Case 2:21-cv-00283-TS-DAO Document 41 Filed 08/05/21 PageID.945 Page 1 of 32
`
`
`Jess M. Krannich (#14398)
`Trevor J. Lee (#16703)
`MANNING CURTIS BRADSHAW & BEDNAR PLLC
`136 East South Temple, Suite 1300
`Salt Lake City, UT 84111
`Telephone: (801) 303-0034
`Facsimile: (801) 364-5678
`jkrannich@mc2b.com
`tlee@mc2b.com
`
`Attorneys for Plaintiffs - Additional counsel listed in signature
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH
`
`EAGLE VIEW TECHNOLOGIES, INC.,
`and PICTOMETRY INTERNATIONAL
`CORP.,
`
`Plaintiffs,
`
`v.
`
`NEARMAP US, INC.,
`
`Defendant.
`
`PLAINTIFFS’ OPPOSITION TO
`DEFENDANT’S MOTION TO DISMISS
`BASED ON UNPATENTABILITY
`UNDER 35 U.S.C. §101
`
`ORAL ARGUMENT REQUESTED
`
`Case No.: 2:21-cv-00283-TS-DAO
`
`District Judge Ted Stewart
`Magistrate Judge Daphne A. Oberg
`
`
`
`
`
`
`
`
`
`
`

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`Case 2:21-cv-00283-TS-DAO Document 41 Filed 08/05/21 PageID.946 Page 2 of 32
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`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................ 1
`
`FACTUAL BACKGROUND ........................................................................................... 4
`
`A.
`
`B.
`
`EagleView Revolutionized the Insurance Industry with Innovative and
`Accurate Roof Reports Using Non-Stereoscopic Aerial Images ............................ 4
`
`EagleView’s Family of Roof Report Patents Has Already Been Found
`Valid in View of Multiple Section 101 Challenges ................................................ 6
`
`III.
`
`LEGAL STANDARD ....................................................................................................... 7
`
`IV. ARGUMENT ..................................................................................................................... 8
`
`A.
`
`B.
`
`C.
`
`The Asserted Claims of the ’152 Patent Are Directed To Patentable
`Subject Matter ......................................................................................................... 9
`
`The Asserted Claims of the ’737 Patent Are Directed To Patentable
`Subject Matter ....................................................................................................... 19
`
`Nearmap’s Requested Ruling Is Premature At Best Because There Are
`Disputed Factual and Expert Issues That Must be Resolved ................................ 24
`
`V.
`
`CONCLUSION ............................................................................................................... 25
`
`
`
`
`
`
`
`
`i
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`Case 2:21-cv-00283-TS-DAO Document 41 Filed 08/05/21 PageID.947 Page 3 of 32
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Aatrix Software, Inc. v. Green Shades Software, Inc.,
`882 F.3d 1121 (Fed. Cir. 2018)..................................................................................4, 8, 24, 25
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016)..........................................................................................10, 11
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014) ...................................................................................................... passim
`
`Bascom Glob. Internet Servs. v. AT&T Mobility,
`827 F.3d 1341 (Fed. Cir. 2016)......................................................................................7, 17, 18
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)......................................................................................8, 18, 24
`
`CardioNet, LLC v. Infobionic, Inc.,
`955 F.3d 1358 (Fed. Cir. 2020)..........................................................................................12, 13
`
`Core Wireless Licensing v. LG Elecs.,
`880 F.3d 1356 (Fed. Cir. 2018)..........................................................................................11, 18
`
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011)................................................................................................16
`
`Data Engine Techs. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018)..................................................................................................21
`
`David v. Denver,
`101 F.3d 1344 (10th Cir. 1996) .................................................................................................7
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014)................................................................................................21
`
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012)................................................................................................11
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) .................................................................................................................18
`
`
`
`ii
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`

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`
`
`EcoServices v. Certified Aviation Servs.,
`830 F. App’x 634 (Fed. Cir. 2020) ....................................................................................12, 13
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)........................................................................................ passim
`
`Evans v. Diamond,
`957 F.3d 1098 (10th Cir. 2020) .....................................................................................7, 13, 14
`
`Finjan v. Blue Coat Sys.,
`879 F.3d 1299 (Fed. Cir. 2018)....................................................................................11, 16, 21
`
`Indus. Constructors Corp. v. U.S. Bureau of Reclamation,
`15 F.3d 963 (10th Cir. 1994) .....................................................................................................7
