Viken Detection Corp v. Videray Tech Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Viken Detection Corporation (Delaware)
  • Defendant: Videray Technologies Inc. (Delaware) and Paul E. Bradshaw
  • Plaintiff’s Counsel: ArentFox Schiff LLP
• Case Identification: 1:24-cv-11375, D. Mass., 08/27/2024
• Venue Allegations: Venue is alleged to be proper as Defendant Videray Technologies has its principal place of business in Massachusetts and Defendant Bradshaw resides in Massachusetts, where the acts giving rise to the claims allegedly occurred.
• Core Dispute: Plaintiff alleges that its employee, Mark Hamilton, is the true inventor of the subject matter claimed in a patent listing Defendant Bradshaw as the sole inventor, and seeks to correct inventorship and obtain a declaration of ownership.
• Technical Context: The technology relates to safety features in handheld x-ray backscatter imaging systems, which are used in security and law enforcement to detect contraband.
• Key Procedural History: Plaintiff Viken alleges that Defendant Bradshaw, a former employee, learned of the invention from another Viken employee (Mark Hamilton) while employed at Viken. After his employment was terminated, Bradshaw allegedly filed for a patent on Hamilton's invention. The parties previously litigated trade secret claims, which concluded with a 2020 settlement agreement. Plaintiff alleges Defendants failed to disclose the patent application for the disputed invention during that prior litigation.

Case Timeline

Date	Event
2013-11-01	Bradshaw's employment at Viken begins (approximate)
2017-04-01	Viken employee Hamilton allegedly conceives of and discloses the invention to Bradshaw (approximate)
2017-05-01	Bradshaw's employment at Viken is terminated (approximate)
2019-03-29	Viken files first trade secret lawsuit against Defendants
2019-08-02	'395 Patent Priority Date (Provisional Application filed)
2019-12-06	Viken files second trade secret lawsuit against Defendants
2020-10-02	Parties execute settlement agreement in prior actions
2024-03-26	'395 Patent issues
2024-08-27	Amended Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,940,395 - Enclosed X-Ray Chopper Wheel

The Invention Explained

• Problem Addressed: Handheld x-ray backscatter instruments require significant shielding to protect operators from x-ray energy that scatters off internal components, such as the rotating "chopper wheel." Manufacturing the instrument's housing from high-density materials like tungsten is effective but also expensive and heavy ('395 Patent, col. 2:25-44).
• The Patented Solution: The invention adds two concentric, annular projections (rims) to the planar surface of the chopper wheel itself. These projections are designed to fit into corresponding circular grooves within the instrument's housing, creating a "labyrinth design" ('395 Patent, col. 2:55-62; col. 7:6-9). This structure physically blocks the radial path that scattered x-rays would otherwise travel, attenuating them before they reach the outer housing. This allows the main housing to be made from a lighter and less expensive material, such as brass, without compromising safety ('395 Patent, col. 4:63-col. 5:4). The concept is illustrated in the patent's Figure 4, which shows the projections (254, 256) fitting into grooves (262, 264).
• Technical Importance: This design approach seeks to reduce the cost and weight of handheld x-ray devices, potentially making them more portable and accessible, while still meeting safety standards for operator exposure ('395 Patent, col. 4:63-col. 5:4).

Key Claims at a Glance

• The complaint asserts that the novel subject matter of the patent is recited in its claims, and specifically quotes language from independent claim 1 (Compl. ¶19).
• Independent Claim 1 of the ’395 Patent includes the following essential elements:
  • A collimator to narrow an x-ray beam.
  • A chopper wheel with a planar surface, a central axis, and a plurality of slits.
  • A "first projection" extending from the planar surface, located radially-outward of the slits.
  • A "second projection" extending from the planar surface, located radially-inward of the slits.
  • A housing with an interior wall.
  • A "first groove" in the interior wall configured to receive the first projection.
  • A "second groove" in the interior wall configured to receive the second projection.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• Defendants' PX1 and PXUltra products (Compl. ¶20).

Functionality and Market Context

• The complaint alleges that the PX1 and PXUltra products are handheld x-ray scanners that "practice the invention claimed in the '395 patent" (Compl. ¶20). The complaint does not provide further technical detail on the specific design or operation of these products, but alleges Defendant Bradshaw planned to start a company to sell a competing handheld x-ray product while still employed at Viken (Compl. ¶11). The complaint alleges that Defendants failed to disclose the use of the invention in the PX1 product prior to executing a settlement agreement in a previous litigation (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint's primary counts are for correction of inventorship and declaration of ownership, not patent infringement. It does not contain a detailed, element-by-element infringement analysis or a claim chart. Instead, the complaint alleges that the "projections" claimed in the '395 Patent were invented by Viken's employee, Mark Hamilton, and that Defendants' products incorporate this invention (Compl. ¶¶16, 19, 20).

