Pictometry International Corporation v. Roofr Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PICTOMETRY INTERNATIONAL CORPORATION,
Appellant
v.
ROOFR INC.,
Appellee
______________________
2024-2322
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2023-
00435.
______________________
Decided: May 22, 2026
______________________
WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox
PLLC, Washington, DC, argued for appellant. Also repre-
sented by, RICHARD M. BEMBEN, J ENNIFER CHAGNON,
RICHARD CRUDO, STEVEN P APPAS , MICHAEL D. SPECHT
J ONATHAN T UMINARO.
RON HAGIZ, Quinn Emanuel Urquhart & Sullivan,
LLP, New York, NY, argued for appellee. Also represented
by J AMES M. G LASS; YURY K APGAN, Los Angeles, CA;
Q UINCY L U, Seattle, WA.
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 2
______________________
Before T ARANTO, HUGHES , and CUNNINGHAM , Circuit
Judges.
T ARANTO, Circuit Judge.
Pictometry International Corp. owns U.S. Patent No.
10,648,800, which claims a process that may be useful as
part of a process for measuring a roof using aerial imagery.
In the claimed process, a user provides a street address or
other location data to a computer, which responds by
providing to the user a satellite image of an area that in-
cludes the address, with a marker placed somewhere on the
image. The user can then move the marker on the image
to better correspond to the roof of interest. Once the
marker is in the desired location, the user, prompted by the
computer, takes steps to confirm that location.
Roofr Inc. successfully petitioned for an inter partes re-
view (IPR) of all claims of the ’800 patent under 35 U.S.C.
§§ 311–19, and the Patent Trial and Appeal Board held all
claims unpatentable for obviousness over combinations of
prior-art references. See Roofr Inc. v. Pictometry Interna-
tional Corp., No. IPR2023-00435, 2024 WL 3379556, at *1
(P.T.A.B. July 11, 2024) (Decision). In its decision, the
Board concluded that a prior-art reference’s disclosure of a
marker-locking feature taught the claimed “user-ac-
ceptance,” or confirmation, of the roof’s location. On ap-
peal, Pictometry contests the Board’s finding that the prior
art teaches the ’800 patent’s “user-acceptance” limitations.
We affirm the Board’s decision.
I
A
The ’800 patent discloses a method that is useful “in
the field of measuring roofing dimensions and other attrib-
utes, and more particularly pertains to the use of aerial im-
agery in that field.” ’800 patent, col. 1, lines 19–21. In the
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 3
described method, a user provides to a computer “first lo-
cation data” corresponding to the roof of interest, such as a
street address. Id., col. 1, lines 51–53; col. 3, lines 64–67
(defining “location data” as “information which uniquely
identifies geographic position . . . includ[ing] latitude and
longitude coordinates [or] street addresses”). The com-
puter then provides the user a satellite image of the area
around the specified location, on which is superimposed a
visual marker that can be used “to more precisely identify
the location of the building roof structure.” Id., col. 1, lines
53–59. The user can move the marker to a “final location
on top of the building” of interest in the image. Id. When
the user is satisfied with the placement of the marker, the
user can convey acceptance of the placement through a
computer input that is “capable of signaling user-ac-
ceptance of the final location” of the marker. Id., col. 1,
lines 59–62. “User-acceptance” is defined by the patent as
“an affirmative step or series of steps or computer input,
undertaken by a user to make a selection.” Id., col. 5, lines
13–15.
Figures 4A–4D of the ’800 patent illustrate the process
just described. See J.A. 26–29. In Figure 4A, the user is
prompted to enter an address and can then click “find ad-
dress” to search for an aerial image corresponding to the
address. ’800 patent, col. 9, line 66, through col. 10, line 5.
“In response,” a screen appears, like the one depicted in
Figure 4B, that “depicts imagery . . . of a region” showing
the “building . . . with its roof structure.” Id., col. 10, lines
5–7. At that point, the computer displays a visual marker
somewhere on the image. Id., Fig. 4B. The user is then
prompted to move the marker “by click and dragging via
computer mouse, arrows, or otherwise” to ensure that it
“more precisely identifies” the desired roof structure. Id.,
col. 10, lines 15–25; Fig. 4C. The place to which the marker
was dragged is the “final location,” and, critically, the user
can confirm the selection of that location by clicking a “con-
firm selection” button. See id., col. 10, lines 25–28, 30–31.
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 4
The patent equates clicking the “confirm selection” button
with “user acceptance” of that location. See id., col. 10,
lines 30–31. As shown in Figure 4D, the user might then
be prompted to check a box that says “I have reviewed the
image and confirm my selection is correct” as “a further re-
confirmation” that the user has selected the correct image.
