Why is EagleView suing everyone?
EagleView got a 125 million dollar payout from Xactware and Verisk. They also have active cases against Roofr and GAF. So, what has made them successful in the past, and will they continue to be successful? That’s what we’re going to try and answer today.
WHO IS EAGLEVIEW?
To understand what is going on with all these lawsuits, you need to know a little bit about who EagleView is. They are a company known for their aerial measurement technology, which is used by the construction and insurance industries to create bids for clients. If you have been in roofing for a while, then you know this is a big deal because it is much faster and more accurate than measuring by hand.
Now EagleView is not the only company doing aerial measurements but they are the biggest one, so how did they become the leader in this?
They came onto the scene early, and they got patents for their technology.
EagleView was founded in 2008, and on October 31st of that year they filed two provisional patents for “Pitch determination systems and methods for aerial roof estimation” and “Concurrent display systems and methods for aerial roof estimation.” This is the first step in the process, and it basically just means ‘hey, we invented this.’ But they are not official yet.
2011 is the year they get their first issued patent, so this is the first time they have an actual legal claim against anyone else using their technology. Now we’re not going to go through when they get all their patents because there are a lot of them, but there is one more big event in their history.
In 2013, EagleView announced a merger with Pictometry International, “the leader in geo-referenced aerial image capture and visual-centric data analytics.” Pictometry was a competitor to EagleView, and they had actually been around for longer– since 2000. Pictometry had their own patents, and so when the merger happened they brought those with them, and the CEO of EagleView took over the new parent company: EagleView Technologies.
Today, the EagleView website lists hundreds of active U.S. patents, and they have even more that are pending. It is those active patents that are at the center of all the EagleView lawsuits because those are what give them intellectual property rights, and a legal claim against anyone else selling those products.
PAST LAWSUITS & PRECEDENTS
So, who has EagleView gone to court with?
EagleView has sued eight companies for patent infringement including Roofr, and they have been sued once themselves. This record is important because every time they win a case, it sets a precedent that they can use in future lawsuits alleging similar allegations.
GEOSPAN V. EAGLEVIEW
We’ll start with the one case where EagleView was actually sued for patent infringement by Geospan in 2013. Geospan has been around longer than them, since 1992, and they claimed that EagleView was using a technology that they invented in 1997:
The ‘946 patent: Method and apparatus for collecting and processing visual and spatial position information from a moving platform. The key part of this technology is the “‘dual/two-camera’ image collection process.”
Geospan had previously sued Pictometry over this patent before their merger with EagleView and failed. In that case, Pictometry argued that they were only using “a single image” to take measurements, and so a judge dismissed Geospan’s claims.
But in 2013 Geospan says Pictometry, and by extension its parent company EagleView, are now using multiple images to take measurements and so they sued again. This case was ultimately settled in 2015 and those terms are sealed and presumably a payout or a business solution forward was reached.
EAGLEVIEW V. ROOFWALK AND EAGLEVIEW V. AERIALOGICS
EagleView has sued and settled cases against two other companies for patent infringement: RoofWalk in 2012, and Aerialogics in 2015. Now, like with Geospan the terms of these settlements are sealed, but it’s likely that both defendants had to pay EagleView for using their products. And that would make sense, because both companies started after EagleView– Roofwalk in 2011 and Aerialogics in 2010. As far as we can tell, as of 2014 RoofWalk is no longer operating. But Aerialogics is still around today and could still be paying ongoing royalties.
You can look at these settlements as “wins” for EagleView, but when a case is settled it is “dismissed” by the court. So they can’t use the fact they settled these previous cases to make arguments in other lawsuits.
EAGLEVIEW V. XACTWARE / VERISK
EagleView’s first big win in court is against Xactware Solutions and Verisk Analytics. In 2015, they sued both companies for infringement of six patents. After a 12-day trial in 2019, a jury found Xactware and Verisk liable for “willfully infringing EagleView’s patents,” and awarded EagleView $125 million in damages.
The U.S. District Court of New Jersey then ordered a permanent injunction against Xactware and Verisk to stop them from using EagleView’s technology.
In her opinion, Judge Renee Marie Bumb wrote:
“[the] Defendants announced in their formal, written business strategy that they viewed EagleView as a ‘threat,’ and so set out to ‘aggressively’ erode EagleView’s market share and undercut EagleView’s prices.”
Xactware and Verisk have since filed appeals and have been denied. And, all of the patents involved in this case are now strengthened, because the judge affirmed that they are ‘patent-eligible material,’ setting a precedent for future cases. So what does that mean? We can get a better understanding by looking at EagleView’s next lawsuits.
