Slingshot Printing LLC v. Canon U.S.A., Inc. — PTAB Obviousness Ruling Affirmed

Background

Canon challenged claims of Slingshot’s inkjet-printhead patent in inter partes review. The PTAB found the claims obvious based on combined prior-art teachings concerning printhead structures, films, and dimensions.

The Court’s Holding

The Federal Circuit affirmed. Substantial evidence supported both the motivation to combine the references and a reasonable expectation that the proposed combination would work. Although relying on the inventor’s own disclosure to prove obviousness would be improper hindsight, any such reliance here was harmless because the prior art and expert testimony independently supported the Board’s findings.

Key Takeaways

A petitioner can establish reasonable expectation of success with prior-art teachings and credited expert testimony even when the patent owner argues the materials would not work together. An agency’s stray hindsight reference may be harmless when the remainder of the record supplies substantial evidence.

Why It Matters

The decision illustrates the deferential substantial-evidence review applied to PTAB factual findings and the importance of building the motivation-and-success case from the prior art itself.