Slingshot Printing v. Canon: Inkjet Patent Case Stayed Pending 6 IPRs
Slingshot Printing LLC filed suit against Canon Inc. and Canon Solutions America in the Eastern District of New York, asserting four patents covering inkjet cartridge and printhead technology against over 100 Canon products. After 754 days, Judge Nusrat Choudhury administratively closed the case pending resolution of six concurrent IPR proceedings — a high-stakes validity gauntlet that will likely determine whether district court litigation resumes.
High-volume inkjet IP dispute parked at the IPR crossroads
Slingshot Printing LLC filed this infringement action on 7 January 2022 in the Eastern District of New York against Canon Inc. and its U.S. subsidiary Canon Solutions America, Inc. The complaint asserts four U.S. patents — US7938523B2, US7559629B2, US7152951B2, and US7195341B2 — all directed at inkjet printing technology covering cartridge design, printhead systems, and related components. The accused product range is exceptionally broad, spanning ink cartridges such as the CL-211XL and PG-245XL series, the Pixma and Maxify consumer and business printer lines, large-format PRO and TM series devices, and Canon printheads.
On 31 January 2024 — 754 days after filing — Judge Nusrat J. Choudhury ordered the case administratively closed, not dismissed. The order directs both parties to file a joint status report and request to reopen within 30 days of a final written decision on any of the six pending IPRs: IPR2022-01414, IPR2022-01416, IPR2022-01541, IPR2023-00309, IPR2023-00313, and IPR2023-00312. Administrative closure is a procedural tool that suspends active docketing without terminating the case — it preserves Slingshot’s right to resume litigation once the PTAB proceedings conclude.
The clustering of six IPR petitions — filed across 2022 and 2023, suggesting Canon mounted a sustained validity challenge — is consistent with an aggressive inter partes review strategy aimed at invalidating asserted claims before any district court trial. The breadth of the accused product list, combined with the volume of IPRs, suggests both parties anticipate protracted proceedings. Whether the case reopens will depend substantially on the PTAB’s claim-by-claim findings; partial institution or mixed outcomes across the six IPRs could produce a narrowed but live dispute. The precise licensing history and damages theory advanced by Slingshot remain undisclosed on the public docket.
Filing to settlement in 754 days
754 days from filing to administrative closure — above average for stayed patent cases
What administrative closure pending IPR means for both parties
Administrative closure is not a dismissal
An administrative closure removes the case from the active docket but does not terminate it. Unlike a dismissal with or without prejudice, Slingshot’s claims remain intact. The court retains jurisdiction and the case can be fully reinstated. This mechanism is commonly used when parallel USPTO proceedings — here, six IPRs — are expected to materially narrow or resolve the patent validity questions underlying the district court suit.
Case preserved, not terminatedSix IPRs signal Canon’s sustained invalidity push
Canon filed six inter partes review petitions targeting the four asserted patents — IPR2022-01414, IPR2022-01416, IPR2022-01541, IPR2023-00309, IPR2023-00313, and IPR2023-00312. Filing multiple IPRs against a single patent or across a patent family is a recognised strategy to maximise the likelihood of claim cancellation. If PTAB cancels or narrows the asserted claims, Canon can return to district court with materially reduced exposure.
PTAB validity challenge100+ accused products across consumer and commercial lines
The accused product list spans over 100 SKUs — from consumer ink cartridges (CL and PG series) and Pixma home printers to Maxify business MFPs, large-format PRO and TM series, and Canon printheads. This breadth suggests Slingshot is asserting foundational claims broad enough to read on multiple product generations, which increases potential damages exposure but also invites broader IPR scrutiny.
Broad product family exposure30-day clock starts on each final PTAB decision
Judge Choudhury’s order requires the parties to file a joint status report and request to reopen within 30 days of any final IPR decision. With six proceedings pending, the reopening timeline is uncertain — PTAB decisions on a multi-IPR portfolio can stagger over months or years. If some IPRs conclude favourably for Slingshot, parties may seek early reinstatement on surviving claims while others remain pending.
Conditional reinstatement pathwayFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Slingshot Printing, LLC | Company | Inkjet technology IP licensing entity — holder of US7938523B2 and 3 related patentsSearch in Eureka ↗ |
| Defendant | Canon, Inc. | Company | Canon Inc. and subsidiary Canon Solutions America — global imaging and printing OEMSearch in Eureka ↗ |
| Plaintiff counsel | Brian Herrmann | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | David Gosse | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | David Lawrence Hecht | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jacqueline L. Thompson | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Mark Borsos | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Maxim Price | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Timothy P. Maloney | Attorney | Counsel for Slingshot Printing, LLCSearch in Eureka ↗ |
| Defendant counsel | Amanda S. Williamson | Attorney | Counsel for Canon, Inc.Search in Eureka ↗ |
| Defendant counsel | Grant Alan Shehigian | Attorney | Counsel for Canon, Inc.Search in Eureka ↗ |
| Defendant counsel | Jason Evan Gettleman | Attorney | Counsel for Canon, Inc.Search in Eureka ↗ |
| Defendant counsel | Jitsuro Morishita | Attorney | Counsel for Canon, Inc.Search in Eureka ↗ |
| Presiding judge | Judge / | Chief Judge | New York Eastern District Court — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The order is procedural rather than substantive — it does not adjudicate infringement, validity, or damages. Judge Choudhury’s direction to close the case ‘pending the results of the inter partes review proceedings’ confirms that the court views PTAB as the appropriate forum to resolve patent validity first. The explicit 30-day joint-status-report mechanism preserves both parties’ district court rights and avoids any implication of voluntary dismissal, keeping Slingshot’s full damages claim alive contingent on IPR outcomes.
