Why Samsung's design infringement defence will fail: Reason number four - The prior art isn’t there
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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 ros bottom lb

More from across our site

A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
The suggested rule change surrounding terminal disclaimers could ease the burden on defendants, but risks complicating prosecution strategies
Gift this article