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EagleView Scores $125 Million Award in Aerial Imagery IP Fight

A New Jersey federal jury has awarded $125 million to aerial imagery company EagleView Technologies Inc. after finding that a business rival infringed its software patents.

After less than two hours of deliberation, the jury on Wednesday found that Xactware Solutions Inc. willfully infringed five patents held by EagleView covering software to determine roof repair estimates through aerial imagery, which were found to be valid. The jury's finding of willfulness may pave the way for additional damages against Xactware.

Xactware and its parent company, Verisk Analytics Inc., are also temporarily barred from making and selling certain products until Oct 8., after which a hearing will be held on whether a permanent injunction should be issued, according to court documents.

Adam Alper of Kirkland & Ellis LLP, an attorney for EagleView, told Law360 on Thursday that his client, a small company with "a unique idea," had been harmed for years as a result of Xactware's infringement. The jury saw that and awarded the entire amount requested, he said.

"The evidence showed that [EagleView] reinvented a $30 billion industry, and the defendants — who are two very big companies — saw the idea, they thought it was revolutionary, and they tried to take it away from our client," Alper said.

Michael W. De Vries, another Kirkland attorney, added that previously internal documents that came out at trial revealed the defendants' plan to take away EagleView's market share and to "be aggressive on pricing in competing head-to-head" with the company.

Counsel for Xactware and Verisk did not immediately respond to a request for comment Thursday.

The dispute over the aerial patents dates back to 2015, after EagleView and affiliate Pictometry International Corp. accused Xactware and Verisk of infringing claims in nine patents with Xactware's own rooftop measurement products.

Xactware hit back with counterclaims, arguing that the asserted patents were invalid. Xactware also filed petitions with the Patent Trial and Appeal Board challenging the validity of every patent claim in all nine patents that it was accused of infringing.

Of the six patents challenged in Xactware's summary judgment motion in the instant case, three were ultimately upheld by the PTAB, while the board declined to institute review of three more.

Xactware moved for summary judgment in a sealed motion last August, claiming that EagleView's patents claim the abstract idea of using photogrammetry — the science of using photographs to survey or measure objects — to measure rooftops and produce a report, according to the opinion. EagleView countered in a sealed reply that the human mind is incapable of performing these types of three-dimensional modeling and calculations.

In January, U.S. District Judge Robert B. Kugler denied Xactware's bid, finding the patents were not too abstract under the U.S. Supreme Court's 2014 ruling in Alice Corp. v. CLS Bank .

Judge Kugler found that EagleView's patents did satisfy the two-prong test for patent eligibility established by that high court decision, which bars patents on inventions that are directed toward an abstract concept and recite routine or well-understood claims.

"The court holds it has not been demonstrated by clear and convincing evidence on the summary judgment record that either the relevant claims are directed to an abstract idea or embody no inventive concept," the judge said at the time.

The case was reassigned in June to U.S. District Judge Renee Marie Bumb, who presided over the trial, according to court documents.

The patents-in-suit are U.S. Patent Nos. 8,078,436; 8,170,840; 8,818,770; 9,129,376; and 8,825,454.

EagleView is represented by Adam Alper, Brandon H. Brown, Reza Dokhanchy, Michael W. De Vries, Patricia A. Carson, Leslie M. Schmidt, Gianni Cutri, Joel M. Merkin and Kristina N. Hendricks of Kirkland & Ellis LLP, and Liza M. Walsh, Hector D. Ruiz and Eleonore Ofosu-Antwi of Walsh Pizzi O'Reilly Falanga LLP.

Xactware and Verisk are represented by Scott S. Christie, Matthew A. Sklar, Lee Carl Bromberg, Wyley S. Proctor, Brian M. Seeve and Thomas R. Fulford of McCarter & English LLP.

The case is EagleView Technologies v. Xactware Solutions Inc. et al., case number 1:15-cv-07025, in the U.S. District Court for the District of New Jersey.