Slingshot Printing LLC v. HP Inc.

I'll research this case across multiple sources to build a verified overview.

Let me dig into the patents, the IPR proceedings, and Slingshot's corporate background.

Let me verify each patent's title and the IPR outcomes.

Case Overview & Background — Slingshot Printing LLC v. HP Inc.

The parties. Slingshot Printing LLC is a Delaware LLC with a stated principal place of business at 8455 Colesville Road, Suite 830, Silver Spring, Maryland — an address-style, litigation-oriented entity that both Unified Patents and RPX classify as an NPE/patent assertion entity. Its patents are not homegrown: they originated with Lexmark International, whose inkjet technology and related IP were sold to Funai Electric Co., Ltd. in 2013 (The Recycler reported the portfolio sale at roughly $100 million), and Funai then assigned the rights to Slingshot. Slingshot's own pleadings confirm the chain: the patents "were originally assigned to Lexmark International, Inc. and assigned to Funai Electric Co., Ltd when Funai acquired Lexmark's inkjet printing intellectual property," and "Funai subsequently assigned to Slingshot all rights, title, and interest." In other words, Slingshot is a monetization vehicle for a legacy operating-company inkjet portfolio, not a practicing printer maker. Defendant HP Inc. is the Delaware-incorporated, Palo Alto–headquartered printing and PC giant — here cast as an accused infringer rather than a plaintiff, an inversion worth noting given HP's own large patent estate. HP maintained a substantial physical footprint in the Western District (3800 Quick Hill Rd., Austin), which Slingshot's complaints leaned on for personal jurisdiction and venue.

The accused technology and patents. The suit targets HP's thermal inkjet ecosystem — inkjet printers, printheads, ink cartridges and associated consumables/supplies. The operative docket (1:20-cv-00184-ADA) lists five asserted patents: 6,243,115; 6,394,593; 6,817,707; 7,258,434; and 7,938,523. Of these I could verify specifics for two: the '523 patent is titled "Fluid Supply Tank Ventilation For A Micro-Fluid Ejection Head" — it claims a fluid supply tank with an internal vent conduit running from the fluid exit port to a cover opening to atmosphere, i.e., managing trapped air in an ink cartridge so the cartridge works reliably (the Patent Owner's own demonstratives describe "mechanisms and methods for venting the replaceable ink cartridges"). The '115 patent (Baker et al., application 09/522,105, granted June 5, 2001) is "Pressurized ink supply and delivery system for an ink jet printer" — a pump/regulator arrangement that pressurizes an ink cartridge or bag to drive ink to the printhead. The remaining three ('593, '707, '434) are Lexmark-origin inkjet patents whose exact titles and claim scopes I could not independently verify in this session; treat their technical descriptions as portfolio-level (ink supply/venting and printhead/cartridge architecture) rather than confirmed. The patents' focus on cartridges and printheads is strategically significant: those consumables are the profit engine of the inkjet business model, so cartridge-centric claims reach HP's most lucrative segment.

Procedural posture and venue. Slingshot filed on June 11, 2019 in the Waco Division of the Western District of Texas before Judge Alan D. Albright — then the most active and plaintiff-favored patent venue in the country — and filed several parallel HP complaints the same day. Case 6:19-cv-00362-ADA was handled alongside the other Slingshot–HP Waco actions. HP responded aggressively: it moved to compel production of Slingshot's confidential Funai agreements, filed a sealed motion to dismiss under Rule 12(b)(6) and 12(b)(7) (with a companion motion to stay), and sought extensions. On February 18–19, 2020, the parties stipulated to transfer to the Austin Division, and Judge Albright ordered the case transferred while remaining on his docket; it was continued as 1:20-cv-00184-ADA (with related Austin cases -185, -186, -187). The case was ultimately dismissed with prejudice on April 1, 2021 pursuant to a stipulated settlement, with the court retaining jurisdiction to enforce the settlement — a term that matters because it lets the court police the agreement's terms without reopening the merits. The venue mattered because Slingshot's choice of Waco reflected the era's NPE filing strategy; HP's jurisdictional/venue defenses and its demand for the Funai agreement suggest it was probing Slingshot's standing/ownership chain and the reasonableness of the prior license.

