Eagle View Technologies v. Nearmap US
2:21-cv-00283
D. UtahAug 25, 2025Background
- Plaintiffs EagleView Technologies, Inc. and Pictometry International Corp. assert patent-infringement claims in two related cases: No. 2:21-cv-283 (against Nearmap) and No. 2:22-cv-215 (against GAF).
- The 283 Case asserts 13 patents (99 claims); the 215 Case asserts a subset (9 patents).
- All asserted patents/claims are involved in ongoing PTO proceedings or appeals to the Federal Circuit; the PTO already found all asserted claims unpatentable in several patents and instituted reexamination for multiple others.
- Plaintiffs oppose a stay; Defendants (Nearmap and GAF) support staying the district-court proceedings pending the PTO/Federal Circuit outcomes.
- Fact discovery is complete; claim construction and summary-judgment motions are pending; expert discovery and trial remain.
- The Court granted a stay and administratively closed the cases, directing parties to notify the Court within five days of completion of the PTO/Federal Circuit proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Undue prejudice from delay | EagleView: stay would cause significant prejudice because parties are direct competitors and stay could be lengthy | Defendants: delay inherent to PTO process does not alone show undue prejudice; no injunction sought and damages can compensate any infringement | Court: No undue prejudice shown; delay alone insufficient and lack of injunctive relief undermines prejudice claim |
| Simplification of issues | EagleView: did not oppose simplification argument but pressed prejudice concerns | Defendants: PTO proceedings likely to cancel/limit claims and provide guidance, simplifying litigation | Court: Stay likely to significantly simplify issues and trial given number/complexity of patents and PTO invalidations |
| Status of discovery and trial readiness | EagleView: significant litigation effort already invested; want timely resolution | Defendants: substantial work remains (expert discovery, trial) so stay will avoid wasted resources | Court: Though fact discovery done, key tasks (expert discovery, dispositive motions, trial) remain; this factor favors stay |
| Overall request to stay | EagleView: opposes stay primarily due to prejudice and competitive harm | Nearmap/GAF: request stay due to overlapping PTO/Fed. Cir. proceedings | Court: Granted stay and administratively closed cases pending PTO and Federal Circuit resolution |
Key Cases Cited
- Ethicon, Inc. v. Quigg, 849 F.2d 1422 (1988) (recognizing district courts' power to stay cases pending PTO reexamination)
- eSoft, Inc. v. Blue Coat Sys., Inc., 505 F. Supp. 2d 784 (D. Colo. 2007) (legislative history supports liberal stays pending reexamination)
- Murata Mach. USA v. Daifuku Co., 830 F.3d 1357 (Fed. Cir. 2016) (stay factors: prejudice, simplification, status of discovery/trial)
- In re Medical Components, Inc., [citation="535 F. App'x 916"] (Fed. Cir. 2013) (delay alone does not establish undue prejudice)
- Smartflash LLC v. Apple, Inc., [citation="621 F. App'x 995"] (Fed. Cir. 2015) (affirming stay even shortly before trial when PTO proceedings encompassed all asserted claims)
