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

News of Avanci hiring a senior vice president and the EPO teaming up with a French AI startup were also among the top talking points
Explosm, the independent Texas studio behind the hit webcomic Cyanide & Happiness, partnered with Temu’s IP protection team to combat counterfeiters infringing on its brand
The latest in a dispute over juicing machines, and a shakeup in judicial compositions were also among the top developments
Patent partner Robert Hollingshead explains why the firm remains committed to Japan despite several US firms exiting the Japanese and greater Asia market
Emma Green, partner at Bird & Bird, shares why the Iceland v Iceland dispute could prompt businesses and lawyers to think differently about brand enforcement
Attain IP, developed by two UK patent lawyers, will meet ‘forensic’ needs of patent attorneys by showing a verifiable reasoning chain, according to its co-founders
The High Court of Australia has allowed a fashion designer to retain her registered ‘Katie Perry’ trademark for clothing
Sim & San secured the win for Dr. Reddy’s, which will allow the pharma company to manufacture and export semaglutide, the active ingredient in Ozempic
Lucas Amodio joins our ‘Five minutes with’ series to discuss artificial intelligence systems and patent law
The Americas research cycle has commenced, so don't miss the opportunity to submit your work
Gift this article