Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1116 Page 1 of 14
`
`Jess M. Krannich (#14398)
`KIRKLAND & ELLIS LLP
`60 East South Temple
`Salt Lake City, UT 84111
`Telephone: (801) 877-8100
`Facsimile: (801) 877-8101
`jess.krannich@kirkland.com
`
`Attorney for Plaintiffs - Additional counsel listed in signature
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH
`
`EAGLE VIEW TECHNOLOGIES, INC.,
`and PICTOMETRY INTERNATIONAL
`CORP.,
`
`Plaintiffs,
`
`v.
`
`NEARMAP US, INC.,
`
`Defendant.
`
`PLAINTIFFS’ ANSWER TO
`COUNTERCLAIMS
`
`
`
`
`
`Case No.: 2:21-cv-00283-TS-DAO
`
`
`
`District Judge Ted Stewart
`Magistrate Judge Daphne A. Oberg
`
`
`
`
`
`ANSWER TO COUNTERCLAIMS
`
`Plaintiffs Eagle View Technologies, Inc. (“EagleView”) and Pictometry International
`
`Corp. (“Pictometry”) (collectively, “Plaintiffs”) hereby answer the Counterclaims of Defendant
`
`Nearmap US, Inc. (“Nearmap”) dated November 29, 2021. To the extent not expressly admitted,
`
`Plaintiffs deny the allegations set forth in Defendant’s Counterclaims.
`
`1.
`
`Paragraph 1 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that Nearmap’s Counterclaims
`
`
`
`1
`
`
`
`Jess M. Krannich (#14398)
`KIRKLAND & ELLIS LLP
`60 East South Temple
`Salt Lake City, UT 84111
`Telephone: (801) 877-8100
`Facsimile: (801) 877-8101
`jess.krannich@kirkland.com
`
`Attorney for Plaintiffs - Additional counsel listed in signature
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH
`
`EAGLE VIEW TECHNOLOGIES, INC.,
`and PICTOMETRY INTERNATIONAL
`CORP.,
`
`Plaintiffs,
`
`v.
`
`NEARMAP US, INC.,
`
`Defendant.
`
`PLAINTIFFS’ ANSWER TO
`COUNTERCLAIMS
`
`
`
`
`
`Case No.: 2:21-cv-00283-TS-DAO
`
`
`
`District Judge Ted Stewart
`Magistrate Judge Daphne A. Oberg
`
`
`
`
`
`ANSWER TO COUNTERCLAIMS
`
`Plaintiffs Eagle View Technologies, Inc. (“EagleView”) and Pictometry International
`
`Corp. (“Pictometry”) (collectively, “Plaintiffs”) hereby answer the Counterclaims of Defendant
`
`Nearmap US, Inc. (“Nearmap”) dated November 29, 2021. To the extent not expressly admitted,
`
`Plaintiffs deny the allegations set forth in Defendant’s Counterclaims.
`
`1.
`
`Paragraph 1 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that Nearmap’s Counterclaims
`
`
`
`1
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1117 Page 2 of 14
`
`purport to seek a declaratory judgment that one or more claims of U.S. Patent Nos. 8,209,152;
`
`8,542,880; 8,593,518; 8,670,961; 9,135,737; 9,514,568; 10,528,960; and 10,685,149 are invalid
`
`and not infringed, but denies that any of these patents or claims are invalid or not infringed.
`
`Plaintiffs admit that Nearmap’s Counterclaims purport to arise under the Declaratory Judgment
`
`Act, 28 U.S.C. §§ 2201-2202, and the Patent Laws of the United States, 35 U.S.C. § 1 et seq., but
`
`denies that there is any factual or legal basis for any of Defendants’ counterclaims.
`
`The Parties
`
`Admitted.
`
`Plaintiffs are without sufficient knowledge or information to form a belief as to the
`
`2.
`
`3.
`
`truth of the allegations in paragraph 3 of the Counterclaims and, therefore, deny them.
`
`4.
`
`5.
`
`6.
`
`Admitted.
`
`Admitted.
`
`Jurisdiction and Venue
`
`Paragraph 6 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that this Court has subject matter
`
`jurisdiction regarding the allegations of Plaintiffs’ Complaint and of Defendant’s counterclaims.
`
`7.
