Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1188 Page 1 of 13
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`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
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`Attorney for Plaintiffs - Additional counsel listed in signature
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH
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`EAGLE VIEW TECHNOLOGIES, INC.,
`and PICTOMETRY INTERNATIONAL
`CORP.,
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`Plaintiffs,
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`v.
`NEARMAP US, INC.,
`Defendant.
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`MOTION UNDER DUCivR 42-1(a) TO
`CONSOLIDATE RELATED CASE AND
`FOR ENTRY OF CONSOLIDATED
`CASE SCHEDULE
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`Case No.: 2:21-cv-00283-TS-DAO
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`District Judge Ted Stewart
`Magistrate Judge Daphne A. Oberg
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1189 Page 2 of 13
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`Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp. (collectively,
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`“Plaintiffs” or “EagleView”) respectfully move to (1) consolidate for all pretrial purposes Eagle
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`View Technologies, Inc et al. v. GAF Materials, LLC, case no. 2:22-cv-00215-JCB (the “GAF
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`case”), which was recently transferred to this District and is currently assigned to Magistrate Judge
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`Jared C. Bennett, with Eagle View Technologies, et al. v. Nearmap US, Inc., case no. 2:21-cv-
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`00283 (the “Nearmap case”), which is pending before this Court; and (2) for entry of the proposed
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`consolidated case schedule, attached hereto as Exhibit 1. Nearmap agrees to the proposed
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`consolidation for pretrial purposes and also agrees to EagleView’s proposed schedule. GAF has
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`not agreed to consolidation, but has not affirmatively opposed it either.1
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`The Nearmap and GAF cases should be consolidated for pretrial purposes. Consolidation
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`will avoid unnecessary duplication of efforts, wastes of party and Court resources, and a prejudicial
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`delay in the GAF proceedings. It is undisputed that every applicable factor of DUCivR 42-1
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`strongly supports consolidation: each action shares the same plaintiffs, most of the same asserted
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`1 Pursuant to DUCivR 83-2(g), GAF recently agreed to EagleView’s motion for an intra-District
`transfer of the GAF case from Judge Bennett to this Court. Dkt. 59. With respect to GAF’s
`position on consolidation, in connection with its motion to transfer the GAF case to this District
`from the District of New Jersey, GAF repeatedly argued for the pre-trial consolidation of the
`GAF and Nearmap cases in this Court, pursuant to the existing Nearmap case schedule.
`Accordingly, before filing this motion, EagleView sought to confirm GAF’s position on
`consolidation and a consolidated case schedule. GAF, however, would not commit to
`consolidating the cases nor confirm that its position will be the same as it was before the
`District of New Jersey, and it did not provide feedback on the proposed consolidated case
`schedule. GAF also suggested that it could not weigh in on consolidation until it retains Utah
`local counsel (despite having previously repeatedly stated that consolidation could occur on
`the existing schedule in the Nearmap case, in support of its transfer motion). In light of GAF’s
`apparent change in position, and because the Nearmap case continues to move forward,
`EagleView respectfully brings this motion now, to resolve this issue before significant case
`events occur in the Nearmap case that would benefit from consolidation (e.g., Markman
`proceedings and other joint deadlines).
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`1
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1190 Page 3 of 13
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`patents, and according to GAF, the same accused technologies. Without pretrial consolidation,
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`EagleView will be forced to engage in duplicative discovery (including depositions, and potential
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`discovery disputes), Markman proceedings, and dispositive motions. This wasteful and highly
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`inefficient use of resources would also unnecessarily delay resolution of the GAF case.
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`GAF does not dispute the application of the consolidation factors here—in conferring over
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`EagleView’s motion to transfer the GAF case to this Court, GAF agreed that the very same factors
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`were met. See Dkt. 59. Likewise, Judge Bumb recognized the very same facts in ordering transfer
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`from New Jersey, when she relied on this overlap between the cases—and, according to her, the
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`attendant risk of inconsistent results and duplication of judicial efforts—as the sole basis for her
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`order, finding that it outweighed every other transfer factor, which leaned against transfer or was
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`neutral. Eagle View Technologies, Inc., et al. v. GAF Materials, LLC, No. 1:21-cv-10669, Dkt. 65
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`at 20 (D.N.J. March 28, 2022) (“Transfer Order”).
