United States District Court, D. Minnesota
Joseph P. Titterington, Esq., and Douglas J. Sorocco, Esq., Dunlap Codding PC, Oklahoma City, OK, and Rachel K. Zimmerman, Esq., Merchant & Gould PC, Minneapolis, MN, on behalf of Plaintiff.
Kurt J. Niederluecke, Esq., Grant D. Fairbairn, Esq., and Ted C. Koshiol, Esq., Fredrikson & Byron, PA, Minneapolis, MN, on behalf of Defendant.
MEMORANDUM OPINION AND ORDER
ANN D. MONTGOMERY, District Judge.
On July 16, 2014, a joint claim construction hearing was held before the undersigned United States District Judge in the patent infringement action brought by Plaintiff Pictometry International Corporation ("Pictometry") against Defendant Geospan Corporation ("Geospan"). The Court also heard oral argument on Geospan's Motion for Summary Judgment of Non-Infringement [Docket No. 76]. As stated herein, the Court construes one claim and grants Geospan's motion for summary judgment.
A. Litigation History
This is the fourth lawsuit between the parties in the past six years. On March 20, 2008, Geospan filed suit against Pictometry, alleging infringement of United States Patent No. 5, 633, 946 (the "946 Patent") ("Geospan I"). On March 31, 2011, this Court entered a declaratory judgment of non-infringement in Pictometry's favor. See Geospan Corp. v. Pictometry Int'l Corp., No. 08-816, 2011 WL 1261583 (D. Minn. Mar. 31, 2011). Geospan appealed, and on June 5, 2012, the Federal Circuit Court of Appeals affirmed the declaration of non-infringement in a per curiam decision. See Geospan Corp. v. Pictometry Int'l Corp., 469 F.Appx. 913 (Fed. Cir. 2012).
On October 13, 2009, while Geospan I was still pending, Pictometry sued Geospan in the Western District of New York, alleging infringement of United States Patent No. 5, 247, 356 (the "356 Patent") ("Geospan II"). On June 2, 2011, the Western District of New York transferred Geospan II to the District of Minnesota, where it was assigned to Judge John R. Tunheim. See Order, May 5, 2011 [Geospan II Docket No. 42]. On August 17, 2012, Judge Tunheim construed one of the patent claims at issue and invalidated the other. See Pictometry Int'l Corp. v. Geospan Corp., No. 11-1423, 2012 WL 3679208 (D. Minn. Aug. 17, 2012). Thereafter, Pictometry stipulated to the dismissal of Geospan II, agreeing that based on Judge Tunheim's claim construction, Geospan did not infringe the 356 Patent. Stipulation [Geospan II Docket No. 75].
On May 10, 2013, Geospan filed another suit against Pictometry in the District of Minnesota, again alleging Pictometry infringed the 946 Patent at issue in Geospan I. That action ("Geospan III"), before Judge Susan R. Nelson, is ongoing.
On August 28, 2013, Pictometry filed the present action ("Geospan IV") against Geospan in this district. Compl. [Docket No. 1]. Pictometry's sole cause of action in this suit alleges Geospan infringed United States Patent No. 7, 424, 133 (the "133 Patent"), which Pictometry owns by assignment.
B. The 133 Patent
Pictometry and Geospan sell products and services in the field of photogrammetry, the science of obtaining accurate information about physical objects through the interpretation of photographs or other visual images. Theodore M. Lachinski Decl., June 4, 2014 [Docket No. 80] ("Lachinski Decl.") ¶ 2. Pictometry specializes exclusively in aerial photogrammetry, flying aircraft with specialized cameras over a geographic area to collect images. Pictometry then uses these images to compile usable data about the terrain. See Stephen L. Schultz Decl., Nov. 12, 2013 [Docket No. 27] ¶ 3. Geospan initially began its photogrammetry services using groundbased vehicles equipped with special cameras, and only later expanded into aerial photogrammetry. Lachinski Decl. ¶ 3.