`
`Paragraph 7 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that this Court has subject matter
`
`jurisdiction regarding the allegations of Plaintiffs’ Complaint and of Defendant’s counterclaims.
`
`8.
`
`Paragraph 8 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs will not dispute personal jurisdiction
`
`for the purposes of this action.
`
`
`
`2
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1118 Page 3 of 14
`
`9.
`
`Paragraph 9 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs will not dispute venue for the purposes
`
`of this action.
`
`The EagleView Patents
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`Count One (Declaratory Judgment of Non-Infringement of the ’152 Patent)
`
`18.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`19.
`
`20.
`
`Admitted.
`
`Paragraph 20 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’152 patent. Plaintiffs further admit that
`
`Nearmap’s Answer and Counterclaims to EagleView’s Complaint denies EagleView’s allegation.
`
`21.
`
`22.
`
`Denied.
`
`Denied.
`
`
`
`3
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1119 Page 4 of 14
`
`23.
`
`24.
`
`Denied.
`
`Denied.
`
`Count Two (Declaratory Judgment of Invalidity of the ’152 Patent)
`
`25.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`26.
`
`Paragraph 26 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’152 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`27.
`
`28.
`
`29.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Three (Declaratory Judgment of Non-Infringement of the ’880 Patent)
`
`30.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`31.
`
`32.
`
`Admitted.
`
`Paragraph 32 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’880 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`33.
`
`34.
`
`Denied.
`
`Denied.
`
`
`
`4
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1120 Page 5 of 14
`
`35.
`
`36.
`
`Denied.
`
`Denied.
`
`Count Four (Declaratory Judgment of Invalidity of the ’880 Patent)
`
`37.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`38.
`
`Paragraph 38 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’880 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`39.
`
`40.
`
`41.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Five (Declaratory Judgment of Non-Infringement of the ’518 Patent)
`
`42.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`43.
`
`44.
`
`Admitted.
`
`Paragraph 44 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’518 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`45.
`
`46.
`
`Denied.
`
`Denied.
`
`
`
`5
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1121 Page 6 of 14
`
`47.
`
`48.
`
`Denied.
`
`Denied.
`
`Count Six (Declaratory Judgment of Invalidity of the ’518 Patent)
`
`49.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`50.
`
`Paragraph 50 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’518 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`51.
`
`52.
`
`53.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Seven (Declaratory Judgment of Non-Infringement of the ’961 Patent)
`
`54.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`55.
`
`56.
`
`Admitted.
`
`Paragraph 56 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’961 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`57.
`
`58.
`
`Denied.
`
`Denied.
`
`
`
`6
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1122 Page 7 of 14
`
`59.
`
`60.
`
`Denied.
`
`Denied.
`
`Count Eight (Declaratory Judgment of Invalidity of the ’961 Patent)
`
`61.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`62.
`
`Paragraph 62 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’961 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`63.
`
`64.
`
`65.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Nine (Declaratory Judgment of Non-Infringement of the ’737 Patent)
`
`66.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`67.
`
`68.
`
`Admitted.
`
`Paragraph 68 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’737 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`69.
`
`70.
`
`Denied.
`
`Denied.
`
`
`
`7
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1123 Page 8 of 14
`
`71.
`
`72.
`
`Denied.
`
`Denied.
`
`Count Ten (Declaratory Judgment of Invalidity of the ’737 Patent)
`
`73.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`74.
`
`Paragraph 74 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’737 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`75.
`
`76.
`
`77.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Eleven (Declaratory Judgment of Non-Infringement of the ’568 Patent)
`
`78.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`79.
`
`80.
`
`Admitted.
`
`Paragraph 80 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’568 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`81.
`
`82.
`
`Denied.
`
`Denied.
`
`
`
`8
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1124 Page 9 of 14
`
`83.
`
`84.
`
`Denied.
`
`Denied.
`
`Count Twelve (Declaratory Judgment of Invalidity of the ’568 Patent)
`
`85.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`86.
`
`Paragraph 86 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’568 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`87.
`
`88.
`
`89.
`
`Denied.
`
`Denied.
`
`Denied.
`
`Count Thirteen (Declaratory Judgment of Non-Infringement of the ’960 Patent)
`
`90.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`91.
`
`92.
`
`Admitted.
`
`Paragraph 92 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’960 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`93.
