Slingshot Printing LLC v. Canon U.s.a., Inc., Canon Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SLINGSHOT PRINTING LLC,
Appellant
v.
CANON U.S.A., INC., CANON INC.,
Appellees
______________________
2024-2127
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01541.
______________________
Decided: July 21, 2026
______________________
RAYINER H ASHEM , MoloLamken LLP, Washington, DC,
argued for appellant. Also represented by K AYVON
G HAYOUMI; CATHERINE MARTINEZ, P RATIK K UMAR RAJ
G HOSH , New York, NY; MARK BORSOS , P AUL HENKELMANN,
Fitch, Even, Tabin & Flannery LLP, Chicago, IL.
J ULIE S. G OLDEMBERG, Morgan, Lewis & Bockius LLP,
Philadelphia, PA, argued for appellees. Also represented
by MARIA D OUKAS , A MANDA SCOTT W ILLIAMSON, Chicago,
Case: 24-2127 Document: 43 Page: 1 Filed: 07/21/2026

-- 1 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 2
IL; J ASON EVAN G ETTLEMAN, Palo Alto, CA; J ITSURO
MORISHITA, Tokyo, Japan.
______________________
Before P ROST , SCHALL , and STOLL , Circuit Judges.
SCHALL , Circuit Judge.
Slingshot Printing LLC (“Slingshot”) appeals from the
May 20, 2024 final written decision of the Patent Trial and
Appeal Board (“Board”) determining that claims 1–7, 9, 10,
20–22, and 24 of Slingshot’s U.S. Patent No. 7,152,951
(“the ’951 patent” or “the patent”) are unpatentable. Canon
U.S.A., Inc. v. Slingshot Printing LLC, No. IPR2022-01541,
2024 WL 2278719 (P.T.A.B. May 20, 2024), J.A. 1–50. For
the reasons set forth below, we affirm.
BACKGROUND
The ’951 patent is directed to a “high resolution print-
head for an ink jet printer.” ’951 patent, Abstract. The
patent explains that increasing the number of nozzles de-
positing ink droplets from an ink jet printhead improves
print quality. See id. col. 1 ll. 14–25. According to the pa-
tent, a printhead’s nozzles have corresponding ink cham-
bers that must be spaced so that there is sufficient chamber
wall structure between them. See id. col. 1 ll. 26–41. The
’951 patent describes forming the ink chambers and the ink
channels that feed the chambers in a “thick film layer” po-
sitioned between a printhead’s silicon substrate and the
printhead’s nozzle plate. Id. col. 1 l. 65–col. 2 l. 8. The
thick film layer can be formed using photolithography,
which produces chamber walls that are less angled than
other methods. Id. col. 1 ll. 34–41, col. 3 ll. 42–49, col. 5 ll.
12–62, Figs. 4, 7. Therefore, the ink chambers, and, in
turn, their corresponding nozzles, can be spaced closer to-
gether and a printhead’s “nozzle to nozzle spacing” or
“pitch” can be decreased to thereby improve print quality.
Id. col. 1 l. 65–col. 2 l. 14, col. 2 ll. 25–29, col. 5 ll. 34–50.
Case: 24-2127 Document: 43 Page: 2 Filed: 07/21/2026

-- 2 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 3
Claim 1 of the ’951 patent, which is representative of
the claims at issue, recites:
1. A printhead for an ink jet printer, the print-
head comprising:
a semiconductor substrate containing at least one
ink feed edge and a plurality of ink ejection actua-
tors spaced a distance from the ink feed edge, each
of the ink ejection actuators having an aspect ratio
ranging from about 1.5:1 to about 6:1;
a thick film layer attached to the semiconductor
substrate, the thick film layer having formed
therein a plurality of ink feed chambers and ink
feed channels corresponding to the plurality of ink
ejection actuators; and
a nozzle plate attached to the thick film layer, the
nozzle plate containing a plurality of nozzle holes
in the nozzle plate corresponding to the plurality of
ink feed chambers,
wherein adjacent ones of the nozzle holes are
spaced apart with a pitch ranging from about 600
to about 2400 dpi and wherein the distance from
the ink feed edge is substantially the same for each
of the ink ejection actuators.
Id. col. 6 l. 51–col. 7 l. 3.
Canon U.S.A., Inc. and Canon, Inc. (collectively,
“Canon”) filed a petition for inter partes review of claims
1–7, 9, 10, 20–22, and 24 of the ’951 patent. J.A. 2. The
petition relied upon three references pertinent to this ap-
peal: Japanese Patent Application Publication No. H09-
131869 (“Hamafuku”), J.A. 1008–22; U.S. Patent No.
6,213,587 (“Whitman”), J.A. 940–70; and U.S. Patent No.
6,299,293 (“Imanaka”), J.A. 1023–40. The Board instituted
review and held a hearing. J.A. 2.
Case: 24-2127 Document: 43 Page: 3 Filed: 07/21/2026

