premier gem v. wing yee gems & jewellery - petition for ipr

8/20/2019 Premier Gem v. Wing Yee Gems & Jewellery - Petition for IPR

http://slidepdf.com/reader/full/premier-gem-v-wing-yee-gems-jewellery-petition-for-ipr 1/55

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD___________

PREMIER GEM CORP. and JAY GEMS INC.,

Petitioners,

v.

WING YEE GEMS & JEWELLERY LIMITED and BK JEWELLERY HK,

Patent Owner.

___________

Case No. 2016-00434

Patent D618,132

___________

Request for Inter Partes Review,

Under 35 U.S.C. §§ 311-319,

of U.S. Patent No. D618,132



i

TABLE OF CONTENTS

Exhibit List ............................................................................................................... iii

I. Introduction ...................................................................................................... 1

II. Notice of Real Party in Interest Under 37 C.F.R. § 42.8(b)(1) ....................... 3

III. Certification of Grounds for Standing Under 37 C.F.R. § 42.104(a) .............. 4

IV. Notice of Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................ 4

V. Notice of Lead Counsel Under 37 C.F.R. § 42(b)(3) ......................................9

VI. Notice of Service Information Under 37 C.F.R. § 42(b)(4) ............................ 9

VII. Payment of Fees Under 37 C.F.R. § 42.103 ..................................................10

VIII. Certification Under 37 C.F.R. §§ 42.6(e) and 42.105 ...................................10

IX. Statement of Precise Relief Requested Under 37 C.F.R. §§ 42.22(a)(1)

and 42.104(b) .................................................................................................10

X. Claim Construction ........................................................................................17

A. Legal Standard .....................................................................................17

B. The ‘132 Patent’s Claim Should Be Construed by Reference Only

to Its Drawings ....................................................................................19

XI. Prior Art Under Pre-AIA 35 U.S.C. §§ 102(b) and 119(a) ...........................22

A. Legal Standard .....................................................................................22

B. The Lin References and the Auction House Catalogs Are Prior Art

Under Pre-AIA 35 C.F.R. §§ 102(b) and 119(a) ................................25

1. The Lin References ...................................................................26

2. The Auction House Catalogs ....................................................28

XII. Obviousness Under 35 U.S.C. § 103 .............................................................31

A. Legal Standard .....................................................................................31



ii

B. The ‘132 Patent Is Obvious in View of the Lin References and in

Further View of the Auction House Catalogs .....................................33

1. Primary Reference.....................................................................33

2. Proposed Rejections: Primary Reference in View ofSecondary References ...............................................................38

3. Additional Proposed Rejections ................................................48

XIII. Conclusion .....................................................................................................49

Certificate of Service ...............................................................................................50



iii

EXHIBIT LIST

Exhibit Description

Ex. 1001 U.S. Design Patent No. D618,132 to Tse-Kok Wong & Lok-

Sung Wong (“‘132 Patent”)

Ex. 1002 Second Amended Complaint, filed by plaintiffs on November 17, 2015

in S.D.N.Y. Civil Action No. 1:15-cv-2333 (“Kiran Action”)

Ex. 1003 Amended Complaint, filed by plaintiff on June 22, 2011 in S.D.N.Y.

Civil Action No. 1:11-cv-2930 (“Prestige Action”)

Ex. 1004 Answer and Counterclaims, filed by defendants on June 30, 2011 in

the Prestige Action

Ex. 1005 Court’s Order, filed September 15, 2014 in the Prestige Action,

granting partial summary judgment regarding the ‘132 Patent’s

validity

Ex. 1006 Prestige Jewelry International, Inc.’s Request for Ex Parte

Reexamination of the ‘132 Patent, dated March 2, 2012

Ex. 1007 Patent Office’s Ex Parte Reexamination Certificate for the

‘132 Patent, issued July 26, 2013

Ex. 1008 U.S. Patent No. 7,762,104 to Tian-Wei Lin (“Lin U.S. Patent”)

Ex. 1009 Patent Office’s Notice of Intent to Issue an Ex Parte Reexamination

Certificate for the ‘132 Patent, dated July 10, 2013 (“Notice of Intent”)

Ex. 1010 Patent Owner’s Response requesting reconsideration of initial rejection

of the ‘132 Patent in the ex parte reexamination, dated March 15, 2013

(“Reconsideration Request”)

