Nearmap US Inc v. Pictometry Intl Corp

1. Case Identification

• Case #: IPR2024-00729
• Patent #: 9,182,657
• Filed: March 28, 2024
• Petitioner(s): Nearmap US, Inc.
• Patent Owner(s): Pictometry International Corp.
• Challenged Claims: 1-5, 14, 19-21, and 26-27

2. Patent Overview

• Title: System for Capturing Images and Geo-Location Data Corresponding Thereto
• Brief Description: The ’657 patent discloses an apparatus for capturing and geolocating oblique aerial images. The system uses multiple image-capturing devices (e.g., cameras) mounted on a platform like an aircraft, a geo-locating device (e.g., GPS), and a computer system that associates the captured images with navigational data and separately controls the cameras.

3. Grounds for Unpatentability

Ground 1: Obviousness over Loewen and Fujimoto - Claims 1, 5, 14, 19-21 are obvious over Loewen in view of Fujimoto.

• Prior Art Relied Upon: Loewen (Patent 7,184,072) and Fujimoto (EP 0053640).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Loewen, which was the primary reference considered during prosecution, discloses all limitations of independent claim 1 except for the requirement that the computer system "controls the first and second image-capturing devices separately." Loewen teaches an airborne system with multiple cameras for capturing oblique images of ground structures (e.g., transmission towers), a GPS and altimeter for geo-location, and an onboard computer that receives, stores, and associates image and location data. The only element allegedly missing is the separate control of the cameras.
  • Motivation to Combine: A POSITA would combine Loewen’s aerial imaging system with Fujimoto’s control system to gain the known benefits of independent camera control. Fujimoto, which was not before the examiner, explicitly discloses a "computerized control for opening the shutters of a plurality of cameras independently of one another" to avoid wasting film and enable different interval times. Petitioner asserted this combination would prevent capturing unnecessary or duplicative images, reduce data storage, and allow for different camera timing requirements, all of which are predictable improvements.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a known computer control method (Fujimoto) with a known aerial imaging system (Loewen) involves applying conventional technology for its intended purpose.

Ground 2: Obviousness over Loewen, Fujimoto, Mostafa, and Garrot - Claims 2 and 3 are obvious over Loewen, Fujimoto, Mostafa, and Garrot.

• Prior Art Relied Upon: Loewen (Patent 7,184,072), Fujimoto (EP 0053640), Mostafa (a 2001 ISPRS journal article), and Garrot (Patent 5,878,356).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Loewen and Fujimoto combination to address the specific geo-locating devices recited in dependent claims 2 and 3. Petitioner argued that while Loewen teaches a GPS and altimeter, Mostafa and Garrot explicitly disclose the other sensor types claimed. Mostafa teaches an airborne multi-sensor system using an inertial navigation system (INS) to provide velocity data. Garrot discloses an aircraft-based mapping system that uses a gyroscope to provide pitch and roll data and a compass to provide heading data.
  • Motivation to Combine: A POSITA would be motivated to add the sensors from Mostafa and Garrot to the Loewen/Fujimoto system to improve the accuracy and robustness of the geo-referencing data. Incorporating an INS (Mostafa) provides a backup if GPS signals are lost and improves accuracy, while adding a gyroscope and compass (Garrot) provides more precise orientation data (pitch, roll, yaw), leading to more accurately georeferenced imagery. This was a well-known method for improving aerial survey systems.
  • Expectation of Success: Integrating additional, well-understood sensors into a georeferencing system was a routine and predictable task for a POSITA at the time.

Ground 3: Obviousness over Loewen, Fujimoto, and Kain 1997 - Claims 4 and 26 are obvious over Loewen in view of Fujimoto and Kain 1997.

• Prior Art Relied Upon: Loewen (Patent 7,184,072), Fujimoto (EP 0053640), and Kain 1997 (WO 97/35166).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addresses the limitation in claims 4 and 26 requiring the capture of "community level" oblique aerial images. Petitioner asserted that Kain 1997 explicitly discloses capturing images with a "one foot per pixel image resolution," which corresponds to the "community-level" resolution described in the ’657 patent.
  • Motivation to Combine: A POSITA would combine the teachings of Kain 1997 with the Loewen/Fujimoto system to achieve a specific, desired image resolution for particular applications. For surveying larger structures or areas where fine detail is less critical (e.g., identifying downed transmission lines after a storm), using a community-level resolution would reduce data storage requirements while still providing sufficient detail, representing an obvious design choice.
  • Expectation of Success: Adjusting camera parameters to achieve a desired ground sample distance, such as that taught by Kain 1997, was a conventional and predictable modification for a POSITA designing an aerial imaging system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Kain 2003 (Application # 2003/0048357) for its disclosure of "neighborhood-level" imagery, but relied on similar design modification theories.

4. Key Claim Construction Positions

• "the computer system controls the first and second image-capturing devices separately": Petitioner argued this term requires the computer to send separate control signals that cause the devices to capture images at different instants or intervals. This construction is based on prosecution history disavowal, where the Patent Owner distinguished prior art by arguing against "slaving" cameras together to be signaled simultaneously. Petitioner contended that the Patent Owner disavowed the use of a single signal to control multiple cameras to overcome a rejection and secure the patent.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), asserting that the grounds presented are not the same or substantially the same as those previously before the examiner. The key secondary reference, Fujimoto, which teaches the "separate control" limitation that was the basis for allowance, was never considered during prosecution. Petitioner contended the examiner's failure to consider a reference like Fujimoto, which directly addresses the sole limitation the applicant argued was missing from the prior art, constituted a material error. Petitioner also noted that discretionary denial under Fintiv is inapplicable as no trial date is set in the parallel district court litigation.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-5, 14, 19-21, and 26-27 of the ’657 patent as unpatentable.