Pictometry International Corporation v. Roofr Inc.

Pictometry International Corporation v. Roofr Inc. The Federal Circuit affirmed the PTAB's finding that all claims of the '538 patent are unpatentable for obviousness, holding that substantial evidence supported the Board's conclusion that Bailey's 'predominant slope' discloses the claimed 'predominant pitch,' and that using a weighted average to calculate predominant pitch would have been the application of a known technique yielding a predictable result. Confirms that a patentee's failure to squarely present a claim-construction position before the PTAB after institution can doom a claim-construction argument on appeal, and that the Board may rely on a skilled artisan's background knowledge—including known mathematical techniques like weighted averages—to supply an obviousness gap even when the prior art does not expressly disclose the limitation. Affirmed U.S. Patent No. 9,183,538 claims a computer-implemented method for estimating roof area from aerial imagery using a roof's 'footprint' and 'predominant pitch'; Roofr petitioned for IPR on obviousness grounds relying primarily on the Bailey (Army Corps of Engineers) article and the Pershing patent application. Pictometry failed to propose an express claim construction for 'predominant pitch' in its post-institution papers; its attempt to raise a claim-construction argument at oral argument before the Board—and again on appeal—was therefore at risk of waiver, though the Federal Circuit resolved the issue on the merits regardless. The court held that 'predominant pitch' is not facially limited to a weighted average of all roof sections; Bailey's 'predominant slope' falls within the ordinary meaning of the term, and the Board's implied construction was supported by substantial evidence including expert testimony and a construction-industry dictionary. For dependent claims 11 and 18 (which require a weighted average), the Board permissibly found it would have been obvious to use a weighted average—a known technique—to calculate predominant pitch, consistent with KSR's teaching that courts may account for the inferences and creative steps a skilled artisan would employ. The Board's citation to Bailey's slope-factor chart in the claim 18 analysis was not erroneous because the Board relied on a combination of references, not Bailey alone, for that determination. § 103 claim construction remand non-precedential waiver / forfeiture § 103 claim construction waiver / forfeiture non-precedential § 103 claim construction non-precedential