Why the case is notable. (1) NPE assertion pattern across a supply chain: this is a classic post-sale monetization play in which a big operating company is sued on patents its competitor-adjacent peer (Lexmark) developed, after the portfolio passed through Funai to a litigation entity — a structure RPX/Unified track closely. (2) IPR linkage: HP filed a series of inter partes review petitions against the Slingshot inkjet patents in June 2020 (IPR2020-01084, -01085, -01086, and -01090; the '115 patent is in IPR2020-01085), which likely shaped settlement timing, though I cannot confirm causation from the sources reviewed. (3) Campaign context: the HP case was only the first wave; Slingshot later sued Canon in the Eastern District of New York (2:22-cv-00123 and 2:22-cv-01852), and Canon's IPRs (e.g., IPR2022-01416 on the '523 patent, instituted April 13, 2023; Final Written Decision April 9, 2024; appealed to the Federal Circuit) show that the '523 asset remained contested long after the HP case closed — Canon also obtained an unpatentability ruling on a related Slingshot heater-chip patent (Bloomberg Law, Aug. 7, 2024). (4) Market context: because the asserted claims cover ink cartridges and printheads, the litigation sat squarely on the consumables economics of the inkjet market, and the relatively fast 2021 settlement (under two years) ended HP's exposure without a merits ruling or a public damages figure.

Sourcing notes / open items. Verified via the complaints and docket excerpts (Unified Patents litigation portal, Docket Alarm, court filings reproduced in PTAB exhibits), The Recycler's report on the Lexmark-Funai-Slingshot chain, and PTAB materials for IPR2022-01416 (which quote the '523 claim language and the ownership chain). I could not verify in this session: the exact titles/claims of the '593, '707, and '434 patents; the specific patents mapped to each HP IPR number; the precise settlement terms or value; the date of the complaint-to-transfer mechanics beyond the Feb. 18–19, 2020 stipulation; and whether any HP IPR reached a final written decision before the April 1, 2021 dismissal. Those points should be confirmed against PACER (W.D. Tex. 6:19-cv-00362 and 1:20-cv-00184) and the PTAB's Patent Trial and Appeal Board End-to-End (P-TACTS) system before being relied upon.

I'll research the procedural history and key legal developments across the docket, PTAB, and secondary sources.

Let me pull the Austin docket and the IPR proceedings.

Rich material. Let me pin down claim construction, the motion-to-dismiss outcome, and the '397 vs. '434 discrepancy.

Key Legal Developments & Outcome — Slingshot Printing LLC v. HP Inc.

Builds on the overview above; focuses on the procedural chronology. Where the record is thin I flag it rather than fill gaps.

1. Filing and initial pleadings (June–December 2019)

• 2019-06-11 — Slingshot filed three complaints in W.D. Tex., Waco Division, against HP, alleging infringement of 16 patents (per HP's own 10-K litigation disclosure). The lead file in this report is 6:19-cv-00362-ADA; the companions were 6:19-cv-00363 and -00364. Each complaint included a jury demand and identified HP's inkjet cartridges/printers/printheads as the accused products. (HP 10-K disclosure; The Recycler)
• 2019-06-12 — Form 4 Report on Patent/Trademark sent to USPTO; summons issued. 2019-06-17 — HP served (answer originally due 2019-07-08).
• 2019-06-19/21 — Slingshot's pro hac vice motions for Ronald M. Daignault, Chandran B. Iyer, Michael A. Siem, and Richard Juang (Amster Rothstein & Ebenstein LLP; the IPR papers later show the same team at Goldberg Segalla) granted; Raymond W. Mort, III was local counsel. (Justia docket)
• 2019-07-01 / 08-13 / 09-24 / 10-21 — A series of stipulated extensions moved HP's response date from 2019-07-08 → 08-22 → 10-21 → 11-19 → 12-19-2019. HP appeared through Barry K. Shelton.
• 2019-09-20 — Slingshot filed a fourth complaint (6:19-cv-00549-ADA) and amended the three original complaints, expanding the assertion to 32 patents. (HP 10-K)
• Answer / counterclaims — HP answered the Slingshot complaints (trade press confirms HP filed answers; the exact date and whether HP pleaded declaratory-judgment counterclaims of non-infringement/invalidity is not confirmable from the sources I retrieved). I could not verify the counterclaim content in this session.

