Slingshot Printing LLC v. Canon U.S.A., Inc. — Obviousness Ruling Affirmed

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April 23, 2026 Get Citation Alerts Download PDF Add Note

Slingshot Printing LLC v. Canon U.S.A., Inc.

Court of Appeals for the Federal Circuit

• Citations: None known
• Docket Number: 24-1956

• Precedential Status: Non-Precedential

• Opinion

• Authorities (5)

• Cited By (0)

• Summaries (0)

• Similar Cases (56.8K)

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Combined Opinion

Case: 24-1956 Document: 48 Page: 1 Filed: 04/23/2026

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit

SLINGSHOT PRINTING LLC,
Appellant

v.

CANON U.S.A., INC., CANON INC.,
Appellees

2024-1956

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01414.

Decided: April 23, 2026

RAYINER HASHEM, MoloLamken LLP, Washington, DC,
argued for appellant. Also represented by KAYVON
GHAYOUMI; CATHERINE MARTINEZ, New York, NY; MARK
BORSOS, PAUL HENKELMANN, Fitch, Even, Tabin & Flan-
nery LLP, Chicago, IL.

JULIE S. GOLDEMBERG, Morgan, Lewis & Bockius LLP,
Philadelphia, PA, argued for appellees. Also represented
by MARIA DOUKAS, AMANDA SCOTT WILLIAMSON, Chicago,
Case: 24-1956 Document: 48 Page: 2 Filed: 04/23/2026

2 SLINGSHOT PRINTING LLC v. CANON U.S.A., INC.

IL; JASON EVAN GETTLEMAN, Palo Alto, CA; JITSURO
MORISHITA, Tokyo, Japan.

Before PROST, CLEVENGER, and STARK, Circuit Judges.
PROST, Circuit Judge.
Slingshot Printing LLC (“Slingshot”) appeals from a fi-
nal written decision of the Patent Trial and Appeal Board
(“Board”) determining that claims 1–5 and 8 of U.S. Patent
No. 7,195,341 (“the ’341 patent”) are unpatentable. For the
reasons below, we affirm.
BACKGROUND
The ’341 patent relates to “[a] semiconductor substrate
for a micro-fluid ejection device,” like a printhead of an ink-
jet printer. ’341 patent Abstract. According to the patent,
there is a need “to provide higher quality images at in-
creased printing rates” but also “a competing need to main-
tain or reduce the size of the substrates so as to minimize
the cost of the ejection devices.” Id. at col. 1 ll. 18–26. The
’341 patent addresses the purported “need for improved
substrate conductor routing and layouts that do not ad-
versely affect the electrical properties of the circuits.” Id.
at col. 1 ll. 33–36. Claim 1 recites:
A semiconductor substrate for a micro-fluid ejec-
tion device, the substrate comprising:
a plurality of micro-fluid ejection actuators dis-
posed in a columnar array adjacent a fluid supply
slot in the semiconductor substrate;
a plurality of power transistors disposed in a co-
lumnar array adjacent the ejection actuators and
connected through a first metal conductor layer to
the ejection actuators, the columnar array of power
transistors occupying a power transistor active
area of the substrate;
Case: 24-1956 Document: 48 Page: 3 Filed: 04/23/2026

SLINGSHOT PRINTING LLC v. CANON U.S.A., INC. 3

a columnar array of logic circuits disposed adjacent
the columnar array of power transistors and con-
nected through a polysilicon conductor layer to the
power transistors, the columnar array of logic cir-
cuits occupying a logic circuit area of the substrate;
a power conductor for the ejection actuators routed
in a second metal conductor layer disposed in over-
lapping relationship with at least a portion of the
power transistor active area of the substrate; and
a ground conductor for the ejection actuators routed
in the second metal conductor layer disposed in
overlapping relationship with at least a portion of
the logic circuit area of the substrate.
Id. at claim 1 (emphasis added).
Canon U.S.A., Inc. and Canon Inc. (collectively,
“Canon”) filed a petition for inter partes review of claims
1–5 and 8 of the ’341 patent. The Board instituted review
of all of the challenged claims. In its final written decision,
the Board determined that claims 1–5 and 8 of the ’341 pa-
tent would have been obvious over U.S. Patent No.
6,412,917 (“Torgerson”) and U.S. Patent No. 7,240,997
(“Bruce”).
Relevant to this appeal, the Board concluded that Torg-
erson teaches its logic circuits are connected to power tran-
sistors through a polysilicon layer. As to the ground-
conductor limitation, the Board agreed with Canon that
while Torgerson does not teach “placing a ground conductor
in the second metal layer in [an] overlapping relationship
with at least a portion of the logic circuit area,” a skilled
artisan would have been motivated to implement Bruce’s
second-metal-layer ground conductor in Torgerson. J.A. 9;
see also J.A. 11. The Board found a skilled artisan would
have been motivated to combine Torgerson with Bruce,
both of which “are from the same field of endeavor as the
’341 patent.” J.A. 10. For the remaining limitations in
Case: 24-1956 Document: 48 Page: 4 Filed: 04/23/2026

