendants rely on Acantha LLC v. DePuy
Synthes Sales Inc., 406 F. Supp. 3d 742 (E.D. Wis. 2019) for the
position district courts should analyze a defendant’s financial
condition relative to the plaintiff. 406 F. Supp. 3d at 760. But
two sentences later, the Court concludes that “Defendants'
parent company is Johnson & Johnson and Defendants have the
ability to pay enhanced damages. Accordingly, this factor weighs
in favor of enhanced damages.” Id. So, the Court will consider
the financial condition of Xactware’s parent company, Verisk, in
this analysis6. Having reviewed the parties’ arguments, the
Court finds no reason to refrain from imposing enhanced damages
on Defendants due to their financial condition7.
Despite Defendants’ arguments to the contrary, Xactware’s
relationship with Verisk is substantially dissimilar from
Plaintiff’s relationship with Vista. Xactware is a wholly-owned
subsidiary of Verisk, while Vista is not a parent company to
EagleView. In addition, Verisk is a defendant in this action.
In any event, the Court finds no reason for its conclusion
to change even with Verisk excluded from this analysis.
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The fifth Read factor concerns how “close” the case was.
Like the above, this factor is also relevant in the Court’s
exceptionality discussion. [See infra at 29]. This case was not
close. After a two-week trial, the jury reached a verdict in
about two hours. Plaintiff won every significant issue at trial
as well. Other courts have assessed enhanced damages, in part,
because of how quickly the jury reached their verdict. See e.g.,
Chamberlain Grp., Inc. v. Techtronic Indus. Co. Ltd., 315 F.
Supp. 3d 977, 1014 (N.D. Ill. 2018) (“This case was not close.
[Defendant] lost on every issue at trial after less than two
hours of jury deliberation. . . . This factor weighs in favor of
enhanced damages”). Those same considerations are relevant here.
Defendants speculate that the jury’s quick deliberation
occurred only because the Court erroneously precluded them from
presenting their non-infringement expert and the admissions
contained in the Merger Agreements. Their disagreement with the
Court’s rulings, however, does not mean this was a close case.
Moreover, Defendants’ view that they “succeeded in knocking
out the great majority of EagleView’s case” is spin. [Docket No.
870, at 38]. As set forth below, the record demonstrates that
the Court, not Defendants, was the impetus for the streamlining
of the case. Xactware and Verisk seemingly believe they deserve
all the credit due to their filing of inter partes review
applications that convinced EagleView that they had the better
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of the invalidity arguments. With the exception of the 152
Patent, [infra at 32], that is not a fair reflection of the
record. [See generally Docket No. 151, at 9-18]. What the record
actually reflects is that time and time again, the case’s
Magistrate Judge, the Honorable Joel Schneider, directed
EagleView to reduce its claims to a more manageable number which
it eventually did. [See discussion infra at 50]; [see, e.g.,
Docket No. 143, at 7]. In any event, although the reduction in
asserted claims may bear some relevance on other factors, it
does little to rebut the evidence that this was a close case.
The Court finds that this factor favors enhanced damages.
The sixth Read factor asks the Court to consider the
duration of Defendants’ misconduct. EagleView contends that this
factor favors enhancement because Defendants continued to
infringe from the time they received a notice of infringement in
April 20128, until the Court enjoined Defendants post-verdict.
Defendants respond that they should not be penalized for their
continued infringement during trial because they maintained a
There can be no fair debate that Xactware and Verisk
learned of their infringement by this time. The April 6, 2012,
e-mail, [DTX-468] as well as Webecke’s testimony confirms this.
[See Trial Tr. 2357-58]. Other than the bald statement of
Webecke and Defendants’ misuse of the Merger Agreements, there
was no evidence that Plaintiff advised Defendants that they did
not infringe. Defendants’ characterization that they were
“repeatedly told [of non-infringement], [Docket No. 870, at 27],
is just wrong.
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good-faith belief of non-infringement and were not restricted
from doing so by a preliminary injunction.
As Plaintiff contends in its reply brief [Docket No. 877,
at 15], district courts have routinely rejected Defendants’
argument. Indeed, the courts in many of these cases imposed
enhanced damages, in part, because defendants infringed for
years, despite maintaining that their products did not infringe
and despite the absence of a preliminary injunction. See, e.g.,
Milwaukee Elec. Tool Corp. v. Snap-On Inc., 288 F. Supp. 3d 872,
903 (E.D. Wis. 2017) (“Moreover, the Court rejects [Defendant’s]
assertion that its period of infringement is ‘zero’ simply
because it thinks its actions were non-infringing.”); Izzo Golf
Inc. v. King Par Golf Inc., 2019 WL 4023562, at *7 (W.D.N.Y.
Aug. 27, 2019). Moreover, this factor would be significantly
weakened if it favored enhancement only when an infringer
violated a preliminary injunction or continued to infringe while
acknowledging the illegality of its actions. The Court has other
methods of addressing violations of injunctions. Importantly, as
discussed more fully above, Defendants press the good-faith
defense but never fill in the lacunae.
Defendants also contend that Read factor No. 6 considers
only “‘whether the infringer continued to infringe after a
judicial finding on infringement’— not ‘the entire duration of
the infringement.’” [Docket No. 870, at 26]. Although a handful
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of district courts have interpreted the sixth Read factor in
this narrow manner, see e.g., Harris Corp. v. Fed. Express
Corp., No. 6:07-cv-1819-Orl-28KRS, 2011 WL 13141674, at *7 (M.D.
Fla. Feb. 28, 2011), this interpretation remains a minority
As EagleView correctly identified, Defendants routinely
rely on caselaw in other portions of their brief that rejects
this minority view of the sixth Read factor. For example,
Defendants cite Nox Med. Ehf v. Natus Neurology Inc., No. 1:15CV-00709-RGA, 2018 WL 6427686(D. Del. Dec. 7, 2018), to support
their arguments for Read factor No. 8. [See Docket No. 870, at
28]. But when considering Read factor No. 6, the Nox Med. court
held that the sixth Read factor favored enhancement because the
infringer “willfully infringed the [patent] for three years,
starting on the date of its issuance. . . . Three years is an
objectively lengthy time to knowingly infringe a valid patent.”
Nox Med. Ehf, 2018 WL 6427686 at *4. Similarly, Defendants argue
that this Court should adopt the interpretation of the fourth
Read factor as used in Canon, Inc. v. Color Imaging, Inc., 292
F. Supp. 3d 1357 (N.D. Ga. 2018). But when addressing Read
factor No. 6, that Court considered the infringer’s conduct for
the “duration of infringement when the defendant had knowledge
of the patent.” Canon, 292 F. Supp. 3d at 1367.
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Although Defendants are correct that a handful of district
courts have narrowly applied the sixth Read factor, their own
brief reveals just how infrequently that occurs. Accordingly,
the Court will interpret Read factor No. 6 consistently with the
vast majority of the cases that Defendants cite, and not limit
its review of Defendants’ misconduct to the post-judgment
period. In sum, this factor favors enhancement.
The seventh Read factor concerns whether Defendants took
remedial action. Defendants argue that they were under no
obligation to take remedial action until after the jury verdict
because they maintained a subjective, good-faith belief that
their actions were non-infringing. But the Court rejects this
argument. As other courts have explained, this factor concerns
“whether conduct during the pendency of the suit evinces an
unrepentant defendant.” Acantha, 406 F. Supp. 3d at 761;
Creative Internet Advert. Corp. v. Yahoo! Inc., 689 F. Supp. 2d
858, 869 (E.D. Tex. 2010) (“This factor looks to whether the
defendant ceased the sale of the infringing product during the
pendency of the litigation.”) Under that standard, Defendants
make no arguments, and the Court finds no persuasive evidence,
of any attempts to take remedial action. Defendants continued to
infringe, seemingly took no efforts to design around the patent,
and kept their products on the market until the very end.
Indeed, by their very own strategy developed at the time this
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lawsuit was filed in September 2015, Defendants set out to
“erode” EagleView’s market share “right now.” [See PTX-530, at
14] (“We need to erode their market share by selling Roof
InSight right now . . . and eventually build the database and
the Property InSight vision.”).
Defendants object to any suggestion that their real-world
competition on price, service, and other factors was unlawful.
On that fine point they are correct. But lawful competition is a
far cry from attempting to drive a competitor out of business
through infringement. Thus, this factor favors enhancement.