The complaint provides a side-by-side visual comparison of an entry from Hamilton's 2017 lab notebook and Figure 4 from the '395 Patent to support its claim of derivation (Compl. p. 5). This visual, which contains annotations labeling the "Inner Projection" and "Outer projection" on both the patent figure and the notebook sketch, is presented as evidence that the core inventive concept was conceived at Viken before Bradshaw filed the patent application (Compl. ¶¶ 17-18). The complaint alleges this notebook entry shows the "heart of the invention disclosed in the '395 patent" (Compl. ¶18).

• Identified Points of Contention:
  • Inventorship & Derivation: The central dispute is not whether the accused products infringe, but who invented the claimed subject matter. A primary question will be whether Plaintiff can produce sufficient corroborating evidence, beyond the notebook itself, to prove by clear and convincing evidence that Mark Hamilton conceived of the complete invention and communicated it to Paul Bradshaw, as alleged (Compl. ¶¶ 16-17).
  • Contribution: A related question is whether Bradshaw made any inventive contribution to the subject matter of the claims. The complaint suggests Bradshaw "only copied Hamilton's work and made no inventive contribution" and thus should be removed as an inventor entirely (Compl. ¶30).

V. Key Claim Terms for Construction

While claim construction is not the immediate focus of the complaint, the identity and scope of the allegedly misappropriated invention will be critical. The definitions of the terms describing the core inventive concept will be central to the underlying inventorship dispute.

• The Term: "a first projection extending from the planar surface" and "a second projection extending from the planar surface"
• Context and Importance: The complaint identifies these "projections" as the "heart of the invention" allegedly conceived by Hamilton and communicated to Bradshaw (Compl. ¶¶ 18-19). The entire case rests on establishing that Hamilton invented the subject matter described by these claim elements. Practitioners may focus on these terms because their definition will frame the factual inquiry into what, precisely, Hamilton is alleged to have conceived and disclosed.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims require the projections to "extend[] from the planar surface in a direction of the collimator" ('395 Patent, claim 1). This language does not appear to limit the specific shape, height, or material of the projections beyond their location and general orientation.
  • Evidence for a Narrower Interpretation: The specification describes the projections as creating a "labyrinth design" that provides an "obstruction in the overall radial path of the gap" for scattered x-rays ('395 Patent, col. 6:50-52; col. 7:6-9). Figure 4 shows the projections (254, 256) as continuous, annular rings with a specific rectangular cross-section. A party might argue that the term "projection" should be limited to structures that perform this specific labyrinth-sealing function as depicted in the preferred embodiments.

VI. Other Allegations

• Correction of Inventorship (Count I): The complaint seeks an order directing the USPTO to add Mark Hamilton as an inventor and, potentially, to remove Paul Bradshaw as an inventor on the '395 Patent, alleging Bradshaw did not contribute to the conception of the claimed subject matter (Compl. ¶¶ 28-30).
• Declaration of Ownership (Count II): The complaint alleges that Bradshaw was subject to an employment agreement that assigned all inventions conceived during his employment to Viken (Compl. ¶¶ 9, 32). It seeks a declaration that Viken is the rightful owner of the '395 Patent, either because its employee Hamilton is the sole inventor or because any contribution by Bradshaw was subject to his assignment obligation (Compl. ¶¶ 32-35).
• Rescission of Contract (Count III): The complaint alleges that Defendants fraudulently concealed the existence of the invention and related patent application during prior litigation, inducing Viken to enter into a 2020 settlement agreement (Compl. ¶¶ 36-39). Plaintiff seeks to rescind that agreement (Compl. ¶41).

VII. Analyst’s Conclusion: Key Questions for the Case

This dispute centers on inventorship and ownership, stemming from the relationship between a company and its former employee. The analysis will likely focus on the following key questions:

• A core issue will be one of inventorship and proof: Can Viken present clear and convincing evidence, including corroboration beyond the inventor's own testimony and notebooks, to demonstrate that Mark Hamilton conceived of the complete, claimed invention and communicated it to Paul Bradshaw before Bradshaw's own conception date?
• A second key question will be one of contractual obligation and timing: Does the evidence show that any inventive contribution made by Bradshaw occurred "during the period of [his] employment" with Viken, thereby triggering his contractual duty to assign the invention under the alleged employment agreement?
• A third dispositive issue may be the effect of prior litigation: Does the 2020 settlement agreement's general release bar the current claims for correction of inventorship and ownership, or can Viken successfully argue that the agreement should be rescinded due to fraudulent concealment?