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016)............................................................................................9, 16
`
`Koninklijke KPN N.V. v. Gemalto M2M,
`942 F.3d 1143 (Fed. Cir. 2019)......................................................................................8, 12, 17
`
`McRO, Inc. v. Bandai Namco Games America Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)........................................................................................ passim
`
`OIP Techs., Inc. v. Amazon.com, Inc.,
`788 F.3d 1359 (Fed. Cir. 2015)..................................................................................................6
`
`Peterson v. Grisham,
`594 F.3d 723 (10th Cir. 2010) ...................................................................................................7
`
`TecSec v. Adobe,
`978 F.3d 1278 (Fed. Cir. 2020)..........................................................................................16, 21
`
`Thales Visionx v. United States,
`850 F.3d 1343 (Fed. Cir. 2017)..........................................................................................17, 19
`
`Trading Techs. Int’l, Inc. v. CQG, Inc.,
`675 F. App’x 1001 (Fed. Cir. 2017) ........................................................................................18
`
`Ultramercial, Inc. v. Hulu, LLC,
`722 F.3d 1335 (Fed. Cir. 2013)..................................................................................................8
`
`Univ. of Fla. Rsch. Found., Inc. v. Gen. Elec. Co.,
`916 F.3d 1363 (Fed. Cir. 2019)................................................................................................16
`
`
`
`iii
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`

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`
`
`Vanda Pharm. Inc. v. West-Ward Pharm. Int’l Ltd.,
`887 F.3d 1117 (Fed. Cir. 2018)..................................................................................................9
`
`Visual Memory LLC v. NVIDIA Corp.,
`867 F.3d 1253 (Fed. Cir. 2017)............................................................................................4, 24
`
`Yu. Yu v. Apple Inc.,
`1 F.4th 1040 (Fed. Cir. 2021) ..................................................................................................16
`
`Statutes
`
`35 U.S.C. § 282(a) ...........................................................................................................................7
`
`Rules
`
`Federal Rules of Civil Procedure 12(b)(6) .......................................................................4, 8, 24, 25
`
`
`
`iv
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`

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`Case 2:21-cv-00283-TS-DAO Document 41 Filed 08/05/21 PageID.950 Page 6 of 32
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`I.
`
`
`
`INTRODUCTION
`
`This is not a case of patents covering abstract ideas around “since the beginning of time.”
`
`Mot. at 1. Since its founding in 2008, EagleView has been the pioneer in producing highly
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`accurate roof reports, which are relied upon by hundreds of insurance companies and thousands of
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`contractors across the United States, using all new, concrete technologies that it took substantial
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`time and resources for EagleView to develop. EagleView’s patents—including the ’152 and ’737
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`Patents challenged here—concern specific technologies that revolutionized the insurance and
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`construction industries, allowing for the first time a fast, cost-effective, safe, and highly accurate
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`computer-driven approach to measuring roofs so that damage can be assessed, repairs can be made,
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`and claims can be paid in a timely and efficient manner—without the very serious safety risks and
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`inaccuracies associated with prior art approaches—and saving insurers, contractors and
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`homeowners countless millions of dollars each year. EagleView’s inventions—which involve,
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`e.g., the use of specific types of aerial images of roofs, specific mechanisms for creating “three-
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`dimensional models” of roofs, and specific interactive graphical user interface tools to modify the
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`models—are the product of years of research and development and are nothing like the prior art
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`approaches to roof measurement. This has been repeatedly confirmed: by the public (when it
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`reacted to EagleView’s patented technologies), courts (including detailed orders from two federal
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`judges rejecting similar Section 101 arguments after a full factual record), and the Patent Office
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`(which found every claim at issue here valid over the prior art, including in Inter Partes Review
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`challenges). And while the Section 101 eligibility of the ’152 and ’737 Patents’ claims is easily
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`confirmed by the detailed claim language alone, this other evidence is expressly incorporated into
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`EagleView’s Complaint, confirming that Nearmap’s Section 101 arguments must be denied.
