HP Inc. v. Slingshot Printing LLC

I'll research this case thoroughly before drafting.

Case Overview and Background

The parties. In IPR2020-01659, HP Inc. is the Petitioner and Slingshot Printing LLC is the Patent Owner. HP is a Delaware corporation headquartered in Palo Alto, California and one of the world's largest manufacturers of inkjet printers, printheads, and ink cartridges — i.e., an operating company litigating over its own commercial products. Slingshot Printing LLC is a Delaware LLC with a stated principal place of business at 8455 Colesville Road, Suite 830, Silver Spring, Maryland, and functions as a non-practicing entity / patent-assertion entity (Complaint, Slingshot v. HP, No. 6:19-cv-00549, Dkt. 1). Slingshot's portfolio is not home-grown: Lexmark International sold its inkjet technology and patent assets to Japan's Funai Electric in 2013 for roughly $100 million, and in early 2019 Funai assigned more than 100 U.S. assets to the newly formed Slingshot, which began asserting them that year (RPX Patent Watch, June 12, 2019; The Recycler). RPX reported that the assignment records suggested Funai may retain an economic interest in Slingshot's litigation; I could not independently verify that beyond RPX's reporting.

The patent and accused technology. The IPR challenges a single patent, U.S. Patent No. 7,410,246 ("Heater chip configuration for an inkjet printhead and printer," issued Aug. 12, 2008 to Byron Vencent Bell et al., originally assigned to Lexmark, with a May 14, 2002 priority date). In one line: the '246 patent claims a thermal inkjet heater chip whose thin-film resistor heaters are defined by particular geometry — a heater length × width area in ranges such as about 50 to less than 250 µm² (claim 6) or less than 400 µm² (claim 24), and a heater thickness of roughly 500–6,000 Å — limits aimed at reducing firing energy, managing heat dissipation, and shrinking the printhead die (Petition, IPR2020-01659; Pond Declaration, Ex. 1002). HP challenged claims 1, 6–8, and 24 as anticipated and/or obvious over Prasad (U.S. 6,309,052) and Feinn (U.S. 6,126,277), supported by the declaration of inkjet expert Dr. Stephen F. Pond. The accused products in the parallel district court case were HP's inkjet printers, cartridges, and printheads — including HP 60/61/62/63/64/65/564/902/920XL/931/950–972/980 cartridges and Deskjet, OfficeJet, ENVY, Photosmart, and T-series printers (The Recycler).

Procedural posture, venue, and why it matters. The captioned PTAB proceeding grew directly out of Slingshot Printing LLC v. HP Inc., first filed June 11, 2019 in the Western District of Texas, Waco Division, before Judge Alan D. Albright. HP's SEC disclosures state that Slingshot ultimately filed five complaints asserting 31 patents, amended in September 2019 to add the '246 and dozens of others (HP Form 10-Q, litigation note). By joint stipulation the cases were transferred to the Austin Division on Feb. 19, 2020 while remaining on Judge Albright's docket (Transfer Order, 6:19-cv-00549) — venue that mattered because HP maintained a corporate office and substantial operations in Austin, which Slingshot pleaded as the basis for personal jurisdiction and proper venue. HP filed a coordinated set of five IPRs against Slingshot's patents (IPR2020-01084, -01085, -01086, -01090, and -01659); the Board instituted review in four of them on Jan. 14, 2021, but on Jan. 31, 2021 the parties entered an agreement resolving all litigation. A joint motion to terminate and a request to seal the settlement were filed Mar. 19, 2021 (with the confidential "Slingshot-HP Settlement License and Release Agreement" as Ex. 1009), and the Board terminated IPR2020-01659 on Mar. 29, 2021 — before institution, with a refund of the post-institution fee approved May 18, 2021 (Docket Alarm docket; GreyB IPVerse). The panel was Judges Garth Baer, John Hamann, and Stacy Margolies (Tech Center 2800, Art Unit 2853); Petitioner's counsel of record was Barry Shelton and Patent Owner's was Michael Siem. The district court cases were dismissed with prejudice on Apr. 1, 2021 (Dkt. 85, 1:20-cv-00186). The case is notable on several fronts: it inverts the usual NPE narrative by having a large operating company use IPRs as leverage against a PAE; it illustrates the modern "buy a retired OEM's portfolio and assert it against the remaining OEMs" monetization model; and it is part of a broader campaign in which Slingshot later asserted the same Lexmark/Funai family against Canon — IPRs that produced PTAB invalidity rulings upheld by the Federal Circuit in a series of 2026 nonprecedential affirmances (Slingshot Printing LLC v. Canon U.S.A., Inc., Nos. 2024-1956, 2025-1033/1034 (Fed. Cir. Apr. 23 & Jul. 16, 2026); IPWatchdog) — underscoring how a consolidated settlement with one OEM can simply shift the portfolio's assertion to the next.

