Eagle View Techs. v. Roofr, Inc.

• Decision Date: 19 January 2023
• Docket Number: Civil Action 21-1852-RGA
• Parties: EAGLE VIEW TECHNOLOGIES, INC., and PICTOMETRY INTERNATIONAL CORP., Plaintiffs, v. ROOFR, INC., Defendant.
• Court: U.S. District Court — District of Delaware

EAGLE VIEW TECHNOLOGIES, INC., and PICTOMETRY INTERNATIONAL CORP., Plaintiffs,
v.
ROOFR, INC., Defendant.

Civil Action No. 21-1852-RGA

United States District Court, D. Delaware

January 19, 2023

Nathan R. Hoeschen, Andrew E. Russell, Karen E. Keller, SHAW KELLER LLP, Wilmington, DE; L. Kieran Kieckhefer, SHEARMAN & STERLING LLP, San Francisco, CA; Matthew G. Berkowitz (argued), Patrick Colsher, Yue (Joy) Wang, SHEARMAN & STERLING LLP, Menlo Park, CA. Attorneys for Plaintiffs.

Jack B. Blumenfeld, Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT & TUNNELL LLP, Wilmington, DE; Kevin P.B. Johnson, Dallas Bullard (argued), QUINN EMANUEL URQUHART & SULLIVAN, LLP, Redwood Shores, CA; Yury Kapgan, QUINN EMANUEL URQUHART & SULLIVAN, LLP, Los Angeles, CA; Ron Hagiz (argued), QUINN EMANUEL URQUHART & SULLIVAN, LLP, New York, NY. Attorneys for Defendant.

MEMORANDUM OPINION

1

ANDREWS, UNITED STATES DISTRICT JUDGE:

Before me is Defendant's motion to dismiss for failure to state a claim. (D.I. 20). The parties have fully briefed the issues. (D.I. 21,22, 23). I heard oral argument on December 2, 2022. (D.I. 27, hereinafter “Tr.”). For the following reasons, I will GRANT Defendant's motion with respect to claim 1 of all three patents.

I. BACKGROUND

Pictometry International Corp, and Eagle View Technologies, Inc. sued Roofr, Inc. for infringement of U.S. Patent Nos. 10,648,800 (“the '800 Patent”), 9,183,538 (“the '538 Patent”), and 8,170,840 (“the '840 Patent”). (D.I. 12 at 1).

Eagle View, which was founded in 2008, was a pioneer in “remote aerial roof measurement service[s].” (Id. at 2). Eagle View developed technology capable of producing “extremely accurate and detailed roof reports using aerial imagery” that “were used to, among other things, estimate the cost of roof repairs, construction, and insurance.” (Id.). In 2013, Eagle View merged with Pictometry-an “innovator of... aerial oblique image capture and processing technologies”-and formed a new company, EagleView Technology Corporation, which continues to develop aerial roof measurement products and which comprises Plaintiffs Eagle View and Pictometry. (Id.). I hereinafter refer to Plaintiffs collectively as “EagleView.”

The asserted patents generally relate to aerial roof measurement. The '840 patent has been the subject of prior decisions. In 2015, EagleView brought a patent infringement action against unrelated Defendants Xactware Solutions and Verisk Analytics in the United States District Court for the District of New Jersey. Eagle View Techs., Inc. v. Xactware Sols., Inc., 358 F.Supp.3d 399 (D.N.J. 2019) (hereinafter "Xactware I”). In that case, EagleView asserted six patents and eleven claims, including claims 10 and 18 of the '840 patent. Id. at 402 n. 2. The Court denied

2

Defendants' § 101 challenge at the summary judgment stage, holding that the asserted claims were directed to patent-eligible subject matter. Id. at 411. It did so again after trial, denying Defendants' motion for judgment as a matter of law on the basis of § 101. EagleView Techs., Inc. v. Xactware Sols., Inc., 485 F.Supp.3d 505 (D.N.J. 2020) (hereinafter "Xactware ID). The second decision involved five patents and six claims, including claim 10 of the '840 patent. Id. at 513. In 2021, EagleView asserted nine aerial roof measurement patents, including the '840 patent, against unrelated Defendant GAF Materials. Eagle View Techs, v. GAF Materials, LLC., No. 2:22-215-TS-DAO (D. Utah Dec. 12, 2022). The Court denied Defendant's motion to dismiss under § 101. Id. at 8. The other two patents have not been litigated.^[1]