The eighth Read factor asks whether the Defendants were
motivated to harm Plaintiff. This action is distinct from
“advancing its own interests,” and requires “direct motivation
on the part of the infringer to harm the patent holder.” Canon,
292 F. Supp. 3d at 1368. Defendants argue that they competed
with Plaintiff in a small market, and that their competitive
tactics did not amount to harm. But the Court has already noted
its view that Defendants “appear to be driven by a specific
animus toward EagleView” [Docket No. 841, at 27]. Sometimes
words are incapable of capturing a record. This case is one of
those times. The animosity between the parties— both as business
partners and as business competitors— radiated the courtroom.
Thus, the notion that “infringement by a direct competitor in [a
small] market mitigates in favor of enhanced damages”,
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TruePosition Inc. v. Andrew Corp., 611 F. Supp. 2d 400, 412 (D.
Del. 2009), aff’d, 389 F. App’x 1000 (Fed. Cir. 2010), is more
compelling here. Additionally, courts are even more willing to
find that this factor should enhance damages when “the evidence
supports the conclusion that [the infringer] preferred taking
the risk of infringement over designing a non-infringing
device.” Polara Eng’g, Inc. v. Campbell Co., 237 F. Supp. 3d
956, 994 (C.D. Cal. 2017), aff’d in part, vacated in part on
other grounds, Polara Eng’g Inc v. Campbell Co., 894 F.3d 1339
(Fed. Cir. 2018). Given Defendants’ arguments that it was under
no obligation to change its infringing behavior until the
permanent injunction issued, the Court finds that Defendants
“preferred taking the risk of infringement,” in a small market,
and thus, this factor favors enhancement.
The final Read factor concerns whether Defendants attempted
to conceal their misconduct. Plaintiff argues that they did,
largely by misleading customers about their infringement, by
creating “uncertainty,” “confusion,” and “doubt in the market,”
and ultimately hoping to take EagleView’s customers. Defendants
respond that their products were “on public display,” so nothing
was concealed. They also reject Plaintiff’s argument about
misleading customers, and instead contend that they released a
truthful letter [PTX-621] and “cannot be faulted (let alone
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 22 of 64 PageID: 54757
punished) for maintaining their innocence.” [Docket No. 870, at
The Court finds that this factor favors enhancement, albeit
only slightly. As Defendants note, the litigation misconduct
that Plaintiff has identified is more appropriately considered
under other Read factors— namely factors 3 and 8. Nevertheless,
Plaintiff is correct that the infringing Mass Production Tool
was not always public. The Court similarly finds that some of
Defendants’ discovery strategies evinced an effort to withhold
relevant, discoverable information— information that later
revealed, in part, the scope of Defendants’ infringement [see
Trial Tr. 1302:10-1304:2]— rather than operate in good-faith.
For example, the record demonstrates that Defendants attempted
to obscure, rather than identify, the Mass Production Tool or
its related software. EagleView sets forth the efforts it took
to compel Defendants to produce the full database. [See Docket
No. 866, at 40-41]. Moreover, as mentioned above, throughout
discovery, Defendants invoked the attorney-client privilege to
avoid answering questions about their allegedly infringing
activities. While the assertion of privilege is customarily
proper, what sets Defendants’ behavior apart is their sword and
shield approach to the attorney-client privilege. The Court will
not rehash years’ worth of discovery disputes here, particularly
given the overwhelming strength of Plaintiff’s other Read factor
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arguments, but Plaintiff has clearly established some showing of
2. Additional Factors
The Court is also mindful that factors not contemplated in
Read were present here. As stated in a previous opinion, Plaintiff
“has also proven that it has lost highly valuable customers to
Defendants because of Defendants’ ability to undercut EagleView’s
price.” [Docket No. 14] (citing Trial Tr. 1504:17-18). The Court
Defendants intended to aggressively compete, head-to-head, with
customers and decreasing EagleView’s market share.” [Id.] In
short, “the record evidence supports a finding that Defendants
deliberately set out to, and did cause, irreparable harm to
EagleView.” [Id. at 6]. This “egregious infringement behavior”
further establishes the need for enhanced damages as a sufficient
punitive measure. See Halo, 136 S. Ct. at 1932.
3. Amount of Damages
Finally, Defendants argue that enhancement, and most
certainly a 3x enhancement, is unwarranted. The Court disagrees.
When the Court concludes that enhanced damages are warranted, it
“may increase the damages up to three times the amount found or
assessed.” 35 U.S.C. § 284. District Courts “enjoy discretion in
deciding whether to award enhanced damages, and in what amount.”
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 24 of 64 PageID: 54759
Halo, 136 S. Ct. at 1932. In determining the appropriate
multiplier, the Court must “take into account the particular
circumstances” of the case. Id. at 1933.
Defendants contend that a significant enhancement
multiplier is unwarranted because Plaintiff’s “$125 million
verdict is already more than twice Defendants’ total revenues
($50 million) from the accused products [and] there is no
plausible basis to infer that [Plaintiff] ever could have made
$375 million off roof reports that Defendants sold for only $50
million.” [Docket No. 870, at 43]. But § 284 is not a
compensatory statute. Instead, as noted above, enhanced damages
under § 284 are a punitive sanction for egregious infringement
behavior. Halo, 136 S. Ct. at 1932.
Given the totality of the circumstances and a review of the
Read factors9, the Court enhances damages to the maximum extent
allowable. The Court is of course mindful of the damages in this
See Imperium IP Holdings (Cayman) Ltd. v. Samsung Elecs.
Co., 203 F. Supp. 3d 755, 764 (E.D. Tex. 2016) (“In view of
evidence of Defendants’ conduct at the time of accused
infringement and after reviewing the Read factors, the Court
finds that enhancement is warranted. . . . The Court enhances
damages to the maximum extent allowable under § 284 given the
totality of the circumstances.”); Centripetal Networks, Inc. v.
Cisco Sys., Inc., No. 2:18CV94, 2020 WL 5887916, at *67 (E.D.
Va. Oct. 5, 2020) (“The Court will use the Read factors to aid
its analysis of whether infringement of the patents was willful,
and to what degree enhanced damages should be assessed under the
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action, but its analysis is largely guided by the scope and
severity of Defendants’ misconduct. Thus, the Court finds that
all the Read factors, as well as other considerations, favor
enhancement, and treble damages will be awarded10.
B. 35 U.S.C. § 285 – Exceptional Case Fees
Next, EagleView requests that the Court treat this case as
“exceptional,” entitling it to reasonable attorneys’ fees
because of the unreasonable manner in which the Defendants
litigated this case. For the reasons that follow, this Court
will award fees, in part, incurred from the preparation of the
Joint Final Pretrial Order on May 30, 2019 [See Docket No. 669]
through the end of trial11. The parties need no reminding that
the Defendants themselves described the trial as Alice’s journey
through Wonderland. It was the Defendants, however, who chose to
go down the rabbit hole, taking EagleView and the Court with
them. As noted earlier, sometimes words are hard to capture what
really happened inside the four walls of the courtroom. In its
Defendants’ claim that treble damages are impermissibly
punitive and unconstitutional under the Excessive Fines and Due
Process Clause is without merit. See Browning-Ferris Indus. of
Vermont, Inc. v. Kelco Disposal, Inc., 492 U.S. 257, 260, 268
(1989) (“We therefore hold, on the basis of the history and
purpose of the Eighth Amendment, that its Excessive Fines Clause
does not apply to awards of punitive damages in cases between
private parties. . . . the Excessive Fines Clause was intended
to limit only those fines directly imposed by, and payable to,
the government.”) (emphasis added).
This includes the filing of motions in limine.
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earlier Opinion, this Court attempted to describe an
extraordinary trial in ordinary, and not-so-ordinary, words. As
the Court attempted to make clear then, and does so here, it was
a challenge to prevent the jury from hearing Defendants’
impermissible evidence, either directly or in the form of
innuendo and inference, and the Court worked overtime to prevent
a mistrial. This regularly occurred despite the Court’s repeated
admonitions. Thus, this case most definitely “stands out” for
the “unreasonable manner in which [it was] litigated.” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554
(2014). And although the discovery phase of the litigation–
where Magistrate Judge Schneider also worked overtime- was
unnecessarily litigious and nasty, to say the least, the Court
is not prepared to rule that Defendants bear all the blame.