Ex. 1011 Tian-Wei Lin’s People’s Republic of China Patent Application

No. 200710076738.6, published under Publication No. CN101112263A on January 30, 2008 (“Lin Publication”),

along with English-language translation of page 1 of the same

Ex. 1012 Tian-Wei Lin’s U.S. Patent Application No. 11/959,620, published

under Publication No. US 2009/0056376 on March 5, 2009



iv

Ex. 1013 Shenzhen Jewelry Net Article, published October 16, 2007 (“Lin

Article”), along with certified English-language translation of the same

Ex. 1014 Selected pages from Volume 11 of the Shenzhen Jewelry magazine,

published in January 2008 (“Lin Magazine”)

Ex. 1015 Selected pages from the Heritage Auction Galleries’ catalog for an

auction scheduled to take place on May 21, 2007 (“Heritage 2007

Catalog”)

Ex. 1016 Selected pages from the Christie’s catalog for an auction scheduled to

take place on September 20, 2005 (“Christie’s September 2005

Catalog”)

Ex. 1017 Selected pages from the Christie’s catalog for an auction scheduled to

take place on March 20, 2005 (“Christie’s March 2005 Catalog”)

Ex. 1018 Selected pages from the Sotheby’s catalog for an auction scheduled to

take place on February 4, 2003 (“Sotheby’s February 2003 Catalog”)

Ex. 1019 Selected pages from the Sotheby’s catalog for an auction scheduled to

take place on April 20, 2005 (“Sotheby’s April 2005 Catalog”)

Ex. 1020 Patent Office’s Non-Final Rejection of the ‘132 Patent’s claim, dated

January 15, 2013 (“Non-Final Rejection”)

Ex. 1021 Letter from Patent Owner’s counsel letter to the Court in the Prestige

Action, dated July 13, 2015 (“Prestige Action Letter”)

Ex. 1022 Patent Owner’s Written Statement of Issues to Be Discussed at

Interview Pursuant to MPEP 2281, transmitted February 25, 2013



1

Premier Gem Corp. (“Premier”) and Jay Gems Inc. (“Jay” and, collectively

with Premier, “Petitioners”) respectfully request inter partes review of the single

claim of U.S. Design Patent No. D618,132 (the “‘132 Patent”), titled “DIAMOND

JEWELLERY [sic].” The ‘132 Patent issued on June 22, 2010, from U.S.

Application No. 29/313,783, filed in the United States on February 11, 2009,1 and

has not yet expired.

The fee set forth in 37 C.F.R. § 42.15(a) accompanies this Request for

Inter Partes Review (the “Request”).

I. Introduction

Petitioners request inter partes review of the single claim of the ‘132 Patent,

attached hereto as Exhibit 1001, which is assigned on its face to Wing Yee Gems

& Jewellery Limited (“Wing Yee”), a Hong Kong subsidiary of BK Jewellery HK

(“BK” and, together with Wing Yee, the “Patent Owner”). This Request

establishes and shows, by a preponderance of the evidence, that there is a

reasonable likelihood that Petitioners will prevail regarding the invalidity of the

1 Although the ‘132 Patent claims a foreign application priority date of August 12,

2008—the result of an earlier patent application filed in Hong Kong under serial

no. 0802018—for the reasons set forth in detail below, the actual U.S. filing date

of February 11, 2009 is controlling for the purposes of the prior art references (all

of which are printed publications) submitted herewith.



2

‘132 Patent, which was obvious under 35 U.S.C. § 103 in light of various

combinations of printed publications that form the basis of the prior art newly

introduced with this Request. Thus, the ‘132 Patent and its sole claim should be

found unpatentable and the ‘132 Patent cancelled.

On February 11, 2009, the Patent Owner submitted a U.S. design patent

application under U.S. Application No. 29/313,783. See Exhibit 1001 ¶ 21. This

application ultimately resulted in the issuance of the ‘132 Patent on June 22, 2010.

