Ann: Nearmap challenges validity of EagleView/Pictometry patents, page-7

The United States Patent Trademark Office (UPSTO) grants some 350,000 patents a year, well over a thousand each working day. Consequently, they are dolled out like sausages by low-level functionaries working off templates, so many patents would not withstand scrutiny. It is more effective for UPSTO to issue patents, most of which are never used, and to react if any interested party challenges the patents. Senior people who work for the U.S. Patent Trial and Appeal Board know their field, and are not as easily fooled as jurors in courts, and some judges, so that is a good first step when challenging a patent.

Why Verisk did not go down the same Appeal Board path, I don't know – maybe they should sue their lawyers for incompetence. There were hints that Verisk actually copied Eagleview's application, and that may have given Eagleview's claim some substance. If that is relevant, then GAF may be in the same boat, and Pushpin too, but that does not make the unpatentab le patentable.

The words below were drafted for another thread, but I may as well paste them here.

I do not understand what Eagleview claims the exclusive right to commercialise, but from comment made by NEA, I understand that the claim is narrow (for example, selling roofing plans), and and of minor commercial significance to NEA. From the exchange of words with the Federal Court in Utah, I understand that unlike Verisk, who assumed a belligerent attitude, NEA immediately adhered to a temporary injunction requested by Eagleview. That means that NEA's recent rapid expansion in North America is not threatened by the litigation, irrespective of the outcome.

Challenging patents

An obvious defence against any patent claim is to evidence “prior art”. NEA's history suggests that it should be able to find sufficient material that evidences “prior art” – academic papers, educational material, CAD manuals, earlier patents, expert witnesses and the like. The defence should be short, simple and and superbly communicated. More than what suffices is too much – I think Verisk damaged its defence argument by convolution.

The same discover process applies to any other avenue of defence – the defence based on “obviousness” for example. If there is merit in any defence, it means the Patents Office erred in granting the patent, so an appeal to the U.S. Patent Trial and Appeal Board is a savvy first step for NEA to take. A successful challenge would incline both parties to settle out of court and cease the litigation – perhaps even cut a win-win deal.

I'll comment futher on the Verisk matter because it is a convenient path to lead into the issue of “obviousness” pursuant to Section 103 of the US patent legislation.

Verisk precedent and the defence of “obviousness”

Legal comment that I have read suggest that Verisk, or its lawyers, handled Eagleview's claim in a stupidly arrogant manner that was seen to have over complicated the case to drive up Eagleview's legal costs. See, “How to really lose a patent infringement case” at https://www.bressler.com/publication-how-to-really-lose-a-patent-infringement-case. Judge Bumb was annoyed enough to not only approve the jury's decision on a $US125m damages claim, but to apply “triple damages”. That decision may not have withstood appeal, but the matter was settled and Verisk withdrew its appeal, so the Judge Bumb ruling is not reliable precedent.

The jury's decision to agree to Eagleview's $US125m damages claim was dubious, IMO, because comments made in the court tempted me to think that the jury was. bamboozled by arguments of doubtful merit. For example: a) that the the software could perform tasks beyond the human mind was relevant; and b) because aerial mapping based digital roofing application solutions were not used by uneducated roofers (US roofers require no educational credentials), the claimed invention was not “obvious”.

Usage evidences “obviousness”, but non-usage does not evidence “non-obviousness”. Many draughtsmen, roofing engineers, construction engineers, architects, surveyors, users of GIS (geographic information systems), and the like would regard the claimed patent to be “obvious”, IMO. The underlying knowledge of the patent has been known and published for decades, but the falling price of the enabling computing power, storage capacity and digital communication, plus advances in miniaturisation occasion the 'obvious” to be commercially viable to a mass market only recently. As a non-technical individual with an ordinary knowledge of software, and a layman's awareness of the existence of CAD, GIS (geographic information systems), BIM (building information management) and accounting-style computer applications. If I had a commercial interest to supply a roofing app, the idea of commission a team of applications programmer to create an app to produce roof plans, bill of materials and sales quotations would be intuitive – hence “obvious”.