Xactware Solutions Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2016-00582
• Patent #: 8,078,436
• Filed: February 8, 2016
• Petitioner(s): Xactware Solutions, Inc.
• Patent Owner(s): Eagle View Technologies, Inc.
• Challenged Claims: 1-5, 7-13, 15-23, 25-31, 33-40, 42, 46-52, 54-56

2. Patent Overview

• Title: Aerial Roof Estimation Systems and Methods
• Brief Description: The ’436 patent discloses systems and methods for determining roof measurement information from aerial images. The technology involves receiving multiple aerial images of a building, generating a three-dimensional model of the roof using photogrammetric algorithms, and preparing a roof estimate report that includes annotated, top-down views of the model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hsieh and Applicad - Claims 1-5, 7-13, 15-23, 25-31, 33-40, 42, 46-52, and 54-56 are obvious over Hsieh in view of Applicad.

• Prior Art Relied Upon: Hsieh (a 1995 Carnegie Mellon publication titled "Design and Evaluation of a Semi-Automated Site Modeling System") and Applicad (a November 2002 product bulletin for roofing software).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the combination of Hsieh and Applicad taught all limitations of the challenged claims. Hsieh was asserted to disclose a semi-automated system for generating a three-dimensional model of a building, including its roof, from a plurality of aerial images. Petitioner contended Hsieh's system, named "SiteCity," processes multiple images taken from different views, including near-vertical (top plan) and oblique views that are not stereoscopic pairs. Hsieh allegedly taught correlating these images to triangulate features and create a 3D model containing planar roof sections with dimensions such as length, width, and height. This was argued to satisfy the image acquisition, correlation, and 3D model generation limitations of independent claims 1 and 18.

  • Petitioner then asserted that Applicad disclosed the remaining limitations related to generating a detailed roof estimate report. Applicad was described as a computer-aided design (CAD) system specifically for roofing that generates detailed quotes and reports from 3D models. Petitioner argued Applicad taught calculating and displaying various roof properties, including slope, area, and edge lengths. Crucially, Applicad was shown to generate reports with annotated top plan views of the roof model, including numerical values for measurements and graphical indicia (e.g., different colors or line types for ridges and valleys), satisfying the report generation limitations of the claims.

  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the 3D model generation of Hsieh with the specialized roof reporting functionality of Applicad to create a more commercially useful and efficient system. The motivation was to improve upon Hsieh's academic system by adding the robust, user-friendly reporting capabilities of a commercial tool like Applicad. Petitioner further argued that Applicad provided an explicit motivation by teaching the ability to import roof and building outlines from other CAD systems, directly suggesting the integration of an externally generated model like one from Hsieh's system. Combining known methods to achieve predictable results, such as pairing a 3D modeler with a reporting tool, was presented as a simple design choice.

  • Expectation of Success: Petitioner contended a POSITA would have had a reasonable expectation of success in this combination. Integrating a 3D model file from a system like Hsieh's into a reporting system like Applicad's, which was designed to import such files, was a straightforward and predictable software integration task. The result would be the predictable functioning of each component: Hsieh's system generating the model and Applicad's system generating the report based on that model.

4. Key Claim Construction Positions

Petitioner asserted that its obviousness arguments relied on specific constructions for key claim terms, which it argued were consistent with the patent's specification and prosecution history.

• "top plan view": Petitioner proposed this term means "an aerial view of an object that is taken from a position vertically or nearly vertically above the object." This construction was supported by references in the specification to "substantially top-down" images and the patentee's equation of the term with "orthogonal" views during a prior supplemental examination.
• "oblique perspective view": This term was construed as "an aerial view of an object that is neither vertically nor near vertically above the object." This definition was positioned as the logical counterpart to the "top plan view" and was supported by the specification's distinction between top plan and perspective views.
• "not a stereoscopic pair": Petitioner proposed this means "a pair of images of the same object that does not provide an appearance of depth when viewed together." This was crucial because the cited art (Hsieh) used multi-image matching from different viewpoints (top-down and oblique), which Petitioner argued were inherently not stereoscopic pairs in the way the term is typically understood in photogrammetry.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 7-13, 15-23, 25-31, 33-40, 42, 46-52, and 54-56 of the ’436 patent as unpatentable.