Sure, there were times during the pretrial phase where the
conduct of Defendants stands out as unreasonable- some are
mentioned below- but in the Court’s final analysis with respect
to the pretrial phase, both parties are responsible for the
unnecessary length, cost, and burden of the pretrial
proceedings, such that neither party’s actions stand-out from
the other’s as “exceptional.”
Pursuant to 35 U.S.C. § 285, “[t]he court in exceptional
cases may award reasonable attorney fees to the prevailing
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party.” 35 U.S.C. § 285. Whether a case is exceptional is to be
determined on a case-by-case basis, considering the totality of
the circumstances. Octane Fitness, 572 U.S. at 554. There is “no
precise rule or formula for making” a determination as to
whether a case is exceptional. Biax Corp. v. Nvidia Corp., 626
Fed. App’x 968, 970-71 (Fed. Cir. 2015) (citing Octane Fitness,
572 U.S. at 554). Instead, an exceptional case is one that
“stands out from others with respect to the substantive strength
of a party's litigating position . . . or the unreasonable
manner in which the case was litigated.” Id.
The Supreme Court has cited a number of nonexclusive
factors that district courts may consider in determining whether
a case is exceptional. Those include “frivolousness, motivation,
objective unreasonableness (both in the factual and legal
components of the case), and the need in particular
circumstances to advance considerations of compensation and
deterrence.” Octane Fitness, 572 U.S. at 554 n.6. Further,
“[d]istrict courts may determine whether a case is exceptional
in case-by-case exercises of their discretion, considering the
totality of the circumstances.” Id. at 554. Because the
exceptional case designation is guided by the district court’s
“better position” to decide the issue, the finding is
committed to the sound discretion of the district court. Hishmak
Inc. v. Allcare Health Management System, Inc., 572 U.S. 559,
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 28 of 64 PageID: 54763
564 (2014). Patent litigants are required to establish their
entitlement to fees by a preponderance of the evidence. Octane
Fitness, 572 U.S. at 557-58.
Finally, in the event the court finds exceptionality, the
district court has “considerable discretion” in determining the
amount of a reasonable attorney fee award under § 285. Homeland
Housewares, LLC v. Sorensen Research & Dev. Trust, 581 F. App’x
877, 880 (Fed. Cir. 2014). In determining the amount of the
award, the court should exercise reasonable care, and the
Federal Circuit has found a line-by-line review of billing
entries to satisfy this requirement. Id.; Bywaters v. United
States, 670 F.3d 1221, 1228 (Fed. Cir. 2012) (finding that such
care includes a careful and thoughtful consideration of the
billing records). Ultimately, a district court should consider
the amount involved and the results obtained, as well as the
administrative nature of the work and the fee agreement in
determining the loadstar figure. Id.
As a preliminary matter, the Court notes that the parties
briefed this issue before the Court rendered its Opinion and
Order on, among other topics, Defendants’ challenge to the
jury’s finding of willful infringement. But the Court has since
rejected Defendants’ challenges to the jury’s willfulness
finding. [See Docket No. 901]. Thus, the Court rejects
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Defendants’ arguments against exceptionality that specifically
rely on the absence of willfulness.
a) Substantive Strength
The Court first considers the “substantive strength” of the
parties’ litigating positions in this case. This factor weighs
in favor of finding the case exceptional. As detailed below,
prior to the trial, Defendants’ numerous attempts to invalidate
the Patents before the Patent Office had failed. This should
have led Defendants to seriously question the viability of their
defenses. To be clear, the Court does not quarrel with
Defendants’ decision to file petitions for inter partes review.
They, of course, have that right. Defendants’ decisions,
however, to file repeated petitions that, in the words of the
Patent Office, “risks harassment of patent owners and
frustration of Congress’s intent” (PTX-494 at 6-7)12—
particularly given that several of these petitions were repeat
challenges— was anything but reasonable13.
The Patent Trial and Appeal Board (“P.T.A.B.”) did not make
such a finding against Xactware, but it is likely the Board
denied institution of its review because of the serial
challenges by Xactware to the same patent.
The serial nature of Defendants’ filings was the topic of
discussion with Magistrate Judge Schneider and the parties on
November 30, 2016 [Docket No. 151] As he said, “What kind of
precedent does it set if every time you lose on one of these
issues, you just file another petition with another ground and
argue to the Court that that’s a basis to stay the case? Is that
good public policy? Is that efficient judicial administration?
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Defendants filed 15 IPRs seeking to invalidate the patentsin-suit. Eight were rejected at the institution stage:
● IPR 2016-00582 challenged asserted claims of
the ‘436 Patent based on Hsieh and AppliCad;
● IPR 2016-00586 challenged all asserted claims
of the ‘840 Patent based on Hsieh, Verma, and
● IPR 2016-00587 challenged all asserted claims
of the ‘376 Patent based on Hsieh, Verma,
Aerowest, and AppliCad;
● IPR 2016-01775 challenged all asserted claims
of the ‘436 Patent based on Hsieh and
● IPR 2017-00021 challenged all asserted claims
of the ‘436 based on Avrahami, McKeown, and
● IPR 2017-00025 challenged asserted claim 12 of
the ‘770 Patent based on Avrahami, AppliCad,
● IPR 2017-00027 challenged all asserted claims
of the ‘454 Patent based on Avrahami,
AppliCad, and McKeown;
● IPR 2017-00363 challenged all asserted claims
of the ‘737 Patent based on Avrahami,
AppliCad, and McKeown.
[See Docket No. 637-1, at 89]. Three received final written
decisions rejecting Defendants’ arguments and were upheld on
Is that good practice?” [Id. at 15:9-14]. After much back and
forth it became clear that even if Defendants were successful on
the IPRs, the case would nonetheless move forward on three
patents, and the Court denied Defendants’ motion to stay
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● IPR 2016-00589 challenged claims 26-28 and 3436 of the ‘454 Patent;
● IPR 2016-00590 challenged claims 1, 10-11, 14,
and 19 of the ‘770 Patent; and
● IPR 2016-00592 challenged claims 1, 9, 10, 16,
19, 22, 25-28, 31, and 34-36 of the ‘737
[See Docket No. 637, at 1 n.1.]
An additional four IPRs addressed the ‘152, ‘732, and ‘880
patents, which were dismissed from this case before proceeding
● IPR 2016-00591 challenged claims 1, 3, 6, 810, 12-16, 19, 22, 23, and 25 of the ‘152
● IPR 2016-00593 challenged claims 12-15, 21-23,
25-27, 33-38, 44, and 45 of the ‘732 Patent.
● IPR 2016-00594 challenged claims 1-10 and 1320 of the ‘880 Patent.
● IPR 2017-00034 challenged claims 8 and 10 of
the ‘152 Patent.
The P.T.A.B. concluded that, in IPRs 2016-00593, 201600594, and 2017-00034, Defendants had not shown by a
preponderance of the evidence that the challenged claims were
unpatentable. See Xactware Solutions, Inc. v. Eagle View
Technologies, Inc., No. 2016-00593, 2017 WL 3723073 (P.T.A.B.
Aug. 28, 2017); Xactware Solutions, Inc. v. Eagle View
Technologies, Inc., No. 2016-00594, 2017 WL 3671031 (P.T.A.B.
Aug. 28, 2017); Xactware Solutions, Inc. v. Eagle View
Technologies, Inc., No. 2017-00034 (P.T.A.B. Apr. 13, 2017).
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 32 of 64 PageID: 54767
Of particular note, however, is IPR 2016-00591, in which
the P.T.A.B. found that claims 1, 3, 6, 9, 12-14, 16, 19, 22,
and 23 of the ‘152 patent were unpatentable. Xactware Solutions,
Inc. v. Eagle View Technologies, Inc., No. 2016-00591, 2017 WL
3484953 (P.T.A.B. Aug. 14, 2017). Although the Court disagrees
with Defendants' contention that the reduction in claims
throughout the litigation is due to their success in “knocking
out 147 patent claims before trial began” [Docket No. 870, at
3], the Court does acknowledge Defendants’ success before the
P.T.A.B. with respect to most claims concerning the ‘152 Patent,
which EagleView dismissed from its Complaint on August 1, 2018.
[See Docket No. 674] (“On August 1, 2018 . . . EagleView further
narrowed its infringement contentions . . . . In doing so,
EagleView confirmed that the ‘152 patent no longer would be
asserted in this case.”)
