`
`
`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)
`
`Case No. 2:21-cv-00283
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
`
`
`EAGLE VIEW TECHNOLOGIES, INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`Plaintiffs,
`
`
`v.
`
`NEARMAP US, INC.; NEARMAP
`AUSTRALIA PTY LTD; and
`NEARMAP LTD,
`
`
`Defendants.
`
`
`
`
`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
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`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.)
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`
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`1
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17930 Page 2 of 13
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`response, opposing EagleView’s motion as to the first issue and indicating it had provided all
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`responsive documents and information on the second issue.5 The court held a hearing on the
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`motion on October 31, 2022.
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`EagleView’s motion is denied. First, EagleView’s request to compel discovery responses
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`regarding unidentified products with similar functionality is denied. As explained below,
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`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
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`EagleView fails to show the requirements for discovery regarding unaccused products are met.
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`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
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`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
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`any other Nearmap Product that performs similar functionality (including at least any Nearmap
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`rooftop aerial measurement tool, product, component, or other software or hardware
`
`functionality).”9 In February 2022, EagleView served initial infringement contentions
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`identifying the accused products as MapBrowser; Nearmap on OpenSolar; “software and
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`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”
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`definition only “to the extent it seeks information not within the possession, custody, or control
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`of [Nearmap] located after a reasonable search.”11 Nearmap then provided responsive
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`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
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`“‘Roof Geometry Technology’ product” as an additional accused product.13 EagleView also
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`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.)
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`12 (See id. at 3–4.)
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`13 (Id. at 4.)
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`
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`3
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`excluded from discovery information as to this Roof Geometry product. EagleView contends
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`that excluding such product from discovery was improper.”14
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`EagleView propounded a second set of interrogatories in August 2022.15 In this set,
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`EagleView defined “accused products” as all products identified in its complaint, accused
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`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
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`encompass only the three products that EagleView had specifically identified in EagleView’s
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`complaint, accused instrumentality disclosures, initial and supplemental infringement
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`contentions, and final infringement contentions.18 Nearmap asserted that discovery beyond these
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`products was “contrary to the rules and in particular the requirement that EagleView provide
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`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.)
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`15 (See id. at 4–5.)
`
`16 (Id.)
`
`17 (Id. at 5–6.)
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`18 (Id. at 5.)
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`19 (Id.)
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`
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`4
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17933 Page 5 of 13
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`Accordingly, Nearmap objected to “any attempt to seek discovery on products not identified as
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`Accused Products or Accused Functionalities.”20
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`EagleView then filed the instant discovery motion, seeking to compel Nearmap to
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`provide discovery responses regarding all products with “similar functionality” to the named
`
`accused products.
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`Shortly thereafter, EagleView moved to amend its complaint.21 The motion to amend
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`was granted in part,22 and EagleView filed an amended complaint on March 28, 2023.23
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`EagleView’s amended complaint identifies the accused products as “(1) Nearmap on OpenSolar,
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`(2) Nearmap’s MapBrowser, (3) the roof geometry technology Nearmap acquired from Primitive
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`LLC d/b/a Pushpin (‘Pushpin’) and associated software and products, and (4) other Nearmap
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`products that contain or are produced using similar functionality.”24
`
`ANALYSIS
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`A. Discovery Regarding Products with “Similar Functionality”
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`EagleView seeks to compel Nearmap to provide interrogatory responses concerning
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`unidentified products with similar functionality to the accused products specifically named in
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`EagleView’s complaint, infringement contentions, and other disclosures.25 As an initial matter,
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`EagleView contends Nearmap’s objection to the inclusion of unidentified products in
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`
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`20 (Id. at 5–6.)
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`21 (See Doc. No. 155.)
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`22 (See Doc. No. 267.)
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`23 (First Am. Compl., Doc. No. 274.)
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`24 (Id. ¶ 1.)
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`25 (Mot., Doc. No. 111.)
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`5
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17934 Page 6 of 13
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`EagleView’s definition of “accused products” is waived because Nearmap did not raise this
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`objection in response to EagleView’s first set of interrogatories.26 EagleView also argues
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`discovery regarding unnamed products is warranted because Nearmap sells some of its products
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`confidentially, and EagleView has no way to know about them by brand-name other than
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`through discovery.27
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`In opposition, Nearmap argues discovery regarding unidentified products with similar
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`functionality to the named accused products is overbroad and constitutes an impermissible
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`fishing expedition.28 Nearmap argues such discovery is contrary to the requirements of the local
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`patent rules and applicable case law.29 Nearmap also disputes that it sells products confidentially
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`in the United States, and Nearmap states it has “produced information about all its U.S. products,
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`including financials and source code.”30
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`Nearmap’s objection to EagleView’s definition of “accused products” is not waived.
