Viken Detection Corp v. American Science & Engineering Inc

1. Case Identification

• Case #: IPR2022-00027
• Patent #: 8,300,763
• Filed: October 20, 2021
• Petitioner(s): Viken Detection Corporation
• Patent Owner(s): American Science and Engineering, Inc.
• Challenged Claims: 1-12

2. Patent Overview

• Title: Multi-Source X-Ray Inspection System
• Brief Description: The ’763 patent relates to multi-source X-ray inspection systems for security and screening applications. The disclosed method uses multiple sweeping beams of penetrating radiation from different perspectives to scan an object, aiming to avoid "cross-talk" noise between sources by synchronizing the beams within a defined inspection space.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 7-9, and 12 over Chalmers

• Prior Art Relied Upon: Chalmers (Patent 6,459,764). Petitioner also asserted Grodzins (Patent 6,151,381) is effectively part of Chalmers via incorporation by reference.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chalmers, which discloses a multi-source X-ray system for inspecting vehicles, anticipates every limitation of independent claims 1 and 8. Chalmers allegedly shows a system scanning an object from at least two perspectives (e.g., from the side and below) that are substantially orthogonal to respective planes defining an inspection space. Petitioner mapped Chalmers's description of its scanning beams to the claim limitations requiring scans to start at entry points adjacent to edges of the inspection space and generate scan line traces. For dependent claims, Petitioner asserted that Grodzins, which is incorporated by reference into Chalmers, teaches the simultaneous initiation of scans from its backscatter systems to meet claim 2. Grodzins also allegedly discloses the use of collimators to narrow the field of view of detectors, which Petitioner argued meets the "ortho-enhancing" limitation of claims 7 and 12.

Ground 2: Anticipation of Claim 4 over Cason

• Prior Art Relied Upon: Cason (Patent 7,400,701), which incorporates by reference both Chalmers (Patent 6,459,764) and Grodzins (Patent 6,151,381).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that claim 4, which adds a third scanning perspective to the method of claim 1, is anticipated by Cason. Petitioner asserted that Cason discloses a "Backscatter Inspection Portal" with three X-ray sources arranged to scan an object from three different perspectives, mirroring the arrangement in the ’763 patent. Because Cason explicitly incorporates Chalmers, Petitioner argued that the teachings of Chalmers regarding the two-scanner method (as mapped to claim 1) are applicable to Cason’s system. Therefore, Cason's disclosure of a three-scanner system built upon the principles found in Chalmers allegedly anticipates the complete three-scanner method recited in claim 4.

Ground 3: Obviousness of Claims 5 and 10 over Chalmers in view of Horn and Annis

• Prior Art Relied Upon: Chalmers (Patent 6,459,764) incorporating Grodzins (Patent 6,151,381), Horn (Patent 4,718,075), and Annis (Patent 5,666,393).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that claims 5 and 10, which add "time gating of scintillation detections," are obvious over the combination of Chalmers, Horn, and Annis. Horn allegedly discloses selectively interrogating individual detector array elements based on the instantaneous position of the X-ray beam to avoid image shadows caused by overlapping beams. Similarly, Annis allegedly teaches selectively deactivating photomultiplier tubes that are not in the vicinity of the incident X-ray beam to reduce "afterglow noise." Petitioner contended that these techniques are functionally identical to the "time gating" claimed in the ’763 patent.
  • Motivation to Combine: A POSITA would combine the noise-reduction techniques of Horn and Annis with the base inspection system of Chalmers to solve the well-known problems of cross-talk, image artifacts, and noise. All references are directed to the same field of non-destructive X-ray inspection and address common challenges.
  • Expectation of Success: A POSITA would have a reasonable expectation of successfully implementing the time-gating methods of Horn and Annis in the Chalmers system. The combination involves applying known software and hardware solutions to reduce noise, which could be implemented without undue experimentation.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1, 2, 3, 7-9, and 12 are obvious over Chalmers in view of Grodzins if not anticipated; that claims 6 and 11 ("weighting of scintillation detections") are obvious over Chalmers in view of the general knowledge of a POSITA; and that claims 7 and 12 ("ortho-enhancing") are obvious over Chalmers in view of Rothschild (Patent 5,930,326).

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and the Fintiv factors.
• §325(d): Petitioner asserted that denial would be improper because, although several key references were cited in an Information Disclosure Statement, the ’763 patent was granted in a first office action allowance. Petitioner argued there was no record that the Examiner substantively considered the references or the specific anticipation and obviousness arguments presented in the petition.
• Fintiv Factors: Petitioner argued that the parallel district court litigation was in its earliest stages, with a proposed trial date (October 2023) occurring several months after the projected statutory deadline for a Final Written Decision (FWD) in the IPR (approximately April 2023). This timeline, combined with the likelihood of a stay, weighs heavily in favor of institution to achieve a more efficient resolution.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-12 of the ’763 patent as unpatentable.