Case 2:21-cv-00283-TS-DAO Document 305 Filed 06/02/23 PageID.17979 Page 1 of 12
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`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
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`EAGLE VIEW TECHNOLOGIES, INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
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`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING PLAINTIFFS’
`MOTION TO AMEND FINAL
`INFRINGEMENT CONTENTIONS
`(DOC. NO. 192)
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`Case No. 2:21-cv-00283
`
`District Judge Ted Stewart
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`Magistrate Judge Daphne A. Oberg
`
`
`Plaintiffs,
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`
`v.
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`NEARMAP US, INC.; NEARMAP
`AUSTRALIA PTY LTD; and
`NEARMAP LTD,
`
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`Defendants.
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`
`
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`In this patent infringement case, Plaintiffs Eagle View Technologies, Inc. and Pictometry
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`International Corp. (collectively, “EagleView”) filed a motion for leave to amend final
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`infringement contentions.1 Defendant Nearmap US, Inc.2 opposes the motion, arguing the
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`amendment is untimely and prejudicial.3 The court held a hearing on the motion on May 25,
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`2023.4 As explained below, because the amendment is timely, supported by good cause, and
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`will not unfairly prejudice Nearmap, EagleView’s motion is granted.
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`1 (“Mot.,” Doc. No. 192.)
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`2 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.
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`3 (See Def.’s Opp’n to Pls.’ Mot. for Leave to Am. Final Infringement Contentions (“Opp’n”),
`Doc. No. 206.)
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`4 (See Minute Entry, Doc. No. 301.)
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`1
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`BACKGROUND
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`EagleView brought this action against Nearmap, alleging infringement of patents related
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`to rooftop aerial measurement technology.5 EagleView’s original complaint identified the
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`accused products as “(1) Nearmap on OpenSolar and (2) MapBrowser.”6
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`In January 2022, EagleView propounded interrogatories seeking information regarding
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`the two accused products and any other Nearmap products with similar functionality.7 In June
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`2022, through source code review, EagleView learned of a third Nearmap product, Roof
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`Geometry Technology, which contains rooftop aerial measurement functionality.8 In July 2022,
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`EagleView supplemented its initial infringement contentions to identify Roof Geometry
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`Technology as an additional accused product.9 EagleView served its final infringement
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`contentions on August 29, 2022.10
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`After EagleView identified Roof Geometry Technology as an accused product, Nearmap
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`supplemented its discovery responses to include Roof Geometry Technology—but only as it
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`related to one Nearmap customer’s use of the product to generate a certain brand of roof
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`5 (Compl. ¶¶ 1–2, Doc. No. 2.)
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`6 (Id. ¶ 1.)
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`7 (See Mot. 2, Doc. No. 192; Ex. A to Pls.’ Short Form Disc. Mot. Re: the Scope of the Accused
`Products, Doc. No. 113-1 at 1–2 (sealed).)
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`8 (See Mot. 3, Doc. No. 192.)
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`9 (See Ex. A to Pls.’ Short Form Disc. Mot. Re: the Scope of the Accused Products, Doc. No.
`113-1 at 4 (sealed).)
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`10 (See Opp’n 1, Doc. No. 206.)
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`2
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`reports.11 EagleView propounded a second set of interrogatories in August 2022 seeking
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`information regarding other uses and supply chains of Roof Geometry Technology.12 But
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`Nearmap again confined its responses to Roof Geometry Technology supplied to one customer.13
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`EagleView then filed a discovery motion on October 6, 2022, seeking to compel
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`responses regarding other uses and supply chains for Nearmap’s Roof Geometry Technology.14
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`On October 10, while that motion was pending, Nearmap supplemented its responses to indicate
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`that Roof Geometry Technology had been used by another customer, CoreLogic, Inc., to
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`generate its “SkyMeasure” roof reports.15 But Nearmap did not, at that time, produce any
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`SkyMeasure reports generated using Nearmap’s Roof Geometry Technology.16 At a hearing on
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`October 31, 2022, Nearmap represented it had no such reports in its possession.17 Meanwhile,
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`EagleView issued a subpoena to CoreLogic seeking the reports.18
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`On October 21, 2022, EagleView’s counsel emailed Nearmap’s counsel that, “given the
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`recent discovery,” EagleView intended to move for leave to amend EagleView’s final
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`11 (See Mot. 3, Doc. No. 192; Ex. 1 to Mot., Nearmap’s Third Set of Resps. to EagleView’s First
`Set of Interrogs. 9, Doc. No. 194-1 (sealed).)
