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

Slingshot Printing LLC v. Canon U.S.A., Inc. The Federal Circuit affirmed the Board's finding that claims 1–5 and 8 of the '341 patent are unpatentable as obvious over Torgerson and Bruce, holding that the Board's findings on the polysilicon conductor limitation, motivation to combine, and remaining claim limitations were each supported by substantial evidence and satisfied APA explanation requirements. Confirms that a Board obviousness decision survives APA scrutiny even where the written decision incorporates portions of the petition by reference with citations, so long as the Board's reasoning path is reasonably discernible—and distinguishes Virtek by emphasizing that finite-solutions and design-need evidence can supply the motivation-to-combine showing Virtek found lacking. Affirmed Polysilicon conductor limitation: The Board credited Canon's expert that a skilled artisan would understand Torgerson's polysilicon gate fingers necessarily extend to its logic circuits; the Federal Circuit found substantial evidence supported that reading and rejected Slingshot's argument that Canon improperly recharacterized the Board's decision or relied on an undisclosed inherency theory. Motivation to combine: Both Torgerson and Bruce are in the same field (inkjet printhead semiconductor substrates); the Board credited evidence of design needs (substrate size reduction), market pressures, and a finite number of known, predictable solutions—distinguishing Virtek, where the record lacked any such evidence. APA adequacy: The Board's decision on remaining limitations satisfied the APA because it identified the arguments and evidence reviewed, cited the relevant petition sections, and stated its conclusion; the Federal Circuit found the reasoning path reasonably discernible under Bowman Transport. Standard of review: Obviousness legal conclusion reviewed de novo; underlying factual findings—including prior-art teachings and motivation to combine—reviewed for substantial evidence. Nonprecedential: The opinion should not be cited as binding authority, though its application of Virtek and the APA-adequacy analysis is instructive for IPR practitioners. § 103 claim construction non-precedential remand § 103 claim construction non-precedential § 103 non-precedential