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

I'll research this case thoroughly before drafting. Let me start with several searches.

Excellent results. Let me dig into the IPR specifics, the ownership/entity background, and the district court disposition.

I have strong material. Let me fill two remaining gaps: the '341/'629 IPRs and the district court's post-IPR disposition.

I'll research the docket, rulings, and parallel PTAB proceedings for this case.

Let me dig into the IPR outcomes, the Federal Circuit appeal, and the district court's termination.

Now let me identify the specific IPR numbers for each asserted patent and the district court's final disposition.

Key Legal Developments and Outcome — Slingshot Printing LLC v. Canon U.S.A., Inc., No. 2:22-cv-00123 (E.D.N.Y.)

Building on the overview/background sections already drafted. Note the case was one of two coordinated suits — Slingshot I (22-cv-00123: '951, '341, '629, '523) and Slingshot II (22-cv-01852: '823, '708, '864). Most developments below are Slingshot I, but the stay and the appeal outcomes turned on both.

1. Filing and initial pleadings (2022)

2. Pre-trial motions of substance

There was no motion to dismiss, no motion to transfer, and no summary judgment motion. The one substantive contested motion was Canon's motion to stay pending IPR — and it decided the case.

• 2022-07-05 – Initial pretrial conference; scheduling order entered (Dkt. 30).
• 2022-09-09 – Canon notified the Court of its intent to seek a stay (Dkt. 37); stay briefing schedule set 2022-10-21.
• 2022-11-02 – Canon's letter motion to stay both cases pending IPR (Slingshot I Dkt. 47; Slingshot II Dkt. 37).
• 2022-11-16 – Slingshot's opposition (Dkt. 50), arguing simplification was "speculative" and a stay would delay discovery and settlement.
• 2022-12-01 – Stay granted (Dkt. 52), Slingshot Printing LLC v. Canon U.S.A., Inc., No. 22-CV-00123 (HG) (LGD) (E.D.N.Y. Dec. 1, 2022) (Dunst, M.J.). Applying Synkloud Techs. v. Cartessa Aesthetics, 2022 WL 1046261 (E.D.N.Y. Apr. 6, 2022), the Court held all three stay factors (issue simplification, stage of the case, absence of undue prejudice) favored a stay. Slingshot I was stayed pending resolution of the IPRs; Slingshot II was temporarily stayed through 2022-12-30 to let Canon file its petitions. The Court stressed keeping the two cases on one schedule "into late 2024."
• 2022-12-28 – Temporary stay in Slingshot II extended to 2023-01-20.
• 2023-01-25 – Canon letter motion to extend the Slingshot II stay pending IPR now that the Slingshot II petitions were on file (Slingshot II Dkt. 44, Shehigian/Ganfer Shore).
• 2022-09-16 – Magistrate Judge Shields recused; the cases were reassigned (briefly to M.J. Tiscione in Slingshot I, then to Magistrate Judge Lee G. Dunst, who handled both).

3. Claim construction (Markman)

Never reached. The parties' schedule set exchange of disputed terms for April 2023, simultaneous opening/answering/reply claim-construction briefs for June–July 2023, and a hearing "[TBD]" (Joint Discovery Plan, June 30, 2022). The December 1, 2022 stay froze that schedule before any Markman activity. Claim-construction disputes were instead litigated at the PTAB (e.g., Slingshot's proposed narrowing of "conduit" in the '523 IPR, and the "thick film layer" dispute on the '951 patent, which the Board declined to construe).

4. Discovery milestones with strategic significance

Discovery never went past the opening phase:

• 2022-08-05 – Rule 26(a)(1) initial disclosures.
• 2022-08-18 – Slingshot's LPR 6 Disclosure of Asserted Claims and Preliminary Infringement Contentions (accused Maxify, Pixma and imagePROGRAF printers, cartridges, and PF-10/LQ-series printheads).
• 2022-08-26 – joint proposed protective order; extended scheduling negotiations (Dkt. 35, 36).
• 2022-10-07 – Phase I documents exchanged (patents, file histories, assignments, prior HP litigation pleadings by Slingshot; accused-product design specs by Canon); Canon's preliminary invalidity contentions due 2022-10-17.
• The schedule contemplated fact discovery closing 2024-01-12 and expert discovery 2024-07-02 — none of which occurred because of the stay.

