District Court Finds Asserted Claims of Aerial Roof Measurement Patent Invalid Under 35 U.S.C. § 101
Published: January 26, 2023
In Pictometry International Corp. v. Roofr, Inc., 1-21-cv-01852 (DDE Jan. 19, 2023) (Richard G. Andrews), the court found that plaintiff’s three aerial roof measurement patents encompassed unpatentable subject matter and that claim 1 in each of those patents was directed to an abstract idea and therefore granted defendant’s motion to dismiss on those grounds.
Patentability under 35 U.S.C. § 101 is a threshold legal issue. Pursuant to 35 U.S.C § 101, “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” A claim falls outside of 35 U.S.C § 101 where (1) it is directed to a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea, and (2), if so, the particular elements of the claim, considered both individually and as an ordered combination, do not add enough to transform the nature of the claim into a patent-eligible application.
The framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts is a two-step process. First, the court must determine whether the claims are drawn to a patent-ineligible concept. For software-implemented inventions, the step-one determination often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies as an abstract idea for which computers are invoked merely as a tool.
If the claims fail step one, then the court must look to the elements of the claim both individually and as an ordered combination to see if there is an inventive concept-i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea. Further, the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the idea to a particular technological environment. Thus, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” To save a patent at step two, an inventive concept must be evident in the claims.
Here, the asserted patents address the problem of “incorrectly geo-coded” and “low-resolution” aerial image databases, which impede the reliability of roof reports that use images from those databases. Claim 1 in the first patent is directed to the process of displaying an image of a roof corresponding to a geographic location the user provides, allowing the user to select a roof at a different geographic position within that image, allowing the user to confirm that selection, and then providing an unspecified report for the selected roof. Claim 1 in the second patent is for the identification of the geographic location of a roof, the estimation of the roofing area of that roof based on the “predominant pitch” and “footprint” of the roof as obtained from an image of the roof, and the subsequent generation of a roof report-featuring both an image of the roof and its estimated area “for determination of an amount of materials needed for a construction project.” And claim 1 in the third patent requires displaying an aerial image of a roof, overlaying a “pitch determination marker” tool on the image, allowing a user to manually operate the tool to input the pitch of a roof section, and modifying an unspecified model of a roof based on that input.
Plaintiff argued that the patents are not directed to an abstract idea because the patents claim a specific technique for identifying the roof of a building in an image to determine the attributes of the said roof to overcome a problem specifically arising in the field of digital imagery analysis for roof measuring. However, the Court found the claimed technology is entirely conventional, requiring nothing more than generic computer technology. First, the initial image may come from a variety of sources, including the public and well-known Google Earth image database. Second, the user inputs and image-based roof measurements may constitute conventional user input from a generic computer. User inputs like mouse clicks, checkboxes, confirmation buttons, and the like are routine computer functions. Similarly, using basic parameters for calculating the area of a roof (predominant pitch, footprint, and area) using conventional computer components (a generic computer processor) is also a routine computer function. Consequently, the Court found the claims fail to recite any assertedly inventive technology for improving computers as tools and are instead directed to an abstract idea for which computers are invoked merely as a tool and therefore are directed to an abstract idea.
Turning to the second step, the court found the elements do not recite an inventive concept. The Court reasoned the specification shows that elements such as the image display, user inputs, and image-based roof measurements merely rely on conventional computer functions. Thus, the claims recite nothing other than the use of routine computer functions to perform the abstract idea of known roof measurement methods. Thus, the patents also do not supply an inventive concept for step two.
Thus, the Court found claim 1 of the plaintiff’s three asserted patents encompassed unpatentable subject matter and that the asserted claims were directed to an abstract idea, and therefore granted Defendant’s motion to dismiss with respect to claim 1 of all three patents.