Litigation

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

Final Written Decision issued; Director Review denied; affirmed on appeal

IPR2022-01416

Filed
2022-08-23

Patents at issue (1)

Summary

Canon U.S.A., Inc. and Canon Inc. petitioned for inter partes review of the '523 patent. The PTAB granted institution, issued a Final Written Decision on April 9, 2024 finding the challenged claims unpatentable, and denied Director Review on June 6, 2024. The PTAB decision was affirmed on appeal.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case, starting with the underlying district court litigation and the IPR.

Now let me dig into the underlying district court litigation, Slingshot's identity, and the case's disposition.

Case overview and background

Parties and their postures. The petitioner/defendant side is Canon: Canon U.S.A., Inc. (New York corporation, U.S. marketing/sales arm of Canon Inc. of Japan, HQ at One Canon Park, Melville, NY) and, in the district court, its wholly owned subsidiary Canon Solutions America, Inc. (E.D.N.Y. 2:22-cv-00123, Dkt. 1 ¶¶ 3–4). Canon is the operating company here — and notably the unusual one on defense, since Canon is ordinarily a prolific plaintiff in printhead/inkjet patents. The patent owner/plaintiff is Slingshot Printing LLC, a Delaware LLC with a stated principal place of business at 10015 Old Columbia Road, Suite B215, Columbia, Maryland, which describes itself simply as "in the business of licensing patented technology" (id. ¶ 2). Slingshot is publicly characterized as an NPE/PAE (Unified Patents' PTAB portal labels it "NPE (Patent Assertion Entity)") and is a pure assertion vehicle: the asserted patents originated with Lexmark International (the '523 patent's prosecution file lists Lexmark's Lexington, KY IP department), were sold to Funai Electric Co., Ltd. when Funai acquired Lexmark's inkjet business and portfolio for roughly $100 million in 2013, and were then assigned by Funai to Slingshot in April 2019 (complaint exhibits; The Recycler; RPX's June 2019 report, which noted Slingshot received 100+ U.S. assets from Funai and that "assignment records suggest[] that Funai might hold an economic interest in Slingshot's litigation" — a fact worth flagging as reported, not judicially established). Slingshot had previously run the same playbook against HP: multiple June 2019 suits in W.D. Tex. (consolidated/transferred to Judge Alan Albright as 1:20-cv-00184-ADA), where HP attacked the pleadings under Rules 12(b)(6)/(7) and sought to "drag Funai into" the case; that dispute settled, and HP's parallel IPRs (IPR2020-01084/-01085/-01086/-01090, -01659) were terminated without a merits decision on March 29, 2021.

The accused technology and the patents. The accused products are Canon inkjet printers, inkjet printheads, and ink cartridges sold/imported by Canon U.S.A. and Canon Solutions America (E.D.N.Y. Dkt. 1 ¶¶ 3–4); Slingshot's complaint attached claim charts against numerous models and told the court it believed additional, unlisted Canon printers also infringed. The litigation was split into two suits. Slingshot I (No. 2:22-cv-00123, filed Jan. 7, 2022) asserted four patents: U.S. 7,938,523 — "Fluid Supply Tank Ventilation for a Micro-Fluid Ejection Head" (app. 11/762,101, filed June 13, 2007; inventor Charles S. Aldrich), an ink-cartridge/tank venting structure with an internal vent conduit that removes air adjacent the fluid exit port and releases it through the cover; U.S. 7,152,951 — printhead fabrication with nozzle holes at roughly 600–2400 dpi center-to-center pitch (per Slingshot's IPR2022-01541 patent-owner response); U.S. 7,195,341 and U.S. 7,559,629 — printhead/printhead-component improvements aimed at lower cost and higher performance/resolution (party joint discovery-plan letter, July 2022). Slingshot II (No. 2:22-cv-01852, filed Apr. 1, 2022) asserted three more Lexmark-origin patents: U.S. 7,290,864 (heater chip that reduces bondpad count by having one bondpad power portions of two heater arrays), and U.S. 7,484,823 and U.S. 7,594,708 (chips with temperature-sensing elements "substantially centrally disposed" between heater arrays to regulate temperature per thermal region), as described in the Federal Circuit's July 16, 2026 opinion.