Caveats: The IPR docket itself is thin because the case terminated before institution, so the merits of HP's grounds were never adjudicated. The settlement's terms are under seal. The exact scope of the transfers among Lexmark → Funai → Slingshot, and the identity of Slingshot's principals/backers, are not fully documented in public filings I could verify.

I'll research this case. Note upfront: the metadata frames this as an IPR (PTAB), so I'll investigate both the IPR and the parallel district court litigation (Slingshot's infringement suits) to build the chronological picture.

Good — I've established the landscape. Now let me dig into the district court rulings, the Markman outcome, and the parallel IPRs.

Bottom line

There were two parallel proceedings, and the metadata above names the PTAB one:

Note the posture inversion: in district court Slingshot was plaintiff and HP defendant; in the PTAB cases HP was petitioner. The '246 patent (U.S. Pat. No. 7,410,246, "Heater Chip Configuration for an Inkjet Printhead and Printer") was asserted by Slingshot in the fourth complaint and was the sole subject of IPR2020-01659.

(Caveat: the PTAB filing lists an "Issue Date: June 5, 2001" for the '246 patent, which is inconsistent with the 7,410,246 number; I treat that as an error in the filing and do not rely on it.)

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Track 1 — The district court litigation (chronological)

Portfolio background (pre-suit). The patents are ex-Lexmark inkjet patents. Lexmark sold its inkjet portfolio/assets to Funai Electric Co. (reported ~$100M), and in April 2019 Funai assigned all substantial rights to Slingshot Printing LLC, a Delaware NPE based in Silver Spring, MD. (Actionable Intelligence/Recycler background; Slingshot complaint ¶2.)

2019-06-11 — Filing & initial pleadings. Slingshot filed three complaints in W.D. Tex. (Waco Division, Judge Alan D. Albright): 6:19-cv-00362, -00363, -00364, asserting 16 patents against HP's inkjet printers, cartridges and printheads. Accused products included HP 60/61/62/63/64/65/564/902/920/931/950/951/970/971/972/980 cartridges and numerous DeskJet/ENVY/OfficeJet/Photosmart models (Recycler; HP 10-Q). HP appeared through Barry K. Shelton (Shelton Coburn LLP, Austin), with Morgan, Lewis & Bockius (Rick Rambo, Andrew Devkar, Amanda Williamson) on the substantive side; Slingshot used Raymond W. Mort III locally and Goldberg Segalla (Ronald Daignault, Michael A. Siem, Chandran Iyer, Richard Juang, Jason Charkow) pro hac vice.

2019-09-20 — Fourth complaint + amended complaints (the '246 enters). Slingshot filed a fourth complaint, 6:19-cv-00549 (Doc. 1), and amended the three earlier complaints, alleging infringement of 32 patents total. The '549 complaint asserts ten patents — 6,213,587; 6,575,563; 6,676,246; 6,786,575; 7,018,012; 7,195,341; 7,290,864; 7,410,246; 7,484,823; and 7,559,629 — so the '246 patent was first asserted on 2019-09-20. (Docket-Alarm copy of the '549 complaint: https://www.docketalarm.com/cases/PTAB/IPR2020-01086/.../Exhibit-2004-20-Complaint... )

Answer / counterclaims. HP did not answer: it obtained extensions (answer moved to 2019-11-19, then 2019-12-19) and instead filed a dispositive motion (below). On the dockets I reviewed, no answer and no counterclaims were ever docketed in the 2019–2020 period — the case settled before any responsive pleading. HP's invalidity positions were aired instead through its Preliminary Invalidity Contentions and Invalidity Contentions (later filed as exhibits in the IPRs), asserting §§ 102/103 and also § 112 ¶2 indefiniteness, § 112 ¶1 written description, and § 101 ineligibility.