-- 3 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 4
Before the Board, the parties disputed the meaning of
the term “thick film layer,” which appears in each of the
challenged claims. Canon requested that the term be given
its plain and ordinary meaning and contended that a “thick
film layer” need not be made of any particular material,
whereas Slingshot argued that the term means “a polymer
layer, usually a photoresist material, applied on top of the
thin film layers of metal and other components on a semi-
conductor chip.” J.A. 10–11. In the final written decision,
the Board concluded that it did not need to construe the
term “thick film layer” to perform its analysis. J.A. 11.
Noting that Slingshot did not argue to the contrary, the
Board then agreed with Canon that Hamafuku, or alterna-
tively, Hamafuku in combination with Whitman, discloses
claim 1’s “thick film layer having formed therein a plurality
of ink feed chambers and ink feed channels corresponding
to the plurality of ink ejection actuators.” J.A. 33–34. The
Board determined that, although Hamafuku, or the combi-
nation of Hamafuku and Whitman, did not teach the high-
density nozzle pitch claimed in the challenged claims, it
would have been obvious to a skilled artisan to modify
Hamafuku’s printhead to include high-density nozzle
pitch, as taught by Imanaka. J.A. 35–44. In reaching this
conclusion, the Board credited the testimony of Canon’s ex-
pert, Mr. Curley, that one of ordinary skill in the art would
have sought to use Imanaka’s nozzle pitch in Hamafuku’s
(or Hamafuku’s in combination with Whitman’s) device in
order to provide a more compact and higher density print-
head, and would have had a reasonable expectation of suc-
cess in doing so. Id. at 42–44 (citing J.A. 738–39 (¶¶ 404–
05), J.A. 741 (¶ 409)). The Board rejected Slingshot’s argu-
ment against the combination, stating that Imanaka’s
“preference for silicon-based materials” does not “teach
away from, or otherwise discourage,” a skilled artisan from
combining Imanaka with Hamafuku and Whitman. J.A.
41.
Case: 24-2127 Document: 43 Page: 4 Filed: 07/21/2026

-- 4 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 5
The Board ultimately found claims 1–4, 6, 7, 9, 10, 20–
22, and 24 to be obvious in view of the combination of
Hamafuku, Imanaka, and Whitman, and claim 5 to be ob-
vious in view of the combination of these references in ad-
dition to U.S. Patent No. 6,491,377 (“Cleland”). J.A. 47–48.
Slingshot timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
I
Slingshot makes three main arguments on appeal.
First, Slingshot argues that the Board erred when it de-
clined to construe the term “thick film layer,” despite the
parties’ dispute about the term’s scope. Appellant’s Br. 29–
32 (citing O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008)). According to
Slingshot, given the high expected operating pressures in
the ink chambers and ink channels, a proper understand-
ing of “thick film layer” as being a “polymer layer” was es-
sential to the Board’s analysis of whether a skilled artisan
would have incorporated Imanaka’s teachings into Hama-
fuku and Whitman. Id. at 31–35 & n.2. Specifically, Sling-
shot asserts that Imanaka’s high-density ink-chamber
geometry could only be used with silicon thin film or other
rigid thin films, and a skilled artisan would not have incor-
porated this geometry into thick film materials, which are
relatively soft. Id.; see also id. at 39.
Second, Slingshot argues that the Board erred when it
determined that Imanaka does not “teach away from” the
claims. Appellant’s Br. 37–44. Imanaka discloses that its
structures are formed in a “silicon-containing material”
such as “silicon nitride” or “silicon oxide” “thin film,” J.A.
1035 col. 5 ll. 55–60, col. 6 ll. 50–61, and states that only
certain materials have “suitable mechanical strength” for
forming ink chamber walls in its design, e.g., “diamond
film,” see J.A. 1037 col. 9 ll. 43–63. Slingshot asserts that
Case: 24-2127 Document: 43 Page: 5 Filed: 07/21/2026

