`EAGLE VIEW TECHNOLOGIES, INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
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`Plaintiffs,
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`v.
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`NEARMAP US, INC.,
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`Defendant.
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING IN PART
`DEFENDANT’S SHORT FORM
`DISCOVERY MOTION REGARDING
`SETTLEMENT NEGOTIATION
`DOCUMENTS
`(DOC. NO. 349)
`
`Case No. 2:21-cv-00283
`
`District Judge Ted Stewart
`
`Magistrate Judge Daphne A. Oberg
`
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`Case 2:21-cv-00283-TS-DAO Document 392 Filed 02/20/24 PageID.19013 Page 1 of 6
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`
`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
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`In this patent infringement case, Defendant Nearmap US, Inc. (“Nearmap”) moves to
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`compel Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp.
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`(collectively, “EagleView”) to produce agreements and negotiation documents related to
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`nonparties OpenSolar and CoreLogic.1 Specifically, Nearmap seeks (1) the settlement
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`agreement between EagleView and nonparty OpenSolar and nonprivileged negotiation
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`documents related to the same; and (2) the nonprivileged negotiation documents related to an
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`agreement between EagleView and nonparty CoreLogic.2 In response, EagleView indicates the
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`settlement agreement with OpenSolar has already been produced, but it opposes production of
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`1 (Nearmap’s Short Form Disc. Mot. to Compel Resps. to Reqs. for Produc. Nos. 41–46, 47–49,
`and 51 (“Mot.”), Doc. No. 349 (sealed, unredacted version at Doc. No. 351).)
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`2 (See id. at 1.)
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`1
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`Case 2:21-cv-00283-TS-DAO Document 392 Filed 02/20/24 PageID.19014 Page 2 of 6
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`the other requested documents on grounds of relevance and undue burden.3 In reply, Nearmap
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`reiterates its request for negotiation documents related to both agreements.4 As discussed below,
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`the motion is moot as to the settlement agreement with OpenSolar, but is granted as to the
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`negotiation documents with both OpenSolar and CoreLogic because they are relevant to
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`EagleView’s contributory-infringement and induced-infringement claims against Nearmap.5
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`ANALYSIS
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`As an initial matter, the motion is moot as to the agreements between EagleView and
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`OpenSolar because the agreements have already been produced.6 Accordingly, the parties’
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`remaining dispute concerns only Nearmap’s request for the negotiation documents pertaining to
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`the agreements between EagleView and OpenSolar as well as the agreement between EagleView
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`and CoreLogic.
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`Turning to the negotiation documents, Nearmap argues the requested documents are
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`relevant to EagleView’s damages claims, indirect infringement claims, and Nearmap’s
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`patent-misuse defense.7 Nearmap contends EagleView’s negotiation documents may contain
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`evidence of: (1) comparable licenses, which could help calculate a reasonable royalty; (2)
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`3 (EagleView’s Resp. to Nearmap’s Short Form Mot. to Compel Resps. to Reqs. for Produc. Nos.
`41–46, 47–49, and 51 (“Opp’n”), Doc. No. 356 (sealed, unredacted version at docket number
`358).)
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`4 (Reply in Supp. of Nearmap’s Short Form Disc. Mot. to Compel Resps. to Reqs. for Produc.
`Nos. 41–46, 47–49, and 51 (“Reply”), Doc. No. 376 (sealed, unredacted version at Doc. No.
`378).)
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`5 This motion is addressed on the briefs, as no hearing is necessary. See DUCivR 37-1(b)(5)(B).
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`6 (See Opp’n 1–2, Doc. No. 356.)
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`7 (Mot. 2–3, Doc. No. 349.)
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`2
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`statements by EagleView contradicting their allegations in this action that third parties such as
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`CoreLogic and OpenSolar infringed on EagleView’s patents; and (3) the manner in which
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`EagleView enforced its patent, which bears on Nearmap’s patent-misuse defense.8
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`In opposition, EagleView argues these documents are irrelevant and production would be
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`unduly burdensome.9 EagleView contends the negotiation documents are irrelevant because the
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`OpenSolar agreement is not patent related.10 EagleView next argues Nearmap did not mention
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`OpenSolar in Nearmap’s patent-misuse defense—and that EagleView has previously explained
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`“negotiation documents are not relevant to a patent[-]misuse defense.”11 Finally, EagleView
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`attempts to distinguish the CoreLogic negotiation documents from similar documents the court
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`previously ordered EagleView to produce relating to its settlement with Verisk.12
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`First, the court grants Nearmap’s motion as to the CoreLogic negotiation documents—for
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`largely the same reasons the court previously ordered disclosure of similar documents related to
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`EagleView’s settlement with Verisk. Settlement and licensing agreements relating to the
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`patents-in-suit are relevant to determining a reasonable royalty and, therefore, discoverable in
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`8 (Id.)
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`9 (Opp’n, Doc. No. 356.)
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`10 (Id. at 2.)
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`11 (Id.) The quoted argument has dubious utility given the court already rejected it. (See Mem.
`Decision and Order Den. Pls.’ Mot. for a Protective Order Precluding the Dep. of Exec.