The 133 Patent relates to the use of oblique imaging in photogrammetry. Compl. [Docket No. 1] Ex. A (the "133 Patent"). The 133 Patent specification summarizes the drawbacks associated with traditional photogrammetry, which typically uses orthogonal (at right angle) images. In this process, for instance, a plane captures images by pointing a camera straight down at a "nadir point" directly underneath it. In the resulting image, only the nadir point is actually at a right angle to the camera; all other points (also referred to as "pixels") around the nadir are at oblique angles and thus are increasingly distorted as they proceed further from the nadir. 133 Patent at 1:30-45. The process of correcting these distortions may leave the corrected (or "ortho-rectified") image difficult for untrained observers to use. The corrected images also include "substantially no information" about the height of the pictured terrain. Id. at 1:57-2:10.
When an image-capturing device aims at a non-right angle relative to the terrain, it results in "oblique images." These images of terrain display the sides of features on land, such as the sides of a house or the ridges of a mountain, and are much easier for a viewer to intuitively understand. Id. at 2:11-20. However, oblique images have traditionally been of little or no use in photogrammetry, because correcting the images for their skewed angles results in finished images that are even more distorted than corrected orthogonal images, and the resulting images do not offer usable geo-location data or accurate measurement data. Id. at 2:32-47.
The 133 Patent describes a method and apparatus for "capturing, displaying, and making measurements of objects and distances between objects depicted within oblique images." Id. at 2:60-63. The invention uses oblique images, along with corresponding positional data, to calculate the distance between selected points. In essence, it uses the more intuitive oblique images to perform some of the same tasks previously performed by orthogonal images in photogrammetry. Id. at 2:60-3:12.
C. The Parties' Claims
In January 2011, the City of Branson, Missouri, held a request for proposals (RFP) for a mapping project. Compl. ¶ 16. Aeroquest Optimal, Inc. ("Aeroquest") submitted a bid in the RFP, and identified Geospan as a subcontractor. Compl. Ex. 3 (Aeroquest RFP). As part of the bid, Geospan described its "Geovista" system as allowing "users to see every location from every angle in a given area and measure anything accurately." Id . Geospan also offered software allowing "the user to view and navigate on the oblique imagery and measure the distance, height, area, bearing, elevation, and roof pitch of features in the images." Id.
On August 28, 2013, Pictometry filed the present action ("Geospan IV") against Geospan, alleging Geospan has directly and indirectly infringed the 133 Patent through its Geovista system. Compl. ¶¶ 19-27. On October 4, 2013, Geospan filed counterclaims against Pictometry, seeking a declaration of non-infringement, the invalidation of the 133 Patent, and damages for abuse of process and violating the Sherman Act. Answer & Countercl. [Docket No. 10].
D. Antitrust Counterclaim
On October 25, 2013, Pictometry moved to dismiss the Sherman Act count of the Counterclaim. In the Court's April 21, 2014 Order [Docket No. 69], the motion was granted and Geospan's antitrust counterclaim dismissed. Geospan has since amended its Counterclaims to re-state Sherman Act claims. Geospan also seeks declarations of the 133 Patent's invalidity and unenforceability, and Geospan also alleges an abuse of process claim. See Am. Answer & Countercl. [Docket No. 98]. Those claims are not at issue in the present motion.
E. Preliminary Injunction
On November 12, 2013, Pictometry moved for a preliminary injunction restricting Geospan from infringing any claim of the 133 Patent. Mot. for Prelim. Inj. [Docket No. 25]. Pictometry subsequently clarified that it only alleged infringement of Claim 17. See Pl.'s Mem. Supp. Prelim. Inj. [Docket No. 26] 2; see also Joint Claim Constr. Statement [Docket No. 73] ("Joint Claim Constr."). Claim 17 states:
A computerized method for taking measurements from an oblique image displayed on a computer system, at least one input device connected to said computer system, an image data file accessible by said computer system, said image data file including captured images and ...