Id., col. 10, lines 30–38; Fig. 4D.
Independent claim 1 is representative for this appeal.
It sets forth the above process from the viewpoint of the
computer system furnishing the images and receiving in-
put from the user:
1. A process, comprising:
receiving first location data;
providing visual access to a first image corre-
sponding to the first location data, the first im-
age including a roof structure of a building;
providing a first computer input capable of sig-
naling a designation from a user of a building
roof structure location within the first image,
wherein the building roof structure location is a
geographic position of the building roof structure
and is different than the first location data;
receive a designation of the building roof struc-
ture within the first image;
responsive to receiving the designation of
the building roof structure location,
providing a second computer input capa-
ble of signaling user-acceptance of the
building roof structure location within the
first image, wherein user-acceptance is one or
more affirmative steps undertaken by the user
to confirm the designation of the building roof
structure location; and
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 5
subsequent to receiving the user-acceptance con-
firming the designation of the building roof
structure location, providing a report for the
building roof structure.
’800 patent, col. 14, lines 7–29 (emphasis added to high-
light disputed “user-acceptance” limitation). Independent
claim 11 contains a limitation identical to the one empha-
sized, see id., col. 15, lines 1–6, and independent claim 17
contains a relevantly similar limitation, see id., col. 16,
lines 21–24.
B
In January 2023, Roofr petitioned for an IPR of all 17
claims of the ’800 patent. See J.A. 71, 78. Roofr asserted
several grounds for challenging the patent’s claims as un-
patentable for obviousness. J.A. 78. Relevant to this ap-
peal, Roofr argued that claims 1–17 would have been
obvious over a combination of two prior-art references:
U.S. Patent Application Publication No. 2008/0262789
(Pershing) and U.S. Patent Application Publication No.
2007/0220174 (Abhyanker). See J.A. 106. Pershing claims
a system and method for measuring the area of a roof from
aerial images. J.A. 848. The system can perform image
analysis, enabling a user to “closely estimate the size, ge-
ometry, and orientation of the building’s roof sections.” Id.
Abhyanker claims a system of marker placement in a vir-
tual mapping environment. J.A. 862. Abhyanker describes
allowing a user to “drag and drop” a marker to a correct
location. J.A. 878–79 ¶ 11. Once the marker has been re-
located, the user can “lock” its location as a way of confirm-
ing the intended placement. J.A. 882 ¶ 64.
Roofr argued that a relevant artisan would have been
motivated to combine Pershing’s roof-measuring system
with Abhyanker’s teachings of a marker-locking mecha-
nism “to specifically designate the geographic position of a
roof to be analyzed using a marker, and to include a subse-
quent user confirmation option to ensure the correct roof is
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 6
being analyzed.” J.A. 106. Pictometry disputed Roofr’s
characterization of Abhyanker as teaching the ’800 pa-
tent’s “user-acceptance” limitations. Without requesting a
construction, Pictometry argued that Abhyanker’s
“marker-locking feature is not provided in response to [its]
drag-and-drop” and therefore does not “satisfy the tem-
poral aspect” imposed by the limitation’s requirement that
the provision of the “second computer input” be “responsive
to” receiving the chosen marker placement (“designation of
the building roof structure location”) from the user. J.A.
387–90.
The Board, agreeing with Roofr, held all claims un-
patentable for obviousness. Decision, at *8. For claims 1
and 11, which contain identical “user-acceptance” limita-
tions, the Board concluded that “‘signaling user-acceptance
of the . . . location’ reads on Abhyanker’s locking feature
because location acceptance means that the user will not
change the location, which is the result of Abhyanker’s
locking feature.” Id. at *4.1 The Board did not agree with
Pictometry’s proposed temporal requirement on the com-
puter’s provision of user-acceptance, though the Board con-
cluded that, even under Pictometry’s narrower
interpretation, the claim is unpatentable for obviousness
over the combination of Pershing and Abhyanker. See id.
at *3–5.
Pictometry timely appealed the Board’s final written
decision. We have jurisdiction under 35 U.S.C. §§ 141(c),
319 and 28 U.S.C. § 1295(a)(4)(A).
II
“We review the Board’s legal determinations de novo
and the Board’s factual findings for substantial-evidence
1 Because claims 1 and 11 contain an identical “user-
acceptance” limitation, the Board treated them the same.
See Decision, at *4.
