EAGLE VIEW TECHNOLOGIES, INC. et al v. XACTWARE SOLUTIONS, INC. et al
Filing
989
OPINION. Signed by Judge Renee Marie Bumb on 11/10/2021. (dmr)
[Docket No. 987]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE
EAGLE VIEW TECHNOLOGIES,
INC., and PICTOMETRY
INTERNATIONAL CORP.,
Civil No. 15-7025 (RMB/SAK)
Plaintiffs,
v.
OPINION
XACTWARE SOLUTIONS, INC.,
and VERISK ANALYTICS, INC.,
Defendants.
RENÉE MARIE BUMB, United States District Judge
This matter comes before the Court upon the parties’ jointly proposed
Stipulation and Order Vacating Judgment and Permanent Injunction Previously
Issued by the Court in this Matter and Dismissing All Claims and Counterclaims
With Prejudice. [Docket No. 987.] The Court construes the parties’ joint
submission as a proposed motion and references it as such herein. For the reasons
set forth below, the Court grants, in part, and denies, in part, the proposed motion.
I.
BACKGROUND
Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp.
(collectively, “Eagle View” or “Plaintiffs”) define their business as a data analytics
company, with the “data” being derived from aerial imagery of roofs. [Trial
Transcript, p. 705:24-706:1 (“A: . . . Eagle View is in the business of capturing aerial
imagery and then extracting roof measurements from the imagery.”).] Eagle View’s
patented processes are applied to that data, and then a roof report is generated. This
is Eagle View’s “cornerstone product.” [Daga Sept. 26, 2019 Decl. ¶ 4.] In contrast
to Eagle View, less than half of one percent of revenue of Defendants Xactware
Solutions, Inc. and Verisk Analytics, Inc. (“Defendants”) results from the generation
of roof reports. [PTX-138; PTX-940; Dkt. No. 791-1, Exs. B–E.] In fact, it is
Defendants’ generation of their roof reports from Defendants’ software programs
that a jury ultimately found to infringe on Eagle View’s patents.
On September 26, 2019, after years of litigation and a two-week jury trial, the
jury found that Defendants willfully infringed six of Eagle View’s patents and
awarded lost profits damages of $125 million to Eagle View. That same day, this
Court entered its Judgment (in favor of Eagle View and reflecting the Jury Verdict)
[Docket No. 799], and issued a Temporary Restraining Order, enjoining Defendants
from, among other things, selling or offering to sell their Property Insight, Roof
Insight, Geomni Roof and Geomni Property products that are produced by the
computer software programs the jury found infringed Eagle View’s patents [Docket
No. 800]. Shortly thereafter, Eagle View filed a Motion for a Permanent Injunction,
which the Court granted, in part, on October 18, 2019. [Docket No. 842.]
Defendants disputed the Jury Verdict and this Court’s resulting findings, and
filed Notices of Appeal to the Federal Circuit Court of Appeals with respect to this
Court’s (i) Judgment [Docket No 843], (ii) denial of Defendants’ Motion for New
Trial/Judgment as a Matter of Law [Docket No. 903], and (iii) Order on Motion for
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Miscellaneous Relief [Docket No. 911]. While the appeal was pending, Eagle View
filed a Motion for an Order to Initiate Contempt Proceedings and for a Temporary
Restraining Order [Docket No. 940], and after conducting a hearing on the proposed
motion, this Court determined that Eagle View had made a prima facie showing of
contempt and allowed the parties to proceed with expedited discovery [Docket No.
967].
On November 5, 2021, with the appeal still pending, the parties notified the
Court that they had reached a settlement agreement, resolving all issues between
them without the need for further litigation. [Docket No. 987.] The parties’ recent
settlement is the basis for the parties’ current motion before this Court.
II.
JURISDICTION
Pursuant to Fed. R. App. P. 42(b), the parties sought joint dismissal of the
appeal with each party to bear its own costs, which the Federal Circuit Court of
Appeals granted on November 9, 2021. [Docket No. 988.]
III.
ANALYSIS
Now that the Federal Circuit has dismissed the appeal, three motions remain
pending before this Court: (i) the parties’ current motion; (ii) Eagle View’s Motion
to Initiate Contempt Proceedings, which the Court continued, in part, pending
expedited discovery; and (iii) Eagle View’s Motion for Attorneys’ Fees, Costs, and
Interest, which the Court continued, in part, pending adjudication of the appeal by
the Federal Circuit. In the current motion, the parties jointly request not only that
the Court dismiss the remaining motions pending before it, but also that the Court
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vacate its earlier findings. Specifically, pursuant to Fed. R. Civ. P. 60(b)(5) and (6),
the parties contend in their current motion that the Court has the inherent authority
to do each of the following:
1.