With respect the '800 patent, EagleView asserts “at least claim 1” (D.I. 12 at 25); with respect to the '538 patent, it asserts “claim 1”, “claims 6 and 7”, and “at least claim 14” (id. at 1724); and with respect to the '840 patent, it asserts “at least claim 1” (id. at 12). Roofr argues that claim 1 of each patent is representative. (D.I. 21 at 24-25). EagleView disagrees. (D.I. 22 at 22-24).

Roofr devotes roughly a page and a half of its 25-page opening brief to its representative claim analysis. (See D.I. 21 at 24-25). The remainder of its briefing deals almost entirely with claim 1 of each asserted patent. The asserted patents contain a total of 63 claims. I thus find Roofr's

3

briefing insufficient to support a determination that claim 1 of each asserted patent is representative of all remaining claims in each asserted patent.

I will therefore limit this opinion to deciding whether claim 1 of each asserted patent is patentable under § 101.

Claim 1 of the '800 Patent recites:

1. A process, comprising

receiving first location data;

providing visual access to a first image corresponding to the first location data, the first image including a roof structure of a building;

providing a first computer input capable of signaling 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 structure within the first image;

responsive to receiving the designation of the building roof structure location, providing a second computer input capable 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

subsequent to receiving the user-acceptance confirming the designation of the building roof structure location, providing a report for the building roof structure.

Claim 1 of the '538 patent recites:

1. One or more non-transitory computer readable medium storing a set of computer executable instructions for running on one or more computer systems that when executed cause the one or more computer systems to: identify a geographic location of a roof; determine a footprint and predominant pitch of the roof by analyzing one or more image showing the roof; determine an estimated roofing area of the roof based on the predominant pitch and the footprint of the roof; and generate a roof report for determination of an amount of materials needed for a construction project, wherein the roof report includes at least one image showing the roof and the estimated roofing area of the roof.

4

Claim 1 of the '840 patent recites:

1. A computer-implemented method for generating a roof estimate report, the method comprising:

displaying an aerial image of a building having a roof comprising a plurality of planar roof sections that each have a corresponding pitch;

displaying a pitch determination marker operable to indicate pitch of a planar roof section, wherein the pitch determination marker is overlaid on the aerial image of the building having the roof;

receiving, based on the displayed pitch determination marker, an indication of the pitch of one of the plurality of planar roof sections of the roof of the building; and modifying a model of the roof based on the received indication of the pitch of the one planar roof section.

II. LEGAL STANDARD

Patentability under 35 U.S.C. § 101 is a threshold legal issue. Bilski v. Kappos, 561 U.S. 593, 602 (2010). Accordingly, the § 101 inquiry is properly raised at the pleading stage if it is apparent from the face of the patent that the asserted claims are not directed to eligible subject matter. See Cleveland Clinic Found, v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017). The inquiry is appropriate at this stage “only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.” Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).

Section 101 of the Patent Act provides: “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.” 35 U.S.C. § 101. The Supreme Court recognizes three categories of ineligible subject matter: laws of nature, natural phenomena, and abstract ideas. Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014). The purpose of these exceptions is to protect the “basic tools of scientific and

5

technological work.” Mayo Collaborative Servs. v. Prometheus Lab'ys, Inc., 566 U.S. 66, 71 (2012).

In Alice, the Supreme Court reaffirmed the framework laid out in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” 573 U.S. at 217. First, the court must determine whether the claims are drawn to a patent-ineligible concept. Id. “The ‘abstract ideas' category embodies ‘the longstanding rule that an idea of itself is not patentable.'” Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 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.” Int'l Bus. Machs. Corp. v. Zillow Grp., Inc., 50 F.4th 1371, 1377 (Fed. Cir. 2022) (citation omitted). I must “articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.” Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017).

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...