4 SLINGSHOT PRINTING LLC v. CANON U.S.A., INC.

claim 1 and dependent claims 2–5 and 8, the Board “re-
viewed [Canon’s] arguments and evidence” and, based on
that analysis, found that Canon “has shown by a prepon-
derance of the evidence that [claims 1–5 and 8] would have
been obvious over Torgerson and Bruce.” J.A. 13–14.
Slingshot timely appealed. We have jurisdiction under
28 U.S.C. § 1295 (a)(4)(A).
DISCUSSION
Slingshot makes three main arguments on appeal:
(1) that Torgerson does not disclose connecting power tran-
sistors to logic circuits through a polysilicon conductor
layer; (2) that the Board erred in determining that a skilled
artisan would have been motivated to combine Torgerson
and Bruce; and (3) that the Board’s analysis of the remain-
ing limitations in claim 1 and dependent claims 2–5 and 8
are insufficient under the Administrative Procedure Act
(“APA”). We address each argument in turn.
I
“Obviousness is a mixed question of fact and law.” No-
vartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1327
(Fed. Cir. 2017). We review the Board’s legal conclusion of
obviousness de novo and its factual findings for substantial
evidence. Id.
Claim 1 requires “a columnar array of logic circuits . . .
connected through a polysilicon conductor layer to the
power transistors.” The Board found that Torgerson’s logic
circuits are connected to power transistors through a pol-
ysilicon layer. In doing so, it rejected Slingshot’s argument
that the layer ends or changes at the polysilicon gate fin-
gers and credited Canon’s expert, who explained that “as a
practical matter, a skilled artisan would understand that
it’s necessary that Torgerson’s polysilicon gate fingers . . .
extend to its logic circuits.” J.A. 13 (cleaned up). The
Board also pointed to the language in Torgerson that de-
scribes its “polysilicon gate fingers . . . as interconnected at
Case: 24-1956 Document: 48 Page: 5 Filed: 04/23/2026

SLINGSHOT PRINTING LLC v. CANON U.S.A., INC. 5

respective ends.” J.A. 13 (emphasis in original). Slingshot
has not demonstrated that these findings lack substantial
evidence.
Slingshot argues that Canon’s arguments on appeal
“rewrite the Board’s decision,” and “even if the Board’s de-
cision could be read that way, Canon’s [p]etition never ar-
ticulated such a theory.” Reply Br. 4 (emphasis in original).
According to Slingshot, neither the Board’s decision nor the
petition explains that “Torgerson contains a ‘polysilicon
layer’ with a ‘polysilicon conductor’ distinct from the ‘gate
fingers.’” Id. (emphasis in original). We are not persuaded
by Slingshot’s arguments. Canon’s arguments do not re-
write the Board’s decision, and those theories were articu-
lated in Canon’s petition. See, e.g., J.A. 73.
Slingshot also argues that the Board implicitly relied
on an inherency theory, which was not articulated in
Canon’s petition. But, we do not read Canon’s argument
as an inherency argument nor do we interpret the Board’s
decision to have applied an inherency standard. We thus
reject Slingshot’s inherency-related argument.
For these reasons, the Board’s reading of Torgerson is
supported by substantial evidence.
II
Whether a skilled artisan would have been motivated
to combine prior-art references is a factual question that
we review for substantial evidence. Intel Corp. v. PACT
XPP Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023).
“Substantial evidence is such relevant evidence as a rea-
sonable mind might accept as adequate to support a con-
clusion.” Novartis, 853 F.3d at 1324 (cleaned up).
Slingshot argues that the Board’s finding that a skilled
artisan would have been motivated to combine Torgerson
and Bruce “cannot be sustained.” Appellant’s Br. 49 (capi-
talization normalized). We disagree. The Board’s finding
that a skilled artisan would have been motivated to
Case: 24-1956 Document: 48 Page: 6 Filed: 04/23/2026