Vacate the Court’s Judgment [Docket No. 799] entered on
September 26, 2019, and all Orders, decisions, and findings
underlying such judgment or merged therein;
2.
Vacate the Court’s Permanent Injunction [Docket No. 842]
entered on October 19, 2019, and all Orders, decisions, and
findings underlying such judgment or merged therein;
3.
Dismiss, with prejudice, all claims, counterclaims, and defenses
in this matter, including the allegations and averments contained
therein; and
4.
Terminate the contempt proceedings initiated by Eagle View.
[Docket No. 987 at 3.] The Court considers each of the requests made by the parties
in their current motion in turn.
A.
Eagle View’s Remaining Motions to Initiate Contempt Proceedings
and for Attorneys’ Fees, Costs, and Interest
The Court agrees with the parties that it has the inherent authority to
terminate the contempt proceedings initiated by Eagle View. Fed. R. Civ. P. 60(b)(5)
(“On motion and just terms, the court may relieve a party or its legal representative
from a. . .proceeding. . . [when] applying it prospectively is no longer equitable[.]”
(emphasis added)). Undoubtedly, the Court also has the inherent authority to
enforce its prior Orders, including its Permanent Injunction Order. Here, however,
the Court finds that the parties’ recent settlement obviates the need for further
proceedings regarding Defendants’ alleged contempt, as stipulated by Eagle View in
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the current motion. Thus, pursuant to Fed. R. Civ. P. 60(b)(5), Eagle View’s Motion
to Initiate Contempt Proceedings is hereby dismissed and the contempt proceedings
initiated thereby are terminated.
Unlike Eagle View’s Motion to Initiate Contempt Proceedings, nowhere in the
current motion do the parties address Eagle View’s Motion for Attorneys’ Fees,
Costs, and Interest. However, the Court finds that the parties’ recent settlement also
necessarily resolves the dispute insofar as it concerns such motion, and the motion is
hereby dismissed as moot.
B.
The Parties’ Underlying Claims, Counterclaims, and Defenses
The Court agrees with the parties that given the recent settlement, the parties’
underlying claims, counterclaims, and defenses in this matter, including the
allegations and averments contained therein, are rendered moot. [Docket No. 987 at
2 (citing U.S. Phillips Corp. v. Windmere Corp., 9741 F.2d 728, 731 (Fed. Cir. 1992)
(considering a settlement between two parties that occurred pending appeal and
explaining that “[a]ll of the claims of the judgments were appealed, and have now
become entirely moot”)).] Thus, the Court dismisses, without prejudice, each of the
parties’ underlying claims, counterclaims, and defenses in the current dispute.
C.
The Court’s Permanent Injunction
The Court finds that there is a legally sufficient basis for the vacatur of its
Permanent Injunction entered on October 19, 2019. Considering the parties’ recent
settlement, it is “no longer equitable” to “prospectively” apply the Court’s
Permanent Injunction against Defendants. Fed. R. Civ. P. 60(b)(5). The Court
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hereby vacates its Permanent Injunction. However, the parties’ joint request to
vacate “all Orders, decisions, and findings underlying such judgment or merged
therein” as they pertain to the Court’s Permanent Injunction is hereby denied and
will be discussed below in connection with the identical request made regarding the
Orders, decisions, and findings underlying the Court’s Judgment.
D.
The Court’s Judgment
In Argentum Medical, LLC v. Noble Biomaterials, the district court considered a
nearly identical case. Civ. No. 3:08-1305, 2014 WL 4351531 (M.D.Pa. Sept. 2,
2014). After a jury found in favor of the plaintiff on its Latham Act claims and the
trial court denied the defendants’ motion for judgment as a matter of law, the
defendants appealed to the Federal Circuit. Id. at *1. While the appeal was pending,
the parties “fully and amicably resolved all outstanding disputes and claims,” and
requested that the district court vacate “the portion of the judgment that imposed
punitive damages against them.” Id. In denying the parties’ request to vacate its
prior judgment, the district court relied on the “principles emanating” from earlier
decisions by the Supreme Court and the Third Circuit Court of Appeals, which
provide a roadmap for the current request before this Court regarding its prior
Judgment.
