IP Law Daily, PATENT—Fed. Cir.: PTAB invalidation of roof measurement patents affirmed in parallel IPR appeals, (May 28, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The Board did not err in finding that prior art disclosed key aspects of both asserted patents, rendering all challenged claims obvious.

A provider of aerial imagery-based roof measurement technology failed to overturn Patent Trial and Appeal Board (PTAB) rulings invalidating two related patents, as the U.S. Court of Appeals for the Federal Circuit affirmed findings that all challenged claims were unpatentable for obviousness. In two parallel appeals, the court upheld the Board’s determinations that prior art disclosed key limitations, including user confirmation of roof location and calculation of roof pitch, and that a skilled artisan would have combined the references to arrive at the claimed inventions (Pictometry International Corp. v. Roofr Inc., No. 24-2321 and No. 24-2322 (Fed. Cir. May 22, 2026)).

Background. Pictometry International Corporation, a developer of aerial imagery and geospatial measurement technology, challenged PTAB’s decisions in two inter partes reviews initiated by Roofr Inc., a company offering roof measurement and estimation tools. Roofr had petitioned for review of two patents relating to roof measurement using aerial imagery, and the Board found all claims of both patents unpatentable. Pictometry appealed both decisions.

The first patent, U.S. Patent No. 10,648,800 (the ’800 patent), relates to a method for identifying and confirming the location of a roof using aerial imagery. The process involves receiving location data, displaying an image with a movable marker, allowing the user to position the marker over a roof, and requiring user confirmation of the selected location before generating a report. The second patent, U.S. Patent No. 9,183,538 (the ’538 patent), concerns methods for estimating roof area using aerial imagery by determining a roof’s “footprint” and “predominant pitch.” The patent teaches calculating area based on these parameters, including the use of weighted averages of pitch values across different roof sections.

Roofr petitioned for inter partes review of both patents, asserting that the claims were obvious in view of combinations of prior art references. For the ’800 patent, Roofr relied primarily on Pershing, which disclosed roof measurement systems using aerial imagery, and Abhyanker, which taught marker placement and a “locking” feature to confirm location. For the ’538 patent, Roofr relied on a 1999 publication by the U.S. Army Corps of Engineers (Bailey), which described using a “predominant slope” in roof calculations, in combination with Pershing and other references. The Board instituted review and ultimately held all challenged claims of both patents unpatentable for obviousness. Pictometry appealed, challenging the Board’s findings on key claim limitations.

User-acceptance limitation. In the appeal concerning the ’800 patent, Pictometry argued that the Board erred in finding that the prior art disclosed the claimed “user-acceptance” limitation. The patent required that, after a user designates a roof location by placing a marker, the system provide a second input allowing the user to confirm that selection.

Pictometry contended that this limitation imposed a temporal requirement: the confirmation mechanism must be provided only after the user completes the designation. It argued that Abhyanker’s “lock” feature did not satisfy this requirement because it was available before the user finalized the marker placement.

The Federal Circuit rejected this argument. While it noted that Pictometry’s claim construction faced significant obstacles, it declined to resolve the issue definitively. Instead, the court held that, even under Pictometry’s proposed interpretation, the Board did not err in concluding that the combination of Pershing and Abhyanker rendered the claims obvious.

The court agreed with the Board’s reasoning that a skilled artisan would have understood how to implement a confirmation step after marker placement, including by modifying Abhyanker’s locking mechanism. Substantial evidence supported the Board’s finding that such a sequence would have been obvious to a person of ordinary skill in the art.

The court also emphasized that Abhyanker’s locking feature performed the same essential function as the claimed confirmation step, ensuring that the user accepts the selected location, and therefore satisfied the limitation.

Predominant pitch limitation. In the appeal concerning the ’538 patent, Pictometry challenged the Board’s treatment of the “predominant pitch” limitation. It argued that the term required accounting for the pitch of all portions of a roof and that the prior art did not disclose such a calculation.

The Federal Circuit disagreed. It held that the Board reasonably relied on the ordinary meaning of “predominant pitch,” which was not limited to a specific calculation method such as a weighted average. The court noted that the term could encompass various approaches, including those based on the most significant portion of the roof.

The court further held that Bailey’s disclosure of a “predominant slope” could reasonably be understood by a skilled artisan as corresponding to the claimed “predominant pitch.” The Board’s finding that Bailey taught this limitation was supported by substantial evidence.

Weighted average limitation. For dependent claims requiring calculation of pitch using a weighted average, Pictometry argued that the prior art did not expressly disclose such a method. The Federal Circuit rejected that argument as well.

Relying on KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the court explained that obviousness may be established through the application of known techniques. The Board had found that weighted averages were a well-known method for combining values and that a skilled artisan would have applied this technique to calculate a predominant pitch.

The court concluded that substantial evidence, including expert testimony and technical references, supported the Board’s finding that using a weighted average would have been a predictable and routine step.

Motivation to combine. In both appeals, the Federal Circuit upheld the Board’s findings regarding motivation to combine prior-art references. For the ’800 patent, the court agreed that combining Pershing’s roof-measurement system with Abhyanker’s marker-confirmation feature would have improved accuracy by ensuring correct roof identification.

For the ’538 patent, the court held that combining Bailey’s slope-based calculations with Pershing’s aerial imagery techniques was a logical step to enable roof area estimation from images. The Board’s conclusions were supported by substantial evidence and consistent with established obviousness principles.

Disposition. Thus, the Federal Circuit affirmed the Board’s final written decisions in both appeals, holding all challenged claims of the ’800 and ’538 patents unpatentable for obviousness. The court rejected all of Pictometry’s arguments and concluded that the Board’s findings were supported by substantial evidence and free of reversible error.

The Case is No. 24-2321 and No. 24-2322.

Judge: Taranto, R.

Attorneys: Michael D. Specht (Sterne Kessler Goldstein & Fox PLLC) for Pictometry International Corp. James M. Glass (Quinn Emanuel Urquhart & Sullivan, LLP) for Roofr Inc.

Companies: Pictometry International Corp.; Roofr Inc.

Cases: Patent FedCirNews