Nearmap US Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2022-00734
• Patent #: 9,135,737
• Filed: March 21, 2022
• Petitioner(s): Nearmap US, Inc.
• Patent Owner(s): Eagle View Technologies, Inc.
• Challenged Claims: 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34

2. Patent Overview

• Title: Concurrent Display Systems and Methods for Aerial Roof Estimation
• Brief Description: The ’737 patent describes a roof estimation system that provides a user interface to facilitate roof model generation. The system displays multiple aerial images of a roof, allows a user to overlay and manipulate line drawings on the images to model the roof, and generates a roof estimate report.

3. Grounds for Unpatentability

Ground 1: Claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 are obvious over Heller in view of Quam.

• Prior Art Relied Upon: Heller et al., The Site-Model Construction Component of the RADIUS Testbed System (1997) (“Heller”), and Quam et al., The Radius Common Development Environment (1997) (“Quam”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Heller’s RADIUS Testbed System (RTS) taught the core elements of the challenged claims. Heller’s system created 3D models of buildings from aerial images by displaying a pair of images showing different views of a building simultaneously. A user could overlay a wireframe model (a "line drawing") on both images and manipulate the wireframe on one image (e.g., by grabbing a corner to adjust its pose and size), which would cause a corresponding change to the wireframe on the second image to maintain geometric consistency. Petitioner asserted that Quam, which described the underlying software environment for Heller’s system, provided further details on the use of processors, memory, and tools for image registration, thus rendering the system-level limitations obvious.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Heller and Quam because Quam explicitly stated that its environment “provides the foundation for the RADIUS Testbed System” described in Heller. A POSITA implementing Heller’s modeling system would have naturally looked to Quam for essential, unstated implementation details such as computing hardware, software technologies, and image registration tools.
  • Expectation of Success: A POSITA would have had a high expectation of success because Quam’s environment was specifically designed to be the foundational platform for Heller’s system. The combination was not a novel arrangement but an implementation of a system as its creators described it, leading to predictable results.

Ground 2: Claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 are obvious over Heller and Quam in view of Deaton.

• Prior Art Relied Upon: Heller, Quam, and Deaton (Application # 2006/0235611).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Heller/Quam combination to address the limitation of "generating and outputting a roof estimate report" with numerical values for repair or construction. Petitioner argued that while the Heller/Quam system provided the 3D modeling functionality, Deaton taught a roof inspection system that explicitly generated project reports. Deaton’s reports provided specification details and work items for roof repair, including numerical values for lengths (e.g., linear feet of flashing) and areas (e.g., square footage of membrane). Petitioner asserted that adding Deaton's reporting capability to the Heller/Quam modeling system was an obvious improvement.
  • Motivation to Combine: A POSITA would combine Deaton with the Heller/Quam system to increase its utility. The Heller/Quam system created detailed site models; adding Deaton’s reporting functionality would advantageously allow those models to be used for planning and executing maintenance, repair, and construction projects, a well-known application for such data.
  • Expectation of Success: Success would be predictable because Deaton’s method of generating a report was based on data from models similar to those created by Heller/Quam. Applying Deaton’s reporting techniques to the output of the Heller/Quam system was a routine and straightforward modification.

4. Key Claim Construction Positions

• "generating and outputting a roof estimate report...": Petitioner dedicated significant argument to this limitation, present in all independent claims. It contended that the detailed contents of the report (numerical values for slope, area, etc.) constituted non-functional printed matter that should be afforded no patentable weight. Petitioner argued this position was supported by a Final Written Decision (FWD) in a previous IPR on the same patent (IPR2016-00592), where the Board found the report content was "merely a printed description of the method's output" that added "no functional or structural elements." Petitioner further argued that collateral estoppel should preclude the Patent Owner from re-litigating this issue.
• "transmitting roof measurement information" (claim 9): Petitioner argued this term should be construed broadly to include transmission between components of the same computer system, consistent with the Board's interpretation in the prior IPR.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The petition asserted that the co-pending district court litigation was in a very early stage, with no trial date set and claim construction briefing not yet scheduled to begin. Petitioner projected that a FWD in the IPR would issue many months before any potential trial date, thereby promoting judicial efficiency. Furthermore, Petitioner argued the merits of its petition were particularly strong, which weighs in favor of institution to serve the interest of overall system efficiency and integrity.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 of the ’737 patent as unpatentable.