EAGLEVIEW V. GAF AND EAGLEVIEW V. NEARMAP
In 2021, they sued GAF in the New Jersey District Court for infringement of nine patents, and three of those already had a precedent from the Xactware case.
In response, GAF filed a motion to dismiss the case, based on the argument that EagleView’s patents are invalid because they are “abstract ideas.”
Under U.S. law, you generally cannot patent mathematical equations, laws of nature, living things, and abstract ideas. There is a two-step test established by the Supreme Court to determine whether something is “non-patentable” in these types of cases.
In Step One, a judge looks at whether the patent infringement claims fall under one of those four categories. If not, the test ends, and the case moves forward. If they do fit one of those categories, then it goes to Step Two.
GAF argues that nine EagleView patents fail Step One, because, among other reasons, they are “directed to the abstract ideas of ‘automated image retrieval,’ ‘3D model generation,’ ‘feature indication/model modification & image display/registration,’ ‘pitch determination and model modification,’ and ‘pitch determination.’”
The New Jersey court did not address the merits of GAF’s arguments to dismiss the case because the judge transferred the case to Utah where EagleView has filed a separate lawsuit against Nearmap.
Basically, the New Jersey judge agrees that the court in Utah is already familiar with those patents, and so it makes sense for them to decide both cases. GAF renewed its motion to dismiss the case in Utah, however the Court declined due to its determination that the case required further proceedings before deciding GAF’s arguments. Both cases remain in litigation in Utah.
EAGLEVIEW V. ROOFR
In 2021, EagleView filed a suit against Roofr for infringement of two patents in the Delaware District Court, and then in 2022 they actually amended their complaint to include three:
The ’840 patent: “Pitch Determination Systems and Methods for Aerial Roof Estimation”
The ’538 patent: “Method and System for Quick Square Roof Reporting”
The’800 patent: “System and Process for Roof Measurement Using Imagery”
Now just like in the Xactware and GAF cases, Roofr’s first move is to argue that these are not actually patentable ideas, and they ask the court to do the two step test.
We know that the ‘840 patent was already determined to be ‘patent-eligible material’ in the final ruling of the Xactware case, and the initial judgment in the GAF case, giving it a strong precedent. The ‘800 patent and the ‘538 patent have not been litigated before.
But, this is where it gets complicated. Each of these patents is made up of a series of claims. When EagleView sues Roofr, they point to specific claims within each patent, saying ‘these are the parts of this product that Roofr is stealing.’
When Roofr asks the court to do the two-step test, they make the majority of their argument against just the first claim of each patent, and they say that this can be used to represent the whole thing, and determine whether it is ‘patent-eligible material.’
In January of 2023 the court responds to Roofr’s argument, and they say yes, actually claim one of all three patents are abstract ideas–you can’t patent these. So then it moves to Step Two, which asks whether the claims contain an “inventive concept” that is “sufficient to ensure that the patent in practice amounts to significantly more” than just an abstract idea. And again, the court finds that claim one of each patent fails this test.
So it’s a win for Roofr right? Kind of. The court says we agree with you that claim one of each patent fails, but you’re going to have to prove that every other claim under the ‘800, ‘840 and ‘538 patents do not pass this test. There are 63 claims in total.
In March of this year, Roofr submitted its full argument against all of these claims, and asked the court to make a judgment on whether they are ineligible. But, they also petitioned the U.S. patent and trademark office to do an “Inter Partes Review,” and look at whether one or more claims of ‘800, ‘840 and ‘538 are not patentable.
As of right now, the EagleView v. Roofr case is “stayed” until at least August 9th, 2023 so that review can happen.
WILL EAGLEVIEW CONTINUE TO SUCCEED?
So, will EagleView continue to win? It’s hard to say. They do have some strong precedents for the ‘840 patent, and ‘840 is involved in its pending cases but other patents in those cases have not yet been tested so it is anyone’s guess what happens with them. And, with the trademark office reviewing the ‘800, ‘840 and ‘538 patents for Roofr, it’s possible that EagleView could lose some of its patent power, even with its past wins.
If EagleView loses the ‘840 patent, “Pitch determination systems and methods for aerial roof estimation,” that would be a really big deal because it has come up over and over again in these lawsuits, and it is one of the first two patents they filed as a business. It seems to be at the core of a lot of their technology, so we will keep you updated on what happens next.
