American Science & Engineering Inc. v Rapiscan Systems Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 11 April 2016 |
| Neutral Citation | [2016] EWHC 756 (Pat) |
| Date | 11 April 2016 |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2014000047 |
[2016] EWHC 756 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Arnold
Case No: HP-2014000047
Iain Purvis QC and Brian Nicholson (instructed by Collyer Bristow LLP) for the Claimant
Daniel Alexander QC and Andrew LykiardopoulosQC (instructed by Browne Jacobson LLP) for the Defendant
Hearing dates: 11, 14–15, 17 March 2016
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Contents
| Topic | Paragraphs |
| Introduction | 1–2 |
| Witnesses | 3–8 |
| Technical background | 9–65 |
| X-rays and gamma rays | 10–11 |
| X-ray imaging | 12–20 |
| Overview of X-ray imaging: transmission, Compton scatter and CT | 21–27 |
| Transmission imaging | 21–22 |
| Compton scatter imaging | 24–25 |
| CT scanning | 26–27 |
| Area, fan beam and flying spot transmission imaging Systems | 28–31 |
| Area imaging | 28–29 |
| Fan beam imaging | 30 |
| Flying spot imagining | 31 |
| Dual energy imaging | 32–33 |
| Backscatter imaging | 34–35 |
| The development of security imaging at airports | 36–37 |
| The development of security imaging at sea ports and border posts | 43–47 |
| X-ray sources | 48–52 |
| X-ray detectors | 53–55 |
| Imaging and motion | 56–62 |
| Motion sensors | 63–65 |
| The Patent | 66–69 |
| The claims | 70–74 |
| The skilled person | 75–76 |
| Common general knowledge | 77–89 |
| Construction | 90 |
| Swift | 91–101 |
| Obviousness of claims 1 and 16 | 102–130 |
| The inventive concept | 103–104 |
| Differences between Swift and claim 1 | 105–108 |
| General comments on the expert evidence | 109–111 |
| Was it obvious? | 112 |
| Feature (f) | 113–118 |
| Feature (g) | 119–122 |
| Features (f) and (g) in combination | 123–124 |
| Secondary evidence | 125–129 |
| Overall conclusion | 130 |
| Subsidiary claims | 131 |
| Conclusion | 132 |
Introduction
The Claimant ("AS&E") is the proprietor of European Patent (UK) No. 1 558 947 entitled "X-ray backscatter mobile inspection van" ("the Patent"). AS&E contends that the Defendant ("Rapiscan") has infringed the Patent. Although Rapiscan had previously denied infringement, during the course of the trial Rapiscan admitted that it had committed acts which amounted to infringements if the Patent is valid. Rapiscan contends, however, that the Patent is invalid because all of the claims in issue are obvious in the light of a paper by Roderick D. Swift entitled "Mobile X-ray Backscatter Imaging System for Inspection of Vehicles" published in the Proceedings of the SPIE – The International Society for Optical Engineering conference on Physics-Based Technologies for the Detection of Contraband ("the 1996 SPIE Conference") on 19–20 November 1996 in Boston, United States of America ("Swift"). Although other prior art had also been cited by Rapiscan, it was accepted by counsel for Rapiscan in closing submissions that this did not add anything material to the case based on Swift, and accordingly it is not necessary for me to saying anything more on that subject. There is no challenge to the earliest claimed priority date of the Patent, which is 6 November 2002.
There is no dispute in this case as to the applicable legal principles, which are well-established and which I have set out in numerous previous judgments. I shall therefore not repeat them here.
Witnesses
AS&E's expert witness was Dr Paul Bjorkholm. He obtained a BA in physics and mathematics from Princeton in 1964, an MA in physics from the University of Wisconsin in 1965 and a PhD for work on a high intensity polarised deuteron source from the same institution in 1969. He was employed by AS&E from January 1970 to December 1989 successively as Scientist, Senior Scientist, Vice President and Senior Vice President. During this period he worked on several projects involving X-ray imaging for medical and security applications, and towards the end of his time at AS&E he was responsible for the development of new technologies for security imaging. During this period AS&E introduced backscatter imaging to the security market. From January 1990 to December 2001 Dr Bjorkholm was employed by EG&G Astrophysics as Chief Technology Officer. During this period he worked on baggage and cargo screening systems. From January 2002 to October 2005 he was employed by Varian Security and Inspection Products working on a high energy inspection system. Since then, he has acted as an independent consultant specialising in high energy X-ray imaging for security and manifest verification. Dr Bjorkholm is a named inventor on a considerable number of patents.