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`GAF’s reluctance to now take a position on consolidation is contrary to its repeated
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`statements to Judge Bumb during the transfer proceedings that the cases should be consolidated
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`on the existing Nearmap schedule. Ex. 2 (1/21/2022 Hr’g Tr. in GAF case) at 53:10-12 (“We just
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`don’t see the prejudice to EagleView if this case were to be transferred and, say, consolidated on
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`the same schedule that’s already been entered into.”),2 19:11-14 (“Utah is essentially the only
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`place where this case could be consolidated, where there could be one judge hearing everything.”).
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`As GAF stated it in its transfer briefing, “[t]here is no reason for two courts to be simultaneously
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`considering discovery issues, reviewing Markman briefing on the same patents, and holding
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`2 All emphases added unless otherwise noted.
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`2
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1191 Page 4 of 13
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`multiple trials on the same patents, which would be the case absent transfer to Utah.” GAF case,
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`Dkt. 32-1 at 21. And while GAF has vaguely suggested during the parties’ meet and confers over
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`this motion that consolidation might be improper because it may refile a motion to dismiss the
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`patents-in-suit on § 101 grounds, that is incorrect. Discovery and other pretrial activities in the
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`consolidated cases can proceed in parallel with such a motion to dismiss, and any such motion—
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`which would effectively seek reconsideration of the Court’s § 101 analysis in the Nearmap case—
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`does not justify allowing the cases to proceed in an uncoordinated fashion. GAF has not raised
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`any issues with EagleView’s proposed schedule to move the two cases forward, which provides
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`GAF with many additional months before key disclosures are due—even though EagleView filed
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`the GAF case nearly a year ago. For these reasons, EagleView respectfully requests that its motion
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`to consolidate be granted, and its proposed consolidated case schedule entered.
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`I.
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`STATEMENT OF FACTS
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`On May 4, 2021, EagleView filed both the Nearmap case (in this District) and the GAF
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`case (in the District of New Jersey). The Nearmap case asserted infringement of eight patents, and
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`the GAF case alleged infringement of nine patents; six asserted patents are the same between both
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`cases. Dkt. 2; GAF case at Dkt. 1. Nearmap filed a motion to dismiss based on § 101 against the
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`’152 patent (also asserted against GAF) and the ’737 patent. Dkt. 40. This Court denied that
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`motion, holding that “[w]hatever the focus of the patent claims at issue, Nearmap has not
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`convinced the court that it is an abstract idea. The representative claims recite specific
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`computerized steps using specific inputs and outputs to achieve specific goals in roof modeling
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`technology.” Dkt. 50 at 7.
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`3
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1192 Page 5 of 13
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`In New Jersey, GAF also filed a motion to dismiss based on § 101 on all nine patents
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`pending there, as well as a motion to transfer the case to this District. GAF specifically confirmed
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`in its transfer briefing that “[t]here is no reason for two courts to be simultaneously considering
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`discovery issues, reviewing Markman briefing on the same patents, and holding multiple trials on
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`the same patents, which would be the case absent transfer to Utah.” GAF case, Dkts. 31-32; id. at
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`Dkt. 32-1 at 21. GAF also contended that the accused products in both cases are based on the same
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`Nearmap technology. Id. at 6, 14. On those bases, Judge Bumb ordered transfer, even though she
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`found every other factor to be either neutral or weighing against transfer. Transfer Order at 20.
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`As Judge Bumb stated, “[c]onsidering the significant overlap of mostly the same patents asserted,
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`the similarity of products accused, the potential for inconsistent results, and duplication of judicial
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`efforts, the Court finds that the practical considerations at issue strongly tilt … in favor of
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`transferring the present action to the District of Utah.” Id. at 20, 22.
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`On April 7, 2022, EagleView moved for an intra-District transfer of the GAF case to this
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`Court under DUCivR 83-2(g). Dkt. 59. Although GAF has not taken a position with respect to
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`consolidation or EagleView’s proposed consolidated case schedule, it does not oppose the transfer
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`of the GAF case to this Court. Id. at 2, n.1.
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`II.
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`ARGUMENT
`A.