`Chairman Chris Jurasek 5, Doc. No. 369 (finding settlement negotiations relevant to patent-
`misuse defense).)
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`12 (Opp’n 2, Doc. No. 356.)
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`3
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`patent infringement cases.13 Documents regarding underlying negotiations are also relevant and
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`discoverable where they “could aid defendant in its calculations concerning a reasonable royalty
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`amount and damages.”14
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`The CoreLogic negotiation documents are relevant to EagleView’s claimed damages in
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`this case, including calculation of a reasonable royalty. As EagleView suggests, the CoreLogic
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`agreement differs from the Verisk agreement previously addressed15 because EagleView did not
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`sue CoreLogic (and, thus, did not enter a settlement agreement). But the CoreLogic agreement
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`contains an infringement release.16 Whether an agreement settles formal litigation or simply
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`pardons purported past infringement, the agreement and the circumstances of its negotiation
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`remain relevant, particularly at the discovery stage.17 Accordingly, the CoreLogic negotiation
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`documents are relevant for largely the same reasons the court found the Verisk negotiation
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`documents relevant.
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`13 E.g., Modern Font Applications v. Alaska Airlines, No. 2:19-cv-561, 2021 U.S. Dist. LEXIS
`21563, at *6–7 (D. Utah Feb. 3, 2021) (unpublished) (citing 35 U.S.C. § 284).
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`14 Kajeet, Inc. v. Qustodio, LLC, No. 18-1519, 2019 U.S. Dist. LEXIS 227979, at *23 (C.D. Cal.
`Oct. 22, 2019) (unpublished); see also Clear with Computers, LLC v. Bergdorf Goodman, Inc.,
`753 F. Supp. 2d 662, 664 (E.D. Tex. 2010) (finding settlement-related communications could
`“be key in determining whether the settlement agreements accurately reflect the inventions’
`value or were strongly influenced by a desire to avoid or end full litigation”).
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`15 (See Mem. Dec. Granting in Part Def.’s Short Form Disc. Mot. Regarding Settlement Docs.,
`Doc. No. 93.)
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`16 (Ex. 7 to Mot., Collaboration Agreement 2–3, Doc. No. 351-7 (sealed).)
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`17 See Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any nonprivileged
`matter that is relevant to any party’s claim or defense . . . .”).
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`4
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`Case 2:21-cv-00283-TS-DAO Document 392 Filed 02/20/24 PageID.19017 Page 5 of 6
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`Second, the court grants Nearmap’s motion in its entirety (as to both the CoreLogic and
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`OpenSolar negotiation documents) because the documents are relevant to EagleView’s
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`contributory-infringement and induced-infringement claims against Nearmap. “[A]bsent direct
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`infringement of the claims of a patent, there can be neither contributory infringement nor
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`inducement of infringement.”18 EagleView alleges Nearmap indirectly infringed EagleView’s
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`patents “by way of inducement and/or contributory infringement.”19 In its contentions,
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`EagleView indicates its claims of indirect infringement against Nearmap are based on direct
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`infringement by CoreLogic and OpenSolar.20 As Nearmap suggests, EagleView’s negotiation
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`documents may shed light on its decision not to bring infringement claims against OpenSolar or
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`CoreLogic directly. Such information is relevant to EagleView’s contributory infringement and
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`induced infringement claims against Nearmap, particularly as it (1) relates to EagleView’s
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`position on whether those third parties infringed or (2) reveals whether EagleView received any
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`value in return for not bringing claims against OpenSolar or CoreLogic.
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`Finally, EagleView has not demonstrated production of the negotiation documents would
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`be unduly burdensome. EagleView does not describe an overwhelming volume of information
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`and provides no estimate of the time or expense required to produce the documents Nearmap
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`seeks. Given the relevance of the requested documents, EagleView has not shown the burden or
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`18 Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1277 (Fed. Cir. 2004)
`(quoting Met-Coil Sys. Corp. v Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986)).
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`19 (Pls.’ First Am. Compl. 178, Doc. No. 274 (sealed, unredacted version at Doc. No. 276).)
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`20 (Ex. 4 to Mot., Pls.’ Contentions Pursuant to L. Pat. R. 2.3(c), Doc. No. 351-4 (sealed); Ex. 5
`to Mot., Pls.’ Contentions Pursuant to L. Pat. R. 2.3(c), Doc. No. 351-5 (sealed); see also Mot. 2,
`Doc. No. 349.)
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`Case 2:21-cv-00283-TS-DAO Document 392 Filed 02/20/24 PageID.19018 Page 6 of 6
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`expense of this discovery outweighs its likely benefit. Accordingly, the requested discovery is
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`proportional to the needs of the case.
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`CONCLUSION
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`Nearmap’s motion21 is granted in part and denied as moot in part. The motion is denied
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`as moot as to the OpenSolar agreement, which has already been produced. The motion is
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`granted as to the negotiation documents related to both the OpenSolar and CoreLogic
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`agreements. EagleView is ordered to produce the nonprivileged negotiation documents related
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`to the agreements within fourteen days of this order.
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`DATED this 20th day of February, 2024.
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`BY THE COURT:
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`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
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`21 (Doc. No. 349.)
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`6
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