With the exception of the Noronha, Labe, and Sungevity
references, all other references (and combinations) by the
Defendants in this litigation were asserted in the IPR
proceedings. Under the lower standard of proof to invalidate the
Patent, the P.T.A.B. did not invalidate the patents-in-suit.
Yet, Defendants pressed their claims at trial facing a higher
burden– clear and convincing. Defendants offer different
explanations, such as P.T.A.B.-imposed page limitations, as to
why they filed serial applications and why they did not press
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all their invalidity defenses. Defendants also emphasize that a
failure to institute is not a finding on the merits. Although
the Court is troubled by the manner in which Defendants
proceeded before the P.T.A.B., this conduct does not warrant fee
shifting. But how the results from the P.T.A.B. affected their
litigation strategy is a different issue. When the P.T.A.B.
declined to even institute review, Defendants should have been
more critical of their own arguments and acknowledged the
weaknesses of their case. Instead, Defendants forged ahead as
though nothing happened. When the P.T.A.B. rejected Defendants’
prior art arguments, they still attempted to rehash those
rejected arguments at trial. This, in turn, increased
EagleView’s litigation costs. So, although true that Defendants
had every right to litigate their defense in this manner, they
did so at their own risk. That risk included the now-realized
possibility that the Court would award costs for using a
strategy that (1) relied on previously rejected arguments, and
(2) unnecessarily increased Plaintiff’s costs.
In addition, Defendants pursued an equitable estoppel
defense throughout the litigation. Defendants withdrew this
defense by letter in October 2019, only after the trial had
ended. [See Docket No. 835]. But the fact that Defendants even
attempted to pursue equitable estoppel at trial reflects the
weakness of their arguments.
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In August 2018, Defendants filed a Motion for Summary
Judgment of Equitable Estoppel, in which they asked the Court to
hold “that Plaintiff Eagle View Technologies, Inc.’s claims are
barred by equitable estoppel.” [Docket No. 459]. Judge Kugler,
then the presiding Judge in this matter14, denied Defendants’
motion. [See Docket No. 548]. In his opinion, Judge Kugler
explained that Plaintiff’s pre-litigation behavior did not
reflect a view that it would refrain from filing an infringement
action against Defendants and instead showed “just the
opposite.” [Docket No. 547, at 9]. The opinion continued:
[T]he Court finds defendants have not met their
burden in showing how the relatively undisputed
facts demonstrate Eagle View’s bad faith in
leading Xactware to reasonably believe it would
not sue for patent infringement. What defendants
have shown is: no dispute as to plaintiffs’
repeated notifications, albeit informal, of
defendants’ possible patent infringement; no
long term inaction on the part of Eagle View;
and no dispute that Eagle View had litigation as
a strategy to remedy a partner’s contract breach.
. . .
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.
This action was reassigned from Judge Kugler to the
undersigned in June 2019. [Docket No. 718].
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Id. at 10-11. Given this stern rebuke, the Court is perplexed by
Defendants’ apparent belief that this issue was critical to
their trial defense.
Finally, the Court must address Defendants’ attempts to use
DTX-160, a patently irrelevant and inflammatory exhibit, at
trial. DTX-160 is an excerpt from the deposition of EagleView
President Rishi Daga along with several exhibits used in that
deposition. Specifically, DTX-160 refers to portions of the
deposition where Defendants questioned Daga about an e-mail
chain in which EagleView employees commented on the Urban
Dictionary definitions of Xactware’s street address. [See Docket
No. 582-1]. Evidently, Xactware’s street address changed from
“Morning Glory” to “Morning Vista,” both of which have sexually
related definitions in Urban Dictionary. In an e-mail chain,
five EagleView employees shared news articles from the
Washington Post, Salt Lake Magazine, and MSN discussing the
street names and their Urban Dictionary entries. In addition,
DTX-160 contained a 2011 meeting invitation e-mail in which an
EagleView employee made an inappropriate comment that “we’re
like colored folk stripped down to our underwear and covered in
gasoline at a KKK rally.” [Docket No. 582-1]; [DTX-160]. This
employee was no longer employed by EagleView at the time of
trial, nor was he a witness at trial. Plaintiff filed a motion
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 36 of 64 PageID: 54771
in limine to exclude this exhibit, [Docket No. 581], which the
Court granted. [See Docket No. 754].
That Defendants’ would attempt to use this exhibit in their
case speaks more about the weakness of their positions than
anything else. The various e-mails in DTX-160 have no relevance
to a claim or defense in the case and would have unfairly
prejudiced the jury against EagleView. These e-mails may have
embarrassed, shamed, or humiliated EagleView, all while
providing no probative value. But this appears to have been
Defendants’ strategy. Their stated justifications for admitting
this exhibit lack support in the Rules of Evidence, and are more
likely pretext than good-faith argument. In either event, DTX160 was inadmissible and Defendants’ insistence that these emails were important to their defense reflects just how lacking
that defense was.
b) Litigation Misconduct
It certainly seemed that Defendants’ litigation strategy
was to delay, obfuscate, and drive-up Plaintiff’s costs. In
addition to re-litigating much of what they had lost before the
P.T.A.B., Defendants’ unsuccessfully re-litigated various
arguments at trial. Sadly, “Defendants pursued a course of
conduct that had the effect of unduly burdening the Court . . .
and prolonging the litigation. Saint-Gobain Autover USA, Inc. v.
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 37 of 64 PageID: 54772
Xinyi Glass N. Am., Inc., 707 F. Supp. 2d 737, 752 (N.D. Ohio
This Court was burdened with having to re-visit issues
previously ruled upon. For example, Defendants repeatedly tried
to advance an argument that was inconsistent with the Court’s
claim construction of the ‘840 patent’s phrase “modify a model
based on the operation of a pitch determination marker.” They
did this in their opening statement, [see, e.g., Trial Tr.
404:4-13] (telling the jury that Defendants’ use of a wireframe
does not infringe because their wireframe is not “operable to
indicate pitch” – an argument that also violated motion in
limine No. 815) and again during their questioning of EagleView’s
expert, Dr. Robert Stevenson. [Trial Tr. 1315:5-1325:22].
Defendants also tried to read a “simultaneous” display
requirement into the ‘454 patent, even though such a requirement
was rejected during claim construction. [Trial Tr. 1978:101987:1]. The Court rejected their arguments, finding that they
conflicted with Judge Kugler’s ruling. [Trial Tr. 2144:24-
Defendants’ continued position that their particular
wireframe is not a pitch determination marker because it is not
operable to indicate pitch ignores Judge Kugler’s ruling that a
wireframe may be a pitch determination marker. Defendants’
disagreement with Judge Kugler’s ruling was not a license to
violate it. To compound matters, Defendants seemed to have
changed course when they at trial “fully admit[ed] there are
even examples of wireframes in the patent that are pitch
determination markers.” [Trial Tr. 1789:21-24].
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 38 of 64 PageID: 54773
2145:19]. Moreover, Defendants tried to backdoor a construction
that Judge Kugler had rejected. Although Defendants disagreed
with the Court’s ruling, it seemed clear that what the
Defendants were trying to do, through their graphic, was to
suggest to the jury that they had no single system for measuring
roofs and generating roof reports. Thus, the Court found
Defendants had acted disingenuously and contrary to Judge
Kugler’s construction. [Trial Tr. 1776:20-1777:11].
Throughout the trial, Defendants also tried to raise
inequitable conduct claims that had been disallowed. Before
trial, on February 9, 2018, Defendants moved to add an
inequitable conduct counterclaim, claiming that EagleView
purposely excluded Dave Carlson as an inventor on all but the
‘736 Patent. [Docket Nos. 374 & 376-2]. The Court denied that
motion. [Docket No. 432]. Yet, at the motion in limine
conference, Defendants’ counsel tried unsuccessfully to re-raise
“[t]he issue about the omitted co-inventor.” [Trial Tr. 88:3-6].
Despite the Court’s clear ruling, Defendants tried again during
trial to admit deposition testimony from Dale and Chris
Thornberry that “struck [this Court] as primarily, if not all,
[about] inequitable conduct.” [Trial Tr. 2925:21-2926:7]. They
also tried to admit Mr. Carlson’s deposition testimony, even
though “the only real relevance of the Carlson testimony [was]
inventorship.” [Trial Tr. 3016:15-3017:5].
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As discussed more thoroughly above, Defendants also
attempted to re-litigate their equitable estoppel defense.