`
`1
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`

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`
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`Far from claiming abstract ideas, the claims of the ’152 and ’737 Patents instead concern
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`critical technical improvements in user interface tools that allow a user to more accurately and
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`reliably make iterative adjustments to a computer-generated 3D model of a roof and output a
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`tangible, improved roof report. The claims include numerous specific requirements such as the
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`use of specific front-end interactive tools involving “markers” and “line drawings” projected on
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`specific types of images to assist with refining 3D models, as well as specific back-end details to
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`make that work, such as “registering” the images to a “reference grid” corresponding to the model.
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`All the indicia relied upon by the Federal Circuit in a Section 101 analysis to confirm non-
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`abstractness and inventive steps are present here. It is no wonder, then, that two federal judges
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`found that EagleView’s inventions “set forth a technological solution” with a “concrete, tailored
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`approach to measure the roof,” and “were groundbreaking” and merit protection.1 Ex. 1 (Case
`
`No. 1:15-cv-7025, Dkt. 557 (cited in Dkt. 2-10) at 10); Dkt. 2-10 at 19-20, 25, (Judge Bumb) (the
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`“Orders”). The key facts that those Orders found and relied upon are not only part of the record
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`before the Court, but must be accepted as true for purposes of this motion to dismiss.
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`
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`Nearmap’s motion never addresses the key aspects of the claims or the substantial record
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`confirming them to be patentable, and instead proposes that—contrary to the allegations in the
`
`Complaint that must be accepted as true—the Court adopt a legally and factually impermissible
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`over-generalization of the claims by concluding that they are directed to “collecting and analyzing
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`information using computers as tools.” This straw man characterization of the inventions ignores
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`the concrete, specific claim elements and the Complaint’s allegations. The Supreme Court and
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`Federal Circuit have consistently rejected such attempts to oversimplify the claims.
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`1 All emphasis added unless otherwise noted.
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`2
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`Instead of addressing the indicia of patent-eligibility used by the Federal Circuit, Nearmap
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`incorrectly treats EagleView’s inventions like unpatentable business methods—claiming that they
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`“could be” performed manually, using “pen and paper,” and merely claim “results” without
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`explaining how to achieve them. Not so—as discussed below, the claims include detailed
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`instructions to address computer-based problems relating to computer-user interfaces that, with
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`the benefit of the inventions, improve an aerial imagery-based technique for producing 3D models
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`of buildings, and ultimately, roof measurement reports. As the allegations set forth in the
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`Complaint repeatedly confirm (and which must be accepted as true for purposes of this motion),
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`there was no “pen and paper” corollary to the claims, and there is no way to reconcile Nearmap’s
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`“mere results” argument with the claim requirements specifically delineating how the inventions
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`are achieved. And that is just Step One of the Alice analysis; on Step Two, the factual allegations
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`of the Complaint mandate a conclusion that EagleView’s patents are far from “routine” or “well-
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`known,” and instead include specific and concrete improvements that have been lauded as
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`“groundbreaking,” “sophisticated,” and “revolutionary” by competitors, press, and federal courts.
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`
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`Lastly, while Nearmap’s motion can (and should) be denied on the merits, it is also
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`premature. While the allegations set forth in EagleView’s Complaint—including documentary
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`evidence and the lengthy history around the asserted patent family—provides more than sufficient
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`grounds for this Court to deny Nearmap’s motion outright, at a minimum it confirms that additional
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`fact and expert evidence is necessary to evaluate Nearmap’s assertions. Indeed, Nearmap’s motion
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`presents factual disputes that, according to the Federal Rules and clear Federal Circuit precedent,
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`cannot be resolved in Nearmap’s favor on a motion to dismiss and must be resolved later. Based
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`on Nearmap’s apparent view of the claims, claim construction will also be necessary to adjudicate
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`3
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`

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`
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`its arguments. Lastly, Nearmap all but ignores most of the patent claims, which will need to be
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`addressed in any event. For these additional reasons, Nearmap’s motion should be denied.