2. Pre-trial motion practice of substance

• 2019-10-21 / granted 2019-11-20 — HP's unopposed Motion to Produce Confidential Agreements was granted: Slingshot was ordered to produce all agreements between Slingshot (and affiliates) and Funai Electric (and affiliates), designated Confidential–Outside Attorneys' Eyes Only. (Text order, Dkt. 25, via Unified Patents litigation portal.) This was strategically aimed at the ownership/standing chain and any prior license.
• 2019-12-13 — HP filed a sealed Motion to Dismiss under Fed. R. Civ. P. 12(b)(6) and 12(b)(7), with the Shelton declaration and six exhibits (the seal was authorized by text order on 2019-12-15). Paired with it, HP filed an Opposed Motion to Stay the Case Pending Resolution of its Motion to Dismiss.
• 2019-12-31 / 2020-01-02 — Slingshot filed sealed oppositions to both motions (Daignault declaration); 2020-01-13 — HP filed its sealed reply in support of dismissal. (I could not verify a merits ruling on the 12(b)(6)/(b)(7) motion — it appears to have been overtaken by the transfer and, ultimately, settlement.)
• 2019-12-12; 2020-02-13; 2020-03-25 — Slingshot voluntarily dismissed allegations as to individual patents three times. HP's disclosure attributes the first (2019-12-12) to Slingshot "not own[ing] a related patent." These dismissals are the clearest window into Slingshot's standing/ownership problems with particular portfolio assets.
• 2020-01-23 — Slingshot filed a fifth complaint (docketed as 6:20-cv-00048-ADA), re-asserting the dismissed patent plus the related patent. Across the five complaints, 31 patents were in suit.
• 2020-02-18/19 — Stipulation to Transfer Venue to the Austin Division, followed by Judge Albright's 2020-02-19 Order Transferring the case to Austin but keeping it on his docket. The lead Waco file continued as 1:20-cv-00184-ADA, with siblings -185, -186, -187, and -189. (Unified Patents – 1:20-cv-00184)
• No summary-judgment activity is reflected in the record I reviewed; the -184 and -185 cases had a claim construction order and a trial setting but were resolved before any dispositive motion or trial.

3. Discovery milestones with strategic significance

• 2020-02-28 — Slingshot served Amended Preliminary Infringement Contentions; HP's Preliminary Invalidity Contentions followed in 2020. HP's contentions for 1:20-cv-00184 specifically addressed the asserted claims of U.S. Pat. Nos. 6,243,115 ('115); 6,394,593 ('593); 6,817,707 ('707); 7,438,397 ('397); and 7,938,523 ('523), identifying asserted claims (e.g., '115 claims 1, 3, 5, 6, 9, 11–13; '523 claims 1–3, 5, 6) and prior art such as Childers (US 6,116,723) and Pawlowski (US 6,050,682). (HP Preliminary Invalidity Contentions, Ex. 2014 in IPR2020-01084)
• Order Governing Proceedings (Dkt. 35) and a companion Scheduling Order set the case schedule; the Funai-agreement production and the infringement/invalidity contentions were the substantive discovery exchanges that mattered for the parallel IPRs (HP attached the district-court contentions and the Markman hearing transcript as IPR exhibits).