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`12 (See Mot. 4, Doc. No. 192; Ex. 2 to Mot., Pls.’ Second Set of Interrogs. to Def. Nearmap US,
`Inc., Interrog. No. 12, Doc. No. 192-2.)
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`13 (See Mot. 4, Doc. No. 192; Ex. 3 to Mot., Nearmap’s First Set of Resps. to EagleView’s
`Second Set of Interrogs., Resp. to Interrog. No. 12, Doc. No. 194-3 (sealed).)
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`14 (Pls.’ Short Form Disc. Mot. Re: the Scope of the Accused Products, Doc. No. 111.)
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`15 (See Mot. 4, Doc. No. 192; Reply 3, Doc. No. 230; Ex. 1 to Opp’n to Pls.’ Short Form Disc.
`Mot. Re: the Scope of the Accused Products, Nearmap’s Suppl. Resps. to EagleView’s
`Interrogs., Second Suppl. Resp. to Interrog. No. 1, Doc. No. 114-1 (sealed).)
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`16 (See Mot. 4, Doc. No. 192.)
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`17 (See Reply 4, Doc. No. 230.)
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`18 (See Opp’n 5, Doc. No. 206; Reply 3, Doc. No. 230.)
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`3
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`infringement contentions “to add allegations with respect to the roof geometry technology as it
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`relates to the generation of CoreLogic’s SkyMeasure reports,” and asked if Nearmap would
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`oppose the amendment.19 Nearmap’s counsel responded the same day, asking EagleView to
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`provide proposed amended contentions.20 EagleView did not provide its proposed
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`amendments.21
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`On December 1, 2022, Nearmap produced a SkyMeasure report generated using
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`Nearmap’s Roof Geometry Technology.22 The next day, EagleView received additional
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`SkyMeasure reports from CoreLogic in response to the subpoena.23 EagleView then moved to
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`amend final infringement contentions on December 15, 2022.24
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`ANALYSIS
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`EagleView seeks to amend its final infringement contentions to “add allegations related
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`to the accused Roof Geometry Technology” as it relates to CoreLogic’s SkyMeasure roof
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`reports.25 The District of Utah’s local patent rules provide that “[a] party may amend its Final
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`Infringement Contentions . . . only by order of the court upon a showing of good cause and
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`absence of unfair prejudice to opposing parties, made no later than 14 days of the discovery of
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`19 (Ex. 1 to Opp’n, Email from E. Lucas to J. Wu, et al. (Oct. 21, 2022), Doc. No. 206-1.)
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`20 (Ex. 1 to Opp’n, Email from J. Wu to E. Lucas, et al. (Oct. 21, 2022), Doc. No. 206-1.)
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`21 (See Opp’n 8, Doc. No. 206.)
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`22 (Mot. 4, Doc. No. 192; Ex. 5 to Mot., Doc. No. 194-5 (sealed).)
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`23 (See Reply 1, Doc. No. 230.)
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`24 (Mot., Doc. No. 192.)
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`25 (Id. at 1.)
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`the basis for the amendment.”26 Good cause and timeliness are addressed first, then whether the
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`amendment will cause unfair prejudice.
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`A. Good Cause and Timeliness
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`“[T]o establish good cause, the moving party must first demonstrate diligence in
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`amending its contentions.”27 “To establish diligence, the movant must demonstrate not only that
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`it promptly moved to amend its contentions, but also that it was diligent in discovering the basis
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`for its proposed amendment.”28 “[T]he discovery of new facts, including new potentially
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`infringing instrumentalities or previously unknown examples of prior art, may . . . be the basis
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`for good cause to amend.”29
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`EagleView asserts there is good cause to amend based on discovery of new information
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`regarding the use of the accused Roof Geometry Technology in CoreLogic’s SkyMeasure
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`reports.30 While the discovery of new information may provide good cause to amend, the parties
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`dispute when EagleView became aware of the basis for the amendment. EagleView argues it
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`needed the actual SkyMeasure report produced on December 1, 2022, in order to “evaluate
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`which patent claims are infringed and, relatedly, which infringement claim charts should be
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`26 LPR 3.4.