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 7
support.” Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1363
(Fed. Cir. 2023). The ultimate question of obviousness is a
question of law, and the Board’s resolution is subject to a
de novo standard of review, but the answer depends on un-
derlying facts, for which the Board’s findings are reviewed
only for substantial-evidence support, id., which is “such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion,” Consolidated Edison Co. of
New York v. National Labor Relations Board, 305 U.S. 197,
229 (1938). We review the Board’s claim constructions
based on intrinsic evidence without deference. See Google
LLC v. EcoFactor, Inc., 92 F.4th 1049, 1055 (Fed. Cir. 2024)
On appeal, Pictometry challenges the Board’s determi-
nation regarding Abhyanker and the user-acceptance limi-
tation of claim 1. It argues that the Board erred in failing
to understand the claim as requiring a temporal compo-
nent. Specifically, it argues that Abhyanker’s lock pushpin
mechanism, which allows the user to confirm the roof loca-
tion, is provided to the user before the user designates the
correct location with a marker, whereas the ’800 patent re-
quires “providing a second computer input capable of sig-
naling user-acceptance of the building roof structure
location” (the signal “confirm[ing] the designation of” that
location, i.e., the marker’s placement, see ’800 patent, col.
10, lines 30–31) must be “responsive to” and thus occur af-
ter the user’s “designation of the building roof structure lo-
cation” (i.e., of the placement of the marker). See
Pictometry Opening Br. at 28–35; ’800 patent, col. 14, lines
20–26.
We need not adjudicate the correctness of Pictometry’s
position about claim interpretation, but we note that Pic-
tometry’s argument for a claim construction that would de-
feat reliance on Abhyanker faces significant obstacles. In
the ’800 patent, Figures 4A–4D plainly show a “confirm se-
lection” (or “confirm my selection”) option on the user’s
screen from even before the user sends in the address in-
formation. It is highly disfavored for those fundamental
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 8
embodiments to be excluded from the coverage of the
claims as a matter of construction. See Kaufman v. Mi-
crosoft Corp., 34 F.4th 1360, 1372–73 (Fed. Cir. 2022);
Vitronics Corp. v. Conceptronic, Inc, 90 F.3d 1576, 1583
(Fed. Cir. 1996). Pictometry therefore must resort to the
contention that the confirm-selection options cannot be op-
erational as the required “second computer input” for such
confirmation until after a designation has been made, be-
cause there is nothing to “confirm” until then. See Pictom-
etry Opening Br. at 32 (distinguishing mere display from
grant of operational tool); Oral Arg. at 1:43–3:00,
https://www.cafc. uscourts.gov/oral-arguments/24-
2322_05042026.mp3. But that logic would apply similarly
to Abhyanker’s “locking module,” J.A. 882 ¶ 64, whose
teaching—which is unmistakably similar in function to
that of the claims at issue here—Pictometry therefore
could not avoid. The Board made this point when it rea-
soned that, “as a matter of logic,” Abhyanker’s “lock push-
pin option . . . is provided ‘responsive’ to the user’s location
designation” because a user would only accept the location
designation once that user has designated a location. De-
cision, at *5.
We need not pursue the claim-construction dispute fur-
ther. The Board agreed with Roofr that the combination of
Pershing and Abhyanker renders the claim obvious even
under Pictometry’s interpretation, and we see no reversible
error in that conclusion. See id. Relying on Roofr’s ra-
tionale, the Board agreed with the petition’s suggestion
that a relevant artisan, with ordinary creativity, would
know to “provide[ ] Abhyanker’s lock pushpin option after
placing a marker.” Id. (emphasis in original) (citing J.A.
781–82, 822 (Roofr’s expert declaration ¶¶ 43, 127)); see
J.A. 106, 149 (petition describing the advantage of “subse-
quently confirm[ing] that the roof location is correct” in Ab-
hyanker when combined with another prior-art mapping
system). We see no abuse of discretion in the Board’s read-
ing of the petition to include this submission. And we see
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PICTOMETRY INTERNATIONAL CORPORATION v. ROOFR INC. 9
no lack of substantial evidence to support the Board’s de-
termination that a relevant artisan with ordinary ingenu-
ity would see from Abhyanker, directly or by sufficiently
motivated modification, a sequence in which the ability to
lock the selection (user-acceptance) is not given to the user
until after the user moves the marker.
We therefore reject Pictometry’s challenge on appeal.
The above analysis applies directly to claims 1 and 11. And
Pictometry, in presenting a two-paragraph argument
about claim 17, says nothing to indicate that claim 17 can
survive if claims 1 and 11 do not. See Pictometry Opening
Br. at 49.
III
We have considered Pictometry’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the final written decision of the Board.
AFFIRMED
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