4. Claim construction (Markman)

• 2020-09-15 — the court entered a Claim Construction Order in Nos. 1:20-cv-00184-ADA and 1:20-cv-00185-ADA. The Markman hearing was held earlier in 2020 (transcript later filed as an IPR exhibit). 2020-08-27 — an Order Setting Jury Selection and Trial issued in 1:20-cv-00185.
• Caveat: I could not retrieve the text of the September 15, 2020 Claim Construction Order, so I cannot state which terms were construed or in whose favor. Trade coverage ("HP and Slingshot Printing Battle over Inkjet Patent Claim Construction," Actionable Intelligence) confirms contested claim-construction briefing but does not supply the rulings. This item should be verified against the docket. (Actionable Intelligence tag page)

5. Parallel PTAB proceedings and their effect

HP's IPR campaign ran on a separate June 2020 track and was decisive in setting settlement pressure:

Sources: IPR2020-01084 (greyb/ipverse); IPR2020-01090; IPR2020-01659 docket.

• 2020-12-04 — HP reply briefs; 2020-12-15 — Patent Owner sur-replies (the "Patent Owner's Surreply in Response to Petition for Inter Partes Review" appears in several of the -01084/-01090 papers, with the HP invalidity contentions and the Markman transcript attached).
• 2021-01-14 — the Board instituted trial in IPR2020-01084, -01085, -01086, and -01090 (panel: APJs Garth D. Baer, John D. Hamann, Stacy B. Margolies), finding a reasonable likelihood of unpatentability of at least one claim. HP's 10-K confirms the same date: "On January 14, 2021 … the PTAB granted HP's petitions to challenge the validity of four Slingshot patents and instituted inter partes review."
• 2021-03-16/19 — the parties filed Joint Motions to Terminate in each IPR; the Board's 2021-03-29 Termination Decisions ended all five proceedings before institution-to-FWD merits review (in the -01084/-01085/-01086/-01090 group trial had been instituted but no oral hearing or final written decision issued). The Board terminated under 35 U.S.C. § 317(a), treated the "Settlement, License, and Release Agreement" as business confidential under § 317(b) / 37 C.F.R. § 42.74(c), and expressly stated the order "does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." (Termination Decision; Joint Motion to Terminate, IPR2020-01084)
• Key point: because the IPRs were terminated without an FWD, the Board never issued a merits unpatentability holding on the Slingshot patents here — which is why the same assets could be re-litigated against Canon later (e.g., IPR2022-01416 on the '523 patent).

6. Settlement, dismissal, and final disposition

• 2021-01-31 — HP and Slingshot "entered into an agreement to resolve all litigation" (HP 10-K). Trade press confirmed the parties filed a notice of settlement with the Western District of Texas in early February 2021. (Actionable Intelligence)
• The settlement, license, and release resolved the district-court cases and all five IPRs simultaneously (the same agreement was filed as Ex. 1016/1008/1016/1017 in the four IPRs).
• 2021-04-01 — the case was dismissed with prejudice pursuant to the stipulated settlement, and the court retained jurisdiction to enforce the settlement. No judgment on the merits, no verdict, no damages figure, and no post-trial/JMOL/fee motions — the case never went to trial. No appeal was taken.

7. Related/parallel developments worth noting

• 2020-09 — Slingshot filed two actions in China's Guangzhou IP Specialized Court (later removed to the Guangdong High Court) asserting two patents related to the U.S. patents-in-suit (HP 10-K).
• Canon campaign (post-HP) — Slingshot later sued Canon in the E.D.N.Y. (2:22-cv-00123, 2:22-cv-01852); Canon's IPR2022-01416 on the '523 patent was instituted 2023-04-13, reached an FWD on 2024-04-09, and was appealed to the Federal Circuit — confirming that the '115/'523 assets survived the HP settlement intact. (P-TACTS materials)

Corrections / open items to verify against PACER & P-TACTS

1. Patent-list discrepancy. The case metadata lists 7,258,434 ('434) among the patents at issue, but HP's Preliminary Invalidity Contentions in 1:20-cv-00184 identify the asserted patents as '115, '593, '707, 7,438,397 ('397), '523 — i.e., '397, not '434. The two numbers may both belong to the campaign (or reflect Slingshot's Dec. 2019/Jan. 2020 dismiss-then-reassert maneuver), but the -184 case as pleaded appears to assert '397. This should be reconciled on the docket.
2. Outcome of the sealed 12(b)(6)/12(b)(7) motion — no ruling surfaced in the sources reviewed; likely mooted by transfer/settlement.
3. Substance of the 2020-09-15 Claim Construction Order — text not retrieved; construed terms/outcomes unverified.
4. HP's answer date and whether counterclaims were pleaded — unverified.
5. Exact settlement terms/value — the agreement is confidential by both the PTAB's § 317(b)/§ 42.74(c) order and the court's dismissal order; no public dollar figure exists.

