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, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

Patrade has turned to experienced IP practitioner and business development leader Anders Isaksson to strengthen its commercial strategy and expand its reach to clients across Scandinavia
Cassie Hill, partner at Mishcon de Reya, discusses rebuilding client relationships after maternity leave and the pressures facing women at a pivotal stage of their career
Matthew Asbell discusses why empathy is important in law, being inspired by diverse workplaces and working on the latest, greatest large language model
The new partners add patent trial depth in high-value technology sectors including semiconductors, software, and cloud computing
From seller vetting and proprietary screening technology to brand collaboration and industry partnerships, Temu explains how its intellectual property enforcement programme combats infringement on its marketplace
A handful of US firms have quietly invested in European patent talent. Recent moves by Baker Botts and K&L Gates suggest that trend may be accelerating
Loke Khoon Tan and Stephanie Yip at Dentons explain what brand owners need to know ahead of January 1 2027, when updates to China’s Trade Mark Law come into force
New US bills signal that firms should work with clients to ensure they are complying with potential regulatory requirements
Octavio Espejo of Becerril, Coca & Becerril explains how sweeping patent reforms reshape filing strategies, prosecution, and divisional application practice
The UK Supreme Court’s decision in Tesla v Avanci enhances the UK's attractiveness for global FRAND battles, say lawyers at Simmons & Simmons
Gift this article