Tiffany & Co. Wins Challenge to Gem Inscription Patent

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By Peter Leung

April 14 — Tiffany & Co. convinced the Patent & Trademark Office to invalidate a patent on inscribing gemstones with lasers.

Both of the challenged claims in Lazare Kaplan International Inc.'s patent were obvious in light of the prior art, the Patent Trial and Appeal Board said April 13 in a final written decision.

Tiffany filed an inter partes review petition attacking U.S. Patent No. 6,476,351. The patent is related to making very small inscriptions on the surface of gemstones with a laser.

Jewellers, including Tiffany, inscribe information about the quality and authenticity of a diamond onto the stone itself. These inscriptions are microscopic and can't be seen without magnification.

Tiffany argued during the IPR proceeding that the two patent claims are obvious in light of three pieces of prior art. A person of ordinary skill would be able to arrive at the invention after referencing the prior art, it said.

The board agreed. It said that LKI in its response did not challenge any of Tiffany's interpretations of the patent claim limitations, except for one. This left a largely undisputed record for the board, which ruled in Tiffany's favor on the unchallenged issues.

On a dispute over interpreting the “controlling” limitation in the patent, the board sided with Tiffany, finding the patented invention invalid for obviousness.

Anticipating a Challenge?

LKI is suing Photoscribe Technologies Inc. for infringement of the same patent claims, though Tiffany is not a defendant in that case.

That litigation, in the U.S. District Court for the Southern District of New York, was stayed pending the PTAB decision and any possible appeals.

Photoscribe, in marketing materials, touts itself as the “world’s largest manufacturer of diamond laser inscription equipment” (Lazare Kaplan Int'l Inc. v. Photoscribe Techs. Inc., S.D.N.Y., 1:06-cv-04005).

Lawyers for LKI and Tiffany and Co. did not respond to requests for comment.

Administrative Patent Judges Michael P. Tierney, Michelle R. Osinksi and Jeffrey W. Abraham ruled on the inter partes review petition. Fish & Richardson PC represented Tiffany, and Morrison & Foerster LLP represented LKI.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

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Text is available at: http://src.bna.com/d74.