Eagle View Technologies et al v. Nearmap US

Filing 298

MEMORANDUM DECISION AND ORDER denying 111 Redacted MOTION for Short Form Discovery re: Interrogatory Responses and Documents . EagleView's request to compel discovery responses regarding unidentified products with si milar functionality to the accused products identified in EagleView's infringement contentions is denied. EagleView's motion is denied without prejudice with respect to discovery regarding the Roof Geometry tool. Signed by Magistrate Judge Daphne A. Oberg on 5/18/2023. (mh)

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
MEMORANDUM DECISION AND
ORDER DENYING PLAINTIFFS’
SHORT FORM DISCOVERY MOTION
REGARDING THE SCOPE OF THE
ACCUSED PRODUCTS
(DOC. NO. 111)

EAGLE VIEW TECHNOLOGIES, INC.; and
PICTOMETRY INTERNATIONAL CORP.,
Plaintiffs,
v.
NEARMAP US, INC.; NEARMAP
AUSTRALIA PTY LTD; and
NEARMAP LTD,

Case No. 2:21-cv-00283
District Judge Ted Stewart

Defendants.

Magistrate Judge Daphne A. Oberg

In this patent infringement case, Plaintiffs Eagle View Technologies, Inc. and Pictometry
International Corp. (collectively, “EagleView”) filed a motion to compel Defendant Nearmap
US, Inc. 1 to supplement its discovery responses in two areas. 2 First, EagleView seeks to compel
Nearmap to answer interrogatories regarding unidentified products with “similar functionality”
to the accused products named in EagleView’s infringement contentions. 3 Second, EagleView
seeks to compel Nearmap to supplement its responses to include discovery related to all uses and
supply chains of Nearmap’s Roof Geometry tool (an accused product). 4 Nearmap filed a

1

At the time this motion was filed and briefed, Nearmap US, Inc. was the only defendant.
EagleView has since filed an amended complaint adding claims against defendants Nearmap
Australia Pty Ltd and Nearmap Ltd. (See Doc. No. 274.) Because these new defendants were
not involved in this motion, Nearmap US, Inc. is referred to simply as “Nearmap” in this order.
2

(See Pls.’ Short Form Disc. Mot. Re. the Scope of the Accused Products (“Mot.”), Doc. No.
111.)
3

(See id. at 1–2.)

4

(See id. at 3.)

1

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response, opposing EagleView’s motion as to the first issue and indicating it had provided all
responsive documents and information on the second issue. 5 The court held a hearing on the
motion on October 31, 2022.
EagleView’s motion is denied. First, EagleView’s request to compel discovery responses
regarding unidentified products with similar functionality is denied. As explained below,
EagleView’s attempt to define “accused products” to include unidentified products with “similar
functionality” to named accused products is inconsistent with the local patent rules. And
EagleView fails to show the requirements for discovery regarding unaccused products are met.
Second, EagleView’s motion is denied without prejudice with respect to discovery regarding the
Roof Geometry tool, where Nearmap made additional responsive productions before the hearing
and represents it is not withholding responsive documents.
BACKGROUND
EagleView brought this action against Nearmap, alleging infringement of eight patents
related to rooftop aerial measurement technology. 6 EagleView’s original complaint identified
the accused products as “(1) Nearmap on OpenSolar and (2) MapBrowser.” 7
In January 2022, EagleView propounded interrogatories seeking information regarding
accused products. 8 The definitions section of the interrogatories defined the term “accused

5

(See Opp’n to Pls.’ Short Form Disc. Mot. Re. the Scope of the Accused Products (“Opp’n”),
Doc. No. 114.)
6

(Compl. ¶¶ 1–2, Doc. No. 2.)

7

(Id. ¶ 1.)

8

(See Ex. A to Mot., Doc. No. 113-1 at 1–2 (sealed).) EagleView filed a single exhibit
containing excerpts of the discovery requests, responses, disclosures, and infringement
contentions relevant to this motion.