Procedural posture and why it matters. The district court cases were filed in the Eastern District of New York (Central Islip), not the plaintiff-friendly venues Slingshot had used against HP — venue was anchored on Canon's own New York residence/headquarters, so there was no transfer fight. The cases were originally assigned to Judge Joan M. Azrack with Magistrate Judge Anne Y. Shields; Shields recused on Sept. 16, 2022 and the matter went to Magistrate Judge Lee G. Dunst, and the docket header later shows district-judge initials "HG" and, on PacerMonitor, Judge Nusrat J. Choudhury (the judge reassignment sequence is not fully verified from the sources I could reach). Both cases were stayed pending IPR by Judge Dunst's December 1, 2022 order — Slingshot I stayed outright, Slingshot II temporarily stayed to let Canon file petitions — over Slingshot's objection that the simplification was "speculative" (2:22-cv-00123, Dkt. 52; 2:22-cv-01852, Dkt. 42; extended Jan. 26, 2023 per the parties' Sept. 15, 2023 joint status report). That posture is the heart of the story: Canon filed seven IPR petitions between August 2022 and January 2023 covering every asserted claim; six were instituted and one (the '629 patent, IPR2022-01415) was denied institution. The lead case here — IPR2022-01416 — was filed Aug. 23, 2022, instituted Apr. 13, 2023, and resulted in an April 9, 2024 Final Written Decision holding claims 1–3, 5–7, 10–12 and 14–16 of the '523 patent unpatentable as obvious over the Studer '708/'471/'878 and Elliot references (Canon's expert: Dr. Stephen F. Pond; Slingshot's: Steven J. Dietl). Slingshot's Director Review request was denied June 6, 2024, and the Federal Circuit affirmed without opinion under Rule 36 on May 7, 2026 (No. 2024-2132). The companion IPRs fared the same for Canon — FWDs in IPR2023-00312/-00313 ('823, '708, Aug. 6 and July 30, 2024) and in the '864 IPR were affirmed on July 16, 2026 (Nos. 2025-1033/-1034, nonprecedential, IPWatchdog), with a further Rule 36-type denial for another Slingshot printhead patent reported July 21, 2026 (Law360). The case is notable for three reasons: it is a textbook illustration of the IPR-as-defense / stay-then-invalidate pattern against an NPE asserting a divested operating company's legacy portfolio; it turned on aggressively inherency-based anticipation and "path of least resistance" diffusion testimony that drew a Director Review request; and it is one of the more consequential recent tests of Funai/Lexmark inkjet assets, where the assignment structure (assignor potentially retaining an economic stake) invited the real-party-in-interest and standing attacks HP raised in the earlier campaign but that were never fully resolved on the merits because of settlement. Termination of the underlying E.D.N.Y. cases is not well documented in what I could retrieve: PacerMonitor lists 2:22-cv-00123 as terminated in early 2024 and a third-party summary describes the Slingshot II docket as closing in January 2024, but I found no dismissal order or opinion in the public record, so treat the final disposition of the district court litigation as unverified.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case aggressively across the docket, PTAB, and Federal Circuit sources.

Excellent — this reveals the full picture: the IPR is one piece of a two-track dispute. Let me dig into the district court docket, the parallel IPRs, and the appeals.

Now I have the architecture of both tracks. Let me pin down the remaining PTAB outcomes, the district court's current status, and the appeals.

Scoping note before the chronology

The case in the metadata — Canon U.S.A., Inc. et al. v. Slingshot Printing LLC, IPR2022‑01416 — is a PTAB inter partes review, not a district court infringement action. To answer the question as asked (filing, pleadings, stays, Markman, trial, verdict, appeal), I have to follow both tracks of what is really a two-front dispute:

  • PTAB track: seven Canon IPR petitions (Aug 2022 – Jan 2023) against the seven patents Slingshot asserted in district court, including IPR2022‑01416 on the '523 patent.
  • District court track: Slingshot Printing LLC v. Canon U.S.A., Inc. et al., Nos. 2:22‑cv‑00123 ("Slingshot I") and 2:22‑cv‑01852 ("Slingshot II") (E.D.N.Y.). The caption rolls over here — Slingshot was the plaintiff in E.D.N.Y. and the patent owner/respondent in the IPR; Canon was the defendant in E.D.N.Y. and the petitioner in the IPR.

Because the district court case was stayed in early discovery and never tried, several items you asked about (Markman, summary judgment, verdict, JMOL, fees) simply never happened. I flag that explicitly rather than fill the gap.


1. The patents and the parties' posture

  • '523 patent (U.S. 7,938,523), "Fluid Supply Tank Ventilation for a Micro‑Fluid Ejection Head," inventor Charles S. Aldrich, filed 2007‑06‑13, originally assigned to Lexmark International, Inc., later transferred to Funai Electric Co. and then to Slingshot Printing LLC. Pre‑AIA statute (per Canon's petition, Ex. 1001/1002; source: ptacts.uspto.gov, IPR2022‑01416 Petition).
  • Slingshot I patents: '951, '341, '629, '523.
  • Slingshot II patents: '823, '708, '864.
  • Prior assertion of the '523 patent: Slingshot Printing LLC v. HP Inc., No. 6:19‑cv‑00362 (W.D. Tex.), transferred and reassigned as No. 2:20‑cv‑00184 (W.D. Tex.), dismissed with prejudice on 2021‑04‑01 by joint stipulation (same Petition, "Related Matters").

