Case 2:22-cv-00215-TS-DAO Document 277 Filed 01/31/24 PageID.3988 Page 1 of 5
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` UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`CENTRAL DIVISION
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`EAGLE VIEW TECHNOLOGIES INC.; and
`PICTOMETRY INTERNATIONAL CORP.,
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`v.
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`GAF MATERIALS LLC,
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`Plaintiffs,
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`Defendant.
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`MEMORANDUM DECISION AND
`ORDER GRANTING DEFENDANT’S
`SHORT-FORM MOTION TO COMPEL
`PLAINTIFFS’ PRODUCTION OF
`DOCUMENTS SUFFICIENT TO
`IDENTIFY THIRD PARTIES THAT
`DEVELOPED, MANUFACTURED, OR
`SOLD PLAINTIFFS’ PRODUCTS
`(DOC. NO. 188)
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`Case No. 2:22-cv-00215
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`District Judge Ted Stewart
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`Magistrate Judge Daphne A. Oberg
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`In this patent infringement case, Defendant GAF Materials, LLC filed a motion to
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`compel Plaintiffs Eagle View Technologies, Inc. and Pictometry International Corp.
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`(collectively, “EagleView”) to produce documents sufficient to identify the third parties that
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`have developed, manufactured, or sold EagleView’s products which EagleView contends
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`practice the asserted patents.1 EagleView opposed the motion to compel, arguing its response
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`was adequate and the discovery request was overly broad and unduly burdensome.2 The court
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`1 (Def.’s Short-Form Mot. to Compel Pls.’ Produc. of Docs. Sufficient to Identify Third-Parties
`that Designed, Developed, Manufactured, or Sold Pls.’ Products (“Mot.”), Doc. No. 188.)
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`2 (Pls.’ Opp’n to Def.’s Short-Form Mot. to Compel Pls.’ Produc. of Docs. Sufficient to Identify
`Third-Parties that Designed, Developed, Manufactured, or Sold Pls.’ Products (“Opp’n”), Doc.
`No. 191.)
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`1
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`Case 2:22-cv-00215-TS-DAO Document 277 Filed 01/31/24 PageID.3989 Page 2 of 5
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`held a hearing on October 16, 2023, and took the motion under advisement.3 For the reasons
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`explained below, GAF’s motion is granted.
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`GAF’s request for production (“RFP”) 28 seeks “[d]ocuments sufficient to identify any
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`vendors, manufacturers, fabricators, consultants, or other third-party entities or individuals that
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`have been involved in any way with any of Plaintiffs’ products or processes that Plaintiffs
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`contend practice any Asserted Claim, including the products referenced in Section VIII of
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`Plaintiffs’ LPR 2.3 Initial Infringement Contentions.”4 EagleView objected on various grounds
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`including overbreadth and undue burden,5 and eventually agreed to produce documents only for
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`the following categories:
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`1. entities involved in design or development prior to the patents’ 2009 priority
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`dates;
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`2. entities which sold EagleView’s roof reports between 2019 and present;
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`3. entities which supplied imagery to EagleView before its 2013 merger with
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`Pictometry (which then became its exclusive supplier); and
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`4. entities which construct roof models or analyze aerial imagery.6
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`GAF argues EagleView’s response improperly imposes both temporal and subject-matter
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`limitations on RFP 28.7 GAF argues the requested documents are relevant because EagleView
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`3 (See Min. Entry, Doc. No. 203; Tr. of Oct. 16, 2023 Hrg. 33:8, Doc. No. 262.)
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`4 (Ex. B to Mot., Pls.’ Resps. and Objs. to Def.’s Reqs. for Produc. Nos. 6-37 (“Pls.’ Resps.”) 23,
`Doc. No. 189-2.)
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`5 (See id. at 23–24.)
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`6 (See Opp’n 1, Doc. No. 191; see also Mot. 1–2, Doc. No. 188.)
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`7 (See Mot. 2, Doc. No. 188.)