See id. ¶ 45. The ‘132 Patent’s U.S. application claimed priority to an earlier-filed

Hong Kong patent application, filed on August 21, 2008 and identified by serial

no. 0802018. See id. ¶ 30. However, this earlier priority date is irrelevant for

purposes of this Request. That is because, under the operative versions2 of both

35 U.S.C. §§ 102(b) and 119(a), the effective date for a printed publication to be

available as prior art as against a U.S. patent is a publication date at least one year

prior to the application’s actual U.S. filing date. Thus, the ‘132 Patent’s

Hong Kong foreign priority filing date is irrelevant for purposes of the requested

review. Put otherwise, printed publications available on or before

2 That is, the pre-America Invents Act (“pre-AIA”) versions of the cited sections.

The pre-AIA versions are operative for purposes of the ‘132 Patent, which issued

on June 22, 2010—that is, before the earliest effective date of the AIA

(September 16, 2011).



3

February 10, 2008 constitute available prior art and can be relied upon for this

Request under pre-AIA §§ 102(b) and 119(a).3 Because all the references relied

upon by this Request are printed publication available before February 10, 2008,

they all constitute prior art as to the ‘132 Patent. That is, the references relied upon

herein all predate, by more than one year, the ‘132 Patent’s U.S. application filing

date.

These references, when considered in the combinations set out in detail in

Section XII.B., infra, render the ‘132 Patent obvious under § 103. Had the

references set out herein been considered during the prosecution of the ‘132 Patent,

or during the ‘132 Patent’s prior ex parte reexamination, the ‘132 Patent would not

have issued nor been maintained.

II.

Notice of Real Party in Interest Under 37 C.F.R. § 42.8(b)(1)

The real parties in interest are Premier Gem Corp. (“Premier”) and Jay Gems

Inc. (“Jay” and, together with Premier, “Petitioners”), both residents of New York.

3 Indeed, Patent Owner’s counsel admitted as much in a July 13, 2015 letter to the

Court in the Prestige Action, as that term is defined in Section IV., infra (the

“Prestige Action Letter”). See Exhibit 1021 (noting that the Lin Publication, as

that term is defined in Section IX., infra, “could be considered prior art under

35 U.S.C. 102(b)”).



4

Premier is a New York corporation with its primary business address at 529

Fifth Avenue, New York, New York 10017.

Jay is a New York corporation with its primary business address at 529 Fifth

Avenue, 17th Floor, New York, New York 10017.

III. Certification of Grounds for Standing Under 37 C.F.R. § 42.104(a)

Petitioners hereby certify that the ‘132 Patent is available for inter partes

review and that Petitioners are not barred or estopped from requesting inter partes

review of the ‘132 Patent’s single claim on the grounds identified in this Request.

IV. Notice of Related Matters Under 37 C.F.R. § 42.8(b)(2)

On March 27, 2015, Patent Owner, with its U.S. licensee AV Jewelry

Export-Import, Ltd. (“AV Jewelry”), commenced an action with respect to the

‘132 Patent in the U.S. District Court for the Southern District of New York under

the caption BK Jewellery et al. v. Kiran Gems Pvt. Ltd. et al. (Civil Action

No. 1:15-cv-02333-LAP) (the “Kiran Action”), alleging infringement of the

‘132 Patent as well as Lanham Act violations. An Amended Complaint was filed

in the Kiran Action on July 20, 2015. The currently-operative Second Amended

Complaint, attached hereto as Exhibit 1002, was filed in the Kiran Action on

November 17, 2015. The Second Amended Complaint originally named as

defendants Rajiv Kothari, Mitten Kothari, Kiran Gems Pvt. Ltd., Kiran Designs,

Kiran Jewelry, Kiran Jewels Inc., Milano Diamond Gallery, Tejas Shah, and



5

International Diamond Distributors Inc. (“IDD”). IDD has been dismissed from

the Kiran Action with prejudice as of December 22, 2015. Otherwise, the

Kiran Action is currently pending and in the very early stages of discovery.

On April 29, 2011, Prestige Jewelry International, Inc. (“Prestige”)

commenced an action with respect to the ‘132 Patent in the U.S. District Court for

the Southern District of New York under the caption Prestige Jewelry

International, Inc. v. Wing Yee Gems & Jewelery Limited et al. (Civil Action No.

