Opinions — Thursday, July 16, 2026

The Federal Circuit affirmed the PTAB's final written decisions finding all challenged claims of Slingshot Printing LLC's U.S. Patent Nos. 7,484,823 and 7,594,708 unpatentable as obvious over Benjamin in view of Giere673. The patents concern temperature sensors that monitor and regulate temperature on a per-thermal-region basis in inkjet printers, with the claims requiring temperature sensing elements "substantially centrally disposed" within regions between heater arrays.

The court's analysis is instructive on several fronts. On hindsight reconstruction, the court held that the Board permissibly relied on the patent's background section for admissions about the state of the art, and rejected Slingshot's attack on individual references when the obviousness determination rested on a combination. The court also found Slingshot waived its teaching-away argument by failing to raise it against the Benjamin-Giere673 combination before the Board, though it alternatively held that Yabe's statement that sensor placement "make[s] it unnecessary" to place sensors centrally did not rise to the level of teaching away. On motivation to combine, the court deferred to the Board's finding that improved temperature measurement accuracy would outweigh cost concerns, illustrating substantial evidence review of the Board's weighing of competing considerations.

The Federal Circuit affirmed the PTAB's final written decision finding claims 1–6 and 8–20 of Slingshot Printing LLC's U.S. Patent No. 7,290,864 unpatentable as obvious. The patent relates to heater chips for printheads with reduced bondpads. The central disputes concerned claim construction of the limitation "physically separated proximal to the bondpad" in dependent claims 3 and 9, and whether substantial evidence supported the Board's obviousness findings based on combinations of prior art references.

The court's claim construction analysis turned on identifying the proper reference point for measuring proximity under the claim language. Reviewing de novo, the panel held that proximity is measured along the power trace relative to the bondpad itself, rejecting Slingshot's argument that the comparison should be made to other structures like the heater arrays where the claim language did not require it. On substantial evidence review, the court also rejected Slingshot's challenge to the Board's reliance on patent figures to support its factual findings, clarifying that visual examination of general relative distances among depicted components does not improperly extract precise proportions or particular sizes from drawings not to scale, distinguishing the Board's approach from the prohibited reliance on figures identified in Nystrom v. TREX Co.

The Federal Circuit affirmed in part and vacated in part the Court of Federal Claims' award of approximately $12.7 million to 4DD Holdings, LLC and T4 Data Group, LLC for the government's infringement of their copyrighted TETRA® software under 28 U.S.C. § 1498(b). The central holding addressed whether the trial court erred by calculating damages through a hypothetical negotiation framework rather than applying per-core and per-seat rates established in the parties' licensing agreement or SEWP contract listing. The court held that no rule of law compels automatic adoption of licensing agreement rates when calculating copyright infringement damages, particularly where material differences exist between the licensed use and the infringing activity. Relying on Gaylord III and Bitmanagement Software, the court concluded that licensing agreements must be evaluated for their economic relevance to the infringement at issue, and where the trial court determines the licensed usage does not parallel the infringing use, a hypothetical negotiation is the proper damages methodology. However, the court vacated in part, finding that the trial court committed legal error in its application of the book of wisdom doctrine by considering the government's later cancellation of TETRA before successful implementation, and by imposing non-compensatory damages against the government.

This decision clarifies that prior licensing agreements between infringement parties, even covering the identical copyrighted work, do not automatically establish the royalty rate for calculating reasonable compensation under § 1498(b). The holding resolves tension between copyright owners' expectations that negotiated license terms will govern subsequent infringement damages and courts' obligation to assess damages based on the fair market value of the actual infringing use. The court's reasoning explicitly rejects any categorical rule requiring deference to contractual pricing, instead mandating a fact-specific inquiry into whether the license contemplates use analogous to the infringement—a determination subject to abuse of discretion review. The partial vacatur on book of wisdom grounds reinforces limits on considering post-negotiation events that would artificially depress damages by incorporating developments unknown and unknowable to hypothetical parties negotiating at the infringement's outset. For practitioners, the decision underscores that aggressive licensing terms cannot guarantee corresponding infringement recoveries and that damages methodology selection turns on factual alignment between licensed and infringing conduct rather than the mere existence of a prior agreement.