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`2
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`Case 2:22-cv-00215-TS-DAO Document 277 Filed 01/31/24 PageID.3990 Page 3 of 5
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`intends to rely on the alleged commercial success and industry praise of its products to show the
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`asserted patents are valid—specifically, that they were nonobvious.8 But GAF maintains any
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`such success was not due to patented features, but rather other facts (such as third-party
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`manufacturing, exclusive third-party relationships, marketing, or other non-patented features of
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`the products).9 Thus, GAF contends documents identifying third parties which contributed to the
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`products’ commercial success are relevant to whether the asserted patents are obvious.10
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`EagleView argues the request for documents identifying any entity “involved in any
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`way” with its products is overly broad, and only the categories of documents it agreed to produce
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`are relevant.11 Specifically, EagleView contends the first category (designers and developers
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`before 2009) is relevant to inventorship; the second category (sellers from 2019 to present) is
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`relevant to damages; and only the third and fourth categories (imagery suppliers and entities
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`which construct roof models or analyze aerial imagery) are relevant to commercial success.12
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`EagleView suggests GAF must identify any other specific categories it is seeking before
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`requiring EagleView to respond.13 EagleView also argues the request is unduly burdensome
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`because it has had over a thousand vendors, and it does not keep vendor records in a manner
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`corresponding to GAF’s request.14
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`8 (Id.)
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`9 (Id.)
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`10 (Id.)
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`11 (See Opp’n 1–2, Doc. No. 191.)
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`12 (See id. at 1.)
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`13 (See id.)
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`14 (See id. at 2.)
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`3
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`Case 2:22-cv-00215-TS-DAO Document 277 Filed 01/31/24 PageID.3991 Page 4 of 5
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`At the hearing, GAF clarified that it narrowed the scope of its request during conferrals
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`with EagleView, and it only seeks documents identifying developers, manufacturers, and sellers
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`of EagleView’s products.15 With that limitation, RFP 28 is relevant and proportional to the
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`needs of the case.16 As GAF explained in its motion and at the hearing, discovery regarding the
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`contributions of third-party developers, manufacturers, and sellers is relevant to rebut
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`EagleView’s allegation that the commercial success of its products is attributable to patented
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`features. For purposes of determining whether outside vendors contributed to the products’
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`commercial success, the relevant time period is the entire time period during which EagleView’s
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`products were developed, manufactured, and sold. Thus, the time limitations proposed by
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`EagleView based on the relevant time periods for inventorship (pre-2009) and damages (2019 to
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`present) are inapt. EagleView has not shown these time limitations are warranted, where RFP 28
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`seeks information relevant to commercial success rather than inventorship or damages. Finally,
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`EagleView’s suggestion that GAF must identify specific categories of vendors is impractical,
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`where GAF lacks information regarding what contributions were made by outside vendors. The
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`limitation to developers, manufacturers, and sellers is sufficient to identify the information
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`sought and permit EagleView to respond.
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`EagleView has not demonstrated responding to RFP 28, as limited, would cause undue
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`burden. As in initial matter, EagleView presented no evidence of the time or costs it would incur
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`in responding. Further, while EagleView represented it had more than a thousand vendors, it
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`provided no estimate of the number of vendors who were developers, manufacturers, and sellers.
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`15 (See Tr. of Oct. 16, 2023 Hrg. 10:15–24, Doc. No. 262.)
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`16 See Fed. R. Civ. P. 26(b)(1) (“Parties may obtain discovery regarding any nonprivileged
`matter that is relevant to any party's claim or defense and proportional to the needs of the case.”).
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`Case 2:22-cv-00215-TS-DAO Document 277 Filed 01/31/24 PageID.3992 Page 5 of 5
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`Rather, it argued at the hearing that RFP 28 would cover even vendors who supplied ballpoint
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`pens to EagleView. But this is not a fair reading of RFP 28, as limited above, and GAF
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`confirmed at the hearing that it is not seeking such information. EagleView has not
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`demonstrated it would be unduly burdensome to produce documents identifying developers,
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`manufacturers, and sellers of the products at issue in this case.
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`For these reasons, RFP 28 as limited in this order is relevant and proportional, and
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`EagleView must produce responsive documents.
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`CONCLUSION
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`GAF’s motion17 is granted, and EagleView is ordered to produce documents sufficient to
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`identify third-party developers, manufacturers, and sellers of EagleView’s products at issue in
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`this case.
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`DATED this 31st day of January, 2024.
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`BY THE COURT:
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`____________________________
`Daphne A. Oberg
`United States Magistrate Judge
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`17 (Doc. No. 188.)
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