Pictometry International Corporation v. Nearmap Us, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PICTOMETRY INTERNATIONAL CORPORATION,
Appellant
v.
NEARMAP US, INC.,
Appellee
______________________
2024-1290
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00733.
______________________
Decided: October 27, 2025
______________________
L AURA V U, Haynes and Boone, LLP, San Francisco, CA,
argued for appellant. Also represented by J ONATHAN R.
BOWSER, A DAM L LOYD ERICKSON, Washington, DC; D EBRA
J ANECE MCC OMAS , Dallas, TX; G REGORY P. WEBB, Plano,
TX.
MEGAN F REELAND R AYMOND, Groombridge, Wu,
Baughman & Stone LLP, Washington, DC, argued for ap-
pellee. Also represented by J ON STEVEN BAUGHMAN;
MICHAEL F. MILEA, New York, NY; BENJAMIN J OSEPH
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PICTOMETRY INTERNATIONAL CORPORATION v.
NEARMAP US, INC.
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CHRISTOFF , L AUREN ANN D EGNAN, CHRISTOPHER D RYER ,
WALTER K ARL RENNER, Fish & Richardson PC, Washing-
ton, DC.
______________________
Before P ROST , T ARANTO, and STARK, Circuit Judges.
P ROST , Circuit Judge.
Pictometry International Corp. (“Pictometry”) appeals
from a final written decision of the Patent Trial and Appeal
Board (“Board”) in an inter partes review (“IPR”) of U.S.
Patent No. 8,542,880 (“the ’880 patent”) determining all
challenged claims unpatentable. For the reasons set forth
below, we affirm.
BACKGROUND
The ’880 patent is titled “System and Process for Roof
Measurement Using Aerial Imagery.” ’880 patent Title
(capitalization normalized). It relates to “determining at-
tributes of a roof structure . . . of a real-world three-dimen-
sional building” using a region’s “aerial imagery . . .
including the roof structure.” Id. at col. 5 ll. 30–35. Claim
1 recites:
1. A process for determining attributes of a roof
structure of a real-world three-dimensional build-
ing, comprising the acts of:
providing at least one computer input field for a
user to input first location data generally corre-
sponding to the location of the building;
providing visual access to an aerial image of a re-
gion including the roof structure of the building
corresponding to said first location data, the aerial
image taken from a straight down overhead view
with respect to the roof structure;
on the aerial image of the region, providing a visual
marker that is moveable on a computer monitor
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around said region, said visual marker initially cor-
responding to said first location data, wherein said
visual marker may be moved to a final location on
top of the building to more precisely identify the lo-
cation of the building roof structure, the final loca-
tion having location coordinates;
providing a computer input capable of signaling
user-acceptance of the final location of said marker;
and,
providing visual access to one or more oblique im-
ages of an aerial imagery database corresponding
to location coordinates of the final location.
Id. at claim 1 (emphasis added).
In 2022, Nearmap US, Inc. (“Nearmap”) petitioned for
IPR of claims 1–20 of the ’880 patent. The Board deter-
mined the challenged claims unpatentable as obvious over
the combination of three references: U.S. Patent No.
8,417,061 (“Kennedy”), U.S. Patent Application Publica-
tion No. 2009/0132316 (“Florance”), and U.S. Patent No.
7,373,244 (“Kreft”). In reaching its decision, the Board re-
jected Pictometry’s proposed construction of the limitation
“providing visual access to one or more oblique images of
an aerial imagery database corresponding to location coor-
dinates of the final location” (“limitation [1.5]”) of inde-
pendent claims 1 and 14. J.A. 5–6. Pictometry’s proposed
construction of the limitation included accessing an aerial
imagery database, but the Board determined that nothing
in the plain meaning “requires accessing a database.” J.A.
6. The Board nonetheless noted that the Kennedy-Flo-
rance-Kreft combination “is sufficient even under [Pictom-
etry’s] proposed construction.” J.A. 10.
The Board also rejected Pictometry’s criticism of Near-
map’s motivation-to-combine rationale, concluding that:
“Given [Nearmap’s] accuracy-improvement rationale,
[Nearmap] has articulated sufficient reasoning with
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rational underpinning to support its assertion that includ-
ing Florance’s movable markers in Kennedy’s system
would have been obvious to one skilled in the art.” J.A. 13.
The Board thus determined claims 1–20 unpatentable as
obvious over the Kennedy-Florance-Kreft combination.