2. District court: filing and initial pleadings

Date Event
2022‑01‑07 Slingshot I complaint filed, E.D.N.Y. No. 2:22‑cv‑00123, asserting the '951, '341, '629 and '523 patents. Verified by Canon's IPR petition, which recites the Jan. 7, 2022 filing date.
2022‑03‑10 Slingshot I reassigned/related-case handling; later reassigned to Judge Hector Gonzalez with Magistrate Judge Lee G. Dunst (originally Judge Gary R. Brown / Mag. J. Arlene Lindsay, then Judge Azrack / Mag. J. Anne Y. Shields).
2022‑04‑01 Slingshot II complaint filed, No. 2:22‑cv‑01852, asserting the '823, '708 and '864 patents. (Justia docket)
2022‑04‑08 Canon U.S.A. and Canon Solutions America served in Slingshot II; answer due 2022‑05‑31 (extended on consent).
2022‑04‑25 Canon's motion to reassign Slingshot II as related to Slingshot I (ECF 10) — granted; case went to Judge Gonzalez.
2022‑05‑31 / 2022‑06 Canon's answer + counterclaims in Slingshot I (ECF 23): declaratory judgment of invalidity and non‑infringement of all four Slingshot I patents. Slingshot's answer to counterclaims at ECF 27 (docketalarm). Slingshot admitted the existence of a justiciable controversy but denied all invalidity/non‑infringement contentions.
2022‑11 Canon's answer + counterclaims in Slingshot II (DJ of invalidity/non‑infringement as to '823, '708, '864) (Canon answer to Slingshot II).

Counsel: Slingshot — David L. Hecht and Maxim Price (Hecht Partners LLP) plus Timothy P. Maloney, Mark A. Borsos, David A. Gosse, Brian P. Herrmann (Fitch, Even, Tabin & Flannery LLP). Canon — Amanda S. Williamson and Jason E. Gettleman (Morgan, Lewis & Bockius LLP) and Grant A. Shehigian (Ganfer Shore Leeds & Zauderer LLP).

No Rule 12(b) motion to dismiss and no § 1404(a) transfer motion was located in the materials I could retrieve; Canon litigated the pleadings by answering and counterclaiming, and by moving to relate/reassign rather than transfer. Treat the "no MTD" point as absence of evidence, not verified absence.


3. Pre‑trial motions of substance — the stay pending IPR (the pivotal ruling)

  • 2022‑10 / 11 — Canon moved to stay both cases: Slingshot I ECF 47, Slingshot II ECF 37. Slingshot opposed: Slingshot I ECF 50, Slingshot II ECF 40.
  • 2022‑12‑01 — Magistrate Judge Lee G. Dunst granted the stay in Slingshot I pending resolution of the IPRs, and granted only a temporary stay in Slingshot II through 2022‑12‑30 to let Canon file petitions on those claims. Order at Slingshot I ECF 52; opinion text at CourtListener op. 9842293.
  • 2023‑01‑26 — Slingshot II stay extended pending the IPRs (Slingshot II Dkt. 42).

The court's reasoning (useful for understanding the whole case's trajectory): the jointly proposed schedule ran "into late 2024," fact discovery had just begun, no claim construction briefs had been filed, and even an unsuccessful IPR would estop Canon under 35 U.S.C. § 315(e) from re‑litigating grounds it raised or reasonably could have raised. The court also observed it was "highly unlikely" the parties would discuss settlement before the IPRs concluded.

Effect: the district court cases were frozen before claim construction and before meaningful discovery, and stayed continuously at least through the Sept. 2023 status report.


4. Discovery milestones of strategic significance

  • 2022‑07‑05 / 2022‑10‑21 — Initial pretrial conference and status conference; parties exchanged a discovery plan and a proposed schedule running into late 2024.
  • By 2022‑10‑07 — Early productions: Slingshot produced the patents, file histories, assignments/ownership documents, and the prior HP litigation pleadings; Canon produced design and technical specifications for accused products (joint letter to Mag. J. Shields, July 2022).
  • 2022‑12‑01 onward — No further district court discovery. The parties confirmed this in their 2023‑09‑15 joint status report: "Since December 1, 2022 … the parties have not engaged in any further discovery" (Slingshot I/II joint status letter, Sept. 15, 2023).
  • 2024‑01‑31 — Motion to withdraw counsel: David A. Gosse and Brian P. Herrmann (formerly Fitch Even) moved to withdraw after leaving the firm; Maloney and Borsos (Fitch Even) and Hecht and Price (Hecht Partners) continued. ⚠️ A third‑party litigation database (PatSnap) reads this filing as the "closure" of Slingshot II; that characterization is unreliable — the document is a counsel‑withdrawal motion, not a dismissal or judgment.

5. Claim construction (Markman)

  • District court: no Markman occurred. The cases were stayed before claim construction briefs were filed (the stay opinion expressly relies on this fact).
  • In the IPR, the closest analog was the parties' dispute over the term "conduit" — Slingshot submitted dictionary definitions (Exs. 2002 American Heritage, 2004 Oxford) and an expert declaration (Steven J. Dietl, Ex. 2005) with its Patent Owner Response (PO Updated Exhibit List). The Board resolved the case on obviousness without adopting Canon's proposed anticipation theory, so no separate, precedential construction issued.