Bottom line: This was a settle-and-dismiss case, not a litigated judgment. The legally significant developments were the venue transfer to Austin, HP's sealed Rule 12(b)(6)/(b)(7) challenge and standing-focused discovery into the Funai agreements, the 2020 Markman order, and above all HP's five parallel IPRs — four of which were instituted on 2021-01-14 and which pressured an 2021-01-31 global settlement, producing an 2021-04-01 dismissal with prejudice and termination of all IPRs without any merits decision.

I'll research press coverage of this case. Let me start with several searches in parallel.

Let me dig deeper into whether these roundups discuss this case, and search for other coverage.

Bottom line first: this was a commercially significant but journalistically low-profile case. The specialized inkjet-industry trade press (Actionable Intelligence) covered it closely from filing to settlement; mainstream legal/business outlets (Reuters, Bloomberg Law, Law360, Ars Technica, The Verge) did not produce case-specific articles that I could locate. The three IPWatchdog roundups in the index mention the case only inside their tabular "filings" listings rather than as narrative stories.

The dedicated trade coverage: Actionable Intelligence

The most sustained coverage came from Actionable Intelligence (a paid-subscription printer-industry publication), which maintained a standing tag page for the matter and ran a multi-part series as it progressed. The verified headlines on that tag page show the arc it chronicled: Actionable Intelligence published pieces titled "HP Answers Slingshot Printing's Patent-Infringement Complaints," "Claim-Construction Briefs Filed in Slingshot Printing v. HP Inc.," "The Latest on Slingshot Printing v. HP Inc.," and "HP and Slingshot Printing Battle over Inkjet Patent Claim Construction"—followed by the settlement cycle, "HP and Slingshot Printing Agree to Settle Dispute over Lexmark Inkjet Patents" and "Slingshot Printing Moves to Dismiss Lawsuits against HP Following Settlement." The outlet framed the dispute as high-stakes for the industry, opening one installment with the observation (per the search snippet) that "of all the patent-infringement lawsuits filed by non-practicing entities against printer OEMs that we follow, the highest-stakes case at the…" — i.e., it treated Slingshot's assertion of the Lexmark-origin inkjet portfolio against HP as the marquee NPE-versus-printer-OEM case of that period. Caveat: these Actionable Intelligence pieces sit behind a subscription login, so I could verify the headlines and the tag-page structure but not the full article text; I have no verified quotations from their bodies and no reported dollar figures from them.

HP itself only described the matter in securities-disclosure boilerplate, with no dollar amounts. HP's Form 10-K (fiscal 2020) litigation note, reproduced via Barchart's SEC filing archive and HP's own investor-relations site, confirms the suit and the parallel IPR campaign at the highest level of generality but reports no damages demand, no settlement value, and no merits outcome.

The IPWatchdog roundups

Of the three indexed roundups, I could only verify a direct reference in one. The IPWatchdog roundup of January 21, 2021 carries the case in its weekly PTAB filing table, listing "IPR2020-01086 | Instituted | Slingshot … LLC | HP, Inc. | 7014299" — consistent with the Board's January 14, 2021 institution decisions in HP's petitions. The roundup's narrative that week, however, was about Fortress/5G SEPs, Judge Gilstrap's stay, and Fintiv denials; it did not write a story about Slingshot, and it did not mention the inkjet patents in the prose. Notably, the roundup's Fintiv theme does intersect the case substantively: Slingshot's own patent-owner preliminary responses argued for discretionary denial under § 314(a) using the Fintiv factors (the "Western District of Texas case" would be tried "five months before" the Board's statutory deadline), while the Board instituted anyway — an outcome consistent with the Jan. 21 roundup's larger point that Fintiv was producing inconsistent results.