`
`II.
`
`FACTUAL BACKGROUND2
`A.
`
`EagleView Revolutionized the Insurance Industry with Innovative and
`Accurate Roof Reports Using Non-Stereoscopic Aerial Images
`
`As set forth in the specifications of the ’152 and ’737 Patents, prior to EagleView’s
`
`invention, roofing contractors preparing a roof repair or replacement estimate for homeowners
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`were forced to physically visit a house and climb on the roof to take measurements; their ability to
`
`do so was affected by, among other things, staffing, travel time and expense, weather, and traffic.
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`Dkt. 2-2 at 1:25-52; Dkt. 2-6 at 1:16-44. EagleView’s invention established an entirely new
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`alternative to manual measurements by creating accurate, 3D roof models in hours—with no
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`ladders, tape measures, or perilous manual estimates. Aspects of that invention are delineated in
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`the claims of the ’152 and ’737 Patents, which concern critical technical improvements in user-
`
`interface tools that allow a user to more accurately and reliably make iterative adjustments to a
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`computer-generated 3D model of the roof and output a tangible roof report with real-world
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`measurements of a physical property. Dkt. 2-2 at 3:36-41, 23:26-32; Dkt. 2-6 at 3:28-33, 23:18-
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`24. The patents teach, among other things, iterative processes of allowing a user to interact with
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`“markers” or “line drawings” that are overlaid on aerial images, which allow a user to make
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`
`2 The factual allegations in the Complaint are set forth in this section, and must be accepted as
`true at the motion to dismiss stage. Aatrix Software, Inc. v. Green Shades Software, Inc., 882
`F.3d 1121, 1125 (Fed. Cir. 2018) (“[P]atent eligibility can be determined at the Rule 12(b)(6)
`stage. . . only when there are no factual allegations that, taken as true, prevent resolving the
`eligibility question as a matter of law.”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
`1261–62 (Fed. Cir. 2017) (“all factual inferences drawn from the specification [in a 12(b)(6)
`motion] must be weighed in favor of … the non-moving party.”).
`
`4
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`

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`
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`adjustments that are then translated into a computerized three-dimensional model of the building’s
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`structure. Dkt. 2-2 at 3:16-25; Dkt. 2-6 at 3:8-17. This computerized 3D model is subsequently
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`updated across all aerial images being shown to the user. Id. Thus, “[b]y concurrently displaying
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`operator identified features in multiple views of building roof 407, the operator obtains feedback
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`regarding the correctness and/or accuracy of the 3D model or other aspects of the model generation
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`process, such as image registration and pitch determination.” Dkt. 2-2 at 14:41-46; Dkt. 2-6 at
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`14:29-35. As a result, the projection of the feature onto the two images “provide[s] a fluid,
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`interactive model generation experience for the operator enabling the operator to drag, draw, or
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`otherwise indicate/manipulate features in a first image and view the results of their work
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`concurrently projected into a second image.” Dkt. 2-2 at 23:28-32; Dkt. 2-6 at 23:20-24.
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`Praise for EagleView’s innovations, including those in the ’152 and ’737 Patents, has been
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`immense. As alleged in the Complaint, news outlets have noted that “EagleView founder Chris
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`Pershing changed how the roofing industry operates with a software breakthrough” (Dkt. 2-11;
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`Dkt. 2 ¶ 31), and “EagleView made one of the biggest breakthroughs in the history of the industry
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`by creating a state-of-the-art software program that remotely snaps sophisticated aerial pictures of
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`roofs and accurately measures lengths, pitches, valleys, and other hard-to-see areas on roofs.” Dkt.