2

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products” as products identified in EagleView’s complaint and infringement contentions, “and
any other Nearmap Product that performs similar functionality (including at least any Nearmap
rooftop aerial measurement tool, product, component, or other software or hardware
functionality).” 9 In February 2022, EagleView served initial infringement contentions
identifying the accused products as MapBrowser; Nearmap on OpenSolar; “software and
imagery features that are used with, or integrated into” those products including Nearmap
Vertical, Nearmap Oblique, and Nearmap 3D; and “any other Nearmap products that contain
similar functionality.” 10
In response to the interrogatories, Nearmap objected to EagleView’s “accused products”
definition only “to the extent it seeks information not within the possession, custody, or control
of [Nearmap] located after a reasonable search.” 11 Nearmap then provided responsive
information for MapBrowser and Nearmap on OpenSolar—the accused products specifically
named in the complaint and infringement contentions. 12
In July 2022, EagleView supplemented its initial infringement contentions to identify a
“‘Roof Geometry Technology’ product” as an additional accused product. 13 EagleView also
stated: “Nearmap purportedly disputes that the ‘Roof Geometry Technology’ product was
included as an Accused Product because it was not specifically named, and has on that basis

9

(Id. at 1–2 (emphasis added).)

10

(Id. at 2 (emphasis added).)

11

(Id.)

12

(See id. at 3–4.)

13

(Id. at 4.)

3

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excluded from discovery information as to this Roof Geometry product. EagleView contends
that excluding such product from discovery was improper.” 14
EagleView propounded a second set of interrogatories in August 2022. 15 In this set,
EagleView defined “accused products” as all products identified in its complaint, accused
instrumentality disclosures, and forthcoming infringement contentions, including:
each version of MapBrowser, Nearmap on OpenSolar, Nearmap Vertical, Nearmap
Oblique, Nearmap 3D, all Nearmap roofing geometry technology, Nearmap point
cloud roof geometry, and any other Nearmap Product that performs similar
functionality (including at least any Nearmap rooftop aerial measurement or roofing
geometry tool, product, component, or other software of hardware functionality,
and, for the avoidance of any doubt, any Nearmap APIs or applications) . . . or any
other Nearmap product that involves roofing geometry functionality[.] 16
In response, Nearmap objected to the inclusion of unidentified products in EagleView’s
definition of “accused products.” 17 Nearmap stated it understood the accused products to
encompass only the three products that EagleView had specifically identified in EagleView’s
complaint, accused instrumentality disclosures, initial and supplemental infringement
contentions, and final infringement contentions. 18 Nearmap asserted that discovery beyond these
products was “contrary to the rules and in particular the requirement that EagleView provide
claim charts for each of the Accused Products and Accused Functionalities in its infringement
contentions,” citing Rules 2.3 and 3.1 of the District of Utah’s Local Patent Rules. 19

14

(Id.)

15

(See id. at 4–5.)

16

(Id.)

17

(Id. at 5–6.)

18

(Id. at 5.)

19

(Id.)

4

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Accordingly, Nearmap objected to “any attempt to seek discovery on products not identified as
Accused Products or Accused Functionalities.” 20
EagleView then filed the instant discovery motion, seeking to compel Nearmap to
provide discovery responses regarding all products with “similar functionality” to the named
accused products.
Shortly thereafter, EagleView moved to amend its complaint. 21 The motion to amend
was granted in part, 22 and EagleView filed an amended complaint on March 28, 2023. 23
EagleView’s amended complaint identifies the accused products as “(1) Nearmap on OpenSolar,
(2) Nearmap’s MapBrowser, (3) the roof geometry technology Nearmap acquired from Primitive
LLC d/b/a Pushpin (‘Pushpin’) and associated software and products, and (4) other Nearmap
products that contain or are produced using similar functionality.” 24
ANALYSIS
A. Discovery Regarding Products with “Similar Functionality”
EagleView seeks to compel Nearmap to provide interrogatory responses concerning
unidentified products with similar functionality to the accused products specifically named in
EagleView’s complaint, infringement contentions, and other disclosures. 25 As an initial matter,
EagleView contends Nearmap’s objection to the inclusion of unidentified products in

20

(Id. at 5–6.)