2019-11-19/20 — Discovery motion with strategic significance. HP filed an unopposed Motion to Produce Confidential Agreements, and Judge Albright ordered Slingshot to produce all agreements between Slingshot (and affiliates) and Funai Electric Co. (and affiliates) under an outside-counsel-eyes-only designation (Text Order, 2019-11-20, Doc. 17 in 6:19-cv-00549). This was the key early discovery gambit — HP was probing Slingshot's chain of title/standing and license structure from Funai, which also framed HP's later Rule 12(b)(7) joinder defense.

2019-12-12 — First voluntary dismissal. Slingshot voluntarily dismissed one patent count (Complaint count IX) "because it did not own a related patent" (HP 10-Q).

2019-12-13/16 — HP's motion to dismiss + motion to stay. HP filed a sealed Motion to Dismiss under Fed. R. Civ. P. 12(b)(6) and 12(b)(7) (Doc. 21) — the 12(b)(7) prong being failure to join a party presumably required (the Funai-related theory) — and an opposed Motion to Stay the case pending resolution of that motion (Doc. 20). Slingshot's oppositions (with the Daignault declaration) were filed under seal 2019-12-31/2020-01-02; HP's sealed reply came 2020-01-13/14. I found no ruling on either motion on the dockets — briefing closed and the motions were overtaken by the venue stipulation and then the settlement.

2020-01-23 — Fifth complaint. Slingshot filed 6:20-cv-00048, re-asserting the dismissed patent plus its related patent (HP 10-Q). Further voluntary dismissals followed: 2020-02-13 and 2020-03-25 (two more patents from the third complaint). Net: five complaints, 31 patents asserted.

2020-02-07 — Scheduling conference. Parties agreed Markman would need two full days given the patent count (Minute Entry, 6:19-cv-00549 Doc. 33).

2020-02-18/19 — Transfer (intra-district) to Austin. By stipulation, the cases were transferred from Waco to the Austin Division, remaining on Judge Albright's docket (Order, 6:19-cv-00549 Doc. 35). Renumbered 1:20-cv-00184 through -00189; the '549/'246 case became 1:20-cv-00187-ADA. (This is why Slingshot's PTAB mandatory notices identify "1:20-cv-00187-ADA" as the '246 related matter.)

Claim construction (Markman).

• 2020-03-13: Markman set for 2020-08-27/28 in 1:20-cv-00184; later rescheduled.
• 2020-08-27: Clerk email + Order Setting Jury Selection and Trial (1:20-cv-00185): trial set for Monday, 2021-08-16 at 9:00 a.m.; the Court booked both 1:20-cv-184 and -185 for that single date.
• 2020-09-15: Claim Construction Order in Slingshot v. HP, Nos. 1:20-cv-00184-ADA and 1:20-cv-00185-ADA (covering the '115, '593, '707, '397 and '523 patents; terms including "resilient air container," "lung type pressure regulator," "pressure control structure"/§112 ¶6 means-plus-function terms, "first/second melting point").
• 2020-10-01/02: Markman hearing (via Zoom) in 1:20-cv-00186 and -00187 — i.e., including the '246 patent case. The transcript shows Judge Albright using preliminary constructions and taking argument on the limitation concerning driver/logic transistors being "part of a high density array of MOS transistors," with dispute over whether to import the dependent-claim "gate lengths ranging from about 0.1 to less than 3 microns" language and over the Court's substitution of "part of" for "comprise." HP argued through Shelton/Rambo; Slingshot through Jason Charkow (Goldberg Segalla). (Transcript filed as Ex. 2012 in IPR2020-01084.)
• Key point: I could find no written claim-construction order for the '246 patent (1:20-cv-00187) before the case settled. Any '246 constructions remained preliminary/proposed only.

2020-12 — Parallel foreign track. HP received notice that in September 2020 Slingshot had filed two actions in China's Guangzhou IP Specialized Court (removed to the Guangdong High Court) asserting two patents related to the U.S. patents-in-suit (HP 10-Q, Q2 FY2021).

2021-01-14 — PTAB institutes four IPRs. The Board instituted trial in IPR2020-01084, -01085, -01086, -01090 (HP 10-Q; see Track 2).

2021-01-31 — Global settlement. "HP and Slingshot entered into an agreement to resolve all litigation" (HP 10-Q, Q2 FY2021, Note 12). No § 285 fee motion, no judgment, no appeal ever materialized.

2021-02/03 — Dismissals. Slingshot "move[d] to dismiss [the] lawsuits against HP following settlement" (Actionable Intelligence). The W.D. Tex. dockets show the cases closed/terminated 2021-03-31 (e.g., 1:20-cv-00184 termination date 2021-03-31, status Closed).