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`2-12 at 2; Dkt. 2 ¶ 32. “Industry experts . . . consider EagleView’s invention the ‘greatest
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`technological breakthrough’ in the industry because it not only saves contractors hundreds of
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`dollars, it also saves an enormous amount of time and expense in several areas (like insurance)
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`while eliminating the risk of injury.” Dkt. 2-12 at 2. Even EagleView’s then-largest competitor
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`admitted that EagleView’s technology was “cutting-edge,” “very accurate,” “innovative,” offered
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`a “breakthrough,” and was unlike “anything that [previously] emerged as possible.” Id. at 7-8.
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`5
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`B.
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`EagleView’s Family of Roof Report Patents Has Already Been Found Valid in
`View of Multiple Section 101 Challenges
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`In 2019, after a multi-week trial, a jury ultimately found five of EagleView’s patents valid
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`and infringed by EagleView’s competitors Xactware and Verisk, awarding EagleView $125
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`million in damages (later trebled to $375 million by the Court for willfulness). In confirming the
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`ruling and denying those defendants’ post-trial motions, Judge Bumb in the District of New Jersey
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`denied “all of Defendants’ challenges to EagleView’s resounding trial victory—from Defendants’
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`section 101 challenge all the way through damages.” Dkt. 2-10 at 78. The five patents found valid
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`under Section 101 in that proceeding3 are all related to the ’152 and ’737 Patents that Nearmap
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`now says are invalid for similar reasons that were found to be insufficient in that proceeding.4
`
`With respect to Alice Step 1, Judge Bumb held that “it is clear that EagleView’s invention solved
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`the problem of generating a roof repair estimate without direct ‘human measurement of a roof.’”
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`Dkt. 2-10 at 18 (order denying a new trial). That court concluded that EagleView’s patents “solve
`
`the specific problem of generating a roof repair estimate without direct human measurement of a
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`roof” including by allowing a user to “change locations of the specified points on the two aerial
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`views.” Dkt. 2-10 at 10-11, 22. Accordingly, the claims “recite specific implementations that
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`improve the functioning of the technological process.” Id. at 11.5
`
`
`3 U.S. Pat. No. 8,078,436 (“the ’436 Patent”), Claim 10 of U.S. Pat. No. 8,170,840 (“the ’840
`Patent”), Claim 20 of U.S. Pat. No. 9,129,376 (“the ’376 Patent”), Claim 26 of U.S. Pat. No.
`8,825,454 (“the ’454 Patent”), and Claim 12 of U.S. Pat. No. 8,818,770 (“the ’770 Patent”).
`4 The ’152 and ’737 Patents were both invented by Chris Pershing, assigned to EagleView, and
`claim priority to Provisional Application No. 61/197,904, filed on Oct. 31, 2008 (“’904
`Application”). Similarly, all five patents previously found valid under Section 101 were
`invented by Chris Pershing and assigned to EagleView, and the ’840, ’376, ’454, and ’770
`Patents also claim priority to the ’904 Application. All seven of these patents claim innovative
`methods for generating accurate roof reports.
`5 Because the ’152 and ’737 Patents share the same inventor, are part of the same family of all
`
`6
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`

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`Judge Bumb rejected the argument that EagleView’s patents “are just computerized
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`routines of what a human could do without the software,” finding that they claim “a technological
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`solution to the well-known problem of generating a roof report without a human’s manual, direct
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`measurement of a roof.” Dkt. 2-10 at 19. Judge Bumb explained that the claims “require[]
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`modifying a model of the roof based on specific adjustments to claimed markers on the 2D roof
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`images,” just like the claims of the ’152 and ’737 Patents. Dkt. 2-10 at 20; Dkt. 2-2, claim 10;
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`Dkt. 2-6, claim 1. Judge Bumb found it unnecessary to even proceed to Step 2 of the Alice test,
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`but noted that she would have found that the claims “recite an inventive concept” under Step 2
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`because “EagleView’s inventions were nowhere close to resembling the practice of climbing on
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`rooftops with tape measures in hand” and instead were “groundbreaking.” Dkt. 2-10 at 25.
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`III. LEGAL STANDARD
`
`On a motion to dismiss, the Court must “accept all well-pled factual allegations as true and
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`view these allegations in the light most favorable to the nonmoving party.” Evans v. Diamond,
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`957 F.3d 1098, 1100 (10th Cir. 2020) (quoting Peterson v. Grisham, 594 F.3d 723, 727 (10th Cir.
