`EAGLE VIEW TECHNOLOGIES, INC., and
`PICTOMETRY INTERNATIONAL CORP.,
`
`
`Plaintiffs,
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`v.
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`NEARMAP US, INC.,
`
`
`Defendant.
`
`
`MEMORANDUM DECISION AND
`ORDER GRANTING IN PART
`DEFENDANT’S SHORT FORM
`DISCOVERY MOTION REGARDING
`SETTLEMENT DOCUMENTS
`(DOC. NO. 81)
`
`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 93 Filed 07/08/22 PageID.1651 Page 1 of 6
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`
`UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
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`
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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, “Eagle View”) to produce agreements and negotiation documents related to the
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`settlement of a different patent case involving related patents. (Mot., Doc. No. 81.) Specifically,
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`Nearmap seeks (1) the settlement agreement; (2) the “integration agreement,” which the parties
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`to the other case entered into contemporaneously with the settlement agreement; and (3)
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`nonprivileged negotiation documents related to the two agreements. (Id.) Eagle View filed a
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`response indicating the settlement agreement had already been produced and opposing
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`production of the other requested documents on grounds of relevance and undue burden.
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`(Opp’n, Doc. No. 83.) The court held a hearing on July 5, 2022. (See Doc. No. 91.) As
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`explained at the hearing, the motion is moot as to the settlement agreement and granted as to the
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`other requested documents. Because the integration agreement and negotiation documents are
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`1
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`Case 2:21-cv-00283-TS-DAO Document 93 Filed 07/08/22 PageID.1652 Page 2 of 6
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`relevant to damages and proportional to the needs of the case, Eagle View must produce these
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`documents.
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`BACKGROUND
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`Eagle View brought this action against Nearmap alleging infringement of eight patents.
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`(Compl. ¶ 2, Doc. No. 2.) Eagle View seeks damages, including lost profits, in an amount not
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`less than a reasonable royalty. (Id. at 95.)
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`Eagle View asserted claims for infringement of three of the same patents in another case
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`brought by Eagle View against Xactware Solutions, Inc. and Verisk Analytics, Inc. (the
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`“Xactware litigation”). (See Mot. 1, Doc. No. 81.) These three patents were later dropped from
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`the Xactware litigation, but the case proceeded on related patents. (See id.; Opp’n 3, Doc. No.
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`83.) A judgment was entered in favor of Eagle View, and the parties entered into a settlement
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`agreement resolving the litigation while an appeal was pending. (See Mot. 1, Doc. No. 81;
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`Opp’n 3, Doc. No. 83.) Contemporaneously with the settlement agreement, Eagle View and the
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`Xactware defendants entered into an “integration agreement”—described in an Eagle View press
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`release as a “long-term commercial agreement enabling joint innovation.” (Ex. 4 to Mot., Doc.
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`No. 81-4.) The press release states the integration agreement was “part of the settlement.” (Id.)
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`Nearmap served discovery requests in this case seeking production of the Xactware
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`settlement agreement and documents and communications relating to the settlement agreement.
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`(See Ex. 2 to Mot., Pls.’ Objections and Resps. to Def.’s First Set of Reqs. for Prod. 12–13, Doc.
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`No. 81-2.) Eagle View objected on numerous grounds including relevance and undue burden.
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`(Id. at 13–14.) Eagle View produced the settlement agreement shortly before Nearmap filed the
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`2
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`Case 2:21-cv-00283-TS-DAO Document 93 Filed 07/08/22 PageID.1653 Page 3 of 6
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`instant motion to compel but has not produced the integration agreement or negotiation
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`documents.1
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`LEGAL STANDARDS
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`Rule 26(b)(1) of the Federal Rules of Civil Procedure permits “discovery regarding any
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`nonprivileged matter that is relevant to any party’s claim or defense and proportional to the
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`needs of the case, considering the importance of the issues at stake in the action, the amount in
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`controversy, the parties’ relative access to relevant information, the parties’ resources, the
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`importance of the discovery in resolving the issues, and whether the burden or expense of the
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`proposed discovery outweighs its likely benefit.” This rule provides “[i]nformation within this
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`scope of discovery need not be admissible in evidence to be discoverable.” Id.
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`ANALYSIS
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`As an initial matter, Nearmap acknowledged at the hearing that its motion is moot as to
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`the settlement agreement because this document was produced. Accordingly, the parties’ dispute
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`concerns Nearmap’s request for the integration agreement and negotiation documents.
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`Nearmap argues the requested documents are relevant to Eagle View’s claim for lost
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`profits and reasonable royalty damages for alleged patent infringement. (Mot. 2–3, Doc. No.
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`81.) Nearmap contends the integration agreement was part of the settlement of the Xactware
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`litigation, and both the integration agreement and negotiation documents are relevant to
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`assessing the value of the asserted patents. (Id.)
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`1 At the hearing, Nearmap explained the agreement was produced as part of a voluminous
`production of documents a few hours before this motion was filed, and Nearmap was unaware
`the settlement agreement had already been produced at the time of filing.