Two aspects of Dr Bjorkholm's instructions merit comment. The first is that, rather oddly, he was instructed to consider the position as at the filing date of the Patent, and not the priority date. This did not matter greatly, however, since there was little change in the common general knowledge during the intervening year. I shall address the second aspect below.
Counsel for Rapiscan criticised Dr Bjorkholm for having omitted certain matters from consideration in his reports. I do not accept that this is a criticism of Dr Bjorkholm, since it may reflect his instructions. Furthermore, the criticism overlooks the fact that, so far as the most important matter is concerned, namely the skilled person's knowledge of relative motion sensing, although this was not addressed in Dr Bjorkholm's first report, Dr Bjorkholm did address it at least to some extent in paragraph 11(12) of his second report. Counsel for Rapiscan also submitted that it was apparent that Dr Bjorkholm "had a line to stick to". I do not accept this either. I consider that Dr Bjorkholm did his best to assist the court by stating his honest opinions.
Rapiscan's expert witness was Dr Richard Lanza. He obtained a BA in physics from Princeton in 1959, an MSc in physics from the University of Pennsylvania in 1961 and a PhD in physics from the same institution in 196Since 1966 Dr Lanza has worked at Massachusetts Institute of Technology, first in the Physics Department and more recently in the Department of Nuclear Engineering, where he is currently a Senior Research Scientist. He has provided technical consulting services to AS&E and other companies for detection technologies in the X-ray field since the late 1990s. He is an author of more than 150 published papers and a named inventor on more than 20 patents.
Counsel for AS&E accepted that Dr Lanza had done his best to assist the court, but submitted that he had been instructed to consider the wrong question in relation to obviousness. I shall consider this point below.
In addition to the two experts, Rapiscan's managing director Francis Baldwin gave factual evidence. Although he was called to give evidence with regard to the issue of infringement, counsel for AS&E relied upon two aspects of his evidence with respect to the issue of obviousness.
Technical background
The following account of the technical background is a synthesis of the accounts given by Dr Bjorkholm and Dr Lanza in their respective first reports.
X-rays and gamma rays
X-rays and gamma (or ?) rays are both part of the spectrum of electromagnetic radiation, which also includes radio waves and visible light. Radio waves have low frequencies, visible light has higher frequencies, and X-rays and gamma rays have the highest frequencies. X-rays and gamma rays are identical, but are distinguished by their origin:
i) gamma rays are emitted by the nuclei of radioactive atoms; and
ii) X-rays are produced by atomic electrons outside of the nucleus.
All electromagnetic radiation has behaviour characteristic of a wave and of a particle. When describing the particle-like behaviour of electromagnetic radiation, it is common to refer to such radiation as being formed of photons. A photon is a quantum of electromagnetic radiation. The energy of photons is measured in electron volts (eV). X-ray and gamma ray beams used in imaging have energies in the range of kiloelectron volts (keV) and megaelectron volts (MeV).
X-ray imaging
Because of their high energy, X-ray photons are capable of penetrating materials. Wilhelm Röntgen was the first to recognise this ability. He quickly realised that images could be formed on film that showed the internal structure of a body. X-rays soon became used in medicine and industry. To create an X-ray image, a source of X-rays illuminates the object of interest. Some form of detector then detects the X-rays. Originally this was a film, but nowadays other forms of detector are generally used. The recorded image is of the differential absorption and scattering of the X-rays by the imaged object.
Imaging depends on the interaction of photons with matter. All matter is formed of chemical elements, which are in turn formed of atoms. Elements are characterised by their atomic number, often referred to as "Z". The atomic number of an atom is determined by the number of protons in its nucleus. In an uncharged atom, this equates to the number of electrons in the atom's electron shells.
When interacting with matter, photons may penetrate the matter (i.e. pass straight through it), may be absorbed by it or may be scattered by it.
For present purposes, the relevant type of absorption interaction between an incident photon and the matter it interacts with is the photoelectric effect. This occurs when a...
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