`
`2010)). The Court must consider all factual allegations in the complaint, including any exhibits or
`
`documents incorporated by reference. Indus. Constructors Corp. v. U.S. Bureau of Reclamation,
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`15 F.3d 963, 964-65 (10th Cir. 1994). Extrinsic evidence outside of the complaint may not be
`
`introduced to create factual disputes. David v. Denver, 101 F.3d 1344, 1352 (10th Cir. 1996).
`
`“A patent shall be presumed valid,” and on a motion to dismiss under Section 101, “[t]he
`
`
`but one of the previous patents, and claim similar subject matter, the facts laid out in Judge
`Bumb’s order denying a new trial, as described in EagleView’s Complaint and attached as
`Exhibit 9 thereto, apply equally here. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
`1359, 1362 (Fed. Cir. 2015) (on a motion to dismiss, a court may consider “materials
`incorporated into the complaint by reference”).
`
`7
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`

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`
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`burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting
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`such invalidity.” See 35 U.S.C. § 282(a). The question of patent eligibility involves “a two-step
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`analytical framework to identify patents that, in essence, claim nothing more than abstract ideas.”
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`Bascom Glob. Internet Servs. v. AT&T Mobility, 827 F.3d 1341, 1347 (Fed. Cir. 2016). The Court
`
`must first determine whether claims are directed to an abstract idea and then whether the claims
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`include an inventive concept that transforms the abstract idea into a “patent-eligible application.”
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014). Patent claims directed to
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`“non-abstract improvements to existing technological processes and computer technology,”
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`Koninklijke KPN N.V. v. Gemalto M2M, 942 F.3d 1143, 1149 (Fed. Cir. 2019), and “distinct
`
`process[es] to automate a task previously performed by humans” are patent eligible. McRO, Inc.
`
`v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). “[W]hether a claim
`
`recites patent eligible subject matter is a question of law which may contain underlying facts.”
`
`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). A patent may be determined
`
`ineligible at the Rule 12(b)(6) stage only “when there are no factual allegations that, taken as true,
`
`prevent resolving the eligibility question as a matter of law.” Aatrix, 882 F.3d at 1125. At a
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`minimum, the clear and convincing standard applies to any underlying fact issues relevant to
`
`Section 101. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1338 (Fed. Cir. 2013).
`
`IV. ARGUMENT
`
`
`
`Nearmap requests that the Court accept its highly disputed factual contention that the
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`claims of two of the Asserted Patents are both abstract and non-inventive. This is incorrect based
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`purely on the claims and patent specifications, and is contradicted by the factual allegations of
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`EagleView’s Complaint, which must be taken as true at this stage: the inventions claimed in the
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`8
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`Case 2:21-cv-00283-TS-DAO Document 41 Filed 08/05/21 PageID.958 Page 14 of 32
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`
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`’152 and ’737 Patents revolutionized the industry and recite concrete improvements in roof-
`
`estimation technology that use specific types of aerial images to generate accurate 3D roof models.
`
`A.
`
`The Asserted Claims of the ’152 Patent Are Directed To Patentable Subject
`Matter
`
`1.
`
`The “Directed To” Inquiry
`
`
`
`The first part of the Step 1 analysis is to determine what the claims are “directed to,” being
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`“careful to avoid oversimplifying the claims” and not to “merely identify a patent-ineligible
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`concept underlying the claim.” McRO, 837 F.3d at 1313; Vanda Pharm. Inc. v. West-Ward Pharm.
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`Int’l Ltd., 887 F.3d 1117, 1134 (Fed. Cir. 2018). This requires reading the claims “in light of the
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`specification,” not in isolation. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir.
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`2016); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed. Cir. 2016) (“The
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`written description is particularly useful in determining what is well-known or conventional.”).
