Federal Circuit Upholds PTAB Finding that Aerial Imaging Patents are Obvious

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed two final written decisions from the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR) proceedings, concluding that the board did not err in finding claims of two Eagle View Technologies, Inc. patents unpatentable as obvious.

Eagle View Technologies, Inc. had appealed the PTAB’s decisions, which held that claims of its U.S. Patent Nos. 8,670,961 and 8,078,436 were obvious over a combination of prior art references. The patents, both titled “Aerial Roof Estimation Systems and Methods,” share a common specification and relate to systems and methods that allow estimates involving roofs on buildings to be created remotely. The patents teach remotely generating a roof estimate report by analyzing multiple aerial images of a building to determine the area, shape, and slope of the roof.

Nearmap US, Inc. petitioned for the IPRs, challenging the validity of the patents based on a combination of three prior art references, including an article titled “Three-Dimensional Mapping and As-Built Computer Modelling by Analytical Photogrammetry” by R.M. Littleworth, a textbook titled “Digital Photogrammetry Theory and Applications” by Wilfried Linder, and another textbook titled “AutoCAD 2005 for Dummies” by Mark Middlebrook. The PTAB found the challenged claims of both patents unpatentable under 35 U.S.C. § 103(a).

On appeal, the central issue was the construction of the claim terms “calculate a pitch” and “determining a pitch.” Eagle View argued that the PTAB erred by construing these terms as encompassing inaccurate or unreliable calculations. Eagle View asserted that the terms “calculat[ing]” and “determining” require greater accuracy than mere approximation or estimation. At a minimum, Eagle View contended, the specification confirms that the claimed calculation steps must be faithful enough to the real-life structure to aid practitioners in planning roof construction or repair services. Nearmap countered that Eagle View had forfeited its claim construction arguments by failing to raise them before the board. On the merits, Nearmap argued that the plain meaning of the terms “calculation” and “determination” does not require a particular level of accuracy.

Assuming that Eagle View preserved its claim construction challenge, the court was “not convinced that the terms ‘calculate’ or ‘determining,’ when read in view of the specification, denote a particular accuracy requirement.” The court noted that the specification confirms that the term “determining” allows for estimations. The specification indicates that “determin[ing] the dimensions and slopes of the roof sections” may be based on “closely estimat[ing] the dimensions and slopes of the roofs.” The court also pointed to embodiments in the specification that describe “accurately determin[ing] the pitch,” indicating that accuracy is not built into the meaning of “determining.”

Similarly, with respect to the term “calculate,” the court found “no evidence in the specification to suggest that ‘calculate’ requires a certain level of accuracy.” Instead, the specification indicates that the term “calculate” refers to obtaining a result via the performance of mathematical steps. The court cited a portion of the ‘961 patent that states, “the slope can be easily calculated from such a representation using basic trigonometry.”

The Federal Circuit next addressed Eagle View’s argument that Nearmap’s petition relied on Littleworth’s disclosure alone to meet the “calculate a pitch” and “determining a pitch” limitations. Eagle View contended that because Littleworth does not expressly disclose calculating or determining a pitch, the petition relied on the theory that Littleworth inherently discloses the calculation limitation. The court disagreed, finding no error in the PTAB’s interpretation of the petition. In an unpatentability challenge, assessing the scope of a prior art reference’s disclosure may involve determining how a skilled artisan would understand or interpret what is explicitly stated. The PTAB credited Nearmap’s expert’s testimony that the inclusion of a pitched roof in Littleworth’s three-dimensional model of the roof indicates that Littleworth’s system made a determination of the pitch of the roof shown in the aerial images from which the model was generated.

The court also agreed with the PTAB that the petition did not rely solely on Littleworth for meeting the “calculating a pitch” limitation but instead also presented a theory based on the combination of Littleworth’s and Middlebrook’s teachings. The court found that the PTAB correctly understood Nearmap’s combination as incorporating Littleworth’s teachings regarding generating a three-dimensional model based on image analysis with Middlebrook’s disclosure of “‘calculat[ing]…angular dimensions (i.e., pitch)’ associated with such models.”

Eagle View also alleged that the PTAB failed to adequately explain its rejection of Eagle View’s argument that a skilled artisan would not have combined Linder’s stereoscopic imaging techniques with Littleworth’s non-stereoscopic images because stereoscopic images are a prerequisite for obtaining accurate results with Linder’s techniques. The court found that the PTAB’s finding that a skilled artisan would have reason to combine Littleworth and Linder was adequately explained and supported by substantial evidence. The PTAB framed the relevant reason to combine inquiry as whether a skilled artisan would have found the teachings of Linder pertinent to those of Littleworth, and reasonably answered in the affirmative. The record supported this finding, as Littleworth discloses using “top” and “oblique” view images of the same building to generate building models. The PTAB also found that Linder’s teachings are not limited to applications involving stereoscopic image pairs.

The Federal Circuit concluded that it had considered Eagle View’s other arguments but found them unpersuasive, and for these reasons, the court affirmed the PTAB’s decisions.