Pictometry timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
We review the Board’s decisions “under the standards
provided in the Administrative Procedure Act (‘APA’),
5 U.S.C. § 706.” Unwired Planet, LLC v. Google Inc.,
841 F.3d 1376, 1379 (Fed. Cir. 2016). Under the APA, the
Board’s actions “are to be set aside if ‘arbitrary, capricious,
an abuse of discretion, or otherwise not in accordance with
law’ or ‘unsupported by substantial evidence.’” Pride Mo-
bility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307, 1313
(Fed. Cir. 2016).
Obviousness is a question of law based on underlying
findings of fact. Novartis AG v. Torrent Pharms. Ltd.,
853 F.3d 1316, 1327 (Fed. Cir. 2017). “[T]he subsidiary fac-
tual findings are reviewed for substantial evidence.” Id.
“Whether a skilled artisan would have been motivated to
combine references or would have had a reasonable expec-
tation of success in combining references are questions of
fact reviewed for substantial evidence.” Elekta Ltd. v. ZAP
Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023).
“We review the Board’s ultimate claim construction and
any supporting determinations based on intrinsic evidence
de novo.” Seabed Geosolutions (US) Inc. v. Magseis FF
LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021).
On appeal, Pictometry challenges the Board’s determi-
nation that claims 1–20 are unpatentable, arguing that the
Board’s analysis of independent claims 1 and 14 (1) vio-
lated the APA by failing to provide adequate explanation
for a motivation to combine Kennedy and Florance;
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(2) contained inconsistent reasoning between the claim-
construction and prior-art analyses; (3) incorrectly con-
strued limitation [1.5]; and (4) was unsupported by sub-
stantial evidence that the Kennedy-Florance-Kreft
combination discloses limitation [1.5] even under Pictome-
try’s proposed construction. Pictometry also argues that
the Board’s analysis of dependent claims 3 and 16 violated
the APA by failing to provide adequate explanation and
contained inconsistencies between the claim-construction
and prior-art analyses. We address each issue in turn.
I
We start with Pictometry’s arguments regarding inde-
pendent claims 1 and 14. First, we reject Pictometry’s ar-
guments that the Board failed to provide adequate
explanation for a motivation to combine Kennedy and Flo-
rance. “The central inquiry is whether we can reasonably
discern that the Board followed a proper path, even if that
path is less than perfectly clear.” Medtronic, Inc. v. Teleflex
Innovations S.a.r.l., 70 F.4th 1331, 1344 (Fed. Cir. 2023)
(cleaned up). The Board’s path here is reasonably discern-
ible. The Board started by recounting Nearmap’s motiva-
tion-to-combine rationale, citing to the petition and the
petition’s reference to Florance. J.A. 12. The Board then
recounted Pictometry’s arguments against Nearmap’s ra-
tionale, citing to Pictometry’s patent owner’s response.
J.A. 12–13. The Board next rejected Pictometry’s criticism
of Nearmap’s rationale, providing its reasons for doing so.
J.A. 13. The Board concluded that given Nearmap’s “accu-
racy-improvement rationale,” Nearmap had “articulated
sufficient reasoning with rational underpinning” that com-
bining Kennedy and Florance “would have been obvious to
one skilled in the art.” J.A. 13. Based on our review of the
record, we reject Pictometry’s assertion that the Board vio-
lated the APA by failing to provide adequate explanation.
Second, we disagree with Pictometry that the Board’s
analysis contained inconsistencies. Pictometry argues that
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the Board stated in its claim-construction analysis that
claim 3, which includes the same language as claim 16, re-
cites a database-access step but stated in its prior-art anal-
ysis that claim 16 does not recite that step. See, e.g.,
Appellant’s Br. 27–29. Pictometry relies on the Board’s
statement from a section of its prior-art analysis: “although
claims 1 and 16 recite two separate ‘providing visual access’
steps, they do not recite any database-access steps.” J.A.
10. It is clear, however, that the Board’s reference to claim
16 instead of 14 in that one instance was nothing other
than a typographical error. The first sentence of that prior-
art analysis section begins with “[i]ndependent claims 1
and 14 require” and lists the two “providing visual access”
limitations of claims 1 and 14. J.A. 9–10. “[W]hile we may
not supply a reasoned basis for the agency’s action that the
agency itself has not given . . . we will uphold a decision of
less than ideal clarity if the agency’s path may reasonably
be discerned.” In re Applied Materials, Inc., 692 F.3d 1289,
1294 (Fed. Cir. 2012) (quoting Bowman Transp., Inc. v. Ar-
kansas–Best Freight Sys., Inc., 419 U.S. 281, 285–86
(1974)). The Board’s path here is reasonably discernible
despite the typographical error. We thus reject Pictome-
try’s arguments to the contrary.