As noted by the district court in Argentum Medical, the Supreme Court has
expressly considered the question as to “‘whether appellate courts in the federal
system should vacate civil judgments of subordinate courts in cases that are settled
after appeal is filed or certiorari sought” and provided an answer “in a unanimous
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opinion, [that] might fairly be stated as generally no.” Id. at *2 (citing U.S. Bancorp
Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 19 (1994). In addition, the Third Circuit
has clearly “voiced [its] opposition to settlements conditioned on nullification of
judgments for money damages,” but does “permi[t] the practice when the trial court's
injunctive order imposed a legal bar to settlement.” Sentinel Trust Co. v. Universal
Bonding Ins. Co., 316 F.3d 213, 220 (3d Cir. 2003) (citing Clarendon Ltd. v. Nu-W.
Indus., Inc., 936 F.2d 127 (3d Cir. 1991) (“While we share the view that voluntary
settlements should be encouraged, we cannot agree that such a goal overrides the
policy that a losing party with a deep pocket should not be permitted to use a
settlement to have an adverse precedent vacated.”); Oracare DPO, Inc. v. Merin, 972
F.2d 519, 522 (3d Cir.1992). “[E]xceptional circumstances must exist to justify
vacatur of a judgment pursuant to Rule 60(b)(6),” including that none of Rules
60(b)(1) through (5) apply, but which “do not include the mere fact that the
settlement agreement provides for vacatur.” Clarke v. Castro, Civ. No. 10 Civ.
6330(HBP), 2013 WL 686680, at *2 (S.D.N.Y. Feb. 26, 2013) (citations omitted).
The Court is not persuaded that exceptional circumstances exist in the current
controversy, nor do the parties press anywhere in their current motion what
circumstances warrant vacatur under Rule 60(b)(6). The Court is persuaded by the
distinction drawn by the Third Circuit in Sentinel Trust – i.e., between judgments that
impose a legal bar to settlement and those that do not – and finds that such
distinction is consistent with the prong in Fed. R. Civ. P. 60(b)(5) that allows the
Court to vacate a judgment when “applying it prospectively is no longer equitable.”
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For example, the continued enforcement of the Court’s Permanent Injunction
against Defendants is incompatible with the parties’ agreed-to settlement, as
previously discussed; however, the Court’s Judgment imposes no such barrier.
The Court is also persuaded by the principles relied on by the district court in
Argentum Medical that warrant denial of the parties’ request to vacate the Judgment.
The public interest is best served by the finality of judgments. “While a jury verdict
alone has little or no precedential value, the integrity of all decisions in this court
would be weakened by allowing unsuccessful parties to erase unfavorable legal
outcomes by striking a deal with the other side after the fact.” Argentum Medical,
2014 WL at *3. Moreover, vacatur of the Court’s Judgment “would trivialize the
significant judicial resources dedicated to this litigation, including the services
rendered by the. . .members of the jury that considered this case.” Id. Simply put, a
jury verdict is no fiction that the parties can later purport never happened.
A jury trial is not a dress rehearsal for each party to perform its case. Nor are
the Court’s prior rulings and opinions mere hook up sheets or prompt scripts. The
finality of jury verdicts and the presumption that a jury verdict is correct until the
appeal process has run its course are both fundamental to the legal system. That the
parties have now settled their dispute does not change the fact that over a two-week
period a jury considered a vast amount of complex evidence and testimony presented
by the parties, based upon which the jury ultimately came to a unanimous decision.
Similarly, the parties’ eventual settlement is not incongruous with the multitude of
underlying Orders, decisions, and findings made by the Court as the case progressed
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through six years of litigation.
The Court’s takes seriously that its “duty lies not in the direction of an
automatic acquiescence to the parties' request, but rather with a deliberate
consideration of the policy that will best serve the public good.” Clrendon, 936 F.2d
at 129. The parties’ request to vacate the Court’s Judgment is denied, and the
parties’ request that the Court vacate the Orders, decisions, and findings underlying
both its Judgment and its Permanent Injunction is denied.
IV.
CONCLUSION
For the reasons stated above, the parties’ proposed Stipulation and Order
Vacating Judgment and Permanent Injunction Previously Issued by the Court in this
Matter and Dismissing All Claims and Counterclaims With Prejudice is hereby
GRANTED, in part, and DENIED, in part, as specifically set forth in the
accompanying Order issued on this date.
November 10, 2021
Date
s/Renée Marie Bumb
Renée Marie Bumb
U.S. District Judge
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