5. Trial events

None. No trial, verdict, JMOL, new-trial or fee motion was reached; there are no reported claim-construction or dispositive opinions in the district court.

6. Final disposition / present posture

• The case remained stayed. The docket reflects termination around late 2024 (consistent with the PTAB invalidating the asserted claims of all four Slingshot I patents in 2024). Flag/unverified: I was unable to retrieve the specific termination entry (e.g., a stipulation/order of dismissal) or its exact date; treat "late 2024 termination and its precise mechanism" as unconfirmed.
• No district-court appeal on the merits appears; the appellate activity is entirely from the PTAB proceedings (below).

7. Parallel PTAB proceedings and their effect

Canon (with parent Canon Inc. as co-petitioner; Morgan, Lewis & Bockius) filed IPR petitions on every asserted claim in both cases. Slingshot's PTAB counsel was Fitch, Even, Tabin & Flannery (Borsos, Henkelmann, Maloney).

Oral hearings: '523 argued 2024-01-24 before APJs Kokoski, Baer and Hamann (Canon expert Stephen F. Pond; Slingshot expert Steven J. Dietl; Canon's '951/'629 expert Charles M. Curley). The Board's '523 FWD invalidated every asserted claim, which is what effectively mooted the district-court action.

Appeals (Federal Circuit):

• Slingshot's appeal of IPR2022-01416 ('523), No. 24-2132 — AFFIRMED 2026-05-07 by Rule 36 judgment (per curiam: Moore, C.J., Stoll and Stark, JJ.); briefing panel included MoloLamken (Ghayoumi, Hashem) for Slingshot and Morgan Lewis (Goldenberg et al.) for Canon. A Rule 36 affirmance creates no precedential opinion.
• Slingshot's appeal of IPR2022-01541 ('951), No. 24-2127 (notice of appeal 2024-07-22) — nonprecedential Federal Circuit opinion rejecting Slingshot's arguments on the refusal to construe "thick film layer," no teaching away by Imanaka, and reasonable expectation of success (date not confirmed in my search).
• Slingshot II appeals, No. 25-1033 ('823/'708/'864) — argued on the use of the patent as an obviousness "roadmap," hindsight, and teaching away by Yabe; Law360 reported on 2026-07-16 that the Federal Circuit affirmed the PTAB's invalidation of all challenged claims in the three chips/temperature-sensor patents (both opinions designated nonprecedential).

Net effect: the IPRs were dispositive. The PTAB cancelled all challenged claims of the Slingshot I patents (except where institution was denied), the district court stayed rather than tried the case, and the Federal Circuit affirmed the invalidation on appeal — leaving Slingshot with no live infringement claims in this docket by late 2024 and no district-court judgment on infringement, damages, or fees.

8. Items I could not verify

• The exact E.D.N.Y. termination entry/date in 2:22-cv-00123 (metadata says "late 2024").
• Which patent IPR2022-01415 covered (institution denied) and the FWD date/result in IPR2022-01414 ('341).
• The decision date of No. 24-2127 ('951 appeal).
• Whether any live litigation between these parties continues in the Slingshot II docket (22-cv-01852) following the 2026-07-16 affirmance.

I'll research the counsel of record for Slingshot Printing LLC in this case.

Counsel of Record — Plaintiff Slingshot Printing LLC

Posture note: The district court case was stayed Dec. 1, 2022 (Dkt. 52) and PACER Monitor shows the E.D.N.Y. case as terminated 12/31/2024, but a residual motion to withdraw as attorney was filed and granted in 2025 (Dkt. 62, granted 5/6/2025). The active litigation after mid-2024 moved to the Federal Circuit (appeals 24-2127, 24-2132, and 2025-1033/1034 from IPR2022-01414, -01416, and related IPRs). I've therefore separated district-court counsel of record from the appellate team, because the two rosters overlap but are not identical.