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`Here, the asserted claims of the ’152 Patent are directed to an improved computer system
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`for generating accurate roof measurement information using an interactive graphical
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`interface tool to register aerial images to a reference grid that corresponds to a computer-
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`generated 3D model of a roof for making iterative adjustments to the 3D model. Claim 10
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`specifically delineates a method for “generating a roof estimate report” that requires the use of two
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`specific “aerial images,” each providing a “different view of the roof of the building,” user
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`interfaces tools that allow for “receiving an indication of a feature,” of a building, “modifying a
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`three-dimensional model” based on that user indication, “displaying a projection of the feature”
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`onto those aerial images, and then “displaying a marker” that a user can manipulate such that the
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`computer system receives “an indication of a point” that it will subsequently use to “register... the
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`aerial image to a reference grid corresponding to the three-dimensional model.” Dkt. 2-2, claims
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`9
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`1, 10. The specification describes the benefits of implementing these claimed features, because
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`the “operator is provided with useful visual cues as to the correctness of the 3D model and/or the
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`correspondence between the aerial images.” Dkt. 2-2 at 5:62-6:4; id. at 3:21-25.
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`Defendant overlooks the plain language of the claims, specification, and the Complaint’s
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`factual allegations to argue that EagleView’s patents are generically directed to, alternately,
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`“collecting and analyzing information using computers as tools” (Mot. at 8), or “overlaying a roof
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`outline onto aerial images” (Mot. at 9). But Nearmap’s formulations vastly “oversimplify[]” the
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`claims and ignore their specific requirements, McRO, 837 F.3d at 1313, making no mention of any
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`of the specific and concrete claimed requirements described above. Defendant’s approach—to
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`generalize and describe the invention at a high level of abstraction—has been repeatedly rejected
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`by the Federal Circuit, and yet underlies (and is fatal to) its entire analysis under Step 1.
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`2.
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`Alice Step 1: The ’152 Patent Claims Are Not Directed To An
`Abstract Idea
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`Under any formulation of the “directed to” inquiry, the ’152 Patent’s claims are not directed
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`to an abstract idea. Each of the Federal Circuit’s indicia satisfying Step 1 is present here. First,
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`the Federal Circuit looks to whether the claims are “specific,” “concrete,” or have a “tangible”
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`form. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). That
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`is precisely what is claimed by the ’152 Patent. To begin, the claims require specific “aerial
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`image[s] of a building having a roof” that each “provid[e] a different view of the roof of the
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`building.” Dkt. 2-2, claim 10. A method using those particular images—instead of countless other
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`ways to generate roof-measurement reports—is neither abstract nor preemptive.6 The claimed
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`6 Indeed, the Patent Office has already found, in an IPR proceeding, that claim 10 is patentable
`over the prior art, confirming its inventiveness. Dkt. 2, ¶ 8 (citing IPR2016-00591).
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`10
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`method then provides a specific graphical user interface tool to interactively and iteratively
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`“modify a three-dimensional model of the roof” across the different images. Dkt. 2-2, claim 1. As
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`set forth in the asserted claims, this tool has specific requirements, beginning by allowing the
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`system to “receive an indication of a feature of the building” in the images, and then “display[ing]
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`a projection of the feature from the modified three-dimensional model” onto the multiple images
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`“as a line drawing of the feature.” Id. at 22:50-23:21. The claimed method then further specifies
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`the interactive tool by requiring the display of a “marker” with which a user assists the system in
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`registering “the aerial image to a reference grid corresponding to the three-dimensional model,”
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`which the system does specifically in response to the “indication of a point on the first aerial image
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`that is provided “via the marker.” Id., claim 10. The claims use this information to produce a
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`specific roof estimate report that includes real-world measurements.7 These specific requirements
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`regard “particular techniques” for roof-modeling, i.e., the use of a specific technique for creating
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`the 3D model using different aerial images, and a specific tool for modifying it. McRO, 837 F.3d
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`at 1316 (“By incorporating the specific features of the rules as claim limitations, claim 1 is
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`limited to a specific process for automatically animating characters using particular information
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`and techniques and does not preempt approaches that use … different techniques.”). The claim
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`lays out “specific steps … that accomplish the desired result” in a “concrete” way. Finjan v. Blue