1:11-cv-02930-LAP) (the “Prestige Action”), seeking a declaration that the

‘132 Patent was invalid and further not infringed by Prestige. On June 22, 2011,

Prestige filed an Amended Complaint, attached hereto as Exhibit 1003, listing as

defendants the Patent Owner (i.e., BK and Wing Yee) as well as AV Jewelry

(“AV,” and together with BK and Wing Yee, the “Prestige Action Defendants”).

On June 30, 2011, the Prestige Action Defendants filed an Answer and

Counterclaims, attached hereto as Exhibit 1004, with regard to the ‘132 Patent,

alleging patent infringement and violations of the Lanham Act. By means of an

Order dated September 15, 2014, attached hereto as Exhibit 1005, the Court

granted the Prestige Action Defendants’ motion for summary judgment, holding,

inter alia, the ‘132 Patent to be not invalid. The Court’s Order, however, was

rendered without consideration of the printed publications comprising the

references submitted with this Request.



6

On March 2, 2012, Prestige filed a Request for Ex Parte Reexamination,

attached hereto as Exhibit 1006, which was granted. The resulting ex parte

reexamination resulted in a Reexamination Certificate, attached hereto as

Exhibit 1007, which issued on July 26, 2013 and affirmed the validity of the only

claim of the ‘132 Patent. However, that prior ex parte reexamination did not

consider the printed publications comprising the references presented herein.

During the ex parte reexamination, the U.S. Patent Office considered Tian-

Wei Lin’s U.S. Patent No. 7,762,104 (the “Lin U.S. Patent”), issued on July 27,

2010 and attached hereto as Exhibit 1008, which claims “[a] modular setting

diamond jewelry” that is elsewhere and commercially referred to as the “Lotus

Carat.” During the ex parte reexamination, the Patent Owner argued to the

Examiners that the Lin U. S. Patent was not prior art because the ‘132 Patent’s

inventors could “swear behind” (i.e., establish a conception and reduction to

practice earlier than) the Lin U. S. Patent’s U.S. filing date.4

Petitioners now submit three different printed publication prior art

references that (i) depict the so-called Lotus Carat jewelry design and (ii) predate

the Lin U.S. Patent’s effective prior art date. See Exhibit 1011; Exhibit 1013;

Exhibit 1014 (collectively, the “Lin References,” as that term is defined in

4 See Reconsideration Request, Exhibit 1010 at 14 (arguing, in the alternative, that

the Lin U.S. Patent is not prior art as to the ‘132 Patent).



7

Section IX., infra). Thus, Petitioners submit prior art references that were not

considered by the Patent Office during the ex parte reexamination of the

‘132 Patent.5

The Examiners in the ex parte reexamination affirmed the ‘132 Patent’s

claim in the face of the Lin U.S. Patent, which taught the Lotus Carat design that

(as further described in Section XII.B., infra) taught all the elements of the

‘132 Patent’s claimed design except for the use of single-cut diamonds at the

periphery. In doing so, the Examiners credited “the Patent Owner’s assertion that

it would not have been obvious to substitute one cut style for another” in the

peripheral diamonds of the Lotus Carat’s design, which shows a round, larger, full-

cut diamond at the center with smaller, full-cut diamonds surrounding the larger

diamond (as opposed to the ‘132 Patent’s claimed design, which shows a round,

larger, full-cut (also known in the trade as brilliant-cut) diamond at the center but

with smaller, single-cut diamonds surrounding the larger diamond). Notice of

Intent to Issue an Ex Parte Reexamination Certificate (“Notice of Intent”), dated

July 10, 2013 and attached hereto as Exhibit 1009, at 7 (emphasis added).

5 As stated in Section XI., infra, Patent Owner will not be able to “swear behind”

any of the new Lin References, which are all definitively prior art as to the

‘132 Patent as they are printed publications available more than one year before the

U.S. application filing date of the ‘132 Patent..