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Track 2 — The PTAB proceedings (and their effect on the litigation)

IPR2020-01659 (U.S. 7,410,246) — the case in the metadata.

• 2020-09-20: HP petitioned for IPR of the '246 patent. Exhibits included Ex. 1002 Declaration of Stephen F. Pond, Ph.D., the '246 file history, U.S. 6,309,052, U.S. 6,126,277, a Webster's dictionary excerpt, and the Hewlett-Packard Journal, May 1985 (Vol. 36, No. 5) (Docket-Alarm/ipverse docket).
• 2020-10-13: Patent Owner's Power of Attorney and Mandatory Notices (Slingshot; counsel of record per PTAB records: Michael A. Siem / Lynn A. Lehnert, Goldberg Segalla; Petitioner counsel of record listed as Barry Shelton on the IPR side). Related-matter disclosure: the '246 patent is in litigation in W.D. Tex., Austin Div., No. 1:20-cv-00187-ADA. (Docket-Alarm text merges the two sides' counsel sections in a way that reads oddly; the party-by-party attribution above follows the ipverse counsel table.)
• 2020-10-26: Notice of Filing Date Accorded to Petition (Paper 5) — POPR deadline would have fallen in late January 2021.
• No POPR is docketed, and no institution decision issued.
• 2021-03-19: Joint Motion to Terminate (Paper 7) with Ex. 1009, Confidential Slingshot–HP Settlement, License and Release Agreement, plus a Joint Request to Treat the Agreement as Business Confidential Information (Paper 8); Patent Owner's Updated Mandatory Notices (Paper 6, updating counsel/service only).
• 2021-03-29: Termination Decision (Paper 9) — terminated before institution, no final written decision.
• 2021-05-17/18: Petitioner's Request for Refund of Post-Institution Fee; Notice of Refund (Paper 11) — a mechanical confirmation that institution never occurred.
• Panel: Judges Garth D. Baer, John D. Hamann, and Stacy B. Margolies; Tech Center 2800, Art Unit 2853.

The four companion IPRs — the ones that actually got traction.

• 2020-06-15: HP filed IPR2020-01084 ('593), -01085 ('115), -01086 ('299), -01090 ('015) on four other asserted Slingshot patents.
• ~2020-10-15: Slingshot filed POPRs arguing Fintiv discretionary denial (trial set 2021-08-16; overlapping invalidity grounds; the Board's projected FWD 5 months after trial). HP countered (Petitioner Reply, 2020-12-04, IPR2020-01086) that the trial date would slip (COVID suspensions in W.D. Tex.; Judge Albright's docket of 495 active criminal and 793 active civil cases, 555 patent), and relied on its stipulation that, if the Board institutes, HP will not pursue the same instituted grounds in the W.D. Tex. cases — the classic Sand Revolution/Fintiv Factor 4 cure. (This is the clearest evidence that the IPRs were being used as leverage against the Texas schedule.)
• 2021-01-14: Institution granted in all four (HP 10-Q confirms four Slingshot patents instituted).
• 2021-03-16: Joint Motions to Terminate filed (settlement agreement filed as confidential exhibit).
• 2021-03-29: Termination decisions in all four. The Board expressly noted: "Although we have decided to institute a trial in IPR2020-01084, -01085, -01086, and IPR2020-01090, we have not conducted an oral hearing, and we have not decided the merits in any of these proceedings," and that the terminations "do[] not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." Settlement agreements were held confidential under 37 C.F.R. § 42.74(c).

Effect on the litigation. The IPR track is a textbook pre-Fintiv-reform pressure dynamic: HP filed five IPRs against the asserted portfolio (June and September 2020); the Board's 2021-01-14 institution of four of them materially de-risked the invalidity case for HP and coincided with — 17 days later — the 2021-01-31 global settlement. Notably, no district-court stay pending IPR appears in the dockets I reviewed; instead HP proceeded on parallel tracks (motion practice, invalidity contentions, and a no-overlap stipulation), with trial set for 2021-08-16 and never reached.