Perhaps Defendants hoped that they might get a more-favorable
reception to their equitable estoppel arguments a second time
around. [See supra at 33]. Regardless of their intent, however,
Defendants’ arguments resulted only in needlessly increased
Finally, although technically not an issue of relitigation, the record was burdened with the IPRs and the IPR
history because of Defendants’ litigation misconduct that
occurred during trial. The Court’s prior Opinion adequately
addresses this issue, and the arguments will not be revisited
here. [See Docket No. 901, at 34].
This conduct described above burdened the Court and jury,
and certainly needlessly increased Plaintiff’s fees and costs.
For these reasons, as well as the additional reasons discussed
below, this is an exceptional case in which awarding some
attorneys’ fees is appropriate.
Litigating new issues
Re-litigation of the issues, however, was not Defendants’
only mischief. Litigating issues for the first time at trial
also caused unnecessary expense and delay. As became clear,
Defendants attempted to raise new non-infringement arguments for
the first time at trial. First, in their opening statement,
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Defendants claimed that they did not infringe by using
correlation because (1) they use primitives, [Trial Tr. 399:816], and (2) because they use metadata. [Id. at 399:24-400:13].
Neither argument, however, had ever been disclosed before trial,
and the Court concluded that both defenses were unavailable.
[Trial Tr. 1806:16-23, 2203:13-24]. The Court’s frustration from
Defendants’ litigation misconduct during trial was hard to
conceal at times. In this particular instance, the Court issued
a stern warning: “All I say is if Dr. Cohen gets up and utters
anything that sounds like ‘we don’t infringe because we use roof
primitives,’ I may not hesitate to declare a mistrial.” [Trial
Second, in the middle of trial, about 36 hours before the
testimony of Webecke- Defendants’ 30(b)(6) witness- EagleView
first learned that Webecke intended to testify about the section
324 language of each of the two Merger Agreements. This language
limited the representations and warranties solely to the Merger
and not for any other purpose. [See Docket No. 901, at 55-63].
EagleView was concerned that Defendants would use this
contractual language as an admission by EagleView of noninfringement. [Trial Tr. 2156:13-20]. More specifically,
EagleView was troubled that having been precluded by the Court
from introducing the Agreements as to willfulness, Defendants
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would backdoor them to prove non-infringement. The Plaintiff had
every reason to be concerned.
When the Court pressed Defendants as to what they intended
to ask Webecke about the Agreements, the following colloquy
THE COURT: What questions do you intend to ask
the witness about the agreement?
MR. CHRISTIE: . . . We do not intend to ask him
infringement or willfulness or anything else . .
. . We are cognizant of Your Honor’s previous
ruling that we are permitted to allow this
document in evidence . . . the words speak for
[Trial Tr. 2158:7-25]. The colloquy continued later:
MR. CHRISTIE: Mr. Webecke was not a 30(b)(6)
witness as to infringement, so to the extent he
was talking about infringement, he was talking
in an individual capacity. In keeping with Your
Honor’s concerns and admonitions, we do not even
intend to ask Mr. Webecke about infringement with
regard to that language.
THE COURT: So then of what use – of what
relevance is the agreement? What would you use
MR. CHRISTIE: I’m saying that the agreement is
relevant to infringement but I’m – noninfringement, sorry, but we do not intend to
adduce any evidence of that nature from Mr.
THE COURT: So when you say that the documents
are relevant to non-infringement, what that says
to me is that you are going to show this, this
is your first exhibit that you show the jury in
your closing, that says, see, they said we don’t
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 42 of 64 PageID: 54777
MR. CHRISTIE: Well, actually it’s toward the tail
end to get to that at the end when it’s
appropriate in the chronology.
THE COURT: In your closing?
MR. CHRISTIE: Oh, I’m sorry, I was talking about
the testimony –
THE COURT: No, no, no.
MR. CHRISTIE: I’m sorry, in closing.
THE COURT: And so what I’m saying is what you’re
saying to me –
MR. CHRISTIE: Yes.
THE COURT: -- signals to me that what the
defendant[s]’ going to do in [their] closing is
this will be the first exhibit that they splash
on the screen and say see, they admit they don’t
infringe. Do you dispute that as a general
MR. CHRISTIE: As a general principle, we do hope
to use that document in closing to argue that
there is evidence of non-infringement, yes.
[Trial Tr. 2213:7-2214:18].
EagleView objected strenuously to such testimony,
contending that at no time pretrial did Defendants disclose
Webecke’s testimony, to wit, the contractual language of both
Agreements, as a basis for non-infringement. First, when Webecke
was deposed, he was asked:
Q. Where do you get the basis for the statement
that Xactware was not infringing?
A. The basis comes from a number of things that
are privileged or work product.
Q. Is there any aspect to the basis for the
statement that Xactware was not infringing?
A. The basis comes from a number of things that
are privileged or work product.
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Q. Is there any aspect to the basis that is not
privileged or work product?
A. Not that I can think of
. . .
Q. Are there any underlying fact[s] that Xactware
relies on to establish that it does not believe
it’s infringing those patents, that is not work
product or privilege at this point?
A. Not that I can think of, no.
[Trial Tr. 2153:22-2154:12].
Second, the first time that the issue of these Agreements
arose was when Defendants filed a Motion for Summary Judgment of
equitable estoppel. Prior to that, Defendants had never
disclosed their non-infringement theory to EagleView in written
interrogatories or other discovery responses. As EagleView put
MR. DE VRIES: And so we never got to question
their witnesses about it. And to the extent that
they had some belief about it that would have
been relevant to something that they could
testify about, which is something I want to come
back to, willful infringement, they clammed up,
they claimed privilege, and we couldn’t do it.
So we didn’t get to question the witness. He will
sit on the stand, say things for the first time
that we have never seen able to test and didn’t
have an opportunity to in discovery.
[Trial Tr. 2219:18-2220:1].
Of course, Defendants disagreed, contending that the
documents speak for themselves and they did not have to tell
EagleView for what purpose they would be used. When the Court
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 44 of 64 PageID: 54779
pressed Defendants as to when the documents should have been
disclosed, Defendants response was simply “this is mere
evidence.” [Trial Tr. 2220:18].
Ultimately, it became clear to the Court that Defendants
had failed to disclose in discovery that they would rely upon
the Agreements for their non-infringement defense16. It also
became clear to the Court why failure to follow the patent rules
leads to mischief. No doubt, EagleView was caught by surprise.
Had they known of Defendants’ non-infringement theory, discovery
could have and would have been conducted. Ironically, counsel
for Defendants’ response illustrated why the rules must be
followed when he suggested how each side might respond to the
MR. CHRISTIE: I presume that one thing they’re
going to say is, well, number one, Judge, because
we were going to join together, Verisk and
EagleView, they knew that we had accused them of
infringement and we didn’t want to make it
explicit in the agreement because we were going
to become one big happy family. So everyone knew
it, but for the purpose of niceties, we didn’t
Or, to your Honor’s earlier point, you know it
was a contract negotiation, and we thought it
wasn’t critical to put it in because we wanted
the money, and we thought that if we insisted
Defendants relied heavily upon the deposition testimony of
Barrow, but the Court found that such reliance was
insufficiently disclosed, and it certainly did not address the
2015 Agreement at all.
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that it go in, Verisk wouldn’t pay the money, or
various permutations on that, Judge.
. . .
I think, Judge, the document speaks for itself.
They are going to argue that the parties were
trying to join together as one unit, and they
acknowledging the fact that there was this
infringement, as they kept it out of the
agreement. And that’s fine, they can argue what
they want, we can argue what we want.
[Trial Tr. 2214:18-2215:13] (emphasis added). Yet, it was not
fine. When the Court asked whether Defendants would dispute that
this type of language is standard get-along-with-each-other
language, Defendants made it clear they would dispute why this
language was included:
THE COURT: Do you dispute that as a general
principle? Does the defendant dispute the
following proposition that the reason this
language was put into these two merger agreements
was because the parties wanted to get along and
Mr. CHRISTIE: Yes, we dispute that.
THE COURT: On what basis?
MR. CHRISTIE: On the basis that it is an executed
copy of a merger agreement between – signed by
the CEOs of the respective companies that have
various representations and warranties, and that
warranties mean something.
THE COURT: Okay.
MR. CHRISTIE: If they are inaccurate or false,
they could, and likely would result in legal
claims or refunds having to be given, which
likely would eviscerate a significant portion of
the value of the deal.