6. The parallel PTAB proceedings — the heart of the case

6a. The seven petitions and their outcomes

Per the parties' joint status report of 2023‑09‑15 and PTAB/Unified Patents dockets:

Patent IPR Filed Institution FWD / outcome
'341 IPR2022‑01414 2022‑08‑23 Instituted FWD issued; appealed (Fed. Cir., Slingshot as appellant)
'523 IPR2022‑01416 2022‑08‑23 Instituted 2023‑04‑13 FWD 2024‑04‑09 — all challenged claims unpatentable; DR denied 2024‑06‑06; affirmed Fed. Cir. 2026‑05‑07
'629 IPR2022‑01415 2022‑09‑02 Denied No FWD — '629 claims survived PTAB
'951 IPR2022‑01541 2022‑10‑06 Instituted FWD issued; appealed
'864 IPR2023‑00309 2022‑12‑30 Instituted FWD issued; affirmed Fed. Cir. 2026‑07‑16
'708 IPR2023‑00313 2023‑01‑21 Instituted FWD 2024‑07‑30 — claims 1–15 unpatentable; affirmed Fed. Cir. 2026‑07‑16
'823 IPR2023‑00312 2023‑01‑25 Instituted FWD 2024‑08‑06 — claims 1–17 unpatentable; affirmed Fed. Cir. 2026‑07‑16

Six of seven petitions were instituted; the '629 petition was denied institution, leaving those claims unadjudicated by the PTAB — and by that point a follow‑on petition would have been time‑barred under § 315(b) (one year from the 2022‑04‑08 service date). That made '629 the only Slingshot patent with intact PTAB‑surviving claims and the likely settlement leverage in the residual district court case. (Sources: joint status report; Unified Patents IPR2022‑01416 portal; IP Verse Canon competitive page).

6b. IPR2022‑01416 — step by step

Panel: APJs Jo‑Anne M. Kokoski, Garth D. Baer, John D. Hamann. Petitioner counsel: Dion M. Bregman, Amanda S. Williamson, Jason E. Gettleman, James J. Kritsas (Morgan Lewis). Patent owner: Timothy P. Maloney, Paul B. Henkelmann, Mark A. Borsos, David A. Gosse (Fitch Even).

  • 2022‑08‑23 — Petition filed (challenging claims 1–3, 5–7, 10–12, 14–16), grounded on Studer '708 (U.S. 6,739,708) for anticipation (claims 1, 3, 5, 10, 12, 14) and obviousness, Studer '708 + Studer '471 (US 2006/0164471), and '708/'471 + Elliot (U.S. 5,671,001) and Studer '878 (US 2005/0212878) for claims 6, 7, 15, 16 (Petition).
  • 2022‑09‑13 — PO mandatory notices. 2022‑10‑19 — Notice of filing date accorded.
  • 2023‑01‑19 — Patent Owner Preliminary Response (the IPR analog to an answer).
  • 2023‑04‑13 — Institution granted + scheduling order (Paper 7).
  • 2023‑06‑01 / 2023‑06‑16 — Notice and taking of the deposition of Canon's expert Stephen F. Pond, Ph.D. (Ex. 2003).
  • 2023‑07‑10 — Patent Owner Response + Exs. 2001–2005 (Dietl declaration; "conduit" dictionary definitions).
  • 2023‑08‑28 — Canon notice to depose Slingshot's expert Steven J. Dietl.
  • 2023‑10‑02 — Petitioner's Reply; 2023‑11‑13 — PO Sur‑reply.
  • 2023‑12‑04 / 2023‑12‑07 — Oral‑argument requests and Board order granting hearing (Paper 15).
  • 2024‑01‑24 — Oral hearing; transcript at Paper 18 (docketed 2024‑02‑20).
  • 2024‑04‑09 — FINAL WRITTEN DECISION (Paper 19): claims 1–3, 5–7, 10–12, 14–16 unpatentable as obvious. Notably, the Board rested on obviousness, not the anticipation ground, which became the core of Slingshot's appellate attack.
  • 2024‑05‑09 — Slingshot's Request for Director Review under 37 C.F.R. § 42.71(d), raising (1) failure to consider the actual claim language, (2) failure to apply the correct legal standard on inherency, and (3) failure to consider evidence contradicting key factual findings (request email/PDF).
  • 2024‑06‑06 — Director (Katherine K. Vidal) DENIED Director Review; the FWD became "the final decision of the agency" (DR denial order).

6c. Appeals — Federal Circuit

  • No. 2024‑2132 (from IPR2022‑01416): argued by Kayvon Ghayoumi / Rayiner Hashem (MoloLamken LLP) for Slingshot and Julie S. Goldemberg (Morgan Lewis) for Canon; AFFIRMED by Rule 36 summary judgment on 2026‑05‑07 (per curiam: Moore, C.J., Stoll and Stark, JJ.) (Rule 36 judgment PDF). A Rule 36 affirmance means no precedential reasoning issued.
  • Nos. 2025‑1033, 2025‑1034 (from IPR2023‑00312 and IPR2023‑00313): decided 2026‑07‑16 in a nonprecedential opinion affirming the Board. The court rejected Slingshot's hindsight challenge (the Board used the '823 background section only for admissions about the prior art) and its attacks on individual references where the finding rested on a combination (opinion text).
  • No. 2025‑1032 (from IPR2023‑00309, the '864 patent): argued in 2026 and, per Law360, the Federal Circuit upheld the Board's invalidation of all challenged claims of three chip/temperature‑sensor patents ('864, '823, '708) on 2026‑07‑16 (Law360 media index, July 16, 2026).
  • No. 2024‑2127 (Slingshot as appellant, originating from one of the '341/'951 IPRs): oral argument audio posted 2026‑05‑04 (Fed. Cir. page). ⚠️ I could not confirm the disposition of the '341 and '951 appeals within my research budget; the existence of Slingshot as appellant implies adverse FWDs in those proceedings, but I have not verified that.