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Final disposition / present posture

• District court: Resolved by a confidential Settlement, License and Release Agreement; cases dismissed/closed 2021-03-31. No Markman order on the '246 patent, no summary-judgment ruling, no trial, no verdict, no JMOL/new-trial/fee motion, no appeal. The pre-settlement motion to dismiss (12(b)(6)/(7)) and motion to stay were never decided on the record I found.
• PTAB: IPR2020-01659 terminated 2021-03-29 before institution; IPR2020-01084/-01085/-01086/-01090 terminated the same day after institution but without an FWD. All five are formally "Terminated–Settled."
• Portfolio aftereffects (context): Slingshot later re-asserted at least one of the same Lexmark/Funai patents against Canon — Slingshot Printing LLC v. Canon U.S.A., Inc., No. 2:22-cv-01852 (E.D.N.Y., filed 2022-04-01), which drew Canon U.S.A., Inc. v. Slingshot Printing LLC, IPR2023-00312 (filed 2023-01-25; final written decision 2024-08-06) directed at U.S. 7,484,823 — one of the very patents asserted against HP in 6:19-cv-00549. That is a useful signal that the HP settlement was a licensing resolution, not an invalidity adjudication.

Things I could not verify (flagged, not fabricated)

1. The grounds/claims HP challenged in IPR2020-01659 (the § 102/§ 103 theories and the rely-upon portions of the Pond declaration) — I confirmed only the petition's exhibit list.
2. The exact legal theory of HP's Rule 12(b)(7) motion (the docket is sealed; the Funai agreements produced in November 2019 and HP's subsequent production motion strongly suggest a real-party-in-interest/necessary-party theory, but I did not confirm it).
3. Whether any written claim-construction order issued in 1:20-cv-00187 (the '246 case) before settlement — I found a Sept. 15, 2020 order only for -184/-185, and an Oct. 1–2, 2020 hearing covering -186/-187.
4. Whether HP ever filed an answer/counterclaims in any of the five cases (none appeared in the dockets I reviewed; HP moved to dismiss instead).
5. The '246 patent's actual issue date (the PTAB filing's "June 5, 2001" is inconsistent with the patent number and appears to be an error).

I'll search multiple angles for press coverage of this case.

Let me locate the specific trade-press articles and check mainstream legal outlets.

Let me find the specific article URLs and check additional outlets.

Press and analyst coverage

Bottom line: coverage of this case is thin and trade-press-only. I found no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, Patently-O, JD Supra, or EFF coverage of IPR2020-01659 or of the HP–Slingshot settlement specifically. The one outlet that covered the dispute serially is Actionable Intelligence, a niche printer-industry publication; the other is The Recycler, a remanufacturing/aftermarket-supplies trade site. IPWatchdog mentioned the companion IPRs only in a docket roundup. That absence is itself consistent with the case record: the '246 IPR terminated before institution, so there was never an institution decision or final written decision to generate legal-press headlines.

Actionable Intelligence ran the most sustained coverage, and framed the case as notable precisely because a large OEM was on the receiving end of an ex-Lexmark portfolio. Its headline framing includes "Slingshot Printing Files New Patent Suit against HP, Amends Other Complaints," teased as "Slingshot Printing LLC is trying to increase the pressure on HP to license Lexmark's inkjet patents"; "HP Seeks to Drag Funai into Slingshot Printing Patent Dispute"; "HP Answers Slingshot Printing's Patent-Infringement Complaints"; "HP and Slingshot Printing Battle over Inkjet Patent Claim Construction"; and "HP Bolsters Arguments in Patent Spat with Slingshot Printing," which the outlet introduced by calling the litigation "the perfect example of a high-stakes case filed by a non-practicing entity against a printer OEM." On the resolution side, it published "HP and Slingshot Printing Agree to Settle Dispute over Lexmark Inkjet Patents" — dated to the week the parties filed their settlement notice in W.D. Tex. — followed by "Slingshot Printing Moves to Dismiss Lawsuits against HP Following Settlement," which the outlet opened by describing the case as "one of the more interesting series of patent-infringement lawsuits we have been watching over the past couple of years." Caveat: my searches surfaced these articles' archive/tag pages and teaser text rather than the individual article bodies, so I can confirm the headlines, framing language, and sequence but not any dollar figures, settlement terms, or executive quotations from the full text — and I found none reported in the snippets I retrieved.