21

(See Doc. No. 155.)

22

(See Doc. No. 267.)

23

(First Am. Compl., Doc. No. 274.)

24

(Id. ¶ 1.)

25

(Mot., Doc. No. 111.)

5

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EagleView’s definition of “accused products” is waived because Nearmap did not raise this
objection in response to EagleView’s first set of interrogatories. 26 EagleView also argues
discovery regarding unnamed products is warranted because Nearmap sells some of its products
confidentially, and EagleView has no way to know about them by brand-name other than
through discovery. 27
In opposition, Nearmap argues discovery regarding unidentified products with similar
functionality to the named accused products is overbroad and constitutes an impermissible
fishing expedition. 28 Nearmap argues such discovery is contrary to the requirements of the local
patent rules and applicable case law. 29 Nearmap also disputes that it sells products confidentially
in the United States, and Nearmap states it has “produced information about all its U.S. products,
including financials and source code.” 30
Nearmap’s objection to EagleView’s definition of “accused products” is not waived.
Rule 33 of the Federal Rules of Civil Procedure requires “[t]he grounds for objecting to an
interrogatory [to] be stated with specificity.” 31 And “[a]ny ground not stated in a timely
objection is waived unless the court, for good cause, excuses the failure.” 32 Although Nearmap
did not initially object to the inclusion of unidentified products with “similar functionality” in

26

(Id. at 1–2.)

27

(Id. at 2.)

28

(Opp’n, Doc. No. 114.)

29

(Id. at 2.)

30

(Id. at 3.)

31

Fed. R. Civ. P. 33(b)(4).

32

Id.

6

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EagleView’s definition of “accused products,” Nearmap only provided responsive information
for named accused products. As explained below, Nearmap’s approach was consistent with the
local patent rules, which require accused products to be specifically identified. EagleView’s July
2022 supplement to its infringement contentions revealed a dispute regarding whether Nearmap
was required to provide discovery regarding unnamed products. When EagleView propounded
its second set of interrogatories shortly thereafter, Nearmap objected to EagleView’s expansive
definition of “accused products.” Thus, Nearmap’s initial response was consistent with the
meaning of “accused instrumentalities” under the local rules, and Nearmap offered a specific
objection to EagleView’s broader definition when the dispute regarding unnamed products
became apparent. Under these circumstances, there is good cause to excuse Nearmap’s failure to
specifically object to EagleView’s expansive definition of “accused products” in Nearmap’s
initial response. Nearmap’s objection is not waived.
The District of Utah’s Local Rules of Patent Practice require a party claiming
infringement to “disclose a list identifying each accused apparatus, product, device, process,
method, act, or other instrumentality (“Accused Instrumentality”) of the opposing party of which
the party claiming infringement is aware.” 33 Further, “[e]ach Accused Instrumentality must be
identified by name, if known, or by any product, device, or apparatus which, when used,
allegedly results in the practice of the claimed method or process.” 34 Such accused
instrumentality disclosures must be made within seven days of the filing of an answer. 35
Thereafter, a party claiming infringement must serve initial infringement contentions containing
33

LPR 2.1.

34

Id.

35

Id.

7

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“identification of each claim of each asserted patent that is allegedly infringed,” and “separately
for each claim, identification of each Accused Instrumentality of which the party claiming
infringement is aware.” 36 Again, “[e]ach Accused Instrumentality must be identified by name, if
known, or by any product, device, or apparatus which, when used, allegedly results in the
practice of the claimed method or process.” 37 The party claiming infringement must also
provide a “a chart identifying specifically where each element of each asserted claim is found
within each Accused Instrumentality.” 38 The purpose of these requirements is to provide
“meaningful disclosure of each party’s contentions and support for allegations in the
pleadings.” 39
EagleView’s attempt to define “accused products” to include unidentified products with
similar functionality does not comport with the local patent rules, which require identification of
accused instrumentalities by name (if known), product, device, or apparatus. EagleView cannot
circumvent these requirements by creating its own, more expansive definition of “accused
products” in a discovery request, or by attempting to include unidentified products in its
infringement contentions. Under the local rules, accused products are only those specifically
identified in the infringement contentions. A broad reference to all products with “similar
functionality” fails to adequately identify the products at issue or provide meaningful notice of

36

LPR 2.3(a)–(b).