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A. District court (E.D.N.Y. 2:22-cv-00123) — counsel of record for Slingshot

The two-firm structure is the classic E.D.N.Y. pattern: Hecht Partners (New York) as local/lead counsel of record and Fitch Even (Chicago) as patent-litigation counsel admitted pro hac vice. The docket sheets describe the two firms as co-counsel. The joint filing to Judge Shields is signed s/Mark A. Borsos and states "We are counsel to plaintiff Slingshot Printing LLC" (Ex. 1024 in IPR2022-01541).

Source for the appearance roster: PACER Monitor docket for 2:22-cv-00123 and the UniCourt docket sheet for Slingshot Printing LLC v. Canon U.S.A., Inc. et al. (noting Dkts. 17–20 = notices of appearance by Borsos, Gosse, Thompson, and Maloney).

No in-house counsel of record. Slingshot is a Delaware LLC with a Columbia, Maryland address that "is in the business of licensing patented technology" (Canon's Answer, E.D.N.Y. 2:22-cv-00123 Dkt. 23 ¶ 2). No Slingshot employee-attorney appears on the docket; enforcement is entirely outsourced.

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B. Federal Circuit counsel (appellate phase, same litigation)

The appeal from the Board's decisions in the Canon IPRs was handled by a MoloLamken LLP team plus Fitch Even:

• Rayiner Hashem — MoloLamken LLP, Washington, DC — argued for Slingshot in both the 24-2127 and 24-2132 appeals (Fed. Cir. 24-2132 Rule 36 judgment; Justia, 24-1956 opinion). He is a former Federal Circuit and Supreme Court clerk known for high-stakes patent appeals.
• Kayvon Ghayoumi — MoloLamken (Washington, DC / New York).
• Catherine Martinez — MoloLamken, New York, NY.
• Pratik Kumar Raj Ghosh — MoloLamken, New York, NY — entered appearance 3/18/2025 (CourtListener Dkt. 17).
• Jonathan E. Barbee — then MoloLamken, New York, NY — entered appearance 10/25/2024; withdrew 5/5/2025 (Fed. Cir. notice of withdrawal and E.D.N.Y. Dkt. 62, granted 5/6/2025). He is a former WilmerHale counsel with SDNY and Third Circuit clerkships (US News profile; Cortex Tech podcast).
• Mark A. Borsos and Paul B. Henkelmann — Fitch Even, Chicago — carried the Fitch Even connection from the district court into the appeal (CourtListener 24-2127 Dkt. 2 and 12).

Caveat on the appellate roster: MoloLamken's appearance in the district court is not clearly documented in the sources I could access. Barbee's 2025 withdrawal motion was filed under the E.D.N.Y. docket (Dkt. 62) and the PACER Monitor docket attributes it to Slingshot, which suggests MoloLamken may have entered an appearance in the stayed district case at some point; the specific notice-of-appearance entry is not in the sources retrieved. Treat MoloLamken as the confirmed appellate team and as having at most a residual district-court role.

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C. Contradictions / gaps to flag

1. Judge assignment. The case summary/meta says nothing about the judge; sources disagree across snapshots — UniCourt lists Joan M. Azrack/Anne Y. Shields for 2:22-cv-00123 while PACER Monitor lists Nusrat J. Choudhury with Lee G. Dunst referred. The stay order was entered by Mag. J. Lee G. Dunst, and the later E.D.N.Y. papers style the case "2:22-cv-00123 (HG) (LGD)" — i.e., Judge Hector Gonzalez presiding with Dunst referred. The UniCourt "Azrack/Shields" and PACER Monitor "Choudhury" fields appear to be stale/incorrect. The 2:22-cv-00123 caption itself has been inconsistently reported as "Slingshot Printing LLC v. Canon U.S.A." and "v. Canon USA Inc."
2. Termination date. Meta says "termination around late 2024"; PACER Monitor gives 12/31/2024, but the docket was still accepting filings in May 2025 (Dkt. 62), consistent with a case administratively closed pending the appeals rather than a merits disposition. This section takes no position on the ultimate disposition (prior section already covers the IPR/appeal outcomes).
3. Herrmann — his pro hac vice admission is documented in the related Slingshot II docket (2:22-cv-01852), not confirmed in 2:22-cv-00123.
4. I found no LAW360/Reuters-derived counsel list in the accessible results; the roster above is built from PACER Monitor, UniCourt, Docket Alarm docket sheets, the parties' own filings (Dkt. 1, Dkt. 23, Dkt. 27, joint discovery letter), and Federal Circuit filings. Nothing here is sealed — all appearances are public.