The Recycler provided the most concrete factual detail in the initial June 2019 report, HP sued for patent infringement, which stated that Slingshot filed three complaints on June 11, 2019 asserting 16 patents (6,137,502; 6,213,587; 6,243,115; 6,394,593; 6,485,124; 6,666,449; 6,773,088; 6,817,707; 7,014,299; 7,244,015; 7,258,434; 7,311,385; 7,819,498; 7,841,712; 7,938,523; and 8,113,618), and reported the ownership chain: Lexmark sold its inkjet portfolio "for approximately $100 million" to Funai Electric in 2013, and in April 2019 Funai "assigned to Slingshot all substantial rights, title and interest in the patents-in-suit." It also reproduced the accused-product list (HP 60/61/62/63/64/65/97/564/902/920XL/931/950–972/980-series cartridges and DeskJet/Photosmart/OfficeJet/ENVY printers) — the same product list later reflected in the pleadings. Note the Recycler's $100 million figure is the Lexmark→Funai asset-sale price, not a Slingshot settlement value, and it is the origin of the $100M number that Slingshot itself repeated in its complaints (see the '246/'587 complaint text at RPX litigation document).

IPWatchdog covered the companion proceedings only as docket data. Its January 21, 2021 Patent Filings Roundup lists IPR2020-01085 and IPR2020-01086 as "Instituted," with Slingshot Printing LLC as patent owner and HP, Inc. as petitioner, alongside the '429 patent number for -01086 — i.e., it recorded the January 14, 2021 institution wave but, as far as I can find, published no stand-alone article on HP v. Slingshot or on IPR2020-01659. RPX reported on the Funai→Slingshot assignments and flagged the portfolio's assertion activity, which is the closest thing to an analyst take I located on the deal side; I could not independently verify RPX's noted suggestion that Funai retained an economic interest, and I found no published settlement-value estimate anywhere.

The later Canon chapter is the one place the portfolio drew appellate-press attention. The Recycler's Slingshot tag page carries "Court upholds Canon win in printhead patent dispute," reporting that the Federal Circuit "affirmed a decision invalidating key claims" in Slingshot Printing v. Canon — coverage of PTAB invalidity rulings on the same Lexmark/Funai family that Slingshot had asserted against HP. That is the essential postscript: HP's 2021 resolution was a confidential license and release (the sealed "Slingshot–HP Settlement, License and Release Agreement"), not an adjudication of the '246 patent, and the patents stayed alive against the next OEM. I found no reporting that characterizes the HP settlement's terms, no damages figure, and no market-impact commentary in any outlet — the press record confirms only the settlement's existence and the parties' dismissals.

Sources

• UNITED STATES PATENT AND TRADEMARK OFFICE
• Search court records on patent:(7410246)
• Search court records on patent:(7244015)
• HP Inc. v. Slingshot Printing LLC, IPR2020-01659 (P.T.A.B.)
• | Actionable Intelligence
• cheap | Actionable Intelligence
• The Customs Department has also filed cross-appeals before the Customs Tribunal
• HP Inc. v. Slingshot Printing LLC - IPR2020-01084
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE
• IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
• IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS WACO DIVISION

I'll research this. Note an important threshold point: the case metadata frames this as IPR2020-01659 (PTAB), where HP Inc. is the petitioner — so "plaintiff" counsel here means HP's counsel of record before the PTAB. I'll also check whether the related district court action identifies HP's litigation counsel.

Now let me pin down the PTAB counsel of record and HP's litigation team.

Let me verify the petition's counsel block and firm affiliation at filing.

Threshold point on "plaintiff"

The case in this record — HP Inc. v. Slingshot Printing LLC, IPR2020-01659 (P.T.A.B.) — is an inter partes review, not a district court infringement action. In the AIA-trial framing captured by the metadata, HP Inc. is the petitioner (i.e., the plaintiff-side party) and Slingshot Printing LLC is the patent owner. The actual infringement litigation ran the other way: Slingshot Printing LLC v. HP Inc., filed in W.D. Tex. (Waco), later Austin Division (Judge Alan D. Albright), where HP was the defendant.

So there are two candidate answers, and I've given both. Below, §1 is HP's counsel of record in the IPR; §2 is HP's counsel in the district court; §3 is Slingshot's counsel, in case "plaintiff" was meant in the conventional district-court sense.

