Why Samsung's design infringement defence will fail: The takeaway
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

Why Samsung's design infringement defence will fail: The takeaway

In view of all the odds stacked against it, there can be little question that Samsung has an uphill battle with respect to its non-infringement case on its tablets, largely due to some crucial pre-trial rulings

Return to previous page

Christopher Carani, McAndrews Held & Malloy

Whether dealing with utility patents or design patents, this case serves as a reminder that pre-trial rulings can often be case determinative, or at least shine some light on where the case is headed. In design patent cases, because the ultimate question boils down to the degree of similarity between the patented design and the accused design, two pieces of information that remain the same whether at the beginning or end of a case, a court’s infringement finding on motions for preliminary injunction (albeit preliminary) can have a lasting effect – even potentially providing the foundation for a directed verdict. Here, Koh has made strong pronouncements regarding Samsung’s tablet infringement; it is hard to see how she can back away from those conclusions.

Samsung’s main lifeline would be to unearth and introduce close prior art designs. But here, due to an apparent failure to abide by discovery deadlines, the court is preventing Samsung from relying upon many of its best prior art references at the trial. Thus, this case also serves as a stark reminder of the drastic consequences that can arise when a party fails to meet discovery deadlines.

Christopher Carani is a shareholder at McAndrews Held & Malloy in Chicago.

more from across site and ros bottom lb

More from across our site

An intimate understanding of a client’s sector is essential to winning new business, a survey of over 28,000 corporate counsel reveals
Counsel say a Federal Circuit ruling on the obviousness test for design patents may increase the time IP owners spend defending their rights
While the INTA Annual Meeting is over for another year, here are a few things Managing IP learned after attending IP’s biggest party
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Four sources reveal which tools they have been using – or building – to help them with a range of tasks from invention generation to claim sufficiency
Managing IP reveals Wednesday's highlights, including a discussion on how AI is helping lawyers improve their "gut instinct" trademark decisions
Managing IP reveals Tuesday’s highlights, including an illuminating discussion celebrating women in the workplace and the challenges that remain
Dana Northcott, INTA’s 2024 president and associate general counsel for Amazon's IP team, talks about her work for the association
Managing IP reveals highlights from the INTA Annual Meeting, including law firms’ diversity and ESG concerns and a new beginning for a Chinese firm
Firms with a broad geographic reach are more likely to win work, especially from global companies with high turnovers, according to survey data of nearly 29,000 corporate counsel
Gift this article