7. Trial, verdict, post‑trial motions, fees

None occurred — on either track, as far as the public record I retrieved shows.

  • No Markman order, no summary judgment practice, no trial, no verdict, no JMOL/new‑trial motion, and no fee motion in E.D.N.Y. The cases were stayed from 2022‑12‑01 onward.
  • No attorney‑fee award is recorded in the PTAB proceeding.

8. Final disposition and present posture

PTAB (the case in the metadata): final. The '523 patent's challenged claims 1–3, 5–7, 10–12, 14–16 stand cancelled. The FWD became the agency's final decision on 2024‑06‑06, and the Federal Circuit affirmed on 2026‑05‑07. The '523, '823, '708 and '864 claims are all now finally invalidated after affirmance; the '341 and '951 claims were invalidated below with appeals that I could not fully confirm as resolved.

District court: the two E.D.N.Y. actions were stayed pending IPR and, on the record I retrieved, no public merits judgment, verdict, or dismissal order is visible. The most probable procedural end — reflected in third‑party litigation databases that list Slingshot II as terminated in January 2024 — is dismissal/closure following the PTAB outcomes and a confidential resolution, but ⚠️ that is inference, not a verified docket fact. The only 2024 docket activity I confirmed was a counsel‑withdrawal motion. Anyone needing the true disposition should pull the PACER dockets for 2:22‑cv‑00123 and 2:22‑cv‑01852 past Dec. 2023.

Effect of the IPRs on the litigation — the strategic core

  1. Total stay, then total attrition. Canon's petition strategy eliminated Slingshot's entire asserted-claim set patent‑by‑patent: of seven asserted patents, six had their challenged claims invalidated (or were appealed after invalidation), and only '629 (IPR2022‑01415) escaped institution. With the '523 claims cancelled, Slingshot's '523 infringement claim and Canon's parallel DJ counterclaims were mooted.
  2. Estoppel. Even the denied '629 petition mattered: the court held Canon would be § 315(e) estopped from re‑raising grounds it raised or reasonably could have raised, which cut both ways strategically — it encouraged Canon to put everything into the IPRs and encouraged Slingshot to fight them.
  3. Timing discipline. Canon filed its first petition 2022‑08‑23, well inside the one‑year § 315(b) window from the 2022‑01‑07 complaint — the district court expressly credited that expedition in granting the stay.
  4. A "reverse" posture case. This is a clean example of an accused infringer using the PTAB to avoid rather than win a district court trial: no Markman, no expert discovery in court, no trial, and a Rule 36 affirmance on appeal.

Confidence and sourcing caveats

  • Well sourced: the PTAB docket for IPR2022‑01416 (papers 1–23, institution 2023‑04‑13, FWD 2024‑04‑09, DR denial 2024‑06‑06); the Federal Circuit Rule 36 affirmance of 24‑2132 (2026‑05‑07) and the July 16, 2026 nonprecedential opinion in 25‑1033/25‑1034; the E.D.N.Y. stay order and the 2023‑09‑15 joint status report listing all seven IPRs and their institution status; the '523 patent's Lexmark → Funai → Slingshot chain and the prior HP dismissal.
  • Less well sourced / to verify: the exact FWD dates and dispositions of IPR2022‑01414 ('341) and IPR2022‑01541 ('951); the disposition of 24‑2127/24‑2128; the final E.D.N.Y. disposition of Slingshot I and II; accused product model numbers and cartridge SKUs (I have these only from a low‑confidence third‑party litigation‑analytics summary, not from the complaint); and the exact filing date of Canon's Slingshot II answer (approximately Nov. 2022 based on the PDF dated to that period).
  • Not found: any motion to dismiss, transfer, summary judgment, Markman order, trial, verdict, JMOL, or fee award in the district court actions.

Bottom line: Slingshot Printing LLC sued Canon in E.D.N.Y. on seven Lexmark inkjet patents in January and April 2022. Canon counterclaimed for DJ and filed seven IPRs; the court stayed both cases in December 2022. Six IPRs were instituted, and the PTAB invalidated the challenged claims — including all asserted claims of the '523 patent (IPR2022‑01416, FWD 2024‑04‑09, DR denied 2024‑06‑06, Fed. Cir. Rule 36 affirmance 2026‑05‑07) — and the Federal Circuit affirmed the remaining invalidity rulings on 2026‑07‑16. The district court litigation never reached claim construction or trial, and its formal termination is not visible in the sources I could reach.

In the news

What the press has reported about this case, summarized with links to the source articles.

I'll search for press coverage across several angles: the IPR captions, the district court cases, the patent numbers, and the Federal Circuit appeals.

Now let me search for coverage specific to the '523 patent IPR and the May 2026 Rule 36 affirmance, plus any settlement/district court reporting.

Good — I found a key docket fact that corrects the earlier sections. Let me search for more press coverage of the '523-specific rulings and any settlement reporting.

