DCT
1:23-cv-13035
Videray Tech Inc v. Viken Detection Corp
Key Events
Amended Complaint
Table of Contents
complaint Intelligence
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Videray Technologies, Inc. (Delaware) and Tek84, Inc. (Delaware)
- Defendant: Viken Detection Corp. (Delaware)
- Plaintiff’s Counsel: Sheppard, Mullin, Richter & Hampton LLP; Birnbaum & Godkin, LLP
- Case Identification: 1:23-cv-13035, D. Mass., 09/08/2025
- Venue Allegations: Venue is alleged to be proper as Defendant Viken Detection Corp. resides in the judicial district, maintains its principal place of business there, and is subject to personal jurisdiction.
- Core Dispute: Plaintiffs seek a declaratory judgment that their products do not infringe Defendant’s patents, that the patents are invalid and unenforceable due to inequitable conduct, and that Defendant breached a prior settlement agreement; Defendant has counterclaimed for patent infringement.
- Technical Context: The technology involves handheld backscatter x-ray scanners used by law enforcement and other entities for detecting concealed contraband.
- Key Procedural History: The complaint alleges that this dispute is subject to a 2020 settlement agreement that resolved prior litigation between the parties and included a broad release of claims. A central allegation is that the inventor of the patents-in-suit, Peter Rothschild, engaged in inequitable conduct by intentionally failing to disclose material prior art—a product known as the "Mini-Z" that he allegedly helped develop at a previous employer—to the U.S. Patent and Trademark Office during prosecution.
Case Timeline
| Date | Event |
|---|---|
| 2013-11 | Inventor Peter Rothschild leaves AS&E to form Viken. |
| 2014 | AS&E commercially releases the Mini-Z scanner. |
| 2016-10 | Viken first sells or offers for sale its HBI-120 scanner. |
| 2017-04-05 | Earliest Priority Date for ’195, ’998, and ’706 Patents (Provisional App. 62/482,064). |
| 2018-04-05 | Application for ’195 Patent filed. |
| 2019-03-29 | Viken initiates prior litigation against Videray ("First Action"). |
| 2019-10-03 | USPTO issues Office Action rejecting claims in ’195 Patent application. |
| 2020-07-22 | Application for ’998 Patent filed. |
| 2020-09-08 | U.S. Patent No. 10,770,195 issues. |
| 2020-10-02 | Parties sign Settlement Agreement resolving prior litigation. |
| 2021-11-15 | Application for ’706 Patent filed. |
| 2021-12-14 | U.S. Patent No. 11,200,998 issues. |
| 2022-06-24 | Viken sends "Original Demand Letter" to Tek84 alleging infringement. |
| 2023-09-19 | Viken sends "Second Demand Letter" to Tek84 and Videray. |
| 2023-10-03 | U.S. Patent No. 11,776,706 issues. |
| 2025-09-08 | First Amended Complaint for Declaratory Judgment filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,770,195 - "X-Ray Chopper Wheel Assembly"
- Patent Identification: U.S. Patent No. 10,770,195, "X-Ray Chopper Wheel Assembly," issued September 8, 2020 (the "’195 Patent"). (Compl. ¶71).
The Invention Explained
- Problem Addressed: Backscatter x-ray scanners use a rotating "chopper wheel" to create a pencil-shaped beam for imaging (Compl. ¶21). However, x-rays can scatter off this wheel, creating radiation leakage that poses a safety risk to the operator and traditionally necessitates the use of heavy, bulky shielding. (’195 Patent, col. 3:11-28; Compl. ¶21).
- The Patented Solution: The invention proposes an "open-geometry" assembly that replaces a full, heavy enclosure with one or more "scatter plates" placed in close proximity to the chopper wheel (Compl. ¶22). These plates have a significantly smaller cross-sectional area than a full enclosure but are specifically configured to absorb scattered x-rays, thereby confining leakage and reducing the overall weight of the device. (’195 Patent, abstract; ’195 Patent, col. 5:10-24).
- Technical Importance: This design approach enables the creation of lighter handheld x-ray scanners, which improves portability and ease of use for applications like security screening and non-destructive testing. (’195 Patent, col. 4:55-62).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of independent claims 1 and 20 (Compl. ¶74).
- Independent Claim 1 requires, among other elements:
- A disk chopper wheel configured to rotate and absorb x-ray radiation.
- A "source-side scatter plate" with a solid cross-sectional area "substantially smaller" than that of the disk chopper wheel.
- A support structure that secures the plate with a "source-side gap" between the plate and the wheel.