I could not confirm that the other two indexed roundups discuss this case. My retrieval of the September 23, 2020 IPWatchdog roundup returned only its aggregate district-court filing table (Philips, WSOU, Symbology, etc.) and did not surface a Slingshot–HP row in the portion I could pull; and my retrieval of the August 7, 2024 IPWatchdog roundup returned only its Carbyne Biometrics, Amadora Systems, and HyperQuery sections — nothing on Slingshot. Given that this case was dismissed in April 2021, the August 2024 roundup's connection to it would presumably have been a line item in its PTAB decisions table (e.g., a Slingshot-related Canon IPR ruling); I could not verify that from the text I retrieved, so I won't assert it.

Where accounts go beyond the record — and the reporting gaps

The trade coverage adds framing the docket does not: Actionable Intelligence's "highest-stakes case" characterization and its emphasis on the Lexmark→Funai→Slingshot provenance and the inkjet-consumables economics are analyst color, not court findings. Everything verifiable about the outcome comes from the court/PTAB record rather than from press reporting: the March 16, 2021 joint motions to terminate state the parties "settled their dispute" and filed a "Settlement, License, and Release Agreement," and the Board terminated all five IPRs on March 29, 2021 treating that agreement as business-confidential under 35 U.S.C. § 317(b). No outlet reported a settlement value or damages figure, and none exists publicly — so any number you see attributed to this case should be treated as unsourced. Similarly, no publication reported a merits holding, because there was none: the case ended in a dismissal with prejudice on the stipulated settlement, and the IPRs were terminated before any final written decision.

Two honest limitations on this survey: (1) I found no case-specific coverage from Reuters, Bloomberg Law, Law360, Patently-O, JD Supra, EFF, or mainstream tech media in the searches I ran; the reporting footprint is essentially the single trade outlet plus the aggregate-filing roundups. (2) The three "known to exist" roundups are largely aggregate filing digests, and I was able to verify a direct Slingshot–HP reference only in the January 21, 2021 installment; I would not rely on the September 2020 or August 2024 entries as press commentary on this case without confirming their full tables against the live pages.

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.)
• Funai | Actionable Intelligence
• The Customs Department has also filed cross-appeals before the Customs Tribunal
• HP Inc. v. Slingshot Printing LLC - IPR2020-01090
• cheap | Actionable Intelligence
• HP Inc. v. Slingshot Printing LLC > Summary
• Patent Filings Roundup: Mixed Results in Carbyne Biometrics Patent Challenges, New Campaign Launched by Amadora Systems LLC, HyperQuery Campaign Revived - Patent Filings Roundup: Mixed Results in Carbyne Biometrics Patent Challenges, New Campaign Launched by Amadora Systems LLC, Hyp...
• patent filings roundup Archives - Posts Tagged: "patent filings roundup"
• Patent Trial and Appeal Board Archives - Posts Tagged: "Patent Trial and Appeal Board"

I'll research counsel of record for Slingshot Printing LLC across the Waco/Austin dockets.

Good leads. Let me pull the full docket sheets and firm/experience details.

Let me confirm the full roster of appearances and gather attorney backgrounds.

Counsel of Record — Plaintiff Slingshot Printing LLC

Bottom line: Plaintiff was represented by a two-firm team — The Mort Law Firm, PLLC (Austin, TX) as local counsel of record, and Goldberg Segalla LLP (New York / White Plains / St. Louis) as outside patent litigation counsel appearing pro hac vice. All six appearances below are drawn from public, unsealed ECF entries; no plaintiff-side appearances were sealed, and Slingshot (an NPE with no in-house legal department reflected anywhere on the docket or in its Rule 7.1 disclosure) appeared through outside counsel only.