US7938523B2 and 3 further patents — inkjet cartridge & printhead systems
The four asserted patents — US7938523B2, US7559629B2, US7152951B2, and US7195341B2 — originate from application numbers filed across the mid-2000s (applications 11/762101, 11/238559, 10/775874, and 10/956939 respectively), placing their priority dates in the core era of consumer inkjet cartridge development. Collectively, they appear to cover structural and functional aspects of inkjet ink delivery, cartridge architecture, and printhead interface technology — the foundational IP layer that underpins both OEM and compatible cartridge markets.
Patents claiming foundational inkjet cartridge and printhead technology carry outsized strategic value because they can read across entire product generations and third-party compatible cartridge ecosystems. Assertion against Canon’s full CL, PG, CLI, and PRO series — plus the Pixma and Maxify printer lines — suggests the claims are framed at a level of abstraction that captures systemic design choices rather than model-specific features. For inkjet OEMs, component manufacturers, and aftermarket cartridge suppliers, the PTAB outcomes on these four patents will set the validity baseline for any future licensing or enforcement actions in this space.
Should you run an FTO against US7938523B2 and the Slingshot inkjet portfolio?
Any company designing, manufacturing, or distributing inkjet ink cartridges, printheads, or printers with detachable cartridge systems should treat the four Slingshot patents as active FTO risks — regardless of this case’s current stayed status. The accused product breadth here (100+ SKUs spanning consumer and large-format lines) suggests claims written to cover broad cartridge-printer interface conventions. Compatible cartridge manufacturers and printer OEMs entering new product generations are particularly exposed.
PatSnap Eureka’s FTO Search Agent can map the independent and dependent claims of US7938523B2, US7559629B2, US7152951B2, and US7195341B2 against your product specifications, flagging design-around opportunities and claim elements in dispute at PTAB. With six IPR proceedings in play, Eureka’s claim status monitoring will alert your team the moment PTAB issues a final written decision — ensuring your FTO analysis reflects the most current claim scope before any product launch or licensing negotiation.
Run a freedom-to-operate analysis on US7938523B2 to assess your product’s exposure
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What this case signals for the inkjet printing IP landscape
A four-patent, six-IPR standoff involving Canon’s entire consumer and commercial printer portfolio has broad implications for inkjet IP enforcement.
IPR-first defence is now standard against broad inkjet patent portfolios
Canon’s six-IPR response to four asserted patents signals that large OEMs will routinely exhaust PTAB validity challenges before engaging on damages or claim scope in district court. Companies facing similar assertions — especially those with broad, multi-generation product lines — should anticipate parallel PTAB proceedings as the first line of defence rather than an exceptional tactic.
Administrative stays shift cost leverage toward well-resourced defendants
When district courts administratively close cases pending IPR, smaller patent assertion entities face a prolonged delay before any damages adjudication. This stay pattern — increasingly common in E.D.N.Y. and other circuits — effectively rewards defendants who can sustain multi-year PTAB campaigns, potentially pressuring plaintiffs toward settlement before IPR outcomes are known.
Slingshot v Canon — key questions answered
As of 31 January 2024, the case is administratively closed by order of Judge Nusrat J. Choudhury in the Eastern District of New York. It is not dismissed — it is stayed pending final written decisions on six inter partes review proceedings (IPR2022-01414, IPR2022-01416, IPR2022-01541, IPR2023-00309, IPR2023-00313, IPR2023-00312). The parties must file a joint status report within 30 days of each final IPR decision.
Slingshot asserted four U.S. patents: US7938523B2, US7559629B2, US7152951B2, and US7195341B2. All four relate to inkjet cartridge and printhead technology, with underlying applications filed in the mid-2000s. Canon filed six IPR petitions challenging validity across this patent portfolio.
Administrative closure preserves Slingshot’s claims in full. Unlike a dismissal with or without prejudice, the case can be reinstated upon a joint request within 30 days of any final PTAB decision. The court retains jurisdiction and no substantive ruling on infringement, validity, or damages has been made.
Filing multiple IPR petitions against an asserted patent family is a standard OEM defence strategy. Multiple petitions allow the petitioner to challenge different claims, cite different prior art, or attack the same claims from multiple angles. With four patents asserted covering a broad product portfolio, Canon’s six-IPR campaign suggests a systematic effort to invalidate as many claims as possible before any district court trial on damages.
The accused product list includes over 100 Canon SKUs: the CL and PG consumer ink cartridge series (CL-211XL through CL-261XL; PG-210 through PG-260), the full Pixma and Maxify printer lines (consumer MFPs and business-grade), large-format PRO and TM series printers, and Canon printheads. The breadth of accused products spans consumer, SOHO, and commercial printing segments.
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