Press coverage of Canon v. Slingshot

The '523 IPR itself — IPR2022-01416 — generated essentially no dedicated press coverage. I searched the captions, both party names, the patent number (7,938,523) and the appeal number (24-2132) and found no article from Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, Patently-O, JD Supra or the trade press reporting the April 9, 2024 Final Written Decision, Slingshot's Director Review request, Director Vidal's June 6, 2024 denial, or the Federal Circuit's May 7, 2026 Rule 36 affirmance. What coverage exists is portfolio-level: it clusters around the Federal Circuit's July 2026 decisions in the related Slingshot appeals and treats the whole seven-patent campaign as one story, without mentioning the '523 patent. The closest analogue is a Bloomberg Law automation item dated May 21, 2024, which reports a PTAB obviousness holding against a Slingshot "High Resolution Ink Jet Printhead" patent — that is the '951 patent, not the '523, and the item carries no byline or analysis.

The July 2026 Federal Circuit rulings drew the most attention. IPWatchdog (Rose Esfandiari, July 16, 2026) is the most substantive piece, reporting that the Federal Circuit affirmed two PTAB obviousness holdings covering three Slingshot patents — the '864 heater-chip patent and the '823/'708 temperature-sensor patents — and walking through the technical reasoning: that "proximity is measured along the trace relative to the bondpad" for the "physically separated proximal to the bondpad" limitation, that case law "does not prohibit a basic visual examination of patent figures," and that the Board used the '823 patent's own background section "only for admissions regarding what was already known in the art, not as a template for the invention." Law360 (Adam Lidgett, July 16, 2026) reported the same day that the court "upheld the Patent Trial and Appeal Board's decisions to invalidate all claims Canon had challenged in three Slingshot Printing patents covering chips and temperature sensors in inkjet printers." A week later, Law360 (Lidgett, July 21, 2026) reported the affirmance in No. 24-2127 of the invalidation of 13 claims of the '951 patent — noting the panel (Prost, Schall, Stoll) rejected Slingshot's claim-construction and teach-away arguments, and that counsel for both parties declined comment. Big Law Reporter framed that July 21 ruling as "Morgan Lewis's fifth consecutive win for Canon U.S.A. Inc." in the dispute, naming partners Julie Goldemberg, Jitsuro Morishita, Amanda Williamson, Jason Gettleman and Maria Doukas — the only reported numeric tally I found, and one sourced to Canon's own law firm rather than to a court record.

The trade press covered it as an industry-technology story rather than a party story. The Recycler reported the July 16 rulings as "two further victories," correctly listing the three patents and adding the detail — which the legal-press accounts did not emphasize — that both opinions "were designated nonprecedential, meaning they resolve these appeals without establishing binding precedent." A second Recycler piece on the '341 patent affirmance goes appreciably beyond the record, editorializing that the case "reflects broader dynamics within the inkjet sector" in which "innovation in this area is often incremental," that larger organisations "may be better positioned both to secure and defend" patents, and that the ruling "does not alter the immediate structure of the inkjet market." Those are the outlet's characterizations, not findings by any court, and no outlet reported any damages figure, settlement amount, or licensing number at any point in the dispute.

Two discrepancies are worth flagging against the prior sections of this case. First, the earlier sections described the E.D.N.Y. disposition as unverified; a PatSnap litigation summary quotes docket text for 2:22-cv-00123 showing Judge Nusrat J. Choudhury administratively closed the case on January 31, 2024 "pending the results of the inter partes review proceedings," directing the parties to seek reopening within 30 days of final decisions in six named IPRs (including IPR2022-01416) — so the earlier inference of a January 2024 termination was directionally right but the mechanism was an administrative closure, not a dismissal. Second, Law360's July 21, 2026 piece describes the district court case as one that "has been stayed" — present tense, as of mid-2026 — which sits awkwardly with an administrative closure in January 2024 and with no reported reopening. That is a database-versus-journalism discrepancy I cannot resolve, and it should be treated as open, as should the Bloomberg Law item's listing of "Canon Solutions America Inc." as an IPR petitioner when the named petitioners were Canon U.S.A., Inc. and Canon Inc.

Sources

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for Canon U.S.A., Inc. and Canon Inc. in IPR2022-01416 and related litigation.

Let me get more detail on Canon's counsel team and the parallel district court matter.

Let me verify the lead counsel details and the parallel district court representation.

Threshold point: which "plaintiff"?

The case metadata you supplied is the IPR, where the "plaintiff-side" party is the Petitioner — Canon U.S.A., Inc. and Canon Inc. But the same dispute also includes a true infringement suit, Slingshot Printing LLC v. Canon U.S.A., Inc., No. 2:22-cv-00123 (E.D.N.Y., filed Jan. 7, 2022), in which Canon is the defendant and Slingshot the plaintiff. Because the two are often conflated, I've listed counsel for both sides below, labeled by role.


A. Petitioners / plaintiff-side in IPR2022-01416 — Canon U.S.A., Inc. & Canon Inc.

Counsel of record: Morgan, Lewis & Bockius LLP (firm-wide IP/PTAB team). The Board's Director Review denial order (Paper 23, June 6, 2024) lists the Petitioner representatives as Bregman, Williamson, and Gettleman; Slingshot's Updated Mandatory Notices (Paper 20, Apr. 26, 2024) served the same three plus a firm-wide service address.

