Background
Pictometry International Corporation owned a patent for a process measuring roof dimensions using aerial imagery. The process involved a user providing location data, viewing a satellite image with a movable marker, and confirming the marker’s placement. Roofr Inc. petitioned for an inter partes review, arguing the patent claims were obvious over two prior-art references. The Patent Trial and Appeal Board held all claims unpatentable for obviousness, concluding that the prior art taught the user-acceptance limitation.
The court’s reasoning
The court reviewed the Board’s factual findings for substantial evidence and legal determinations de novo. The appellant argued that the prior art did not teach the user-acceptance limitation because the prior art’s locking feature was not provided responsive to the user’s designation of the location. The court noted that the patent’s own figures showed a confirm-selection option available before the user designated a location, making the appellant’s construction disfavored. Even assuming the appellant’s interpretation was correct, the court found no reversible error in the Board’s conclusion that a person of ordinary skill would combine the prior art to provide the locking feature after the user designated the location. The court found substantial evidence supporting the Board’s determination that the prior art taught a sequence where the ability to lock the selection occurred after the user moved the marker.
What it means going forward
The decision reinforces the Patent Trial and Appeal Board’s authority to find patents obvious based on combinations of prior art references that teach functional equivalents of claimed limitations, even when the appellant argues for a specific temporal sequence not explicitly present in the prior art text.
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