Xactware Solutions Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2016-01775
• Patent #: 8,078,436
• Filed: September 12, 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 from different viewpoints, correlating the images to generate a three-dimensional model of the roof, and preparing a roof estimate report based on 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, 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 primary reference, Hsieh, discloses a semi-automated system that constructs three-dimensional building models, including roofs, from multiple non-stereoscopic aerial images. Hsieh’s system, named SiteCity, processes images from various views, including the top-down (top plan) and oblique views recited in independent claim 1. Hsieh teaches correlating these images and using triangulation to generate 3D models that include planar roof sections with corresponding dimensions. Petitioner contended that while Hsieh teaches the core 3D modeling process, it lacks the detailed reporting functionality claimed. To supply this missing element, Petitioner turned to Applicad. Applicad was described as a computer-aided design system for roofing that generates detailed reports from 3D models. These reports include top plan views annotated with numerical values for roof properties like slope, area, and length of edges, as well as graphical indicia (e.g., different colors for ridges and valleys), satisfying the limitations found in claims 1, 5, and 7-13.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine the teachings of Hsieh and Applicad to achieve a predictable and improved system. The primary motivation was to enhance Hsieh’s powerful 3D modeling capabilities with Applicad’s sophisticated and commercially desirable reporting features. Petitioner highlighted that Applicad explicitly discloses the ability to import roof models from other CAD systems (e.g., in .dxf format). Therefore, a POSITA would have been motivated to import a 3D model generated by a system like Hsieh’s into a system like Applicad’s to generate a comprehensive and user-friendly roof estimate report. This combination was presented as applying a known technique (reporting) to a known system (3D modeling) to improve its utility.
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in this combination. Since Applicad was designed to import and process 3D models to generate reports, and Hsieh was designed to create such models, the integration would involve combining known elements that would function as expected. The result—a system that creates a 3D roof model from aerial images and generates a detailed report—was argued to be entirely predictable.

4. Key Claim Construction Positions

• "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 the patent’s specification and prosecution history, which equated the term with "substantially top-down" and "orthogonal" views.
• "oblique perspective view": Petitioner proposed this term means "an aerial view of an object that is neither vertically nor near vertically above the object." This construction was intended to be complementary to "top plan view" and was supported by its plain meaning and usage in the specification.
• "not a stereoscopic pair": Petitioner proposed this term means "a pair of images of the same object that does not provide an appearance of depth when viewed together." This construction was crucial for distinguishing the invention from prior art photogrammetry systems that rely on stereoscopy and for mapping Hsieh, which Petitioner argued processes non-stereoscopic image pairs.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments requesting that the Board decline to exercise its discretion to deny the petition under 35 U.S.C. §325(d). Petitioner acknowledged it had filed a prior petition (IPR2016-00582) against the ’436 patent using the same prior art. However, that prior petition was denied on non-substantive grounds because the Board found insufficient evidence establishing that the Hsieh reference was publicly accessible before the critical date. Petitioner argued that because the Board never reached the substantive merits of the invalidity arguments, a follow-on petition is appropriate. This petition included new evidence, including a declaration from a Carnegie Mellon librarian, to definitively establish Hsieh's public accessibility.

6. Relief Requested

• Petitioner requests institution of an inter partes review and 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.