6 SLINGSHOT PRINTING LLC v. CANON U.S.A., INC.

combine those two prior-art references was proper and sup-
ported by substantial evidence.
Claim 1 requires “a ground conductor” to be “routed in
the second metal conductor layer,” with the ground conduc-
tor “overlapping . . . at least a portion of the logic circuit
area of the substrate.” The issue on appeal is whether the
Board properly concluded that a skilled artisan would have
been motivated to combine Torgerson with Bruce to teach
that limitation.
Both prior-art references “are from the same field of en-
deavor as the ’341 patent because they, like the [’]341 pa-
tent, describe semiconductor substrates for ink-jet
printheads.” J.A. 10. The Board also credited Canon’s ar-
guments that Bruce’s approach offers several advantages,
including reducing the substrate size, reducing energy var-
iation, avoiding costs associated with increased die sizes,
and increasing the improvements in energy variation.
J.A. 9–11. And “given the need to reduce [the] substrate
size,” the Board agreed with Canon that there are “two
basic options for placing the ground bus: 1) Torgerson’s ap-
proach of making the first metal layer thicker and placing
the ground bus only in the first metal layer, or 2) Bruce’s
approach of placing the ground bus in a second metal
layer.” J.A. 9, 11; see also J.A. 11 (“We also agree with
[Canon] that Bruce’s approach would have been one of ‘a
finite number’ of known, ‘predictable solutions,’ and there-
fore obvious.”). Slingshot has not demonstrated that these
findings lack substantial evidence.
To support its argument, Slingshot relies on Virtek Vi-
sion International ULC v. Assembly Guidance Systems,
Inc., 97 F.4th 882 (Fed. Cir. 2024), which it contends “is on
all fours.” Appellant’s Br. 52. But, that case is inapposite.
In Virtek, the petitioner had only presented evidence of
“two alternative arrangements” as to its motivation-to-
combine arguments with “no argument in the petition re-
garding why a skilled artisan would make this
Case: 24-1956 Document: 48 Page: 7 Filed: 04/23/2026

SLINGSHOT PRINTING LLC v. CANON U.S.A., INC. 7

substitution,” “no evidence that there are a finite number
of identified, predictable solutions,” and “no evidence of a
design need or market pressure.” Virtek, 97 F.4th at
886–88. We thus concluded in Virtek that substantial evi-
dence did not support the Board’s motivation-to-combine
findings. Id. at 888. Here, unlike in Virtek, the record is
more developed. The Board found that Bruce’s approach
“would have been one of a finite number of known, predict-
able solutions,” and it credited Canon’s expert that there
were known design needs and market pressures (e.g., the
need to reduce substrate size). J.A. 11 (cleaned up); see also
J.A. 9.
We thus conclude the Board’s motivation-to-combine
finding is supported by substantial evidence.
III
Next, Slingshot argues that the Board failed to ade-
quately explain its rationale for finding the remaining lim-
itations in claim 1 and dependent claims 2–5 and 8 of the
’341 patent unpatentable. We disagree.
We may affirm an agency’s ruling if we may reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear. See Bowman Transp., Inc. v.
Ark.–Best Freight Sys., Inc., 419 U.S. 281, 285–86 (1974);
see also Medtronic, Inc. v. Teleflex Innovations S.a.r.l., 70
F.4th 1331, 1344 (Fed. Cir. 2023). The Board’s path here
is reasonably discernible. For those limitations and claims,
the Board (1) explained that it reviewed Canon’s argu-
ments and evidence, (2) provided citations to the relevant
portions of Canon’s petition it reviewed, and (3) based on
that analysis determined that claims 1–5 and 8 would have
been obvious over Torgerson and Bruce. Thus, on this rec-
ord, we reject Slingshot’s argument that the Board violated
the APA by failing to adequately explain its rationale for
finding these claims unpatentable.
Case: 24-1956 Document: 48 Page: 8 Filed: 04/23/2026

8 SLINGSHOT PRINTING LLC v. CANON U.S.A., INC.

CONCLUSION
We have considered Slingshot’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s determination that claims 1–5 and 8 of
the ’341 patent are unpatentable.
AFFIRMED