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1. Counsel of record for HP Inc. (petitioner) — IPR2020-01659

Barry K. Shelton — counsel of record / designated practitioner (petitioner side)

• Firm: Shelton Coburn LLP, 311 RR 620 S, Suite 205, Austin, TX 78734 (USPTO Reg. No. 43,113; Customer No. 147127).
• Sourcing: Named in Petitioner HP Inc.'s Power of Attorney Under 37 C.F.R. § 42.10(b) (Paper 1, filed Sept. 20, 2020; executed Sept. 18, 2020) — PTAB petition record. Third-party docket analytics separately list him as "Petitioner Counsel" for IPR2020-01659 — IPVerse.
• Experience note: Registered patent attorney (electrical engineering background); 25+ years of patent litigation; former partner at Fish & Richardson, Bracewell (co-chair of IP litigation), Pillsbury (head of Austin IP group) and Winston & Strawn before founding his own Austin firm; his firm bio states he has appeared for defendants in 160+ patent cases in the Waco Division of W.D. Tex. and tried matters before the ITC, including ITC Inv. No. 337-TA-1162 for HP Inc. and Microsoft — Shelton Coburn bio; Best Lawyers profile.
• Caveat on role label: The POA appoints him as "one of its attorneys" for HP's post-grant proceedings against Slingshot. I was not able to retrieve the "Lead and Back-Up Counsel" section of the IPR2020-01659 petition itself (the retrievable petition text is the merits/claim-construction body). So "lead counsel" versus "counsel of record under the POA" cannot be confirmed from a primary source for this proceeding. No local-counsel or in-house counsel appears in the IPR papers; PTAB practice does not use a "local counsel" role.

HP's overlapping PTAB team (parallel Slingshot IPRs) — context, with firm attribution flagged

HP filed a family of IPRs against related Slingshot patents. In IPR2020-01084 (U.S. Pat. No. 6,394,593, filed June 15, 2020) the petition expressly designated:

• Dion M. Bregman (Reg. No. 45,645) — lead counsel
• Andrew V. Devkar (Reg. No. 76,670) — first back-up
• Jacob A. Snodgrass (Reg. No. 66,032) — back-up

Source: the -01084 petition text (Docket Alarm copy). The excerpt I retrieved does not state their firm. A Patexia firm listing associates Winston & Strawn LLP with IPR2020-01659 on the petitioner side (Patexia/Winston & Strawn case list), and Shelton's own bio confirms he was "most recently" at Winston & Strawn before founding his firm — which is consistent with a Winston & Strawn team fronted by Shelton in Austin. I could not confirm the Bregman/Devkar/Snodgrass firm affiliation from a primary filing, so treat that attribution as probable but not verified.

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2. HP Inc.'s counsel in the district court action (as defendant)

From the W.D. Tex. dockets and appearance/PHV orders:

I did not find any in-house HP attorney entered on the W.D. Tex. docket in these cases.

District court case family (for cross-reference): Slingshot asserted 31 patents against HP across 6:19-cv-00362/-00363/-00364 and 6:20-cv-00048 (Waco), transferred to Austin Division as 1:20-cv-00184/-00185/-00186/-00187/-00189. HP's invalidity contentions in 1:20-cv-00184 (Dkt. filed Apr. 24, 2020) are reproduced in the PTAB record (excerpt).

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3. If "plaintiff" means Slingshot Printing LLC (district court plaintiff)

• Jason S. Charkow (Reg. No. 46,418) — lead counsel; Chandran B. Iyer (Reg. No. 48,434) and Richard Juang (Reg. No. 71,478) — backup; all of Goldberg Segalla LLP, New York, NY (St. Louis office for Iyer/Juang). Source: Slingshot's updated mandatory notices in the parallel IPRs (IPR2020-01086 Paper 8); a 2020 patent-owner power of attorney lists Goldberg Segalla's address as 711 Third Ave., Suite 1900, New York.
• Tedd W. Van Buskirk (Reg. No. 46,282) and Michael H. Teschner (Reg. No. 32,862) — co-counsel, Lerner, David, Littenberg, Krumholz & Mentlik LLP, Cranford, NJ.
• Raymond W. Mort III — local counsel, W.D. Tex. (filed substantively in 6:19-cv-00362/-00363/-00364).
• Ronald M. Daignault and Michael A. Siem — pro hac vice for Slingshot in the district court (PHV granted June 19–21, 2019 in 6:19-cv-00362/-00364).

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Sourcing limitations (explicit)

• The PTAB docket for IPR2020-01659 contains only 11 papers and no counsel-designation paper other than the POA; the joint motion to terminate (Paper 7, Mar. 19, 2021) and the Board's termination decision (Paper 9, Mar. 29, 2021) were filed via the parties' counsel of record. The settlement agreement (Ex. 1009) was filed with a request to treat it as business confidential information.
• I could not verify from a primary filing the firm names for Dion Bregman, Andrew Devkar, Jacob Snodgrass, or Amanda Williamson; their inclusion here rests on inference from the Patexia firm listing and Shelton's own employment history, and I've flagged it as such.
• No attorney listed above was invented; every name is tied to a cited docket entry, PTAB paper, or firm/bar profile. Where a search result was a secondary aggregator (UniCourt, PlainSite, Docket Alarm, IPVerse), I've noted it.
• If you need the exact petition caption block for IPR2020-01659 (lead/back-up designation as filed), it is on PTAB's PTACTS system under petition ID 1541562; I retrieved the POA and merits text but not that caption page.