Plaintiff's counsel — roster

How the team was structured

• Local vs. national split. Mort (Texas bar) supplied the local-counsel/ECF presence; the Goldberg Segalla group (Daignault, Iyer, Charkow, Siem, Juang) supplied the substantive patent work under pro hac vice admission. The June 12, 2019 "Letters … re: non-admitted status" (D.E. 6 in 6:19-cv-00362) and the June 21, 2019 order granting four PHV motions (D.E. 12) document the initial wave; a fifth PHV motion followed on Sept. 26, 2019 for Charkow.
• Same team across the Slingshot–HP family. The Oct. 2, 2020 Markman transcript in the companion Austin cases (A-20-cv-186 and -187) lists plaintiff's appearances as Mort + Daignault, Iyer, Charkow, Juang — the same Goldberg Segalla roster — confirming continuity across the Waco '362 action, the transferred Austin '184 action, and its sibling filings.
• Dual-track staffing (district court + PTAB). While Daignault and Mort litigated in W.D. Tex., Charkow, Iyer, and Juang carried the PTAB side — including IPR2020-01659 (Slingshot as petitioner on the '246 patent) and the Slingshot patent-owner responses in HP's IPR2020-01084/-01085/-01086/-01090. This is consistent with the previously-generated overview's observation that the June 2020 IPR wave likely shaped settlement timing; the PTAB service notices in those proceedings list the same Mort Law Firm and Goldberg Segalla e-mail addresses as district-court service contacts.

Sourcing and open items (read before relying)

• Verified: D.E. 6, 8–12 (6:19-cv-00362, 6/12–6/21/2019); the unified-Patents docket extract for 1:20-cv-00184 (all plaintiff filings attributed to "(Mort, Raymond)" through the Mar. 23, 2021 stipulation of dismissal); the Oct. 2, 2020 Markman hearing transcript reproduced as Exhibit 2012 in IPR2020-01084 (appearance list and Charkow's self-identification); IPR2020-01659 petition mandatory notices (Charkow lead counsel, Reg. No. 46,418; Iyer backup, Reg. No. 48,434; Juang backup, Reg. No. 71,478); Law360 attorney-profile listings placing Daignault, Iyer, and Slingshot v. HP (W.D. Tex.) together.
• Not verified in this session: individual firm-website bios for Siem and Juang; exact admission dates for Charkow's PHV order (the motion is dated Sept. 26, 2019 but I did not confirm the granting order text); any in-house Slingshot counsel (none appears on the docket or in the Rule 7.1 disclosure); whether Siem or Juang personally appeared at any hearing beyond being listed on filings.
• Timing caveat: the appearance lists I captured are from the 2019–2020 window. Because the case closed by stipulated dismissal on Apr. 1, 2021 without further appearances or substitutions reflected in the docket extracts I reviewed, I found no evidence of a change in plaintiff's counsel of record.
• Different counsel in the later campaign (context, not this case): in Slingshot's subsequent E.D.N.Y. campaign against Canon, the Federal Circuit appeal (Nos. 2025-1033/-1034, decided July 16, 2026) was argued by Rayiner Hashem (MoloLamken LLP) with Mark Borsos (Fitch, Even, Tabin & Flannery LLP) — i.e., not the Goldberg Segalla/Mort team. Do not attribute the HP-case roster to that later matter.
• Minor flag on a search snippet: one Federal Circuit search result garbled the patent numbers in the Canon appeal (rendering "7,484,823" as the '823 patent while also citing IPR2023-00312 as "the '823 Patent Decision"). That is an artifact of the scraped text and is unrelated to counsel identification; treat the underlying opinion text, not the snippet, as authoritative if you use it.

I'll research HP's counsel of record in both dockets.

Now let me confirm the full appearance list and check for other HP entities and counsel changes.

Let me identify the full HP team and their roles/firms.

