Xactware Solutions Inc v. Eagle View Technologies Inc

1. Case Identification

• Patent #: 8,825,454
• Filed: October 5, 2016
• Petitioner(s): Xactware Solutions, Inc.
• Patent Owner(s): Eagle View Technologies, Inc.
• Challenged Claims: 26 and 33

2. Patent Overview

• Title: Concurrent Display Systems and Methods for Aerial Roof Estimation
• Brief Description: The ’454 patent describes systems and methods for determining roof measurement information from one or more aerial images. The technology involves generating a three-dimensional (3D) model of a roof based on a correlation between at least two aerial images of the building.

3. Grounds for Unpatentability

Ground 1: Claims 26 and 33 are obvious over Avrahami in view of Applicad.

• Prior Art Relied Upon: Avrahami (a 2005 publication titled "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 taught a semi-automated system for modeling roofs from pairs of aerial images, including extracting 3D spatial polygons. Petitioner contended that Avrahami’s process, which can use images from "different viewing angles," inherently taught the use of two oblique images from different compass bearing directions as required by claim 33. Applicad was asserted to teach a computer-aided design (CAD) system for generating detailed 3D roof models and reports, including calculations for roof pitch, area, and lengths, and displaying annotated top-plan views, thus supplying the report-generation limitations of claim 26.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the systems to integrate Avrahami’s image-based modeling with Applicad’s robust reporting capabilities. This would create a more commercially useful product by predictably yielding measurement reports from the generated models. Petitioner noted that Applicad explicitly taught the ability to import roof models from other CAD systems, suggesting its use as a reporting engine for externally generated data like that from Avrahami.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining a model generation tool with a report generation tool was a known and predictable method for improving such systems. Applicad was designed to function with imported drawings, ensuring it would work as intended with data from Avrahami.

Ground 2: Claim 33 is obvious over Avrahami in view of Applicad and in further view of McKeown.

• Prior Art Relied Upon: Avrahami, Applicad, and McKeown (a 1996 publication titled "Feature Extraction and Object Recognition: Automatic Cartographic Feature Extraction Using Photogrammetric Principles").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented the arguments from Ground 1. While Petitioner argued Avrahami implicitly taught using two oblique images from different compass bearings, McKeown was added to provide an explicit teaching. McKeown described the "SiteCity" system, which worked with "two oblique images and one vertical image" of a building, with its figures showing the two oblique images captured from different compass bearings to show different aspects of the building.
  • Motivation to Combine: A POSITA would have been motivated to combine McKeown with Avrahami and Applicad because all three references were directed to semi-automated aerial roof modeling. McKeown’s explicit teaching of using multiple, distinct oblique views would have been seen as a known technique to improve the input data for an algorithm like Avrahami’s, which was already designed to handle diverse viewing angles.
  • Expectation of Success: The combination was argued to be predictable. Both Avrahami and McKeown addressed the same technical problem of 3D modeling from aerial images, and combining their known techniques with Applicad's reporting function would predictably result in an improved, integrated system.

Ground 3: Claims 26 and 33 are obvious over McKeown in view of Applicad.

• Prior Art Relied Upon: McKeown and Applicad.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented McKeown as the base reference, teaching a semi-automated system (SiteCity) that generates and manipulates 3D building models from multiple aerial images, including oblique views from different compass bearings. McKeown taught displaying the model generation process, overlaying line drawings on images, and user interaction to update or edit the model. Applicad was combined to provide the specific report generation limitations, such as outputting a top-plan view annotated with numerical values for slope, area, and lengths, which were not explicitly detailed in McKeown.
  • Motivation to Combine: A POSITA would have found it obvious to incorporate Applicad’s advanced reporting functionality into McKeown's modeling system. This would serve the simple, practical purpose of communicating detailed roof measurement results to a user in a clear, annotated format, which was a well-understood need in the art.
  • Expectation of Success: Success was predictable because combining a modeling system with a reporting system was a matter of applying known techniques to achieve a predictable result. As Applicad was designed to import and create reports from external CAD data, it would have been expected to function as intended with models generated by McKeown.

4. Key Claim Construction Positions

• Petitioner argued that the term “compass bearing,” which appears in claim 33, was entirely absent from the ’454 patent’s specification.
• Petitioner proposed that under the broadest reasonable interpretation, the term should be given no patentable weight. Alternatively, if the Board were to give it weight, it should adopt the ordinary meaning from a dictionary definition: "a bearing relative to north as indicated by a magnetic compass." This construction was important because Petitioner argued the prior art references (Avrahami and McKeown) clearly depicted aerial images taken from different directions relative to the subject building, thereby meeting this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should decline to exercise its discretion to deny institution under 35 U.S.C. §325(d), which allows rejection of petitions presenting the same or substantially the same prior art or arguments previously presented.
• Petitioner acknowledged this was a follow-on petition to a prior inter partes review (IPR), IPR2016-00589. However, Petitioner argued that the Board did not substantively review the key prior art combinations. In the prior IPR, a challenge to claim 33 based on a different reference (Hsieh) was not instituted due to public accessibility issues with Hsieh. Therefore, the Board never reached the merits of unpatentability for claim 33.
• Petitioner further contended that the new grounds relying on McKeown were not "substantially the same" as the previously asserted grounds, as McKeown and Hsieh contained substantive technical differences despite both relating to the same underlying research program.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 26 and 33 of the ’454 patent as unpatentable under 35 U.S.C. §103.