`All Five Factors Weigh in Favor of Consolidation
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`Pursuant to DUCiv42-1(a), when two or more cases are pending before a single judge, any
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`party may file a motion to consolidate those cases if the party believes that such cases:
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`(1) arise from substantially the same transaction or event;
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`(2) involve substantially the same parties or property;
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`(3) involve the same patent, trademark, or copyright;
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`4
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1193 Page 6 of 13
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`(4) call for determination of substantially the same questions of law; or
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`(5) for any other reason would entail substantial duplication of labor or unnecessary
`court costs or delay if heard by different judges.
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`Here, based on the relationship between the GAF and Nearmap case and GAF’s
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`representations before Judge Bumb in support of its motion to transfer the GAF case to this
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`District, all applicable factors support consolidation of the GAF and Nearmap cases. This is
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`undisputed: GAF already agreed that these very same factors are met in connection with the intra-
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`District transfer of the GAF case from Judge Bennett to this Court under DUCivR 83-2(g). See
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`Dkt. 59 (EagleView motion to transfer which was not opposed by GAF); Ex. 3 (4/6/22 and 4/7/22
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`correspondence confirming GAF agrees with the substance of EagleView’s transfer motion). And
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`in arguing for transfer of the GAF case before Judge Bumb, GAF repeatedly represented that
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`consolidation of the GAF and Nearmap cases in Utah was appropriate. Ex. 2 at 19:11-14 (“Utah
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`is essentially the only place where this case could be consolidated, where there could be one judge
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`hearing everything.”), 53:10-17.
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`An analysis of the consolidation factors confirms that consolidation is appropriate here.
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`With respect to factor 1 (substantially the same transaction or event), factor 2 (same parties) and
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`factor 3 (same patents), six of the same patents are asserted in both matters, and, as Judge Bumb
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`stated in her transfer opinion, all asserted patents in both cases involve specific aspects of systems
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`and methods for generating roof measurement information. Moreover, according to GAF, GAF
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`uses the same Nearmap technology accused of infringement in the Nearmap case, which GAF says
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`is rebranded as GAF “QuickMeasure” reports. See Transfer Order at 5, 13-14; see also Ex. 2 at
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`14:20-21 (GAF arguing that “[B]ut for Nearmap, there are no [GAF] QuickMeasure reports.”).
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`Judge Bumb relied on these assertions in ordering transfer. Transfer Order at 18 (Judge Bumb
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`5
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1194 Page 7 of 13
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`finding that “It may very well be the case that it was, in fact, Utah-based Nearmap that developed
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`and maintains the software and source code behind GAF’s Accused Product, which would strongly
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`suggest that the District of Utah is the proper venue for this suit.”).
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`Factor 4 (determination of substantially the same questions of law) also weighs heavily in
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`favor of consolidation. Given GAF’s assertions concerning the overlap between the cases, there
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`will certainly be common questions of law and fact on core issues such as patent claim scope,
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`infringement, and or invalidity. GAF repeatedly relied on this overlap in its transfer motion. GAF
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`case, Dkt. 32-1 at 20-22. And without consolidation, there is a risk of inconsistent outcomes—a
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`fact GAF also relied on in seeking transfer to this Court. Id. at 2-3 (“Unless this case is transferred
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`to Utah, there is a substantial risk of inconsistent judgments and inefficient duplication of judicial
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`expenditures, even just on the motions that have been filed to date (including a partial motion
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`to dismiss filed in the Utah Action and GAF’s concurrently filed motion to dismiss in this action,
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`both of which seek dismissal of some of the same claims based on Section 101).”).
