Why Samsung's design infringement defence will fail: Reason number four - The prior art isn’t there

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Why Samsung's design infringement defence will fail: Reason number four - The prior art isn’t there

One way Samsung can close the gap in its design non-infringement defence would be to introduce into evidence a prior art reference that is closer in appearance to its accused Galaxy 10.1 Tab than the appearance of the Galaxy 10.1 Tab is to Apple's patent D’889

Return to previous page

Fiddler Tablet

Egyptian Goddess, Inc v Swisa, Inc [Fed Cir 2008]). To date, however, the public record does not appear to contain any such prior art gems.

Further, keep in mind that the Federal Circuit already shut down Samsung’s entire opening parade of prior art tablets, including the 1994 Fiddler Tablet (left) and the Hewlett-Packard Compaq Tablet TC1000 (below, right), which were the centerpiece of Samsung’s defence during the preliminary injunction stage. Specifically, the Federal Circuit held that all the submitted prior art tablets were so different in appearance from the D‘889 patent that to rely on any of them for either the defence of anticipation or obviousness constituted legal error. In other words, these references were not even in the ballpark. Thus, unless newly relied upon prior art is much closer in appearance to the D‘889 than those references already rejected, the Federal Circuit sits poised to reverse any prior art invalidity findings that Samsung might secure at trial.

Hewlett-Packard Compaq Tablet TC1000

Making matters worse, the chances that Samsung will pull a prior art rabbit from its hat are slimmer now that large swaths of the 595 prior art references that it intended on relying upon for its non-infringement and invalidity cases recently have been excluded from the case in a pre-trial evidentiary ruling by Magistrate Judge Grewal. According to Grewal and Koh, the prior art references (and related theories of invalidity and non-infringement) have been excluded because Samsung failed to timely disclose them prior to the close of fact discovery. Indeed, the two prior art references that Samsung relied upon in its Motion for Summary Judgment of Invalidity for the D’889, namely, US D500,037 and Apple’s Brain Box (left), which were presumably Samsung’s best prior art references, were both excluded.

Apple Brain Box

In denying Samsung’s Motion for Summary Judgment of Invalidity for the D’889, patent, Koh stated that she need not consider these two references on summary judgment given that they “will not be admissible at trial”. Seeing that the Samsung Galaxy 10.1 Tab is closer to the D’889 than either of these two references, (two references which presumably were Samsung’s closest two prior art references out of the 595 references proffered), at this late stage in the case, it appears unlikely that Samsung will unearth, and successfully have admitted into evidence, any game-changing prior art references.


The takeaway>>

more from across site and SHARED ros bottom lb

More from across our site

The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
A boom in transactional work and a heightened awareness of IP have helped boost revenue for the rebranded commercial services team
Clemens Heusch, head of global litigation and dispute resolution at Nokia, tells us why open conversations – and respectful challenges – lead to the best results
Siegmund Gutman, who joined Mintz one year ago, explains the firm’s approach to life sciences litigation and what it means for hiring plans
The merger of two IP boutiques could prompt others to follow suit and challenge Australia’s externally funded firms
Law firm leaders say they are eager to make the most out of the market following a 'surprising' survey on in-house interest in IP monetisation
A defeat for AstraZeneca and Open Innovation Network's 20th anniversary were also among the top talking points this week
Gift this article