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`Rule 33 of the Federal Rules of Civil Procedure requires “[t]he grounds for objecting to an
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`interrogatory [to] be stated with specificity.”31 And “[a]ny ground not stated in a timely
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`objection is waived unless the court, for good cause, excuses the failure.”32 Although Nearmap
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`did not initially object to the inclusion of unidentified products with “similar functionality” in
`
`
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`26 (Id. at 1–2.)
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`27 (Id. at 2.)
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`28 (Opp’n, Doc. No. 114.)
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`29 (Id. at 2.)
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`30 (Id. at 3.)
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`31 Fed. R. Civ. P. 33(b)(4).
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`32 Id.
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`
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`6
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17935 Page 7 of 13
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`EagleView’s definition of “accused products,” Nearmap only provided responsive information
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`for named accused products. As explained below, Nearmap’s approach was consistent with the
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`local patent rules, which require accused products to be specifically identified. EagleView’s July
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`2022 supplement to its infringement contentions revealed a dispute regarding whether Nearmap
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`was required to provide discovery regarding unnamed products. When EagleView propounded
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`its second set of interrogatories shortly thereafter, Nearmap objected to EagleView’s expansive
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`definition of “accused products.” Thus, Nearmap’s initial response was consistent with the
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`meaning of “accused instrumentalities” under the local rules, and Nearmap offered a specific
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`objection to EagleView’s broader definition when the dispute regarding unnamed products
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`became apparent. Under these circumstances, there is good cause to excuse Nearmap’s failure to
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`specifically object to EagleView’s expansive definition of “accused products” in Nearmap’s
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`initial response. Nearmap’s objection is not waived.
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`The District of Utah’s Local Rules of Patent Practice require a party claiming
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`infringement to “disclose a list identifying each accused apparatus, product, device, process,
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`method, act, or other instrumentality (“Accused Instrumentality”) of the opposing party of which
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`the party claiming infringement is aware.”33 Further, “[e]ach Accused Instrumentality must be
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`identified by name, if known, or by any product, device, or apparatus which, when used,
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`allegedly results in the practice of the claimed method or process.”34 Such accused
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`instrumentality disclosures must be made within seven days of the filing of an answer.35
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`Thereafter, a party claiming infringement must serve initial infringement contentions containing
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`33 LPR 2.1.
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`34 Id.
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`35 Id.
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`7
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17936 Page 8 of 13
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`“identification of each claim of each asserted patent that is allegedly infringed,” and “separately
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`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
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`known, or by any product, device, or apparatus which, when used, allegedly results in the
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`practice of the claimed method or process.”37 The party claiming infringement must also
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`provide a “a chart identifying specifically where each element of each asserted claim is found
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`within each Accused Instrumentality.”38 The purpose of these requirements is to provide
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`“meaningful disclosure of each party’s contentions and support for allegations in the
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`pleadings.”39
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`
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`EagleView’s attempt to define “accused products” to include unidentified products with
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`similar functionality does not comport with the local patent rules, which require identification of
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`accused instrumentalities by name (if known), product, device, or apparatus. EagleView cannot
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`circumvent these requirements by creating its own, more expansive definition of “accused
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`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
`
`
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`36 LPR 2.3(a)–(b).
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`37 LPR 2.3(b).
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`38 LPR 2.3(c).
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`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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`8
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17937 Page 9 of 13
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`EagleView’s contentions. Thus, unidentified products with “similar functionality” are not
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`accused products under the local rules.
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`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
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`those products specifically accused in a party’s infringement contentions.”40 However,
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`“discovery concerning products not listed in the infringement contentions is appropriate only
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`when 1) the infringement contentions give notice of a specific theory of infringement, and 2) the
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`product for which discovery is sought operates in a manner reasonably similar to that theory.”41
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`The record on this motion does not demonstrate these requirements are met. EagleView
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`provided only a small excerpt of its initial infringement contentions which does not address any
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`specific theory of infringement.42 And EagleView has not otherwise demonstrated that its
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`infringement contentions give notice of a specific theory of infringement. Thus, EagleView has
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`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
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`party was entitled to discovery for an unnamed instrumentality because it was “reasonably
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`similar to those accused in the infringement contentions.”44 The court observed that one purpose
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`of the local discovery rules in patent cases is to allow parties to pin down their opponents’
`
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`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).
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`42 (See Ex. A to Mot., Doc. No. 113-1 at 2, 4 (sealed).)
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`43 2020 U.S. Dist. LEXIS 121737, at *23–24.
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`44 Id. at *23 (internal quotation marks omitted).
