Observes that the Board never found that Seppi’s additional detectors identified radiation when the pencil-beams were in perpendicular form
The U.S. Court of Appeals for the Federal Circuit (CAFC) has ruled in the American Science and Engineering, Inc. v. Stewart case, vacating a final decision by the Patent Trial and Appeal Board (PTAB), which invalidated several American Science and Engineering (AS&E) patent claims covering inspection systems using pencil-beam radiation sources.
The appellate court criticized the PTAB for not properly articulating how the asserted prior art’s scatter detectors could detect radiation from the claimed pencil-beam configuration.
AS&E had filed a patent infringement lawsuit in the District of Massachusetts against Viken Detection Corp, which filed a petition for inter partes review (IPR) in September 2021, challenging claims from AS&E’s U.S. Patent No. 7400701, Backscatter Inspection Portal.
Claim 1 of the ‘701 patent discloses an inspection system including first and second pencil-beam radiation sources arranged in a perpendicular configuration, and a plurality of scatter detectors disposed to detect radiation scattered from both the beams. In its order, the PTAB ruled that the claims of the ‘701 patent were invalid for anticipation or obviousness based on prior art arguments involving U.S. Patent No. 7672422 (Seppi).
AS&E submitted that PTAB’s findings were not based on substantial evidence. That was because the Board’s ruling failed to establish that Seppi’s scatter detectors could detect radiation from two perpendicular pencil-beams.
Thus, the Federal Circuit noted that Seppi’s system included additional detectors for backscattered radiation. However, Seppi did not comment on whether the detected radiation was coming from multiple pencil beams.
The PTAB noted that Seppi’s detectors could find backscatter radiation from multiple pencil beams, as those were cycled such that at a time, only one source was on.
However, the CAFC stated that the Board’s ruling could not ascertain that Seppi’s additional detectors found radiation when the pencil-beams were perpendicular.
Meanwhile, Coke Morgan Stewart, Acting Director, Patent and Trademark Office (PTO), an intervenor, argued that the PTAB found that Seppi taught detection of backscatter radiation from substantially perpendicular beams by necessary implication because AS&E’s ‘701 patent acknowledges that radiation scatters from an object in all directions.
However, the Federal Circuit found that the PTAB made no findings about this disclosure on scattered radiation that would allow the appellate court to discern the path of the Board’s reasoning.
Stewart added that the PTAB’s decision cited Viken Detection’s IPR petition, which stated in its expert testimony that without shielding, Seppi’s additional detectors would detect radiation scattered from all sources. The Federal Circuit had also nixed this theory, noting that the ‘citation within a citation’ amounted to a reasoned justification that the agency did not provide. The appellate court had no basis to discern the Board’s reasoning as required in the Power Integrations v. Lee (2015) and In re: Warsaw Orthopedic (2016).
Thus, the Federal Circuit vacated the finding. It asked for an explanation of the Board’s finding that Seppi’s additional detectors found radiation from the claimed perpendicular pencil-beam configuration, because Seppi was the prior art reference underpinning the PTAB’s finding of anticipation under 35 U.S.C. § 102,
Similarly, the Federal Circuit also vacated and remanded the PTAB’s finding of obviousness under 35 U.S.C. § 103.