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[Trial Tr. 2215:18-2216:9].
And so, a trial within a trial, with no discovery having
been done on this issue, would have ensued. Defendants’ efforts
to sneak in a non-infringement theory that had not been
disclosed would have created confusion to say the least. The
Court saw it then, and sees it now, as an underhanded tactic by
Moreover, as the Court found, EagleView presented evidence
that the Defendants had agreed not to use the language of the
Agreements for any other purpose, i.e., a patent trial. First,
as to the 2014 Agreement, [DTX-481], the language set such
preclusion out explicitly. [See Docket No. 901, at 62-63].
Second, as to the 2015 Agreement, [DTX-483], EagleView presented
evidence that the agreement contained the same language
restricting its use for other purposes, and that in-house
counsel for Defendants had signed this agreement. This evidence
seemed to even catch Defendants’ trial counsel off-guard:
MR. DE VRIES: But, more importantly, and I do
want to correct something, your Honor, because
there is something – it’s a little bit
complicated because it came up for the first time
when they sent us an e-mail the other night, they
said Mr. Webecke is going to testify about of
the Vista agreement. And they specifically said
the Vista agreement that we produced in discovery
that’s marked attorneys-eyes-only.
They’ve never they still to this day have never
produced any discovery about that. They told us
in an e-mail from counsel he got this shortly
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after the agreement. The argument was that Verisk
was a warrant holder in EagleView, and so signed
agreement, signed on to it through a warrant
discovery about that, never had any opportunity
to question him about it.
But, what it did make us realize is this, and I
want to very much disagree when counsel said we
agree this comes in, they’ve agreed it does not
and cannot by their own admission. The disclosure
THE COURT: What am I looking at?
MR. DE VRIES: This is the disclosure schedule,
DTX-481. This is the agreement – this is the
schedule that they – in the case of the 2014
agreement [DTX-481], that’s the one that we’re
looking at here. They of course were a signatory
to that agreement. Then they took the position
two nights ago for the first time, without
providing any evidence or e-mails or anything or
our ability to depose them they say . . . got
the Vista [DTX-483]. Schedule A are disclosed
solely for the purposes of the agreement, and
this is the critical part, and shall not be used
for any purpose other than the purposes
contemplated by the agreement. So that now, by
their own admission, which we never even heard
about until 36 hours ago, they have agreed in
both the 2014 agreement and the 2015 agreement
that they will not use this for any purpose
whatsoever. I actually have right here that
signed agreement from their counsel sitting in
the back of this courtroom.
. . .
THE COURT: What are you handing up to me?
MR. DE VRIES: This is the agreement where after
they disclosed this new assertion 36 hours ago,
we went to check and see had they in fact
received this agreement, although they hadn’t
said that before, and signed on to it. And this
document that I’m holding here shows that they
did, and in fact there is an agreement called a
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warrant cash out agreement that agrees to all
the terms of this agreement including the one I
just read, which is that they shall not use this
for any other purpose. And it was signed by Mr.
Kenneth E. Thompson. And so I’m happy to and that
up to your Honor, if you’d like.
THE COURT: Do you know what – have you seen it,
MR. CHRISTIE: I have not Judge, I’ve been –
THE COURT: Have a look at it.
MR. CHRISTIE: - - told about this for the first
time now, predictably17.
MR. DE VRIES: And again, to be clear, I’ve handed
over – this is because for the first time 36
hours ago they claimed to have received this.
MR. CHRISTIE: By virtue of this agreement,
apparently we have. And counsel is unhappy that
we have received it, and is raising concerns
about that fact now.
MR. DE VRIES: We’re not unhappy about it, we
received the assertion for the first time and so
THE COURT: What am I looking at? I’m getting a
MR. DE VRIES: Yes. So if you see, there’s a first
page, your Honor, July 20, 2015, that Verisk
sends to the Continental Stock Transfer and Trust
Company and it attaches a warrant cash-out
THE COURT: Okay.
Sadly, this exchange is just one of many that further
reveals the parties’ animosity toward each other. [See supra
discussion of Read Factor 8, at 20]. Defendants suggest that
Plaintiff “predictably” withheld a document until the last
minute. But this ignores the fact that Plaintiff used this
document- a document signed by in-house counsel for Defendantsonly to rebut Defendants’ own last minute attempts to present
certain testimony through the 2015 merger documents.
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MR. DE VRIES: And this warrant cash-out agreement
relates to the –
THE COURT: Merger.
MR. DE VRIES:
THE COURT: yes.
MR. DE VRIES: And what it goes through and
explains that the – it talks about the merger on
the first part, there is an acknowledgement and
agreement that’s on the second page, and then it
warranties, and then at the very end there is a
signature from counsel for the company, by virtue
of which they have agreed to all the terms of
And so there’s two issues here, really. One is
we now know by virtue of their disclosure 36
hours ago, that they have agreed to this
provision in other of the documents we’re talking
about that says it shall not be used for any
other purpose –
THE COURT: Can you tell me what page that is in
MR. DE VRIES: Yes, it’s DTX-481, on Page 1. And
then I’ll need to ask my colleagues for the trial
exhibit number of the Vista agreement that it
also relates to, but I’ll have that momentarily.
So it’s Page 1 of both of the disclosure
schedules. And it’s DTX-483. So at D[T]X-481,
Page 1 and DTX-483, Page 1, there are agreements
in both documents in the fourth paragraph,
Subsection (a), that these documents shall not
be used for any other purpose.
And that not only is inconsistent with their
attempt to use it now, but is in addition to the
real issue here that I think, your Honor, the
substantive issue which is what is this relevant
to. It is clearly not relevant to willful
infringement, and this witness cannot say that
it is, and there won’t be a witness who will be
able to, given the way they handled the privilege
instructions on willfulness.
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 50 of 64 PageID: 54785
THE COURT: Okay.
[Trial Tr. 2222:6-2226:16]. (emphasis added).
As the Court found, since the parties had agreed that the
language could not be used for any other purpose, this should
have also put an end to the issue. That it created an
interruption in the trial and burdened the Court and increased
EagleView’s costs was unnecessary.
As stated several times, the animus between the attorneys,
clients, and witnesses oozed. A review of the record paints a
picture of parties that grew increasingly hateful of each other
once the business deal fell through. Perhaps the strongest
reflection of this hostility is Defendants’ attempt to present
the jury with two prejudicial e-mail chains from EagleView
employees. As discussed above, these e-mails contained Urban
Dictionary definitions and a former employee’s troubling
reference to the KKK. [See DTX-160]; [see also supra at 35].
These e-mails had no probative value, and while the e-mails
themselves are beyond shameful, it is regretful that a party
would contemplate making this part of the case.
The Court now turns to its decision not to award fees
incurred prior to the preparation of the Final Pretrial Order.
The Court must consider the conduct of the prevailing party too,
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and it has done so. Romag Fasteners, Inc. v. Fossil, Inc., 866
F.3d 1330, 1340 (Fed. Cir. 2017). The case began with nine
patents and 153 asserted claims, clearly an unreasonable number
by any measure. [See Docket No. 30]. That Defendants were faced
with a “daunting task” is perhaps an understatement. [See Docket
No. 79; (May 2, 2016), 8:3-10] (“Mr. Christie: Well, Judge, in
the context of what we’re dealing with, unfortunately, we are at
our wits end trying to deal with 163 separate asserted claims.
We’ve tried to pare it back and we can continue to try to pare
it back with the cooperation of plaintiffs, but it has been and
will continue to be a daunting task given that not only are we
dealing [with] 163 asserted claims but they are very detailed
and have numerous issues embedded in many of them.”)
In September 2016, Plaintiff reduced the case to seven
patents and 46 claims. [Docket No. 119]. However, Plaintiff
admitted that it never intended to try close to this number of
claims. [Docket No. 143; (November 7, 2016) 11:1-3] (“Mr. Alper:
. . . we do not intend to try 46 claims. We made a big
reduction, and we’re willing to do more, but we would like it to
be a little bit of a two-way street.”) By November 7, 2016, it
seemed that EagleView got the message to streamline the case.