Name Role Firm / Office Notes
Dion M. Bregman (Reg. No. 45,645) Lead counsel (IPR) Morgan, Lewis & Bockius LLP — Silicon Valley/Palo Alto, CA (1400 Page Mill Rd.) Co-leader of the firm's PTAB group; has led 160+ PTAB proceedings; argued the second-ever IPR; member of the ActiveVideo v. Verizon trial team. Signed Petitioners' Request for Oral Argument (Paper 13, Dec. 4, 2023).
Amanda S. Williamson (Reg. No. 73,683) Backup counsel; presented at oral hearing Morgan Lewis — Chicago, IL (110 N. Wacker Dr.) Argued for Canon at the Jan. 24, 2024 hearing (hearing transcript, Paper 18, Feb. 20, 2024); took/defended the Dietl deposition (Ex. 1013). Also on the Federal Circuit brief.
Jason E. Gettleman (Reg. No. 55,202) Counsel (IPR and appeal) Morgan Lewis — Palo Alto, CA Listed in the Director Review denial order and on the Federal Circuit appellees' team.
Maria Doukas Counsel (IPR/appeal team) Morgan Lewis — Chicago, IL Appeared at the Aug. 2023 expert deposition and is listed on the Federal Circuit briefs.

On appeal (Fed. Cir. No. 2024-2132, Slingshot v. Canon, Rule 36 judgment entered May 7, 2026 affirming): appellees' counsel per the Rule 36 judgment were Julie S. Goldemberg (Morgan Lewis, Philadelphia — argued), Maria Doukas and Amanda Scott Williamson (Chicago), Jason Evan Gettleman (Palo Alto), and Jitsuro Morishita (listed as Tokyo, Japan — apparently Morgan Lewis's Tokyo office, though the source does not label him in-house vs. outside counsel). The same Morgan Lewis team (Goldemberg arguing) appears in the companion appeals 2025-1033/1034 (’823 and ’708 patents, affirmed July 16, 2026).

No Canon in-house attorney is identified as counsel of record on the PTAB or Federal Circuit papers I located.


B. Slingshot Printing LLC — patent owner in the IPR / plaintiff in the E.D.N.Y. suit

Counsel of record: Fitch, Even, Tabin & Flannery LLP, Chicago (PTAB lead counsel Mark A. Borsos, Reg. No. 50,479; backup Paul B. Henkelmann, Reg. No. 65,891; also of record Timothy P. Maloney and David Gosse). On appeal, Slingshot was represented by MoloLamken LLP (Kayvon Ghayoumi argued; Rayiner Hashem; Catherine Martinez, New York) alongside Fitch Even.

In the E.D.N.Y. infringement action, Slingshot (as plaintiff) was represented by Borsos, Maloney, Gosse, and Jacqueline L. Thompson (Fitch Even, Chicago), plus David Lawrence Hecht and Maxim Price of Hecht Partners LLP, New York (co-counsel). Jonathan E. Barbee withdrew in May 2025 (Dkt. 62). The case was stayed pending IPR on Dec. 1, 2022 (Dkt. 47) and terminated in 2024.


C. Canon as defendant in the E.D.N.Y. case (for completeness)

The only appearance I could confirm on the district docket is Grant Alan Shehigian, who filed a Notice of Appearance for "All Defendants" (Dkt. 22, Feb. 17, 2022) and the Corporate Disclosure Statement on behalf of Canon U.S.A. and Canon Solutions America (Dkt. 24, Feb. 25, 2022). I could not verify from the sources retrieved which firm Mr. Shehigian was with — the docket sheets I reached redacted or omitted Canon's counsel-of-record block. Treat that as unsourced rather than assume Morgan Lewis.


Caveats

  • The litigation strategy and much of the prosecution/PR history here is public (IPR papers are unsealed); nothing in this case appears sealed as to counsel identity.
  • The exact division of labor between Bregman (lead in the IPR) and Goldemberg (lead on appeal) is inferred from which attorney signed/argued each filing, not from an express designation on the Federal Circuit docket.
  • Morishita's Tokyo designation and Shehigian's firm affiliation are the two facts I could not fully verify; I've flagged both rather than guess.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the counsel of record for the patent owner (Slingshot Printing LLC) in this IPR proceeding.

Good data so far. Now let me verify the district court parallel case and gather firm/experience details.

Threshold note on the posture

The matter identified in the case metadata (IPR2022-01416) is not a district‑court infringement action — it is an inter partes review before the PTAB, captioned Canon U.S.A., Inc. et al. v. Slingshot Printing LLC. In an IPR there is a Petitioner (Canon) and a Patent Owner (Slingshot); the Board's practice is to designate lead counsel and backup counsel under 37 C.F.R. § 42.8(b)(3), not "local counsel." Because the metadata labels Slingshot Printing LLC as the Defendant, the answer below focuses on Slingshot's counsel of record. I have also included the parallel infringement suit, where the parties' roles reverse, so you have both sides of the same campaign.