8

Indeed, Patent Owner emphatically argued that the “the crucial and most

salient teaching of the ‘132 Patent is to provide [] single cut diamonds only at the

periphery . . . .” Patent Owner’s Response requesting reconsideration

(“Reconsideration Request”), dated March 15, 2013 and attached hereto as

Exhibit 1010, at 4 (emphasis added). See also id. at 6 (“It was counterintuitive in

2008 . . . to deliberately choose some of the stones to be ‘full cut’ and to provide

the other stones as ‘single cut’ diamonds.”); id. at 12 (“[T]here is no record, in the

nearly one hundred year period from [a reference dated 1917] to 2008, of anyone

making a cluster top jewelry design with differently cut stones at the center and at

the periphery.”). Indeed, it is quite clear that the decision to confirm the validity of

the ‘132 Patent was based on the arguments proffered by Patent Owner that it was

non-obvious at the time of the ‘132 Patent’s invention to combine a central round,

larger, full-cut diamond with peripheral round, smaller, single-cut diamonds. See

Notice of Intent, Exhibit 1009 at 8.

The new prior art submitted by Petitioners with this Request teaches exactly

the often repeated “salient” element alleged to be missing from the Lotus Carat

design: the mixing of smaller round, single-cut peripheral diamonds surrounding a

larger round, full-cut central diamond. The Lotus Carat design—as depicted in the

Lin References (defined in Section IX., infra, and discussed in detail in

Section XII.B., infra)—teaches all the other elements of the ‘132 Patent’s claimed



9

design. And the newly submitted Lin References cannot be “sworn behind” and

are unassailable prior art. A combination of any of the Lin References’ teaching

with any one of the new printed publications showing the common concept of

mixing of diamond cuts renders the claim of the ‘132 Patent obvious and

unpatentable.

Petitioners are not aware of any other pending prosecution or administrative

proceedings or pending state or federal court litigations that relate to the

‘132 Patent.

V. Notice of Lead Counsel Under 37 C.F.R. § 42(b)(3)

Petitioners designate as their Lead Counsel:

Andrew S. Langsam (USPTO Reg. No. 28,556)

Pryor Cashman LLP

7 Times Square, 38th Floor

New York, New York 10036

Telephone: (212) 326-0180

Facsimile: (212) 515-6969

Email: [email protected]

VI.

Notice of Service Information Under 37 C.F.R. § 42(b)(4)

All correspondence may be directed to Petitioners’ Lead Counsel at the

information provided in Section V., supra. Further, Petitioners consent to

electronic service by email at the email address provided in Section V.



10

VII. Payment of Fees Under 37 C.F.R. § 42.103

As stated above, the fee set forth in 37 C.F.R. § 42.15(a) accompanies this

Request. The Patent and Trademark Office is hereby authorized to charge any fee

deficiency or credit any overpayment to Petitioners’ Lead Counsel’s law firm’s

Deposit Account No. 50-0932.

VIII. Certification Under 37 C.F.R. §§ 42.6(e) and 42.105

Petitioners certify that a complete and entire copy of this Request for Inter

Partes Review, including all supporting exhibits, was served on the Patent

Owner’s counsel in accordance with 37 C.F.R. §§ 42.6(e) and 42.105. See also

Certificate of Service, infra.

IX.

Statement of Precise Relief Requested Under 37 C.F.R. §§ 42.22(a)(1)

and 42.104(b)

Petitioners request invalidation and cancellation of the single claim of the

‘132 Patent as the same was obvious, under 35 U.S.C. § 103, to a designer of

ordinary skill in the art in view of:

(1)

Tian-Wei Lin’s People’s Republic of China Patent Application

No. 200710076738.6, printed and published under Publication

No. CN 101112263A on January 30, 2008 (the “Lin Publication”),6

6 The Lin Publication, published in Chinese, is accompanied by a translation of

page 1 of the same. See Exhibit 1011. Upon information and belief, the language



11

depicting the Lotus Carat design7 and attached hereto as Exhibit 1011, in

further view of any one or more prior art printed publications consisting of:

(i) the Art Deco Diamond, Platinum Ring, Item No. 39432

photographed, shown, and described in the printed and published

Heritage Auction Galleries’ catalog for an auction scheduled to take

place on May 21, 2007 (the “Heritage 2007 Catalog”), the cover and

selected pages of which are attached hereto as Exhibit 1015 (the

“Heritage Art Deco Diamond Ring”);

and teaching of the patent application printed and published in the Lin Publication

is identical to Lin’s English-language U.S. Patent Application No. 11/959,620,

published under Publication No. US 2009/0056376 on March 5, 2009 and attached

hereto as Exhibit 1012. Lin’s U.S Patent Application No. 11/959,620 resulted in

two issued patents: the Lin U.S. Patent (Patent No. 7,762,104), issued July 27,

2010, as well as U.S. Patent No. 8,051,676, issued on November 8, 2011.