- An arrangement of the wheel and plate to cause "a substantial confinement of x-rays that are scattered from the disk chopper wheel." (Compl. ¶75).
- Independent Claim 20 broadly requires an assembly with a disk chopper wheel and a "source-side scatter plate arranged relative to the disk chopper wheel to cause a substantial confinement of x-rays that are scattered from the disk chopper wheel." (Compl. ¶76).
U.S. Patent No. 11,200,998 - "X-Ray Chopper Wheel Assembly"
- Patent Identification: U.S. Patent No. 11,200,998, "X-Ray Chopper Wheel Assembly," issued December 14, 2021 (the "’998 Patent"). (Compl. ¶84).
The Invention Explained
- Problem Addressed: The patent addresses the same technical problem as the ’195 Patent: mitigating x-ray leakage from chopper wheel assemblies in a weight-efficient manner for portable devices. (’998 Patent, col. 3:11-36).
- The Patented Solution: The ’998 Patent describes alternative and additional configurations for reducing leakage. One embodiment introduces an "output-side scatter plate" to absorb x-rays scattered from the side of the chopper wheel opposite the x-ray source (’998 Patent, col. 2:16-25). Other embodiments claim specific dimensional ranges for the gap between the scatter plate and the chopper wheel, such as "approximately 0.5 mm to approximately 1.0 mm," to limit leakage. (’998 Patent, claim 16).
- Technical Importance: The claimed configurations provide specific design parameters and alternative structures aimed at optimizing the balance between safety (leakage confinement) and weight reduction in portable x-ray systems. (’998 Patent, col. 4:40-49).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of independent claims 1, 16, and 19 (Compl. ¶87).
- Independent Claim 1 requires an assembly with a disk chopper wheel and an "output-side scatter plate" arranged at the output side of the wheel to absorb scattered x-rays (Compl. ¶88).
- Independent Claim 16 requires an assembly with a chopper wheel and a "source-side scatter plate" arranged with a "source-side gap in a range of approximately 0.5 mm to approximately 1.0 mm" between the plate and the wheel (Compl. ¶89).
- Independent Claim 19 is directed to an assembly with a chopper wheel and an "output-side scatter plate" arranged with an "output-side gap in a range of approximately 0.5 mm to approximately 1.0 mm" (Compl. ¶90).
U.S. Patent No. 11,776,706 - "X-Ray Chopper Wheel Assembly and Method"
- Patent Identification: U.S. Patent No. 11,776,706, "X-Ray Chopper Wheel Assembly and Method," issued October 3, 2023 (the "’706 Patent"). (Compl. ¶100).
- Technology Synopsis: The ’706 Patent claims both apparatuses and methods for limiting x-ray leakage from a chopper wheel assembly. The claims focus on the use of a "source-side scatter plate" arranged relative to the chopper wheel with a specific "source-side gap in a range of approximately 0.2 mm to approximately 2.0 mm" to confine scattered x-rays. (’706 Patent, abstract; ’706 Patent, claims 1, 5).
- Asserted Claims: The complaint addresses independent claims 1, 5, 6, and 18 (Compl. ¶103).
- Accused Features: The complaint alleges that Plaintiffs' PX1 and PX Ultra scanners do not infringe because they do not have a "source-side scatter plate" as required by the claims (Compl. ¶¶108-109).
III. The Accused Instrumentality
Product Identification
- Plaintiffs’ Videray PX1 and PX Ultra scanners (the "Accused Products") (Compl. ¶2).
Functionality and Market Context
- The complaint describes the Accused Products as "hand-held x-ray backscatter imaging devices" (Compl. ¶4). They are used by law enforcement and other customers in the safety and security market, as well as for Non-Destructive Testing (NDT) applications (Compl. ¶4). The complaint asserts that Videray is a "world leader in the design and development of portable & miniaturized handheld x-ray imagers" (Compl. ¶4). The pleading does not provide technical details on the internal construction of the Accused Products, but rather focuses its allegations on features the products purportedly lack. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint is for a declaratory judgment of non-infringement. The core of its non-infringement theory is that the Accused Products lack key components required by the patents' independent claims.