1. Slingshot Printing LLC — counsel of record in IPR2022-01416

All PTAB counsel of record are from Fitch, Even, Tabin & Flannery LLP, 120 South LaSalle Street, Suite 2100, Chicago, IL 60603.

Attorney Role Firm / office Notes
Mark A. Borsos (Reg. No. 50,479) Lead counsel (as of the April 26, 2024 Updated Mandatory Notices, Paper 20) Fitch Even — Chicago Registered patent attorney (J.D., Michigan 2002). Broad IP litigation + post-grant practice (IPR, reissue, reexam); firm profile specifically lists "printers and ink cartridges" among his technical areas. Appeared and argued for Slingshot at the Jan. 24, 2024 oral hearing and signed the May 9, 2024 Director‑Review request.
Paul B. Henkelmann (Reg. No. 65,891) Backup counsel Fitch Even — Chicago Post-grant specialist; served as lead counsel for patent owner P2i Ltd. in IPR2020-01198 and on other Fitch Even PTAB teams. Also on the Federal Circuit brief for Slingshot in No. 2024-2132.
Timothy P. Maloney (Reg. No. 38,233) Original lead counsel (Sept. 13, 2022 Mandatory Notices, Paper 3); later re-designated backup before being superseded by the April 2024 update Fitch Even — Chicago Fitch Even's longtime managing partner and Chambers USA–ranked IP litigator (Law360 "Trial Pros" profile, 2016). Reported to have handled 100+ post-issuance proceedings; ranked among Patexia's top-100 most-active IPR attorneys representing patent owners.
David A. Gosse (Reg. No. 61,511) Counsel of record / on the service list (included with Maloney, Henkelmann and Borsos on Petitioner's § 42.6(e)(4) service list, Paper 13, Dec. 4, 2023) Fitch Even — Chicago Also ranked in Patexia's top-100 most-active IPR attorneys for patent owners; Fitch Even post-grant team member.

Federal Circuit appeal (Slingshot Printing LLC v. Canon U.S.A., Inc., No. 2024-2132, Rule 36 judgment entered May 7, 2026): briefing/appearance counsel for appellant Slingshot were Kayvon Ghayoumi (argued), Rayiner Hashem — both MoloLamken LLP, Washington, DC — Catherine Martinez (MoloLamken, New York), and Mark Borsos and Paul Henkelmann (Fitch Even, Chicago). MoloLamken acted as appellate counsel rather than PTAB counsel of record. (A companion appeal, No. 2025-1033, was argued in 2026.)

No in-house counsel for Slingshot appears on the PTAB docket; Slingshot is a licensing/NPE entity and used outside counsel exclusively.


2. The parallel infringement action (E.D.N.Y.), where Canon is the defendant

Because the metadata's "defendant" framing can be read either way, here is the mirror‑image set of counsel:

  • Slingshot Printing LLC v. Canon U.S.A., Inc. et al., No. 2:22-cv-00123 (E.D.N.Y.) ("Slingshot I") and No. 2:22-cv-01852 (E.D.N.Y.) ("Slingshot II"). Both were stayed pending the IPRs (Order granting Motion to Stay, Dec. 1, 2022).
  • Defendants in the district court case = Canon U.S.A., Inc. and Canon Solutions America, Inc. The docket identifies Grant A. Shehigian as the defendants'/counter‑claimants' attorney; his May 16, 2023 joint status letter describes his firm as "co-counsel for defendants Canon U.S.A., Inc. and Canon Solutions America, Inc.," on letterhead at 360 Lexington Avenue, New York, NY 10017. I could not independently confirm his firm name from the sources retrieved — treat the firm affiliation as unverified.
  • Canon's PTAB/petitioner counsel (the same Canon interests, in the IPRs): Dion M. Bregman, Amanda S. (Scott) Williamson, Jason Evan Gettleman and Maria Doukas — Morgan, Lewis & Bockius LLP (Bregman and Williamson in Chicago; Gettleman in Palo Alto), with Julie S. Goldenberg (Morgan Lewis, Philadelphia) arguing the Federal Circuit appeal and Jitsuro Morishita (Morgan Lewis, Tokyo) on the appellee brief. Correspondence address: CanonSlingshotIPRs@morganlewis.com.
  • Slingshot's district‑court counsel (as plaintiff): Fitch Even (Maloney, Borsos, Gosse, Jacqueline L. Thompson) plus Hecht Partners LLP (David Lawrence Hecht, Maxim Price) as co-counsel; Jonathan E. Barbee withdrew as Slingshot's counsel on May 6, 2025.

Caveats

  • The Sept. 13, 2022 initial Mandatory Notices (Paper 3) for this IPR were not retrieved in full text; the Maloney‑lead / Henkelmann‑Borsos‑backup configuration is confirmed from the identically staffed Fitch Even notice in the companion IPR2023-00312, and the April 26, 2024 Updated Mandatory Notices (Paper 20) expressly state they "replace[] all previous identification of lead and backup counsel," naming Borsos lead / Henkelmann backup.
  • Nothing here is drawn from sealed material; PTAB filings and the Federal Circuit Rule 36 judgment are public. I found no sealed‑counsel entries and no evidence of any attorney appearing who is not listed above.