7 The jewelry design depicted in the Lin Publication is, elsewhere, referred to as

the Lotus Carat. Because the Lotus Carat design appears in three separate

references, that term will be used to designate the design shown, described, taught,

and depicted in the Lin Publication and the other two Lin References.



12

(ii) the Diamond, Platinum Ring, Item No. 39433 also photographed,

shown, and described in the printed and published Heritage 2007

Catalog, the cover and selected pages of which are attached hereto

as Exhibit 1015 (the “Heritage Diamond Ring”);

(iii) the Diamond Ring, Item No. 169 photographed, shown, and

described in the printed and published Christie’s catalog for an

auction scheduled to take place on September 20, 2005 (the

“Christie’s September 2005 Catalog”), the cover and selected pages

of which are attached hereto as Exhibit 1016 (the “Christie’s

Diamond Ring”);

(iv)

the Diamond Cluster Ring, Item No. 227 photographed, shown, and

described in the printed and published Christie’s catalog for an

auction scheduled to take place on March 20, 2005 (the “Christie’s

March 2005 Catalog”), the cover and selected pages of which are

attached hereto as Exhibit 1017 (the “Christie’s Diamond Cluster

Ring”);



13

(v) the Diamond Ring, Item No. 15 photographed, shown, and described

in the printed and published Sotheby’s catalog for an auction

scheduled to take place on February 4, 2003 (the “Sotheby’s

February 2003 Catalog”), the cover and selected pages of which are

attached hereto as Exhibit 1018 (the “Sotheby’s Ring”); and/or

(vi)

the Diamond Necklace, Circa 1890, Item No. 225 photographed,

shown, and described in the printed and published Sotheby’s catalog

for an auction scheduled to take place on April 20, 2005 (the

“Sotheby’s April 2005 Catalog”), the cover and selected pages of

which are attached hereto as Exhibit 1019 (the “Sotheby’s

Necklace”).

For ease of reference, the Catalogs described in (i) to (vi)—i.e., Exhibits 1015

to 1019—are collectively referred to as the “Auction House Catalogs.”



14

(2) Shenzhen Jewelry Net Article, published October 16, 2007 (the “Lin

Article”),8 attached hereto as Exhibit 1013, depicting, showing, teaching,

and describing the Lotus Carat design embodied in the Lin Publication, in

further view of any one or more of the Auction House Catalogs, namely:

(i) the Heritage Art Deco Diamond Ring, attached hereto at

Exhibit 1015;

(ii)

the Heritage Diamond Ring, attached hereto at Exhibit 1015;

(iii)

the Christie’s Diamond Ring, attached hereto at Exhibit 1016;

(iv)

the Christie’s Diamond Cluster Ring, attached hereto at

Exhibit 1017;

(v)

the Sotheby’s Ring, attached hereto at Exhibit 1018; and/or

(vi)

the Sotheby’s Necklace, attached hereto at Exhibit 1019.

8 The Lin Article, which originally appeared in Chinese, is accompanied by a

certified translation of the same. See Exhibit 1013.



15

(3) Volume 11 of the Shenzhen Jewelry magazine, published in January 2008

(the “Lin Magazine”),9 selected pages of which are attached hereto as

Exhibit 1014, also depicting, showing, teaching, and describing the Lotus

Carat design embodied in the Lin Publication, in further view of any one or

more of the Auction House Catalogs, namely:

(i)

the Heritage Art Deco Diamond Ring, attached hereto at

Exhibit 1015;

(ii)

the Heritage Diamond Ring, attached hereto at Exhibit 1015;

(iii)

the Christie’s Diamond Ring, attached hereto at Exhibit 1016;

(iv)

the Christie’s Diamond Cluster Ring, attached hereto at

Exhibit 1017;

(v)

the Sotheby’s Ring, attached hereto at Exhibit 1018; and/or

(vi)

the Sotheby’s Necklace, attached hereto at Exhibit 1019.

9 The Lin Magazine does not contain any relevant descriptive text, only images of

the Lotus Carat design embodied in the Lin Publication. Therefore, a translation of

the Lin Magazine has not been provided at this time. However, Petitioners are

willing and able, upon the Patent Office’s request, to provide a translation of the

same.