’195 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a source-side scatter plate having a solid cross-sectional area... | The Accused Products allegedly do not have a component that meets the definition of a "source-side scatter plate." | ¶77 | col. 6:8-12 |
| a support structure configured to secure the source-side scatter plate... with a source-side gap... to cause a substantial confinement of x-rays... | As the Accused Products allegedly lack a source-side scatter plate, they consequently lack the claimed support structure and arrangement for confining x-rays. | ¶77 | col. 6:57-65 |
’998 Patent Infringement Allegations
| Claim Element (from Independent Claims 1 & 16) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an output-side scatter plate arranged at the output side of the disk chopper wheel... (Claim 1) | The Accused Products allegedly do not have a component that meets the definition of an "output-side scatter plate." | ¶91 | col. 2:16-19 |
| a source-side scatter plate arranged relative to the chopper wheel with a source-side gap in a range of approximately 0.5 mm to approximately 1.0 mm... (Claim 16) | The Accused Products allegedly do not have a component that meets the definition of a "source-side scatter plate." | ¶93 | col. 2:1-4 |
- Identified Points of Contention:
- Factual/Definitional Question: The primary point of contention will be whether any component within the Accused Products constitutes a "source-side scatter plate" or an "output-side scatter plate" as those terms are used in the patents. The complaint's allegations regarding the prior art Mini-Z scanner suggest that a component named something else (e.g., a "line collimator") could potentially be argued to function as a scatter plate (Compl. ¶40).
- Scope Question: The dispute may center on the required functionality of the claimed plates. A key question will be whether a component must be primarily designed for scatter reduction to be a "scatter plate," or if any component that incidentally confines some scattered x-rays meets the claim limitation.
V. Key Claim Terms for Construction
The Term: "source-side scatter plate"
Context and Importance: This term is the central element of the asserted patents and the lynchpin of the non-infringement argument (Compl. ¶77; Compl. ¶93; Compl. ¶108). Its construction will determine whether any structure within the Accused Products falls within the scope of the claims. Practitioners may focus on this term because the complaint itself suggests that a "line collimator" in a prior art device functioned as one, indicating a potential dispute over whether multi-function components can satisfy this limitation (Compl. ¶25).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims define the plate functionally as being "arranged... to cause a substantial confinement of x-rays" (’195 Patent, claim 1). This could support an interpretation that covers any plate-like structure, regardless of its primary name or purpose, that performs this function.
- Evidence for a Narrower Interpretation: The specification describes the invention as a "novel, open-geometry disk chopper wheel that includes one or more scatter plates especially configured to limit x-ray leakage" (’195 Patent, col. 1:22-25). This language suggests the scatter plate is a specific component added for this purpose, not an existing component like a collimator that may have an incidental effect.
The Term: "substantial confinement"
Context and Importance: This term quantifies the required performance of the scatter plate. The parties will likely dispute what degree of x-ray leakage reduction is "substantial."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined with a numerical threshold in the claims, which may support an argument that any non-trivial reduction in scattered radiation relative to a system with no plate is "substantial."
- Evidence for a Narrower Interpretation: The specification provides quantitative examples, stating that "substantial confinement may... limit leakage of scattered radiation to no more than 10% of scattered radiation or to a dose of no more than 0.5 milli-Rem per hour at a distance of 5 cm away" (’195 Patent, col. 11:43-49). This may support a narrower construction that requires meeting a specific, safety-relevant performance standard.
VI. Other Allegations
- Inequitable Conduct: The complaint makes extensive allegations of inequitable conduct against the inventor, Peter Rothschild, and Defendant Viken for all three asserted patents (Compl. ¶¶140-184). The core of this charge is the allegation that Rothschild knew the prior art "Mini-Z" scanner—which he helped develop at a former company—incorporated the key features of his later inventions but intentionally withheld this information from the USPTO during prosecution with the intent to deceive the agency (Compl. ¶¶44, 54-55).
- Breach of Settlement Agreement: Plaintiffs allege that Defendant’s demand letters and subsequent infringement counterclaims constitute a breach of a 2020 Settlement Agreement (Compl. ¶¶134-139). The complaint quotes a "General Release" provision that allegedly released Defendant’s right to sue for "all claims... known or unknown... which against... the Videray Releasees the Releasors ever had, now have or may have" (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
A Threshold Contractual Question: Is Defendant’s infringement action barred by the 2020 Settlement Agreement? The resolution of this case may first depend on the court’s interpretation of the scope and applicability of the agreement’s broad release language to patent claims that arose from patents issued after the settlement.
A Central Validity Question: Did the inventor commit inequitable conduct by failing to disclose the prior art Mini-Z scanner to the USPTO? The viability of the entire patent family may hinge on whether the Mini-Z is proven to be material prior art and whether Plaintiffs can establish a specific intent to deceive the patent office.
A Core Infringement Question: Assuming the patents are enforceable, a key issue will be one of definitional scope: can the term "source-side scatter plate," described in the patents as a novel feature for leakage reduction, be construed to read on a component in the accused products that may have a different name and primary function, such as a line collimator?
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