[Id.] (Judge Schneider: “At present there are seven patents in
the case and 46 claims . . . . When am I going to be able to
tell Judge Kugler that you’ve reduced 46 claims to a reasonable
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 52 of 64 PageID: 54787
amount?”) [Docket No. 143, at 7]. EagleView “committed” to
reducing that number on December 9, 2016 when the Court made it
clear how it saw things: “The Court is not comfortable that
plaintiff has as of yet used its best efforts to focus the case
on what’s genuinely going to be at issue.” [Docket No. 151,
91:20-21; 97:10-12] (“We are committed to the streamlining that
your Honor has in mind, and we have been discussing these issues
… for quite awhile now.”) Then, by letter December 23, 2016,
Plaintiff further reduced the claims from 46 to 24. [See Docket
Four months later, on May 19, 2017, the parties entered
into a Joint Stipulation dismissing various claims “[i]n an
effort to streamline the proceedings and narrow the issues for
trial.” [Docket No. 239]. When this case finally proceeded to
trial, it contained six patents and 11 asserted claims. [Docket
No. 674, at 2]. Against this backdrop, discovery mischief
occurred by both sides. For example, Defendants filed a Motion
to Stay Discovery, based on their filing of a Motion to Dismiss
under Section 101. [Docket No. 107]. Although Judge Schneider
found no evidence of bad faith or sandbagging, he was “troubled
by the fact that in [his] view th[e] motion could have been
filed earlier before the parties started to engage in the
discovery process. . .” [Docket No. 151, at 43: 2-9]. On
December 7, 2016, Defendants filed another Motion to Stay, this
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 53 of 64 PageID: 54788
time based on their pending IPR reviews. Judge Schneider denied
that motion, finding that “plaintiff will suffer undue prejudice
from a stay.” [Docket No. 150, at 8]. As for Plaintiff, Judge
Schneider was very critical of its failure to comply with the
Local Patent Rules in not serving fulsome contentions required
by the Rules and not timely amending its infringement
contentions when the Court repeatedly pointed out its
deficiencies. [See Docket No. 329] (“This is a classic example
of the mischief that occurs when a party does not faithfully
follow the requirements in the Local Patent Rules . . . . the
Court is now unfortunately compelled to wade through the
parties’ mind-numbing arguments . . .”) Judge Kugler agreed.
[See Docket Nos. 429 & 430].
In the end, this Court holds that when a party files a
complaint alleging an “unreasonable and unwieldy number of
patents and asserted claims”— which are certain to be reduced by
any court— that party will face an uphill battle in convincing a
court to declare the entire case exceptional, particularly when
the unnecessary fighting is self-inflicted. Much of the fighting
here arose from EagleView’s decision to bring an unwieldy number
of claims. Judge Schneider certainly appreciated this and
understood the plight of Defendants at the outset of the case.
[Docket No. 243, at 37:22-25 to 38:1-2] (“The Court is
sympathetic to defendants’ argument about why it took time to
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 54 of 64 PageID: 54789
finally formulate their present invalidity positions. This was
occasioned in part by the fact that plaintiffs asserted an
unreasonable and unwieldly number of patents and asserted claims
in the case.”) In the Court’s final analysis, therefore, it will
not find this case to be exceptional in the pretrial phase. But
when this matter was about to be set for trial and then assigned
to this Court, Defendants seemingly seized the trial as an
opportunity for a “re-do.” As set forth above, this is the
misconduct that calls for a finding of exceptionality.
c) Jury’s Verdict
The Court is also mindful that the jury deliberated for
only two hours before reaching its verdict. Given the length of
trial, the money at stake, and the complexity of the subject
matter, Plaintiff’s success with the jury, in such a relatively
short period of time, further supports the Court’s view that
Defendants’ trial strategies were more likely governed, to a
large degree, by something other than a likelihood of success on
the merits. See Chamberlain, 315 F. Supp. 3d at 1014 (finding
that the case was exceptional, in part, because Defendants lost
on every issue at trial following two hours of jury
Finally, the Court acknowledges that its finding of
willfulness does not necessarily entitle Plaintiff to fees, nor
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 55 of 64 PageID: 54790
does it establish this case as exceptional. See Stryker Corp. v.
Zimmer, Inc., 837 F.3d 1268, 1279 (Fed. Cir. 2016) (noting that
a willfulness finding “does not necessarily” make a case
exceptional.) Nevertheless, the Court’s willfulness finding is
both a factor in the Court’s review and likely sufficient on its
own. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327,
1340 (Fed. Cir. 2004) (“[O]ur cases uniformly indicate that the
willfulness of the infringement by the accused infringer may be
a sufficient basis in a particular case for finding the case
‘exceptional’ for purposes of awarding attorney fees to the
prevailing patent owner.”) (quoting Avia Group Int’l, Inc. v.
L.A. Gear Cal., Inc., 853 F.2d 1557, 1567 (Fed. Cir. 1988)); see
also Chamberlain, 315 F. Supp. 3d at 1018, vacated on other
grounds, 935 F.3d 1341 (Fed. Cir. 2019); Rawcar Grp., LLC v.
Grace Med., Inc., No. 13 CV 1105, 2014 WL 12577590, at *3 (S.D.
Cal. Dec. 16, 2014); Comaper Corp. v. Antec, Inc., No. CV 051103, 2014 WL 12613394, at *1 (E.D. Pa. June 11, 2014). The
Court previously noted that Defendants “appear to be driven by a
specific animus toward EagleView” [Docket No. 841, at 27] and a
thorough review of this case— in which willfulness is only one
of many factors— has only strengthened that impression.
Broadly, Defendants contend that they “did what any accused
infringer would do when faced with a suit seeking in excess of a
hundred million dollars: they fought back.” [Docket No. 870, at
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44]. The issue, however, is not the fact that Defendants “fought
back” but how they chose to do so. Even before this litigation
commenced, Defendants lauded Plaintiff’s technology as
“breakthrough” technology, [see e.g., PTX-76], and clearly saw
EagleView’s technology as a threat to their business. When
Defendants’ efforts to buy its burgeoning and threatening
competitor’s business fell through in December of 2014, they
turned to infringement, as the jury found. Then, when EagleView
failed to capitulate, Defendants began an all-assault approach
In sum, the Court finds that Defendants’ litigated this
case in a manner that ignored the weaknesses of their own
positions, advanced unreasonable arguments, and forced
Plaintiffs to spend significant sums rebutting those
unreasonable positions and arguments. This conduct occurred
repeatedly, and at nearly every stage of the trial. Even within
the backdrop of contentious patent litigation, the Court is
satisfied that this case meets the exceptionality requirements.
Moreover, Defendants undertook this unreasonable approach while
willfully infringing Plaintiff’s patents. Thus, pursuant to 35
U.S.C. § 285, this is an exceptional case in which Plaintiff is
entitled to reasonable attorney fees. For the reasons discussed
above, the Court will award attorney fees incurred in
preparation for and during trial— that is, all fees incurred in
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the preparation of the Motions in Limine and subsequent to the
filing of the Final Pretrial Order on May 30, 2019. [Docket No.
C. Pre-judgment Interest
Pre-judgment interest ensures “adequate compensation for .
. . infringement.” Oiness v. Walgreen Co., 88 F.3d 1025, 1033
(Fed. Cir. 1996). A Court’s award of pre-judgment interest is
not a punitive measure, but a compensatory one. Id. Indeed, the
Supreme Court has explained that “prejudgment interest should be
awarded . . . absent some justification for withholding such an
award.” Gen. Motors Corp. v. Devex Corp., 461 U.S. 648, 657
(1983); Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10,
36 (Fed. Cir. 2012).
The Court’s goal in awarding pre-judgment interest is to
“ensure that the patent owner is placed in as good a position as
[it] would have been in had the infringer entered into a
reasonable royalty agreement.” Id. at 655. The Court is not
required, however, to award pre-judgment interest “whenever
infringement is found.” Id. at 656. Nevertheless, “[w]hen a
patentee asserts a patent claim that is held to be valid and
infringed, prejudgment interest is generally awarded.” Ecolab,
Inc. v. FMC Corp., 569 F.3d 1335, 1353 (Fed. Cir. 2009).
Defendants contend that this case presents an adequate
justification for denying pre-judgment interest— “[EagleView]’s
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3 ½ year delay in filing suit [which] was self-serving and
resulted in prejudice.” [Docket No. 870, at 51] [cleaned-up].
More specifically, Defendants argue that Plaintiff notified
Defendants of infringement in April 2012 but did not file this
lawsuit until September 2015. This delay, Defendants conclude,
occurred because Plaintiff was partnering with Xactware and
“angled for a buyout by Defendant Verisk until the deal was
blocked in December 2014,” which caused the damages to escalate
to the point where pre-judgment interest would be “severely
prejudicial.” [Docket No. 870, at 51].