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`27 Definitive Holdings, LLC. v. Powerteq LLC, No. 2:18-cv-00844, 2022 U.S. Dist. LEXIS
`47340, at *4 (D. Utah Mar. 16, 2022) (unpublished) (citing O2 Micro Int’l Ltd. v. Monolithic
`Power Systems, Inc., 467 F.3d 1355, 1368 (Fed. Cir. 2006); Allvoice Devs. US, LLC v. Microsoft
`Corp., 612 F. App’x 1009, 1015 (Fed. Cir. 2015) (unpublished)).
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`28 Id. (internal quotation marks omitted).
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`29 Corel Software, LLC v. Microsoft Corp., No. 2:15-cv-00528, 2018 U.S. Dist. LEXIS 189832,
`at *7 (D. Utah Nov. 5, 2018) (unpublished).
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`30 (Mot. 5, Doc. No. 192.)
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`amended.”31 EagleView contends it had insufficient information to amend its infringement
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`contentions until it received this report.32
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`Nearmap, on the other hand, argues EagleView was aware of the basis for amendment
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`before December 1.33 First, Nearmap asserts that it identified CoreLogic’s SkyMeasure product
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`as a “Nearmap Partner” and produced a SkyMeasure report in January 2022.34 Nearmap asserts
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`SkyMeasure reports are also publicly available on CoreLogic’s website.35 Second, Nearmap
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`notes that EagleView’s final infringement contentions, served on August 29, 2022, mentioned
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`SkyMeasure reports in a claim chart.36 According to Nearmap, this shows EagleView knew of
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`“potential infringement” related to the SkyMeasure reports at that time.37 Third, Nearmap points
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`to the October 21, 2022 email stating EagleView’s intention to amend its final infringement
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`contentions to add allegations related to CoreLogic’s SkyMeasure reports.38 Finally, Nearmap
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`contends CoreLogic discontinued its SkyMeasure reports based on a collaboration with
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`EagleView announced in April 2022.39 Nearmap argues this collaboration means “EagleView
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`31 (Id. at 4.)
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`32 (See id.; Reply 1, 6–8, Doc. No. 230.)
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`33 (Opp’n 1–2, 5–9, Doc. No. 206.)
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`34 (See id. at 8; Exs. 6 & 7 to Opp’n, Doc. Nos. 208-6 & 208-7 (sealed).)
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`35 (See Opp’n 8, Doc. No. 206.)
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`36 (See Opp’n 1, 5, Doc. No. 206; Ex. 4 to Opp’n, Excerpt of Final Infringement Contentions,
`Doc. No. 206-4.)
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`37 (Opp’n 1, Doc. No. 206.)
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`38 (Id. at 1–2; Ex. 1 to Opp’n, Doc. No. 206-1.)
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`39 (Opp’n 2, Doc. No. 206.)
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`cannot claim that it only recently discovered CoreLogic’s SkyMeasure reports or recently
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`discovered how they were generated.”40
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`As an initial matter, the SkyMeasure report produced in January 2022 is insignificant.
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`EagleView explains—and Nearmap does not dispute—that CoreLogic’s SkyMeasure reports
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`were not always created using Nearmap’s Roof Geometry Technology.41 EagleView asserts the
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`particular report produced in January 2022 was not generated using Nearmap’s Roof Geometry
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`Technology,42 and Nearmap does not argue otherwise. Similarly, EagleView explains the
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`reports on CoreLogic’s websites are templates which do not use Roof Geometry Technology.43
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`At the hearing, Nearmap conceded SkyMeasure reports using Roof Geometry Technology are
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`not publicly available online. Accordingly, the first time EagleView received a SkyMeasure
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`report generated using Nearmap’s Roof Geometry Technology was December 1, 2022.
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`EagleView has demonstrated it lacked sufficient information to amend its final
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`contentions until it received this SkyMeasure report on December 1. The District of Utah’s local
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`patent rules require infringement contentions to include “a chart identifying specifically where
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`each element of each asserted claim is found within each Accused Instrumentality,” in addition
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`to other detailed information.44 Although EagleView was previously aware that Roof Geometry
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`Technology was used to generate some SkyMeasure reports (based on Nearmap’s October 2022
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`supplemental discovery responses), EagleView needed an actual report in order to provide a
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`40 (Id.)