I'll research the counsel of record for the Canon defendants in this case. Let me run several searches in parallel.

I have substantial material. Let me verify the specific appearance entries in the Slingshot I docket (2:22-cv-00123) and check the remaining names.

Counsel of Record — Defendants Canon U.S.A., Inc. & Canon Solutions America, Inc.

Bottom line: Canon is represented by a two-firm team — Morgan, Lewis & Bockius LLP as lead (appearing pro hac vice) and Ganfer Shore Leeds & Zauderer LLP of New York as local/co-counsel of record. The same Morgan Lewis team also served as Canon's IPR petitioners' counsel for the four patents asserted in this case, and Shehigian's own letters describe his firm as "co-counsel," confirming a split lead/local structure.

Named attorneys

Important caveats / sourcing limits

• The docket snapshot I could retrieve (UniCourt, updated through Feb. 2023) lists only Grant A. Shehigian as "Defendant and Counter Claimant Attorney" in 2:22-cv-00123. I could not independently confirm a Morgan Lewis Notice of Appearance filed in 2:22-cv-00123 itself. The Williamson/Gettleman pro hac vice entries appear on the docket of the coordinated sister case, 2:22-cv-01852 ("Slingshot II"), which has identical defendants and the same co-counsel arrangement. Given the cases were jointly briefed, jointly stayed, and jointly captioned in Shehigian's letters, the same Morgan Lewis team almost certainly appeared in Slingshot I — but treat the Slingshot I appearance entries for Williamson/Gettleman as inferred, not directly verified. PACER's docket sheet (or the CourtListener docket for 2:22-cv-00123) should be checked to confirm.
• No Canon in-house attorney was identified on the district-court docket. If an in-house or additional firm appeared later than the Feb. 2023 snapshot (e.g., before the case terminated in 2024), I did not find it.
• William Peterson filed a "Notice of Withdrawal as Counsel for Appellees Canon Inc. and Canon U.S.A., Inc." on the Federal Circuit docket (24-2127, Doc. [1099267]). I could not verify his firm or his connection to the district case; he does not appear in any district-court or PTAB material I located, so I do not list him as district counsel.
• Canon Inc. (the Japanese parent) is a party in the IPRs and the Federal Circuit appeals but is not a defendant in 2:22-cv-00123; only Canon U.S.A. and Canon Solutions America are.
• One metadata wrinkle worth flagging: the district docket originated with Judge Joan M. Azrack / Mag. J. Anne Y. Shields, then moved to Judge Hector Gonzalez / Mag. J. Lee G. Dunst, and PACER Monitor now shows Judge Nusrat J. Choudhury / Mag. J. Dunst — consistent with the case being reassigned and terminated (PACER Monitor lists Terminated: 2024), matching the "termination around late 2024" in the prior section.

Key source documents

• 2:22-cv-00123 docket entries ECF Nos. 22 (Shehigian Notice of Appearance), 23 (Answer & Counterclaim), 24 (Corporate Disclosure Statement), 47 & 52 (stay motion and order) — via UniCourt and Docket Alarm.
• E.D.N.Y. Civil Docket for 2:22-cv-01852-HG-LGD (same defendants, listing Williamson as "LEAD ATTORNEY PRO HAC VICE," Shehigian, and Gettleman as "PRO HAC VICE") — Docket Alarm exhibit PDF.
• Shehigian letters dated Sept. 14, 2022 (Slingshot II Dkt. 32) and Jan. 25, 2023 (Slingshot II Dkt. 44): "My firm is co-counsel for defendants Canon U.S.A., Inc. and Canon Solutions America, Inc."
• PTAB IPR2022-01416 / 2022-01541 / 2023-00312 / 2023-00313 papers naming Bregman, Williamson, Gettleman, Kritsas (CanonSlingshotIPRs@morganlewis.com).
• Fed. Cir. Nos. 24-2127, 24-2132, 25-1033 opinions listing Goldemberg, Doukas, Williamson, Gettleman, Morishita for Canon; Morgan Lewis press note (July 21, 2026) confirming those partners represented Canon.