16

The Lin Publication (Exhibit 1011), the Lin Article (Exhibit 1013), and the

Lin Magazine (Exhibit 1014) (collectively, the “Lin References”) all qualify as

prior art under pre-AIA 35 U.S.C. §§ 102(b) and 119(a), as explained in further

detail in Section XI., infra. Individually, each shows the claimed invention of the

‘132 Patent with the sole exception, as repeatedly suggested by the Patent Owner,

of the “salient” “mixing” of a single, large, full-cut central diamond surrounded by

smaller, single-cut diamonds. Yet the prior art set forth in the Auction House

Catalogs shows the common concept of mixing of a large, round, full-cut central

diamond with surrounding smaller, single-cut round diamonds.

Likewise, the Heritage 2007 Catalog (Exhibit 1015), the Christie’s

September 2005 Catalog (Exhibit 1016), the Christie’s March 2005 Catalog

(Exhibit 1017), the Sotheby’s February 2003 Catalog (Exhibit 1018), and the

Sotheby’s April 2005 Catalog) (Exhibit 1019) (collectively, the “Auction House

Catalogs”) all qualify as prior art under pre-AIA 35 U.S.C. §§ 102(b) and 119(a),

as explained in further detail in Section XI., infra.

The claim of the ‘132 Patent is invalid as obvious, under 35 U.S.C. § 103, in

light of the various combinations of the teachings of any one of the Lin References,

on the one hand, and any one of the Auction House Catalogs, on the other hand.

Specific invalidating combinations of these references are presented in

Section XII.B., infra. The “salient” distinguishing feature, so heavily relied upon



17

by the Patent Owner in the prior ex parte reexamination proceeding is and was

quite common, shown, taught, and known in the prior art and was not only not

counterintuitive but, rather, was rather routine, as shown in the uncovered and

provided prior art.

X. Claim Construction

A. Legal Standard

A claim subject to inter partes review receives the “broadest reasonable

construction in light of the specification of the patent in which it appears.” 37

C.F.R. § 42.100(b). A “detailed verbal description of the claimed design” is not

required in the context of design patents, as it is for utility patents. Egyptian

Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (citation omitted).

Design patents are typically claimed as shown in drawings, with claim

construction adapted accordingly. Id. (citation omitted). Indeed, it is well-

established that “ a design is better represented by an illustration ‘than it could be

by any description and a description would probably not be intelligible without the

illustration.’” Id. (quoting Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (emphasis

added).

Indeed, “[g]iven the recognized difficulties entailed in trying to describe a

design in words, the preferable course ordinarily will be . . . not to attempt to

‘construe’ a design patent claim by providing a detailed verbal description of the



18

claimed design.” Id. (emphasis added). However, it may be “helpful to point

out . . . various features of the claimed design as they relate to the . . . prior art.” Id.

at 680.

Because the drawings are of paramount importance in construing a design

patent, “the inventor’s subjective intent is irrelevant to the issue of claim

construction . . . .” Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1338 (Fed.

Cir. 2009) (emphasis added, citation & quotations omitted); see also Markman v.

Westview Instruments, Inc., 52 F.3d 967, 985 (Fed. Cir. 1995) (en banc), aff’d , 517

U.S. 370 (1996) (“The subjective intent of the inventor . . . is of little or no

probative weight in determining the scope of a claim (except as documented in the

prosecution history).”).

The ‘132 Patent has a single claim and that refers to the design of “Diamond

Jewellery” as “shown and described.” The design is illustrated by Fig. 1 and Fig. 2

and the description merely refers the reader to the “new design” of a “diamond

jewellery.” Thus, the claim is for an article of “Diamond Jewellery,” as taught by

the two drawings, reproduced in Section X.B., infra, and the single claim that

tersely describes the ‘132 Patent’s covered subject matter as “[t]he ornamental

design for a diamond jewellery, as shown and described.” Exhibit 1001 ¶ 57.

For the reasons set out in detail in Section X.B., infra, the ‘132 Patent should

be construed and the analysis based only on the design shown and taught by the



19

drawings depicted therein. Patent Owner’s professed intent, even if genuine,

should be disregarded as irrelevant.