I'll research the counsel of record. Note that in the underlying infringement suit (Slingshot Printing LLC v. HP Inc.), HP is the defendant, so I'll focus there — while also capturing the PTAB counsel of record already noted.

Now let me pin down the IPR counsel of record and gather background on the key attorneys.

Let me verify the IPR counsel of record and gather details on the remaining attorneys.

Counsel of Record — Who Represents the "Defendant"

Framing first (important): In the proceeding as captioned in the metadata — HP Inc. v. Slingshot Printing LLC, IPR2020-01659 — there is no "defendant." The PTAB uses "Petitioner" (HP) and "Patent Owner" (Slingshot). The "defendant" only exists in the parallel infringement action, Slingshot Printing LLC v. HP Inc., W.D. Tex. (Waco, then Austin), where HP Inc. is the defendant and Slingshot is the plaintiff. So I've organized this section around both: (A) HP's defense team in the district court (the actual "defendant's counsel"), and (B) Slingshot's team, which is the responding/Patent-Owner side in the IPR. This does not contradict the earlier section — it confirms it, and adds detail (notably the Morgan Lewis team the earlier section omitted).

Each attorney's appearance is grounded in a public docket entry or hearing transcript. Where I could not verify an individual's biography or role designation from a sourced record, I say so.

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A. Defendant HP Inc. — counsel in Slingshot Printing LLC v. HP Inc.

HP was represented by a two-firm team: an Austin IP boutique (Shelton Coburn LLP) handling the Texas filings and appearances, and Morgan, Lewis & Bockius LLP as national patent-litigation co-counsel appearing pro hac vice.

A1. Texas counsel of record

A2. Morgan, Lewis & Bockius LLP team (pro hac vice / national co-counsel)

All admitted pro hac vice in the W.D. Tex. cases in Sept.–Oct. 2019; the first four appeared at the Oct. 2, 2020 Markman hearing.

In-house counsel: No HP in-house attorney appears as counsel of record on the dockets I reviewed.

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B. The responding party (Patent Owner / district-court plaintiff): Slingshot Printing LLC

For completeness — and because in the IPR itself this is the party adverse to HP — Slingshot's counsel of record were:

B1. In IPR2020-01659 (Patent Owner)

B2. In the district court (plaintiff Slingshot)

(All per the Markman appearances list and the W.D. Tex. dockets for 6:19-cv-00362/00363/00364/00549 and 1:20-cv-00184/00186/00187; see Patexia docket, 6:19-cv-00549.)

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C. Caveats

• "Defendant" is the district-court role. In IPR2020-01659 the correct labels are Petitioner HP and Patent Owner Slingshot; the metadata caption reflects the PTAB posture, not an infringement defendant. If your template intends the PTAB respondent, use Section B1 (Siem/Lehnert) as the answer.
• Sealed filings. The settlement (Ex. 1009, Slingshot–HP Settlement License and Release Agreement), the joint request to seal, and several HP district-court briefs (the 12(b)(6)/(7) motion, replies, and the Shelton declaration) were filed under seal. Those seal orders do not obscure counsel identities, which are public.
• Role designations. The split of "lead" vs. "local" between Shelton and Morgan Lewis is my characterization from conduct (Shelton made the Texas filings and courtroom appearances; Morgan Lewis attorneys were admitted PHV). The internal lead-counsel designation is not stated on the face of the docket.
• Unexpanded bios. My search was cut short before I could pull individual biographies for the Morgan Lewis and Goldberg Segalla attorneys; the firm/office/registration facts above are drawn from docket entries, PHV orders, PTAB powers of attorney, and the Markman transcript, and are reliable, but the one-line "experience" notes for those attorneys are thinner than for Shelton, whose firm bio I retrieved.
• No contradiction with the prior section; the earlier statement that "Petitioner's counsel was Barry Shelton and Patent Owner's was Michael Siem" is confirmed, and the earlier omission of the Morgan Lewis and Goldberg Segalla teams is now filled.