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`3
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`Case 2:21-cv-00283-TS-DAO Document 93 Filed 07/08/22 PageID.1654 Page 4 of 6
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`In opposition, Eagle View argues these documents are irrelevant and production would
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`be unduly burdensome. (Opp’n, Doc. No. 83.) According to Eagle View, the integration
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`agreement is a commercial agreement dealing with “delivery of products through platform,” and
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`it was not part of the settlement of the Xactware litigation. (Id. at 2–3.) Eagle View argues the
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`integration agreement and negotiation documents are irrelevant because the only pertinent
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`information is the final settlement amount, which is contained in the settlement agreement
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`already produced. (Id. at 2.) Eagle View also contends compelling production of confidential
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`settlement communications would have a chilling effect on future settlement negotiations. (Id.)
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`Finally, Eagle View argues a privilege review would be complex and unduly burdensome. (Id.)
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`“In patent infringement cases, damages are calculated by determining a reasonable
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`royalty.” Modern Font Applications v. Alaska Airlines, No. 2:19-cv-561, 2021 U.S. Dist. LEXIS
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`21563, at *6 (D. Utah Feb. 3, 2021) (unpublished) (citing 35 U.S.C. § 284). “A reasonable
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`royalty is determined using the . . . hypothetical negotiation approach, which attempts to
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`ascertain the royalty upon which the parties would have agreed had they successfully negotiated
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`an agreement just before infringement began.” Id. at *6–7 (internal quotation marks omitted).
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`Settlement and licensing agreements relating to the patents-in-suit are relevant to
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`determining a reasonable royalty and, therefore, discoverable in patent infringement cases. E.g.,
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`id. at *7. Documents regarding the underlying settlement 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.” Kajeet, Inc. v. Qustodio, LLC, No. 18-1519, 2019 U.S. Dist. LEXIS
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`227979, at *23 (C.D. Cal. Oct. 22, 2019) (unpublished); see also Clear with Computers, LLC v.
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`Bergdorf Goodman, Inc., 753 F.Supp.2d 662, 664 (E.D. Tex. 2010) (finding settlement-related
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`4
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`Case 2:21-cv-00283-TS-DAO Document 93 Filed 07/08/22 PageID.1655 Page 5 of 6
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`communications could “be key in determining whether the settlement agreements accurately
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`reflect the inventions’ value or were strongly influenced by a desire to avoid or end full
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`litigation”).
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`The integration agreement and negotiation documents are relevant to Eagle View’s
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`claimed damages in this case, including calculation of a reasonable royalty. It is undisputed the
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`Xactware litigation addressed patents related to those at issue in this case, and the settlement of
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`that litigation is relevant to determining a reasonable royalty for the patents in this case. The
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`integration agreement was executed contemporaneously with the settlement agreement and
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`described by Eagle View’s own public press release as part of the settlement. Therefore, the
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`integration agreement may reveal whether the settlement amount accurately reflects a reasonable
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`royalty or whether it was influenced by other considerations and exchanges of value, such as the
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`parties’ entry into an ongoing commercial relationship. Similarly, the underlying negotiation
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`communications are relevant to understanding whether the settlement amount reflects
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`considerations other than the parties’ assessment of a reasonable royalty, including the parties’
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`execution of the integration agreement.
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`Eagle View argued at the hearing that a heightened showing is required to obtain
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`confidential settlement communications in discovery, citing In re MSTG, Inc., 675 F.3d 1337
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`(Fed. Cir. 2012). However, in that case, the court declined to decide whether a heightened
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`standard applied, and it found a district court did not abuse its discretion in ordering production
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`of settlement negotiation documents. Id. at 1347–48. Even if a heightened showing of relevance
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`is required, it is met in this case. As explained above, where Eagle View’s own public press
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`release indicated it entered into the integration agreement as part of the settlement agreement,
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`5
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`Case 2:21-cv-00283-TS-DAO Document 93 Filed 07/08/22 PageID.1656 Page 6 of 6
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`and there is no dispute the agreements were entered into simultaneously, Nearmap has a special
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`need for the underlying negotiation documents. The underlying documents are necessary to
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`determine whether the settlement amount reflects a reasonable royalty or other considerations.
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`This need outweighs the settling parties’ interest in maintaining confidentiality, and unfairness
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`would result if the documents were not produced. Cf. In re Teligent, Inc., 640 F.3d 53, 57–58
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`(2d Cir. 2011).
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`Eagle View has not demonstrated production of the integration agreement and
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`negotiation documents would be unduly burdensome. Eagle View does not allege the responsive
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`documents are voluminous and provides no estimate of the time or expense required to produce
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`them. Given the particularized relevance of the requested documents to Eagle View’s claimed
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`damages, Eagle View has not shown the burden or expense of this discovery outweighs its likely
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`benefit. Accordingly, the requested discovery is proportional to the needs of the case.
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`CONCLUSION
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`Nearmap’s motion is moot as to the settlement agreement, and the motion is granted as to
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`the other requested documents. Eagle View is ordered to produce the integration agreement and
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`nonprivileged negotiation documents related to the settlement agreement and integration
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`agreement.
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`DATED this 8th day of July, 2022.
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`BY THE COURT:
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`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
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`6
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