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`Likewise, there is no question factor 5 (avoiding duplicative work and unnecessary delay)
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`is met, too. Without pretrial consolidation, EagleView and the Court will be forced to engage in
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`duplicative discovery proceedings, including requiring individual witnesses to sit for multiple
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`depositions covering the same subject matter. The Court’s resources will also be wasted if the
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`cases are not consolidated. For example, without consolidation, there will be duplicative and
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`overlapping Markman proceedings and duplicative dispositive motions. The potential for
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`duplication of proceedings absent consolidation is not speculative: GAF has already suggested that
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`it may take another run at § 101 at the motion to dismiss stage. Not only has this Court already
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`rejected overlapping § 101 arguments on EagleView’s patents, GAF indicated to Judge Bumb that
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1195 Page 8 of 13
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`it would not reargue § 101 if she transferred the case to Utah.3 Ex. 2 at 18:18-19:2, 57:24-58:7;
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`see also GAF case, Dkt. 32-1 at 6 (arguing to Judge Bumb the “substantial risk of inconsistent
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`judgments” on the § 101 motions because those motions “seek dismissal of some of the same
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`claims”). As with the other factors, this factor weighs heavily in favor of consolidation, as GAF
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`itself confirmed when it explicitly relied on it in urging Judge Bumb to transfer the GAF case to
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`this Court. Id. at 6:23-7:5 (“That Utah case is off and running. There’s a scheduling order, as
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`Your Honor probably saw, which we submitted earlier this week. That case is in discovery and is
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`going to proceed. So the only way to avoid two parallel cases involving six of the same patents,
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`same plaintiffs, same technology, and at least one entity that is involved in both of the accused
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`products, is to transfer.”).
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`B.
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`GAF’s Apparent Arguments Concerning a Motion to Dismiss Are Unavailing
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`During the parties’ meet and confer process leading to this motion, GAF would not take a
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`clear position on consolidation—despite having urged the propriety of consolidation when it was
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`trying to get the GAF case transferred to this Court. Ex. 2 at 53:10-12, 19:11-14. Nor has GAF
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`articulated any specific reasons as to why it would or could reverse course and oppose
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`consolidation. Although GAF vaguely asserted that it might renew its motion to dismiss on § 101
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`grounds, that is not relevant. Regardless of how GAF responds to EagleView’s complaint,
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`discovery and other pretrial proceedings in the GAF and Nearmap cases can proceed while the
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`3 GAF’s prior position respecting the Court’s § 101 opinion was for good reason: the Court’s
`reasoning for rejecting Nearmap’s § 101 arguments with respect to the ’152 and ’737 patents
`applies to the other patents asserted in the GAF case, as those too “recite specific computerized
`steps using specific inputs and outputs to achieve specific goals in roof modeling technology,”
`which the Court found to indicate the EagleView patent claims are not abstract. Dkt. 50 at 7.
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1196 Page 9 of 13
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`Court presides over any potential motion to dismiss in parallel. Certainly, GAF’s desire to renew
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`its motion to dismiss does not outweigh the many justifications for consolidation discussed above,
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`nor the prejudice to EagleView if consolidation is not ordered.
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`This approach is consistent with this Court’s application of the local patent rules. For
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`example, in Phillip M. Adams & Associates, LLC v. Dell, Inc. and Quanta Computer, et al., the
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`plaintiff filed suit on the same five patents against different defendants in two cases that were filed
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`two years apart. Case No. 1:05-cv-64, Dkt. 432 (D. Utah Jan. 23, 2008). The Court granted a
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`motion for consolidation despite the later-sued defendant’s assertions that it would be
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`“disadvantaged by an acceleration of their discovery process to catch up with discovery in the
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`older … case,” finding instead that such arguments “are not persuasive because they can be
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`addressed by adjustments in the scheduling ‘to avoid unnecessary costs or delay.’” Id. at 3-4
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`(citing Fed. R. Civ. P. 42(a)). Moreover, the Court held that a pending motion to dismiss for lack
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`of personal jurisdiction by a consolidated defendant could be adjudicated “without affecting the
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`remainder of the case,” such that “consolidation will allow all issues regarding the alleged
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`infringement of the five patents to go forward in one case and will thereby avoid unnecessary costs
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`and delay….” Id. at 5-6.
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`Likewise here, to the extent GAF renews its motion to dismiss, the Court may preside over
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`that motion while also allowing the GAF and Nearmap cases to move forward in consolidated
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`fashion. Id. Any other result would lead to great inefficiencies, and unnecessarily delay the GAF
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`case without justification, particularly considering a jury and three judges—Judge Bumb, Judge
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`Kugler, and this Court—have now found that collectively five (’436, ’376, ’840, ’152, ’880) of
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`EagleView’s patents asserted against GAF are not invalid under § 101. GAF case, Dkt. 11-2, Ex.