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`41 (Reply 1, Doc. No. 230.)
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`42 (See id. at 7.)
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`43 (See id. at 7–8.)
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`44 LPR 2.3(c); LPR 3.1.
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`detailed claim chart as required under the local rules.45 As EagleView explained at the hearing,
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`it was only able to determine which patents and limitations were implicated after reviewing the
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`report produced on December 1. A general awareness that Nearmap’s technology was being
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`used in SkyMeasure reports was insufficient to permit EagleView to amend its contentions with
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`the level of detail required.
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`Nearmap’s arguments regarding earlier discovery of the basis for amendment are not
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`persuasive. The August 29 final infringement contentions (which EagleView noted at the
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`hearing totaled more than two thousand pages) contain only a brief mention of SkyMeasure
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`reports in one claim chart.46 This isolated reference does not establish EagleView had sufficient
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`information to provide fulsome infringement contentions regarding the SkyMeasure reports at
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`that time. Further, EagleView’s October 21 email stating its intention to amend does not
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`establish EagleView had sufficient information to provide a detailed claim chart at that time. It
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`is apparent EagleView suspected the Roof Geometry Technology used in SkyMeasure reports
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`infringed EagleView’s patents and was actively seeking further discovery on the issue—
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`including through a then-pending discovery motion. But EagleView needed an actual report in
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`order to provide detailed allegations regarding how its patents are infringed, as required under
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`the local rules. Finally, the mere fact that EagleView has collaborated with CoreLogic does not
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`establish that EagleView had any knowledge regarding the specifics of how prior SkyMeasure
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`reports were generated.
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`EagleView was diligent in discovering the basis for the amendment, including diligently
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`seeking to obtain a SkyMeasure report generated using Roof Geometry Technology. EagleView
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`45 (See Mot. 4, 6, Doc. No. 192; Reply 2–3, Doc. No. 230.)
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`46 (See Ex. 4 to Opp’n, Doc. No. 206-4.)
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`discovered the existence of Nearmap’s Roof Geometry Technology through a source code
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`review in June 2022, and promptly amended its initial infringement contentions in July 2022 to
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`identify this as an accused product. EagleView then made diligent efforts to obtain discovery
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`regarding this product—including propounding discovery requests seeking all uses and supply
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`chains for this product in August 2022 and filing a motion to compel Nearmap to provide that
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`information in October 2022. That discovery motion remained pending when Nearmap finally
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`produced a SkyMeasure report on December 1. Separately, EagleView subpoenaed CoreLogic
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`in an effort to obtain SkyMeasure reports. These efforts demonstrate EagleView diligently
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`sought the information it would need in order to provide infringement contentions related to
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`CoreLogic’s SkyMeasure Reports.
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`In sum, EagleView was diligent in discovering the basis for the proposed amendment,
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`and EagleView had sufficient information to provide amended infringement contentions related
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`to the SkyMeasure reports only when it receiving an actual report generated using Nearmap’s
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`accused Roof Geometry Technology on December 1, 2022. EagleView timely moved to amend
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`within fourteen days of receiving that report. Under these circumstances, good cause supports
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`the amendment, and the motion was timely under the local rules.
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`B. Unfair Prejudice
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`The local patent rules permit amendment of final infringement contentions only in the
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`“absence of unfair prejudice to opposing parties.”47 But “it is usually true that any amendment
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`of the Final Contentions would lead to additional work and expense on the part of the non-
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`amending party.”48 “Thus, the inconvenience and expense required by additional discovery and
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`47 LPR 3.4.
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`48 Corel Software, LLC, 2018 U.S. Dist. LEXIS 189832, at *9.