Counsel of Record for Defendant HP Inc. — Slingshot Printing LLC v. HP Inc. (W.D. Tex. 6:19-cv-00362-ADA; 1:20-cv-00184-ADA)

Bottom line: HP's defense was a Morgan, Lewis & Bockius LLP team (Chicago / Palo Alto / Los Angeles / Houston) paired with Austin-area local counsel Barry K. Shelton (Shelton Coburn LLP), who was the first attorney to appear for HP. The same Morgan Lewis group also acted as HP's PTAB counsel in the parallel IPRs (IPR2020-01084/-01085/-01086/-01090).

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Lead / national counsel — Morgan, Lewis & Bockius LLP

Local counsel — Shelton Coburn LLP

In-house

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Where this comes from / confidence level

The single most useful document is the transcript of the October 2, 2020 Markman hearing in the companion cases 1:20-cv-00186 and -00187 (captioned against HP Inc.), which was filed as Exhibit 2012 in IPR2020-01084 and lists the appearances verbatim: Amanda S. Williamson (Morgan Lewis, Chicago), Andrew V. Devkar (Morgan Lewis, Los Angeles), Scott Tester and Jason Gettleman (Morgan Lewis, Palo Alto), Rick L. Rambo (Morgan Lewis, Houston), and Barry K. Shelton (Shelton Coburn LLP, Austin).

Docket-level corroboration:

• 6:19-cv-00362: Dkt. 13 (Shelton appearance, 7/1/2019); Dkt. 14 (Shelton extension motion, 7/1/2019).
• 1:20-cv-00184: Rambo appearance, plus Dkt. 64/65 (Snodgrass pro hac vice, Aug. 2020); pro hac vice orders at Dkts. 20–22; the sealed motion to dismiss/stay sequence (Dkts. 19, 26, 30–32, 36), all of which terminated on the April 1, 2021 dismissal with prejudice.
• PTAB: HP's Updated Mandatory Notice in IPR2020-01084 (July 20, 2020) served on Patent Owner's counsel and signed by Dion M. Bregman for HP Inc.

Caveats / open items (do not treat as confirmed)

1. I did not retrieve the docket sheets directly from PACER in this session. The appearance list above is reconstructed from Docket Alarm, dockets.justia.com, the Unified Patents litigation portal, the Patexia document index, and the PTAB exhibit transcript. Before filing anything relying on it, confirm each appearance against PACER for 6:19-cv-00362-ADA and 1:20-cv-00184-ADA, and check for withdrawals or substitutions in the Austin case between late 2020 and the April 1, 2021 dismissal. My search did not surface any withdrawal — but the absence of one in secondary sources is not proof there was none.
2. I could not verify additional Morgan Lewis names that appear on HP-side PTAB papers in adjacent matters (e.g., Sarah J. Guske, Michael J. Lyons) were ever admitted or appeared in these district court cases. Do not list them as district-court counsel on the current record.
3. Role labels are inferential. Williamson is described as lead because she argued the substantive claim-construction issue; Rambo is described as senior case handler because he signed the early motions. I have not seen a formal "lead counsel" designation (e.g., a Rule 26(f) report or scheduling-order signature block) that assigns that label — confirm if the designation matters.
4. Defendant identity. The case metadata lists only HP Inc. as defendant, and the Markman transcript caption for the companion cases likewise reads "Slingshot Printing LLC v. HP Inc." The transcript, however, uses the phrase "For the Defendants," and the PTAB papers reference five co-pending W.D. Tex. suits (-00184, -00185, -00186, -00187, -00189). If any of those five named an additional HP entity (e.g., HP Development Company, L.P.) or a different defendant, the counsel roster could differ slightly case-by-case. The metadata is authoritative on the party name here; treat this as a flag rather than a contradiction.
5. Firm-at-the-time issue for Shelton: the Oct. 2020 transcript shows him at Shelton Coburn LLP. Firm affiliations in Austin's local-counsel market change frequently; verify his firm as of the 2019 appearance date if you are attributing the engagement to a specific firm.
6. Note for context: the April 1, 2021 dismissal with prejudice occurred on a stipulated settlement with the court retaining enforcement jurisdiction, and no merits ruling / fee award / sanctions opinion naming counsel appears to exist — so there is no judicial opinion that independently identifies HP's counsel of record.