Plaintiff responds that the “delay” in filing this action
was due to Defendants’ attempts to acquire EagleView in 2012 and
2013, which was later blocked by the FTC in 2014. [Docket No.
877, at 25-26]. Moreover, Plaintiff contends that Defendants did
not suffer any prejudice due to the delay and have similarly not
articulated what this purported prejudice was.
The Court does not believe that Plaintiff’s pre-litigation
conduct warrants a complete prohibition on pre-judgment
interest. The denial of pre-judgment interest is typically
disfavored, and Defendants have not established the requisite
level of harm to warrant that complete denial. Moreover, a
complete denial of pre-judgment interest would fail to
adequately compensate Plaintiff for infringement. But, as
discussed more thoroughly below, the Court does agree with
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Defendants that the pre-judgment interest period should be
Plaintiff argues that interest should be assessed beginning
on May 1, 2012, the date that the ‘840 patent issued. In
addition, Plaintiff requests a pre-judgment interest rate equal
to “the interest rate that EagleView was forced to pay when it
borrowed money to maintain its business operations.” [Docket No.
866, at 48]. In response, Defendants argue, if there is to be an
award of pre-judgment interest, that the pre-judgment interest
period should begin when the litigation commenced on September
23, 2015. Defendants also request that the Court adopt an
interest rate equivalent to the “standard T-Bill or prime rate.”
[Docket No. 870, at 52].
Practically speaking, these arguments amount to vastly
different sums. Plaintiff calculates $26,060,453 in pre-judgment
interest through the September 25, 2019 verdict, and an
additional $40,800.08 per day thereafter, through the Court’s
entry of judgment18. Defendants calculated $5,086,791 (or
$4,113,211 if no interest is awarded on pre-suit damages) using
the T-Bill rate or $14,522,1920 (or $10,729,719 is no interested
Plaintiff also requests that, if the Court does not accept
its preferred pre-judgment interest rate, then it instead apply
the prime rate. [See Docket No. 866, at 49 n. 7]
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 60 of 64 PageID: 54795
is awarded on pre-suit damages) using the prime rate, through
the September 26, 2019 Judgment. [See Docket No. 799].
The Court has “wide latitude in the selection of interest
rates . . . and may award interest at or above the prime rate.”
Uniroyal, Inc. v. Rudkin-Wiley Corp., 939 F.2d 1540, 1545 (Fed.
Cir. 1991). As noted above, “[a]n award of prejudgment interest
serves to make the patentee whole because the patentee also lost
the use of its money due to infringement.” Crystal Semiconductor
Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336,
1361 (Fed. Cir. 2001). The Court’s selected rate must achieve
this goal. The Court will impose a rate higher than the prime
rate only when a party shows “evidence that [the prevailing
party] borrowed money at a higher rate, what that rate was,
[and] that there was a causal connection between any borrowing
and the loss of the use of the money awarded as [damages].”
Laitram Corp. v. NEC Corp., 115 F.3d 947, 955 (Fed. Cir. 1997).
First, in its final analysis, the Court will not impose
pre-judgment interest beginning in May 2012. Between the case’s
lengthy pre-litigation period, the parties’ ultimately
unsuccessful merger attempt, and their other negotiations, the
Court finds that excluding the pre-litigation period from the
pre-judgment interest award best reflects the appropriate period
to award adequate compensation to Plaintiff. Given the unique
circumstances regarding the relationship between the parties,
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 61 of 64 PageID: 54796
the Court is unable to find that Plaintiff pursued its claims
without undue delay throughout the entire three-year prelitigation period, and Plaintiff should not receive the same
pre-judgment interest award as though it did. Therefore, the
pre-judgment interest period shall begin on September 23, 2015.
Second, the Court will assess pre-judgment interest at the
prime rate. Having reviewed the parties’ arguments and preferred
rates, the Court concludes that pre-judgment interest assessed
at the prime rate, between the September 23, 2015 commencement
of litigation and September 26, 2019 Judgment, [see Docket No.
799], correctly and adequately compensates Plaintiff. See
Oiness, 88 F.3d at 1033. In addition, the Court rejects
Plaintiff’s arguments that it is entitled to a rate above the
prime rate. Plaintiff’s interest calculations largely rely on a
pre-judgment interest period beginning in May 2012. But the
Court has limited the pre-judgment interest period to beginning
in September 2015. This is particularly important because
Plaintiff’s lien debt was incurred in July 2015. [See Docket
866-2]. Finally, the Court finds that Plaintiff’s calculations
have not fully established a “causal connection” between the
money borrowed and the loss of the money awarded as damages.
Therefore, the prime rate shall apply.
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 62 of 64 PageID: 54797
D. Post-Judgment Interest
Post-judgment interest is governed by 28 U.S.C. § 1961,
which provides that “[i]nterest shall be allowed on any money
judgment in a civil case recovered in a district court.” § 1961
(a). This rate is established by statute. Id. (“Such interest
shall be calculated . . . at a rate equal to the weekly average
1-year constant maturity Treasury yield, as published by the
Board of Governors of the Federal Reserve System, for the
calendar week preceding the date of the judgment. The Director
of the Administrative Office of the United States Courts shall
distribute notice of that rate and any changes in it to all
Federal judges.”) Although this is a patent case, the Court will
apply § 1961 as construed by Third Circuit case law. See
Transmatic, Inc. v. Gulton Indus., Inc., 180 F.3d 1343, 1347
(Fed. Cir. 1999) (holding that § 1961 is not a subject unique to
patent law and is governed by regional circuit law).
The parties do not dispute that post-judgment interest is
mandatory. See Nite Glow Indus., Inc. v. Cent. Garden & Pet Co.,
No. CV124047KSHCLW, 2020 WL 2847857, at *13 (D.N.J. June 1,
2020); Glass v. Snellbaker, No. CIVA 05-1971 (JBS), 2008 WL
4416450, at *12 (D.N.J. Sept. 23, 2008). Similarly, they do not
dispute that post-judgment interest applies to each component of
the award: the jury’s damages award, pre-judgment interest,
enhanced damages, attorneys’ fees, etc. See generally Travelers
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 63 of 64 PageID: 54798
Cas. & Sur. Co. v. Ins. Co. of N. Am., 609 F.3d 143, 174 (3d
Cir. 2010). Indeed, post-judgment interest on each aspect of an
award “starts running when a judgment quantifying that award has
been entered.” Id. at 175. Thus, post-judgment interest will be
assessed at the applicable rate on the jury’s damage award
beginning from the entry of the Court’s September 26, 2019
Judgment [Docket No. 799], and on all other damage awards from
the date of the entry of the Order accompanying this Opinion.
Plaintiff has also requested an “accounting of
[Defendants’] infringing sales since March 2019,” which were the
last sales that the jury was able to consider in rendering its
verdict. The Court will deny that request. As Defendants
convincingly argue, Plaintiff could have raised the issue of
pre-verdict accounting at trial. Moreover, the Court is
unpersuaded by Plaintiff’s contention that a “tacit agreement”
established its right to leave this issue for post-trial
briefing. Perhaps the parties had reached some agreement about
Case 1:15-cv-07025-RMB-JS Document 909 Filed 02/16/21 Page 64 of 64 PageID: 54799
an accounting for post-verdict infringing sales, but the Court
finds no agreement as to pre-verdict infringing sales.
Pursuant to Local Rule 54.1 the Court will refer the Bill
of Costs to the Clerk of Court.
Thus, for the foregoing reasons, Plaintiff’s Motion will be
granted, in part, and denied, in part. The Court will award
Enhanced Damages, to the maximum allowable extent, pursuant to
35 U.S.C. § 284; award reasonable attorneys’ fees, beginning
with the filing of motions in limine through trial, pursuant to
35 U.S.C. § 285; award pre-judgment interest, at the prime rate,
beginning on September 23, 2015; and award post-judgment
interest pursuant to 28 U.S.C. § 1961. Plaintiff’s request for
an accounting of Defendants’ infringing sales after March 2019
will be denied. Finally, the Court will refer the Bill of Costs
to the Clerk of Court. An appropriate Order accompanies this
Dated: February 16, 2021
s/Renée Marie Bumb _____
RENÉE MARIE BUMB
UNITED STATES DISTRICT JUDGE
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