Background
Slingshot Printing LLC appealed a final written decision by the Patent Trial and Appeal Board, which determined that claims one through five and eight of United States Patent Number seven million one hundred ninety-five thousand three hundred forty-one were unpatentable. The patent relates to semiconductor substrates for micro-fluid ejection devices used in ink-jet printers. Canon U.S.A., Inc. and Canon Inc. had filed a petition for inter partes review, arguing the claims were obvious over two prior patents, Torgerson and Bruce.
The court’s reasoning
The court reviewed the Board’s legal conclusion of obviousness de novo and its factual findings for substantial evidence. Regarding the connection between logic circuits and power transistors, the court found the Board’s reliance on expert testimony and patent language was supported by substantial evidence. On the motivation to combine prior art, the court distinguished the case from Virtek Vision International, noting that the record here included evidence of finite predictable solutions and design needs. Finally, the court determined the Board’s path to its conclusion on the remaining limitations was reasonably discernible, satisfying administrative procedure requirements.
We thus conclude the Board’s motivation-to-combine finding is supported by substantial evidence.
SLINGSHOT PRINTING LLC v. CANON U.S.A., INC
What it means going forward
The affirmation maintains the Patent Trial and Appeal Board’s ruling that the challenged patent claims are invalid, effectively removing the patent protection for the specified semiconductor substrate technology.
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