Xactware Solutions Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2017-00025
• Patent #: 8,818,770
• Filed: October 5, 2016
• Petitioner(s): Xactware Solutions, Inc.
• Patent Owner(s): Eagle View Technologies, Inc.
• Challenged Claims: 1, 10, 11, 12

2. Patent Overview

• Title: Pitch Determination Systems and Methods for Aerial Roof Estimation
• Brief Description: The ’770 patent describes systems for determining roof measurement information using two or more aerial images of a building. The claimed method involves a user specifying a roof feature on a first image with a visual marker, which causes the system to automatically generate and place a second visual marker on a second aerial image at the corresponding location to create a 3D model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Avrahami and Applicad - Claim 12 is obvious over Avrahami in view of Applicad.

• Prior Art Relied Upon: Avrahami (a 2005 publication entitled "Extraction of 3D Spatial Polygons Based on the Overlapping Criterion for Roof Extraction from Aerial Images") and Applicad (a 2002 product bulletin for roofing software).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Avrahami disclosed a semi-automated system for modeling roofs from a pair of aerial images. In Avrahami, a user manually selects a "seed point" (a first visual marker) on a first image, and the system automatically transfers a corresponding marker to the second image at the same location. The system then extracts 3D spatial polygons representing planar roof sections, which Petitioner contended constituted a digital wireframe model as required by claim 12. Applicad was cited as disclosing the generation of annotated roof estimate reports from 3D models, including top-plan views with numerical values for parameters like pitch and length.
  • Motivation to Combine: A POSITA would combine the reporting functionality of Applicad with the 3D roof modeling system of Avrahami to provide a useful, annotated report of the generated model. Petitioner asserted this combination would yield predictable results, as Applicad was known to be capable of importing 3D models from other systems to generate such reports.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining these known elements, as each would function as intended to create a more commercially useful tool for roof estimation.

Ground 2: Obviousness over McKeown and Applicad - Claims 1, 11, and 12 are obvious over McKeown in view of Applicad.

• Prior Art Relied Upon: McKeown (a 1996 publication entitled "Feature Extraction and Object Recognition") and Applicad (a 2002 product bulletin).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that McKeown disclosed a semi-automated modeling system (SiteCity) that generates 3D models of roofs from multiple aerial images. An operator begins by delineating the outline of a building roof in one image (the first visual marker). The system then projects this preliminary model into other aerial images, verifies it, and generates a final 3D wireframe model superimposed on the images. Petitioner argued this process met the limitations of claim 1 concerning user input on a first image leading to an automatic display on a second image. McKeown also disclosed determining building measurements and pitch, satisfying claim 11. Applicad was again relied upon for its disclosure of generating detailed roof estimate reports from 3D models.
  • Motivation to Combine: The motivation to combine was identical to Ground 1: a POSITA would find it obvious to add the well-known reporting and annotation capabilities of Applicad to the powerful 3D modeling system of McKeown to create a comprehensive roof estimation product.
  • Expectation of Success: Success would be expected and the results predictable, as it involved incorporating a known reporting module with a known modeling system.

Ground 3: Obviousness over McKeown, Applicad, and Pictometry - Claim 10 is obvious over McKeown in view of Applicad and further in view of Pictometry.

• Prior Art Relied Upon: McKeown (1996 publication), Applicad (2002 product bulletin), and Pictometry (a 2007 user guide for "Electronic Field Study" software).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of McKeown and Applicad from Ground 2. Petitioner argued that claim 10 adds the limitation of enabling a user to input location data (e.g., a street address) to access the corresponding aerial imagery. Pictometry was cited as disclosing this exact functionality, teaching an address search feature that allows a user to type in a street address to find all associated images of that location.
  • Motivation to Combine: A POSITA would combine the address look-up functionality of Pictometry with the McKeown/Applicad system to improve its efficiency. This would eliminate the need for a user to manually locate each aerial image for a particular building, thereby enhancing the speed and usability of the overall system.
  • Expectation of Success: A POSITA would expect success in adding this simple, data-lookup front-end to the modeling system, as it was a routine improvement to make data more easily accessible.

4. Key Claim Construction Positions

• Petitioner proposed a construction for the term "displaying a location of a second visual marker...based on an indication...of the first location on the displayed first aerial image to which the user had moved the first visual marker."
• Petitioner argued this term should be construed to mean that a second visual marker is displayed on the second aerial image at the same location as the first visual marker in the first aerial image. This construction was based on the patent specification and supported by the prosecution history, where the patentee distinguished prior art by arguing it required a user to manually interact with the second image to place the markers, whereas the claimed invention did so automatically.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should decline to exercise its discretion to deny the petition under 35 U.S.C. §325(d). Petitioner acknowledged a prior IPR filed on the ’770 patent (IPR2016-00590) but asserted that the present petition raised different substantive grounds. Specifically, the prior petition was not instituted on grounds relying on McKeown, and the challenge to claim 12 over the Avrahami combination was not previously raised. Therefore, Petitioner contended the Board had not substantively considered these new grounds and that this petition did not represent an attempt to cure deficiencies from a prior substantive decision.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 10, 11, and 12 of the ’770 patent as unpatentable.