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1197 Page 10 of 13
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`13 (Judge Kugler denying Motion for Summary Judgment); id. at Ex. 10 (Judge Bumb denying
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`Motion for New Trial); Dkt. 50 (this Court denying Motion to Dismiss).
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`GAF’s resistance is inconsistent with its representations to Judge Bumb in connection with
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`the transfer proceedings. There, GAF acknowledged that this Court had already made findings on
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`the ’152 patent asserted in both cases, and suggested that any additional Section 101 arguments
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`are for “down the line,” i.e., not at the motion to dismiss stage. Ex. 2 at 18:23-19:2 (Judge
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`Stewart’s denial of Nearmap’s § 101 Motion to Dismiss was “just on a motion to dismiss. There
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`were a number of issues that he may grapple with down the line….”); id. at 57:24-58:7 (“My point
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`is one of efficiency or convenience for the courts. Judge Stewart has already made some Alice
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`calls. . . . I believe it’s accurate to say that Nearmap challenged only two [patents] at the pleadings
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`stage. So there will be substantial overlap of Alice calls between Utah and New Jersey if these
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`two cases proceed separately.”); id. at 18:18-22 (“This was not about trying to find the court which
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`in our view was going to be the best place for the arguments that we were advancing [with respect
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`to its Section 101 motion to dismiss]. This is really about where is the most convenient place,
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`where do the interests of justice lie.”); GAF case, Dkt. 32-1 at 8 (“Nearmap has filed a partial
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`motion to dismiss in the Utah Action based on at least some of the same grounds that GAF has
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`asserted in its concurrently filed motion to dismiss.”); id. at 23 (“this Court should transfer this
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`case to where a related case at roughly the same procedural posture is pending.”). GAF’s
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`potential motion to dismiss is no impediment to consolidation with the Nearmap case.
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`C.
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`EagleView’s Proposed Schedule Integrates GAF Into The Nearmap Case
`Without Undue Delay To Either Action
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`EagleView’s proposed consolidated case schedule (Ex. 1) integrates GAF into the existing
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`Nearmap case schedule without unduly delaying either case. Specifically, EagleView’s proposed
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1198 Page 11 of 13
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`schedule is identical to that in the Nearmap case except it (1) sets specific deadlines for
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`EagleView’s and GAF’s Local Patent Rule 2.3, 2.4, 3.1, and 3.2 disclosures (infringement,
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`invalidity and unenforceability contentions); and (2) extends the current Nearmap deadlines
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`relating to fact discovery and claim construction by about a month, to accommodate GAF’s
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`integration into this case. There is no question GAF should be prepared to proceed on this
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`schedule. The GAF case was filed nearly a year ago on May 4, 2021, on the same day as the
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`Nearmap case, and GAF will have an additional four months from now to provide its final
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`invalidity, unenforceability, and non-infringement contentions. Likewise, in view of modest
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`adjustments to the existing Nearmap case schedule, GAF will have five months before any claim
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`construction disclosures, and six months before its claim construction brief is due. The schedule
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`is also fair to Nearmap, as it only proposes modest extensions of a subset of the fact discovery and
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`claim construction deadlines. Notably, GAF has not raised any issues with this proposed
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`schedule—to the contrary, in connection with its transfer motion, it indicated to Judge Bumb that
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`consolidation could occur on the existing Nearmap schedule, without any extensions. Ex. 2 at
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`53:10-12.
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`III. CONCLUSION
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`EagleView respectfully requests that its motion to consolidate the GAF and Nearmap cases
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`be granted, and the Court enter its proposed consolidated case schedule.
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1199 Page 12 of 13
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`Dated: April 8, 2022
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`Respectfully submitted,
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` /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
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`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
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`Leslie Schmidt (pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`(212) 446-4800
`leslie.schmidt@kirkland.com
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`Attorney for Plaintiffs Eagle View
`Technologies, Inc. and Pictometry International
`Corp.
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`Case 2:21-cv-00283-TS-DAO Document 60 Filed 04/08/22 PageID.1200 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 8th day of April, 2022, the undersigned electronically
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`transmitted the foregoing MOTION UNDER DUCivR 42-1(a) TO CONSOLIDATE
`RELATED CASE AND FOR ENTRY OF CONSOLIDATED CASE SCHEDULE 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.
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`/s/ Jess M. Krannich
`Jess M. Krannich
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