-- 5 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 6
these teachings of Imanaka would have “deterred” skilled
artisans from constructing ink chambers using the spacing
of Imanaka in a thick film layer. Appellant’s Br. 41.
Third, Slingshot argues that a skilled artisan would
not have reasonably expected success in combining
Imanaka, Hamafuku and Whitman to achieve the specific
claimed invention. Id. at 44–49 (citing Teva Pharms. USA,
Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1381 (Fed.
Cir. 2021)). On this point, Slingshot takes issue with the
Board’s reliance on the testimony of Mr. Curley. Id. at 46–
47. According to Slingshot, Mr. Curley did not provide tes-
timony on whether a skilled artisan would have expected
success in taking Imanaka’s structures and forming them
in the softer thick film layers of Hamafuku and Whitman.
Id. Slingshot also contends that the Board improperly re-
lied on the ’951 patent as evidence of a reasonable expecta-
tion of success. Id. at 49. In making this argument, it
points to the Board’s statement that “the printhead of the
’951 patent has a higher nozzle pitch than Imanaka,” when
considering whether thick film layers would have sufficient
mechanical strength. J.A. 44.
We address Slingshot’s arguments in turn.
II
Claim construction is a question of law that may in-
volve underlying factual inquiries. See Teva Pharms. USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015). Obviousness
is a question of law based on subsidiary findings of fact,
including whether a skilled artisan would have been moti-
vated to modify or combine teachings in the prior art, and
whether a skilled artisan would have had a reasonable ex-
pectation of success in doing so. In re Stepan Co., 868 F.3d
1342, 1345–46 (Fed. Cir. 2017). We review the Board’s le-
gal conclusions de novo and its factual findings for substan-
tial evidence. Id.
Case: 24-2127 Document: 43 Page: 6 Filed: 07/21/2026

-- 6 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 7
A
To begin, we see no error in the Board’s decision not to
construe “thick film layer.” As the Board noted, it needs
only to construe terms “that are in controversy, and only to
the extent necessary to resolve the controversy.” J.A. 11
(quoting Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
(Fed. Cir. 2019)). Here, there was no controversy involving
“thick film layer” because, as the Board later noted, Sling-
shot “d[id] not contest” that Hamafuku, or Hamafuku in
combination with Whitman, discloses a “thick film layer”
as recited in the claims. J.A. 33–35; Oral Arg. at 1:10–23
https://www.cafc.uscourts.gov/oral-arguments/24-2127_05
042026.mp3 (“Hamafuku and Whitman taught a thick film
layer, we don’t dispute that.”).
Although presented as a claim construction argument,
Slingshot’s argument about the meaning of “thick film
layer” in reality challenges the Board’s factual findings
that a skilled artisan would have been motivated to com-
bine Imanaka’s high-density ink-chamber geometry into
the thick film layers of Hamafuku and Whitman and would
have had a reasonable expectation of success in doing so.
See Appellant’s Br. 32 (“Given the high expected operating
pressures in the ink chambers and channels, skilled arti-
sans would not have taken the dimensions of Imanaka’s
specialized all silicon pressure chambers and reproduced
that high-density geometry in soft, thick film materials.”)
(internal quotation marks and citation omitted). We ac-
cordingly address this argument in Section II.C below.
B
We turn next to Slingshot’s argument that Imanaka
teaches away from the claims. As Canon points out, de-
spite the Board’s use of the phrase “teach away from” in the
final written decision, Slingshot did not argue to the Board
that Imanaka in fact teaches away from the combination.
Appellee’s Br. 28. Instead, Slingshot generally challenged
the motivation to combine Imanaka with Hamafuku and
Case: 24-2127 Document: 43 Page: 7 Filed: 07/21/2026