37

LPR 2.3(b).

38

LPR 2.3(c).

39

LPR Preamble; see also Vivint, Inc. v. Alarm.com, No. 2:15-cv-00392, 2020 U.S. Dist. LEXIS
121737, at *19–20 (D. Utah July 9, 2020) (unpublished) (“Utah’s LPR Preamble makes clear
that the purpose of discovery in patent cases is not solely to enable a claimant to develop
information to support[] its claim—but also to allow the defendant to develop facts to support its
defense and to allow the defendant to pin down the plaintiff’s theory of liability.”).

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EagleView’s contentions. Thus, unidentified products with “similar functionality” are not
accused products under the local rules.
Further, EagleView has not demonstrated discovery regarding unaccused products with
similar functionality is appropriate. “[T]here is no bright-line rule limiting discovery to only
those products specifically accused in a party’s infringement contentions.” 40 However,
“discovery concerning products not listed in the infringement contentions is appropriate only
when 1) the infringement contentions give notice of a specific theory of infringement, and 2) the
product for which discovery is sought operates in a manner reasonably similar to that theory.” 41
The record on this motion does not demonstrate these requirements are met. EagleView
provided only a small excerpt of its initial infringement contentions which does not address any
specific theory of infringement. 42 And EagleView has not otherwise demonstrated that its
infringement contentions give notice of a specific theory of infringement. Thus, EagleView has
not shown discovery regarding unnamed, unidentified products is permissible.
In Vivint, Inc. v. Alarm.com, 43 a court in this district rejected a similar argument—that a
party was entitled to discovery for an unnamed instrumentality because it was “reasonably
similar to those accused in the infringement contentions.” 44 The court observed that one purpose
of the local discovery rules in patent cases is to allow parties to pin down their opponents’

40

EPOS Techs. v. Pegasus Techs., 842 F. Supp. 2d 31, 33 (D.D.C. 2012).

41

nCAP Licensing, LLC v. Apple Inc., No. 2:17-cv-00905, 2018 U.S. Dist. LEXIS 235079, at *3
(D. Utah Nov. 30, 2018) (unpublished) (citing EPOS Techs., 842 F. Supp. 2d at 33).
42

(See Ex. A to Mot., Doc. No. 113-1 at 2, 4 (sealed).)

43

2020 U.S. Dist. LEXIS 121737, at *23–24.

44

Id. at *23 (internal quotation marks omitted).

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theories of liability. 45 The court found that “[n]othing in the text of this district’s local patent
rules supports the use of the ‘reasonably similar’ approach Vivint urges this court to adopt.” 46
Likewise, EagleView’s attempt to seek discovery regarding unidentified products with “similar
functionality” fails to provide the level of specificity required by the local patent rules.
EagleView contends courts routinely allow discovery regarding products with similar
functionality to specifically accused products. 47 But the cases EagleView relies on do not
support its position that such discovery is permissible here. First, EagleView cites Uniloc USA,
Inc. v. Avaya Inc. 48 for the proposition that “[i]t is often the case that litigants have good reason
to believe that additional, unspecified products infringe their patents, but formal discovery may
be necessary to ascertain the precise scope and application of the alleged infringement.” 49 But
this case addressed a motion to strike pleadings; it did not address the scope of permissible
discovery regarding unaccused products. 50 Thus, Uniloc does not provide useful guidance
regarding the parameters of such discovery, and it does not support EagleView’s argument that
discovery regarding unidentified products with similar functionality is permissible here. As set
forth above, discovery regarding unaccused products is appropriate in certain circumstances, but
EagleView has failed to demonstrate the requirements for such discovery are met.