`
`94.
`
`Denied.
`
`Denied.
`
`
`
`9
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1125 Page 10 of 14
`
`95.
`
`96.
`
`Denied.
`
`Denied.
`
`Count Fourteen (Declaratory Judgment of Invalidity of the ’960 Patent)
`
`97.
`
`Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`98.
`
`Paragraph 98 of the Counterclaims contains legal conclusions to which no response
`
`is required. To the extent a response is required, Plaintiffs admit that they allege that Nearmap
`
`infringes at least one valid and enforceable claim of the ’960 patent. Plaintiffs further admit that
`
`Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`99.
`
`Denied.
`
`100. Denied.
`
`101. Denied.
`
`Count Fifteen (Declaratory Judgment of Non-Infringement of the ’149 Patent)
`
`102. Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`103. Admitted.
`
`104. Paragraph 104 of the Counterclaims contains legal conclusions to which no
`
`response is required. To the extent a response is required, Plaintiffs admit that they allege that
`
`Nearmap infringes at least one valid and enforceable claim of the ’149 patent. Plaintiffs further
`
`admit that Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`105. Denied.
`
`106. Denied.
`
`
`
`10
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1126 Page 11 of 14
`
`107. Denied.
`
`108. Denied.
`
`Count Sixteen (Declaratory Judgment of Invalidity of the ’149 Patent)
`
`109. Plaintiffs incorporate by reference and reallege their responses to each and every
`
`allegation set forth above, as though fully set forth herein.
`
`110. Paragraph 110 of the Counterclaims contains legal conclusions to which no
`
`response is required. To the extent a response is required, Plaintiffs admit that they allege that
`
`Nearmap infringes at least one valid and enforceable claim of the ’149 patent. Plaintiffs further
`
`admit that Nearmap’s Answer to EagleView’s Complaint denies EagleView’s allegation.
`
`111. Denied.
`
`112. Denied.
`
`113. Denied.
`
`RESPONSE TO PRAYER FOR RELIEF
`
`Plaintiffs deny that Defendant is entitled to any of its requested relief or to any different
`
`relief. Plaintiffs request judgment in their favor on all of Defendant’s Counterclaims and requested
`
`remedies.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiffs respectfully request the relief requested in their Complaint as
`
`well as the following relief:
`
`A.
`
`B.
`
`An order dismissing each of Defendant’s Counterclaims, with prejudice;
`
`A declaration that this is an exceptional case and an award to Plaintiffs of
`
`attorneys’ fees pursuant to 35 U.S.C. § 285;
`
`
`
`11
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1127 Page 12 of 14
`
`C.
`
`D.
`
`An award of Plaintiffs’ costs and expenses in this action; and
`
`Such other and further relief as this Court may deem just and proper.
`
`
`
`12
`
`
`
`
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1128 Page 13 of 14
`
`Dated: December 20, 2021
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Jess M. Krannich
`Jess M. Krannich (#14398)
`KIRKLAND & ELLIS LLP
`60 East South Temple
`Salt Lake City, UT 84111
`(801) 877-8100
`jess.krannich@kirkland.com
`
`Adam R. Alper (pro hac vice)
`Brandon H. Brown (pro hac vice)
`Natalie Flechsig (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`(415) 439-1400
`adam.alper@kirkland.com
`brandon.brown@kirkland.com
`natalie.flechsig@kirkland.com
`
`Michael W. De Vries (pro hac vice)
`KIRKLAND & ELLIS LLP
`555 South Flower Street
`Suite 3700
`Los Angeles, CA 90071
`(213) 680-8400
`michael.devries@kirkland.com
`
`Leslie Schmidt (pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`leslie.schmidt@kirkland.com
`
`
`13
`
`
`
`Case 2:21-cv-00283-TS-DAO Document 54 Filed 12/20/21 PageID.1129 Page 14 of 14
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 20th day of December, 2021, the undersigned electronically
`
`transmitted the foregoing PLAINTIFFS’ ANSWER TO COUNTERCLAIMS to the Clerk’s
`Office for the United States District Court for the District of Utah using the District Court’s
`CM/ECF System, which shall electronically serve a copy of the foregoing upon counsel of record
`for all parties in the above-captioned case.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jess M. Krannich
`Jess M. Krannich
`
`
`
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
