CAFC Affirms Dual PTAB Rulings Invalidating Pictometry’s Aerial Roof-Measuring Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two decisions Friday in Pictometry International Corporation v. Roofr Inc., affirming separate Patent Trial and Appeal Board (PTAB) final written decisions that held all claims of two Pictometry International Corporation patents unpatentable for obviousness over combinations of prior art.

Pictometry owns U.S. Patent No. 9,183,538, which includes a computer-implemented method for estimating roof area from aerial imagery by analyzing the roof’s “footprint” and “predominant pitch,” allowing contractors to generate project estimates without taking any on-site measurements. Pictometry also owns U.S. Patent No. 10,648,800, which describes a process where a user enters a street address, views a satellite image with a movable marker, places the marker on a roof, and then confirms the selection before a roof report is generated.

Roofr Inc. petitioned for inter partes review (IPR) of all claims of the ‘538 patent in February 2023, asserting the claims were obvious over a 1999 article published by the United States Army Corps of Engineers combined with U.S. Patent Application Publication No. 2008/0262789. Roofr filed a separate IPR petition challenging all 17 claims of the ‘800 patent in January 2023, asserting obviousness over Pershing combined with U.S. Patent Application Publication No. 2007/0220174, a prior art reference describing a virtual mapping system that allows users to drag and drop a location marker and then lock it in place to confirm placement. The PTAB issued final written decisions in both proceedings in July 2024, holding all challenged claims unpatentable for obviousness. Thereafter, Pictometry appealed both rulings to the CAFC.

In the appeal concerning the ‘538 patent, Pictometry argued the PTAB misread claim 1’s “predominant pitch” limitation, contending the term requires accounting for the pitch of every roof section across the entire roof. Pictometry also challenged the obviousness findings as to dependent claims 11 and 18, which contain explicit weighted-average limitations.

On the claim-construction question, the court noted that Pictometry had not squarely raised any construction for “predominant pitch” before the PTAB after institution, despite being required to do so. Moreover, the court found that the ordinary meaning of “predominant” is not inherently limited to a weighted average or to an analysis of every roof section. The PTAB’s implicit reading of Bailey’s “predominant slope” as encompassing such a calculation was supported by substantial evidence.

On the weighted-average question for claims 11 and 18, the CAFC invoked the Supreme Court’s instruction in KSR International Co. v. Teleflex Inc. that adjudicators may “take account of the inferences and creative steps” a skilled artisan would employ.” The court found substantial evidence supporting the PTAB’s conclusion that applying a weighted average to calculate predominant pitch would have “been nothing more than the application of a known technique to yield a predictable result,” drawing on expert testimony from Roofr and a construction industry dictionary. The CAFC affirmed the PTAB’s decision in full.

In the appeal regarding the ‘800 patent, Pictometry challenged the PTAB’s finding that Abhyanker’s lock pushpin mechanism taught the “user-acceptance” limitation of claims 1 and 11. Pictometry argued that the patent requires a temporal sequence in which the system provides the confirmation option only after the user has already designated a roof location with a marker, whereas Abhyanker’s locking feature is available to the user beforehand.

The CAFC observed that Pictometry’s proposed construction faced significant obstacles. The ‘800 patent’s own figures show a “confirm selection” button visible on-screen before the user even submits an address. The court noted that “it is highly disfavored for those fundamental embodiments to be excluded from the coverage of the claims as a matter of construction.”

The CAFC ultimately declined to resolve the claim-construction dispute, finding it unnecessary to do so. The PTAB had separately concluded that the claims were obvious even under Pictometry’s narrower reading, reasoning that a skilled artisan with ordinary creativity would know to sequence Abhyanker’s lock pushpin option so it becomes available only after the user places the marker. As the PTAB had reasoned, “as a matter of logic,” Abhyanker’s “lock pushpin option…is provided ‘responsive’ to the user’s location designation” because a user can only accept a location once that user has designated one. The CAFC found no abuse of discretion in the PTAB’s reading of the petition to include that argument and no lack of substantial evidence for the underlying factual findings. With claims 1 and 11 failing, claim 17 also fails because Pictometry offered no independent argument for why it could survive if the others did not.

Image Source: Deposit Photos
Image ID:103763568
Copyright:bigfatnapoleon