45

Id. at *19–20; see also id. at *17.

46

Id. at *23.

47

(See Mot. 2, Doc. No. 111.)

48

No. 6:15-cv-1168-JRG, 2016 U.S. Dist. LEXIS 181826 (E.D. Tex. May 13, 2016)
(unpublished).
49

Id. at *22.

50

See id.

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EagleView also relies on High 5 Games, LLC v. Marks, 51 in which a court granted a
motion to compel discovery regarding unaccused products believed to include infringing
features. 52 High 5 Games described two broad approaches to determining relevance of discovery
requests in patent cases. “Under the first method, the scope of discovery is limited to products
specifically identified in the infringement contentions.” 53 “Under the second method, the scope
of discovery is expanded to include products reasonably similar to those accused in the
infringement contentions.” 54 But even under the second approach, “the discovering party must
provide a mechanism for the responding party to determine whether a particular device is
reasonably similar.” 55 The court in High 5 Games concluded discovery regarding unaccused
products was appropriate because the discovering party had specifically identified them by name,
and because the unaccused products “share[d] reasonably similar features and a nexus with those
[products] specifically accused of infringement.” 56 Here, EagleView has not named the
unaccused products for which it seeks discovery, and the mere reference to “similar
functionality” provides no mechanism for the responding party (or the court) to determine
whether other Nearmap products are reasonably similar to the named accused products. Thus,

51

No. 2:13-cv-07161-JMV-MF, 2019 U.S. Dist. LEXIS 59254 (D.N.J. Apr. 5, 2019)
(unpublished).
52

Id. at *23–24.

53

Id. at *19 (internal quotation marks omitted).

54

Id. at *20 (internal quotation marks omitted).

55

Id. at *21 (internal quotation marks omitted).

56

Id. at *23.

11

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High 5 Games does not support EagleView’s position that discovery regarding unidentified
products with similar functionality is permissible in these circumstances.
For these reasons, EagleView’s motion to compel Nearmap to provide discovery
responses regarding unidentified products with “similar functionality” to the named accused
products is denied.
B. Discovery Regarding Nearmap’s Roof Geometry Tool
EagleView seeks to compel Nearmap to supplement its responses regarding Nearmap’s
Roof Geometry tool, which EagleView identified as an accused product in its July 2022
supplement to its initial infringement contentions. 57 In its opposition, Nearmap represented it
had provided all responsive documents and information and argued this issue was moot. 58 But at
the hearing, EagleView asserted that Nearmap continued to supplement its responses and
productions on this topic in the days leading up to the hearing. EagleView indicated it had not
had an adequate opportunity to review the supplemental productions and could not stipulate that
the issue was moot. Nearmap asserted this supplementation was in response to communications
from EagleView identifying specific deficiencies. Nearmap maintained it was not intentionally
withholding responsive information or documents and was willing to work with EagleView to
remedy any further deficiencies.
EagleView’s motion is denied without prejudice with respect to discovery regarding the
Roof Geometry tool. In light of Nearmap’s continued supplementation, it is unclear whether a
dispute remains regarding the adequacy of Nearmap’s responses on this topic. If, after reviewing

57

(See Mot. 3, Doc. No. 111; Ex. A to Mot., Doc. No. 113-1 at 4 (sealed).)

58

(See Opp’n 1–2, Doc. No. 114.)

12

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Nearmap’s supplemental responses from before (or after) the hearing, EagleView contends
Nearmap’s responses are deficient, EagleView may file a new motion.
CONCLUSION
EagleView’s motion to compel is denied. EagleView’s request to compel discovery
responses regarding unidentified products with similar functionality to the accused products
identified in EagleView’s infringement contentions is denied. EagleView’s motion is denied
without prejudice with respect to discovery regarding the Roof Geometry tool.
DATED this 18th day of May, 2023.
BY THE COURT:
____________________________
Daphne A. Oberg
United States Magistrate Judge

13