Third, substantial evidence supports the Board’s find-
ing that the Kennedy-Florance-Kreft combination would
have rendered obvious limitation [1.5] even under Pictom-
etry’s proposed construction.1 Pictometry argues that no
substantial evidence supports the Board’s finding under
Pictometry’s proposed construction because the Kennedy-
Florance-Kreft combination does not disclose a second da-
tabase-access step. See Appellant’s Br. 46–49. We disa-
gree. The Board found that the “combination is sufficient
1 Given our ruling, we need not address Pictometry’s
argument that the Board incorrectly construed limitation
[1.5].
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even under [Pictometry’s] proposed construction,” citing to
the corresponding portion of Nearmap’s reply. See J.A. 10
(citing J.A. 363–65). That portion of the reply cited the pe-
tition, the prior art references, and expert testimony ex-
plaining that one skilled in the art would have known and
would have been motivated to perform a second database-
access step. See J.A. 364–65 (citing J.A. 1722–24 ¶ 26).
The Board also noted that Nearmap’s improving-accuracy
rationale for combining the references “explains why one
skilled in the art would have retrieved Kennedy’s two im-
ages in separate steps, separated by a user’s confirmation.”
J.A. 10. Accordingly, substantial evidence supports the
Board’s finding.
II
We next turn to Pictometry’s arguments regarding de-
pendent claims 3 and 16. Pictometry argues that (1) the
Board failed to adequately explain why the Kennedy-Flo-
rance-Kreft combination discloses the limitations; and
(2) the Board’s reasoning contained inconsistencies be-
tween the claim-construction and prior-art analyses. First,
we disagree with Pictometry that the Board failed to ade-
quately explain its prior-art analysis of claims 3 and 16.
Pictometry argues that the Board’s analysis came down to
a single sentence and failed to address the limitation: “us-
ing . . . latitude and longitude coordinates to access im-
agery from the second imagery database.” See Appellant’s
Br. 51–52. We disagree. Although the Board addressed its
analysis of claims 3 and 16 in a footnote, the Board re-
counted Pictometry’s non-obviousness arguments regard-
ing a second database-access step, rejected those
arguments, and referred to its analysis of claims 1 and 14
that accounted for a second database-access step. J.A. 11
n.6. Further, in its prior-art analysis section that ad-
dressed the database-access steps, the Board cited to a por-
tion of the petition, J.A. 11 (citing J.A. 87–88), that
referenced Kennedy’s disclosure of using latitude and lon-
gitude coordinates to access the database, J.A. 87–88
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(citing J.A. 955 at col. 5 ll. 36–59, col. 6 ll. 32–44). The
Board’s path is indeed reasonably discernible. “While the
Board’s decision could have been more detailed, ‘we do not
require perfect explanations.’” Medtronic, 70 F.4th at 1344
(quoting In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir.
2016)). Pictometry’s argument is therefore rejected.
Second, we disagree with Pictometry regarding incon-
sistencies between the Board’s claim-construction and
prior-art analyses of claims 3 and 16. Pictometry argues
that the Board’s claim-construction analysis differentiated
dependent claims 3 and 16 from independent claims 1 and
14, but its prior-art analysis lumped the dependent claims
with the independent claims. See Appellant’s Br. 53. Pic-
tometry’s argument lacks merit. The Board’s claim-con-
struction analysis rejected Pictometry’s proposed
construction for claims 1 and 14 but recognized that claim
3, and thus claim 16, “expressly recite[] the database-ac-
cess step [Pictometry] seeks to add to claim 1.” J.A. 6. In
its prior-art analysis of claims 1 and 14, the Board found
that the Kennedy-Florance-Kreft combination nonetheless
renders obvious the second database-access step under Pic-
tometry’s proposed construction. J.A. 10. As a result, in
its prior-art analysis of claims 3 and 16, and consistent
with its claim-construction analysis that claim 3 expressly
recites the database-access step, the Board referred to its
analysis for claims 1 and 14 that the Kennedy-Florance-
Kreft combination renders obvious a second database-ac-
cess step. J.A. 11 n.6. We thus reject Pictometry’s argu-
ment.
CONCLUSION
We have considered Pictometry’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
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