-- 7 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 8
Whitman. See J.A. 310–11, J.A. 376–77; Oral arg. at
27:20–25, 40–55 (counsel for Slingshot conceding that it did
not make a “teaching away” argument separate from its
motivation to combine argument before the Board). While
these two issues may be similar and related, they are in-
deed separate. In re Fulton, 391 F.3d 1195, 1199–200 (Fed.
Cir. 2004) (“What the prior art teaches, whether it teaches
away from the claimed invention, and whether it motivates
a combination of teachings from different references are
questions of fact.”); see Polaris Indus., Inc. v. Arctic Cat,
Inc., 882 F.3d 1056, 1069–70 (Fed. Cir. 2018) (explaining
that a reference’s statement of a preference may be rele-
vant to motivation to combine even if it does not rise to the
level of a teaching away). We therefore decline to sepa-
rately address whether Imanaka teaches away from the
combination. See In re Google Tech. Holdings LLC, 980
F.3d 858, 863 (Fed. Cir. 2020) (explaining that an argu-
ment not presented to the tribunal under review is forfeited
absent exceptional circumstances).
C
To the extent Slingshot challenges motivation to com-
bine through its claim construction argument, and to the
extent Slingshot’s argument that Imanaka teaches away is
pertinent to the Board’s general finding of motivation to
combine, we note that substantial evidence supports this
finding by the Board. That evidence is Mr. Curley’s testi-
mony and the references themselves. J.A. 42 (“[W]e credit
the testimony of Mr. Curley that one of ordinary skill in the
art would have sought to use Imanaka’s heater and nozzle
pitch in Hamafuku in order to provide a more compact and
higher density printhead.”) (citing J.A. 738–39 (¶¶ 404–
05)); see also J.A. 42–43 (“Mr. Curley credibly testifies that
all of the components described in Hamafuku, Imanaka,
and Whitman ‘were well known at the time’ and ‘it would
have been straightforward for a [skilled artisan] to modify
Hamafuku’s printhead to include Imanaka and Whitman’s
Case: 24-2127 Document: 43 Page: 8 Filed: 07/21/2026

-- 8 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 9
structures and dimensions.’”) (quoting J.A. 741–42
(¶ 409)).
Similarly, the Board’s finding that a skilled artisan
would have had a reasonable expectation of success in com-
bining the prior art references is also supported by sub-
stantial evidence. The Board considered Slingshot’s
argument and expert testimony that Imanaka could only
use silicon-based or other thin-film materials to achieve its
nozzle pitch. J.A. 43–44 (citing J.A. 1602–03 (¶¶ 91–92)).
The Board noted, however, that the claims of the ’951 pa-
tent “do not require the printhead to operate in any partic-
ular manner or achieve any particular operational
parameters.” J.A. 42. The Board credited both Imanaka’s
own teachings that any film with suitable mechanical
strength and heat resistance could be used and Dr. Curley’s
testimony that the combined system of Hamafuku, Whit-
man, and Imanaka “would work.” J.A. 42–44 (“Mr. Curley
credibly testifies that all of the components described in
Hamafuku, Imanaka, and Whitman ‘were well known at
the time’ and ‘it would have been straightforward for a
[skilled artisan] to modify Hamafuku’s printhead to in-
clude Imanaka and Whitman’s structures and dimen-
sions.’”) (quoting J.A. 741–42 (¶ 409)).
We note that Mr. Curley explained that Whitman
teaches that its film “preferably comprises photo-developa-
ble polymer,” IPR2022-01541 (Ex. 1002) pp. 158–59 (¶ 299)
(quoting J.A. 963 col. 6 ll. 23–27), and that Mr. Curley ex-
pressly testified that it would be “straightforward” for a
skilled artisan to combine Hamafuku, Whitman, and
Imanaka and that the combination would work. J.A. 741–
42 (¶ 409). We thus are not persuaded by Slingshot’s argu-
ment that Mr. Curley did not provide testimony on whether
a skilled artisan would have expected success in taking
Imanaka’s structures and forming them in the softer thick
film layers of Hamafuku and Whitman. As for Slingshot’s
contention that the Board erroneously relied on the ’951
patent as evidence of a reasonable expectation of success,
Case: 24-2127 Document: 43 Page: 9 Filed: 07/21/2026

-- 9 of 10 --

SLINGSHOT PRINTING LLC v. CANON U. S. A., INC. 10
we agree that any such reliance would be improper. See
Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th
155 (Fed. Cir. 2021) (“[T]he inventor’s own path itself never
leads to a conclusion of obviousness; that is hindsight.”). In
context, however, any error by the Board was harmless.
The Board’s statement merely provided additional support
in connection with its discussion of Imanaka’s own teach-
ings that “any film with suitable mechanical strength and
heat resistance could be used.” J.A. 44.
CONCLUSION
We have considered Slingshot’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the Board’s determination that claims 1–7, 9, 10,
20–22, and 24 of the ’951 patent are unpatentable.1
AFFIRMED
1 We note that Slingshot does not separately chal-
lenge the Board’s findings with respect to claim 5 or Cle-
land.
Case: 24-2127 Document: 43 Page: 10 Filed: 07/21/2026

-- 10 of 10 --