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`9
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17938 Page 10 of 13
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`theories of liability.45 The court found that “[n]othing in the text of this district’s local patent
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`rules supports the use of the ‘reasonably similar’ approach Vivint urges this court to adopt.”46
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`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.
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`
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`EagleView contends courts routinely allow discovery regarding products with similar
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`functionality to specifically accused products.47 But the cases EagleView relies on do not
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`support its position that such discovery is permissible here. First, EagleView cites Uniloc USA,
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`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
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`be necessary to ascertain the precise scope and application of the alleged infringement.”49 But
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`this case addressed a motion to strike pleadings; it did not address the scope of permissible
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`discovery regarding unaccused products.50 Thus, Uniloc does not provide useful guidance
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`regarding the parameters of such discovery, and it does not support EagleView’s argument that
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`discovery regarding unidentified products with similar functionality is permissible here. As set
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`forth above, discovery regarding unaccused products is appropriate in certain circumstances, but
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`EagleView has failed to demonstrate the requirements for such discovery are met.
`
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`45 Id. at *19–20; see also id. at *17.
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`46 Id. at *23.
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`47 (See Mot. 2, Doc. No. 111.)
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`48 No. 6:15-cv-1168-JRG, 2016 U.S. Dist. LEXIS 181826 (E.D. Tex. May 13, 2016)
`(unpublished).
`
`49 Id. at *22.
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`50 See id.
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`10
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17939 Page 11 of 13
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`
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`EagleView also relies on High 5 Games, LLC v. Marks,51 in which a court granted a
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`motion to compel discovery regarding unaccused products believed to include infringing
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`features.52 High 5 Games described two broad approaches to determining relevance of discovery
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`requests in patent cases. “Under the first method, the scope of discovery is limited to products
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`specifically identified in the infringement contentions.”53 “Under the second method, the scope
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`of discovery is expanded to include products reasonably similar to those accused in the
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`infringement contentions.”54 But even under the second approach, “the discovering party must
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`provide a mechanism for the responding party to determine whether a particular device is
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`reasonably similar.”55 The court in High 5 Games concluded discovery regarding unaccused
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`products was appropriate because the discovering party had specifically identified them by name,
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`and because the unaccused products “share[d] reasonably similar features and a nexus with those
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`[products] specifically accused of infringement.”56 Here, EagleView has not named the
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`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
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`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).
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`52 Id. at *23–24.
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`53 Id. at *19 (internal quotation marks omitted).
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`54 Id. at *20 (internal quotation marks omitted).
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`55 Id. at *21 (internal quotation marks omitted).
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`56 Id. at *23.
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`11
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17940 Page 12 of 13
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`High 5 Games does not support EagleView’s position that discovery regarding unidentified
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`products with similar functionality is permissible in these circumstances.
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`
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`For these reasons, EagleView’s motion to compel Nearmap to provide discovery
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`responses regarding unidentified products with “similar functionality” to the named accused
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`products is denied.
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`B. Discovery Regarding Nearmap’s Roof Geometry Tool
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`EagleView seeks to compel Nearmap to supplement its responses regarding Nearmap’s
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`Roof Geometry tool, which EagleView identified as an accused product in its July 2022
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`supplement to its initial infringement contentions.57 In its opposition, Nearmap represented it
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`had provided all responsive documents and information and argued this issue was moot.58 But at
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`the hearing, EagleView asserted that Nearmap continued to supplement its responses and
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`productions on this topic in the days leading up to the hearing. EagleView indicated it had not
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`had an adequate opportunity to review the supplemental productions and could not stipulate that
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`the issue was moot. Nearmap asserted this supplementation was in response to communications
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`from EagleView identifying specific deficiencies. Nearmap maintained it was not intentionally
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`withholding responsive information or documents and was willing to work with EagleView to
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`remedy any further deficiencies.
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`EagleView’s motion is denied without prejudice with respect to discovery regarding the
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`Roof Geometry tool. In light of Nearmap’s continued supplementation, it is unclear whether a
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`dispute remains regarding the adequacy of Nearmap’s responses on this topic. If, after reviewing
`
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`57 (See Mot. 3, Doc. No. 111; Ex. A to Mot., Doc. No. 113-1 at 4 (sealed).)
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`58 (See Opp’n 1–2, Doc. No. 114.)
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`12
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`Case 2:21-cv-00283-TS-DAO Document 298 Filed 05/18/23 PageID.17941 Page 13 of 13
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`Nearmap’s supplemental responses from before (or after) the hearing, EagleView contends
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`Nearmap’s responses are deficient, EagleView may file a new motion.
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`CONCLUSION
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`
`
`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
`
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`13
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