Xactware Solutions Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2017-00363
• Patent #: 9,135,737
• Filed: November 30, 2016
• Petitioner(s): Xactware Solutions, Inc.
• Patent Owner(s): Eagle View Technologies, Inc.
• Challenged Claims: 1, 8, 16, 25-26, and 33

2. Patent Overview

• Title: Concurrent Display Systems and Methods for Aerial Roof Estimation
• Brief Description: The ’737 patent relates to systems and methods for determining roof measurement information by generating a three-dimensional (3D) model based on a correlation between at least two aerial images of a building’s roof.

3. Grounds for Unpatentability

Ground 1: Obviousness over Avrahami and Applicad - Claims 8 and 33 are 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 publication entitled “Product Bulletin – November 2002: Key features of our Roofing Software”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Avrahami disclosed a semi-automated system for extracting 3D polygons from a pair of aerial images. Crucially, Avrahami taught that its algorithm could be implemented on roofs under "diverse photographic conditions" and with "different viewing angles of the aerial camera," thus teaching the limitations of dependent claims 8 and 33, which require images from two different perspective or oblique views. Petitioner asserted that Applicad taught a computer-aided design (CAD) system for generating 3D roof models and detailed estimation reports containing numerical values for slope, area, and edge lengths, meeting the reporting limitations of the parent claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the known reporting functionality of Applicad with the image processing and 3D modeling system of Avrahami. This combination would yield the predictable result of a system that could both model a roof from aerial images and generate a useful estimation report. Petitioner asserted that Applicad’s disclosure of importing roof models from other systems provided a direct suggestion to combine the references.
  • Expectation of Success: A POSITA would have had a clear expectation of success, as the combination involved integrating a standard reporting module (Applicad) with a compatible data generation system (Avrahami) to improve its overall utility.

Ground 2: Obviousness over Avrahami, Applicad, and McKeown - Claims 8 and 33 are obvious over Avrahami in view of Applicad and in further view of McKeown.

• Prior Art Relied Upon: Avrahami, Applicad, and McKeown (a 1996 publication entitled “Feature Extraction and Object Recognition”).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground augmented the arguments from Ground 1 by introducing McKeown to further support the obviousness of using images taken from different views and compass bearings. McKeown disclosed the "SiteCity" system, which explicitly worked with "two oblique images and one vertical image." Petitioner argued McKeown's figures showed the two oblique images were taken from different compass bearings to capture different aspects of the building, directly teaching the limitations of dependent claims 8 and 33.
  • Motivation to Combine: A POSITA would be motivated to use the specific multi-view aerial imaging techniques taught by McKeown with the core algorithm of Avrahami. Both references were directed to the same technical field of semi-automated roof modeling, and Avrahami's system was explicitly designed to accommodate images from diverse views, making the integration straightforward and logical.
  • Expectation of Success: The combination was predictable, as it involved using a known imaging technique (McKeown) with a compatible modeling algorithm (Avrahami) to enhance its capabilities.

Ground 3: Obviousness over McKeown and Applicad - Claims 1, 8, 16, 25, 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 contended that McKeown’s SiteCity system taught the core limitations of the independent claims. McKeown disclosed displaying multiple aerial images, allowing an operator to delineate a building outline in one image, projecting a preliminary model to other images, automatically detecting features like roof peaks, and interactively updating the model. Applicad, as in the other grounds, supplied the claimed reporting functionality, such as generating reports with numerical values for slope, area, and material estimates.
  • Motivation to Combine: A POSITA would find it obvious to incorporate the reporting functionality of Applicad into the modeling system of McKeown to achieve the predictable benefit of automated report generation. This combination represented the application of a known technique (reporting) to a similar, known system (modeling) to improve its utility for end-users in the construction and insurance industries.
  • Expectation of Success: Success was reasonably expected because it involved integrating a well-understood CAD and reporting tool (Applicad) with a modeling system (McKeown) that produced compatible 3D data.

4. Key Claim Construction Positions

• "compass bearing": Petitioner argued that under the broadest reasonable interpretation, this term should be construed as "a bearing relative to north as indicated by a magnetic compass." Petitioner asserted that the term is entirely absent from the ’737 patent's specification. Therefore, its construction should be based on its plain and ordinary meaning, for which Petitioner provided a dictionary definition.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. § 325(d) would be inappropriate. The petition contended that it did not present the "same or substantially the same prior art or arguments" as those in a previously filed petition (IPR2016-00592). In that prior proceeding, a challenge to claims 8 and 33 relied on a different primary reference (Hsieh), but the Board did not institute review on that ground due to alleged public accessibility issues with Hsieh. Accordingly, Petitioner argued the Board had never substantively considered the patentability of these specific claims over art similar to that presented in this petition.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 8, 16, 25-26, and 33 of the ’737 patent as unpatentable.