Roofr Inc v. Eagle View Technologies Inc

1. Case Identification

• Case #: IPR2023-00437
• Patent #: 8,170,840
• Filed: January 3, 2023
• Petitioner(s): Roofr Inc.
• Patent Owner(s): Pictometry International Corp.
• Challenged Claims: 1-25 and 28

2. Patent Overview

• Title: Computer-Implemented Roof Estimation Method
• Brief Description: The ’840 patent discloses a computer-implemented method and system for generating a roof estimate report. The technology involves displaying an aerial image of a building, overlaying an interactive "pitch determination marker" on the image, receiving a user's pitch indication via the marker, and modifying a digital model of the roof based on that input.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kennedy and Bailey - Claims 1-25 and 28 are obvious over Kennedy in view of Bailey.

• Prior Art Relied Upon: Kennedy (Application # 2009/0304227) and Bailey (a 1999 U.S. Army Corps of Engineers technical report).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kennedy, a "roof estimating software program," discloses nearly all limitations of the challenged claims. Kennedy allegedly taught using an interactive "sizing tool" (the claimed "pitch determination marker") that is overlaid on an aerial image to determine roof dimensions and pitch, and subsequently modifying a 3D model based on this input. Petitioner contended that Bailey, a manual on roofing inventory and inspection procedures, supplies the element of generating a formal roof estimate report containing the calculated roof data, such as pitch.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kennedy's digital tool with Bailey's established reporting methods to create a comprehensive, digitized roof estimation system. Both references are in the same field of endeavor. A POSITA would understand the benefits of integrating Bailey’s reporting framework into Kennedy's software to improve record-keeping, securely store customer data, and transmit digital reports to customers.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Kennedy’s system already collects and stores the necessary roofing data. Adding a feature to format this data into a report, as taught by Bailey, was presented as a straightforward and predictable software implementation.

Ground 2: Obviousness over Kennedy, Bailey, and Pictometry - Claims 1-25 and 28 are obvious over the combination of Kennedy, Bailey, and Pictometry.

• Prior Art Relied Upon: Kennedy (Application # 2009/0304227), Bailey (a 1999 U.S. Army Corps of Engineers technical report), and Pictometry (a 2002 article in Law Enforcement Technology).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplements Ground 1 by arguing that if Kennedy were found not to teach the "pitch determination marker" being "overlaid on the aerial image" (a key limitation added to overcome a rejection during prosecution), then Pictometry provides this teaching. Petitioner asserted that Pictometry discloses a program that allows users to annotate aerial photographs, including a tool for "measuring angles." This tool, when used, is overlaid on the image and functions as the claimed "pitch determination marker."
  • Motivation to Combine: A POSITA would be motivated to incorporate Pictometry's angle measurement and annotation tools into the Kennedy/Bailey system to enhance accuracy, precision, and user flexibility. Pictometry’s tool was described as an "indispensable tool" for analyzing structures from aerial images, which would provide a strong reason for its inclusion to improve the functionality of Kennedy’s system.

Ground 3: Obviousness over Pershing-789 and Kennedy - Claims 1-25 and 28 are obvious over Pershing-789 in view of Kennedy.

• Prior Art Relied Upon: Pershing-789 (Application # 2008/0262789) and Kennedy (Application # 2009/0304227).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pershing-789, which was considered during prosecution, teaches a system for remote roof measurement using aerial images to determine geometry and pitch, and then generating an estimate report. Petitioner asserted that the Patent Owner previously overcame a rejection over Pershing-789 by arguing it lacked a "pitch determination marker." This ground alleges that Kennedy supplies this exact limitation through its interactive "sizing tool," which is overlaid on an aerial image to measure pitch.
  • Motivation to Combine: A POSITA would combine the references to improve the user interface and functionality of the Pershing-789 system. Adding Kennedy's interactive measuring tool would promote accuracy by allowing precise alignment, provide real-time feedback to the user, and enhance the overall user experience, directly furthering Pershing-789's goal of allowing users to measure roof attributes.
  • Expectation of Success: A POSITA would have a high expectation of success, as both systems operate in the same technical environment (aerial image analysis for roof estimation). Integrating an interactive measurement tool into an existing software interface was argued to be a well-known and predictable design choice.
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) based on the combination of Pershing-789, Kennedy, and Pictometry, relying on similar arguments where Pictometry provides an alternative or cumulative teaching of an overlaid "pitch determination marker."

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the core prior art references of Kennedy, Bailey, and Pictometry were not substantively considered by the Examiner during the original prosecution.
• To counter potential discretionary denial under Fintiv, Petitioner stipulated that if the IPR is instituted, it will not pursue in the parallel district court litigation any invalidity grounds that it raised or reasonably could have raised in the petition. Petitioner also argued that a Final Written Decision (FWD) would likely issue months before any potential trial date in the district court case, which had not yet been scheduled.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-25 and 28 of Patent 8,170,840 as unpatentable.