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`briefing of the new issues does not generally rise to the level of undue prejudice.”49 “Instead, an
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`amendment may be prejudicial if its timing prevents the defendant from pursuing a potentially
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`promising line of defense.”50
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`Amendment of final infringement contentions at this stage will not unfairly prejudice
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`Nearmap. Since EagleView’s motion was filed, the pre-claim construction fact discovery period
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`has closed and the parties have filed claim construction briefs.51 However, the court recently
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`granted both parties leave to amend their pleadings and permitted EagleView to add new claims
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`and defendants.52 Where claim construction is incomplete and the operative pleadings have
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`recently been amended to add new claims and parties, the amendment of final contentions at this
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`stage is unlikely to significantly alter the trajectory of this case. Further, EagleView represented
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`at the hearing that it has already completed most discovery related to CoreLogic’s SkyMeasure
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`reports, and it anticipates any remaining discovery can be completed during the post-claim
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`construction discovery period.
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`Nearmap argues it would be unfairly prejudiced if EagleView were permitted to add
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`infringement allegations related to CoreLogic’s SkyMeasure reports without being required to
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`49 Id.
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`50 Id. (internal quotation marks omitted).
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`51 (See Second Am. Patent Case Scheduling Order, Doc. No. 152 (providing the close of fact
`discovery before claim construction was January 13, 2023); see also Doc. Nos. 244 & 245 (claim
`construction motions filed January 27, 2023).)
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`52 (See Mem. Decision and Order Granting Def.’s Mot. for Leave to File First Am. Answer and
`Countercls., and Granting in Part and Den. in Part Pls.’ Mot. for Leave to File an Am. Compl.,
`Doc. No. 267.) EagleView’s motion to amend was granted in part and denied in part. The court
`granted leave to add new patent infringement, trade secret, and misappropriation claims against
`Nearmap and to add two new defendants—Nearmap Australia Pty Ltd. and Nearmap Ltd. (See
`id. at 5–8.) The court denied EagleView’s request to add another entity, GAF Materials LLC, as
`a defendant. (See id.)
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`produce its agreement with CoreLogic that led to discontinuation of the SkyMeasure reports.53
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`Nearmap notes the court denied Nearmap’s motion to compel EagleView to respond to discovery
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`requests regarding this agreement.54 But Nearmap’s motion to compel was denied because
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`Nearmap’s requests were untimely served after the deadline to serve written discovery requests
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`in the operative scheduling order (and because Nearmap failed to adequately meet and confer
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`regarding certain requests).55 That prior order does not prevent Nearmap from moving to amend
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`the scheduling order based on EagleView’s amendment of final infringement contentions. To
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`the extent new discovery is warranted which cannot be accommodated under the current
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`schedule, Nearmap (or any other party) may move to amend the scheduling order.
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`For these reasons, permitting EagleView to amend its final contentions to include
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`allegations related to CoreLogic’s SkyMeasure reports will not unfairly prejudice Nearmap.
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`C. Other Arguments
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`Nearmap suggests EagleView’s failure to provide Nearmap with its proposed amended
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`contentions warrants denial of the motion.56 But nothing in the local patent rules requires
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`EagleView to provide its proposed amendments when moving to amend final contentions.57
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`53 (Opp’n 9–10, Doc. No. 206.)
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`54 (See Order Den. Nearmap’s Short Form Disc. Mot. Re: Disc. Reqs. Served on Oct. 10, 2022
`and Earlier Served Disc. Reqs., Doc. No. 151.)
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`55 (See id. at 2–4.)
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`56 (Opp’n 8–9, Doc. No. 206.)
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`57 See LPR 3.4; see also C.R. Bard v. Med. Components, No. 2:17-cv-00754, 2021 U.S. Dist.
`LEXIS 114537, at *12 (D. Utah Mar. 5, 2021) (unpublished) (“[T]he local rules do not require [a
`party] to include its proposed amendments with its motion to amend [final contentions].”).
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`EagleView provided sufficient information regarding its proposed amendments to allow the
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`court to conduct a good-cause analysis, as set forth above.58 Nothing further is required.
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`CONCLUSION
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`EagleView’s motion to amend final infringement contentions59 is granted. EagleView
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`shall serve amended final infringement contentions within fourteen days.
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`DATED this 2nd day of June, 2023.
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`BY THE COURT:
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`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
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`58 Cf. C.R. Bard, 2021 U.S. Dist. LEXIS 114537, at *12 (denying leave to amend final
`contentions where the party failed to “provide the court with enough information to conduct a
`good-cause analysis”).
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`59 (Doc. No. 192.)
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