B. The ‘132 Patent’s Claim Should Be Construed by Reference Only

to Its Drawings

A design patent should preferably and ordinarily be construed as depicted in

its claimed drawings, with no written or verbal construction necessary. See

Egyptian Goddess, 543 F.3d at 679-80.

Thus, the ‘132 Patent covers only the arrangement of stones into a

“diamond jewellery” as depicted in its Figures 1 and 2, which are reproduced for

convenience below.10

To the extent that Patent Owner may, retrospectively, attempt to argue that

the inventor’s subjective intent in the ‘132 Patent was to simulate the appearance

of a solitaire diamond (i.e., that the central large round diamond and the

10 As already stated in Section X.A., supra, the ‘132 Patent’s claim describes the

depicted drawings only as an “ornamental design for a diamond jewellery, as

shown and described.” Exhibit 1001 ¶ 57.



20

surrounding smaller round stones were provided to simulate a single, larger and

round stone), that argument should be wholly disregarded. Design intent is

irrelevant; the description of the “invention,” the ‘132 Patent’s title, and the

absence of any top view to show this so-called “solitaire” intention is contrary to

such an intent. Moreover, the openings or spacing between the small diamonds

and the outside edge of the large diamond and the outside perimeter defined by the

smaller diamonds, showing scalloped edges belies this single large round or

solitaire diamond look or concept. The claimed invention is defined by the

drawings, not the after-the-fact intention claimed by the Patent Owner and their

attorneys.

Also, the ‘132 Patent’s claimed design refers to the drawings and is better

represented by its own illustrative drawings than by any description, especially one

that is a belated afterthought. The description merely refers to a “diamond

jewellery” and not to any “solitaire” or larger-looking diamond.

And, as stated in Section X.A., supra, “the inventor’s subjective intent is

irrelevant to the issue of claim construction . . . .” Cordis Corp., 561 F.3d at 1338

(citation & quotations omitted).

Finally, and perhaps most importantly, the U.S. Patent Office has already

considered— and rejected —the Patent Owner’s argument that the ‘132 Patent’s

claimed design is intended to depict a solitaire simulation (rather than the



21

untethered, scalloped-edge collection of canted and slightly overlapping smaller

round stones about a larger central round stone, as actually shown in the

‘132 Patent’s two drawings). This issue arose after the Patent Office, in the course

of the prior ex parte reexamination, rejected the ‘132 Patent in a Non-Final

Rejection (“Non-Final Rejection”), dated January 15, 2013 and attached hereto as

Exhibit 1020. In Patent Owner’s Reconsideration Request, Patent Owner argued

that the drawings claimed in the ‘132 Patent sought “to simulate a solitaire look.”

Exhibit 1010 at 6. This “intent,” however, is neither taught nor suggested by the

drawings nor contained within any description of the “diamond jewellery,” as

originally filed. It is clear reconstruction in hindsight.

In its Notice of Intent, the Patent Office expressly held that the fact that

Patent Owner, “in creating [its] design, had the purpose of emulating a solitaire . . .

does not . . . bear[] upon the [] consideration of the prior art.” Exhibit 1009 at 15

(emphasis added). That is because the ‘132 Patent is a design patent and its

drawings are determinative, not the intent sought to be achieved . As the Patent

Office there and then stated:

Nowhere in application’s specification is there

description of what the claimed design is intended to do,

other than to provide an ornamental appearance. Its title

is simply, “Diamond Jewelry [sic],” and not, for example,



22

“Diamond Jewelry Arrangement that Looks Like a

Solitaire,” or “Simulative Diamond Solitaire.”

Id. at 15.

XI. Prior Art Under Pre-AIA 35 U.S.C. §§ 102(b) and 119(a)

A. Legal Standard

Under the pre-AIA version of 35 U.S.C. § 102(b), a teaching or disclosure of

an invention of another or even the inventor is prior art if it was “described in a

printed publication in . . . a foreign country . . . more than one year prior to the

date of application for patent in the United States.” 35 U.S.C. § 102(b) (pre-AIA)

(emphasis added). The Manual of Patent Examining Procedure (“MPEP”)

confirms that “[t]he 1-year time bar is measured from the U.S. filing date.” MPEP

§ 2133(II) (emphasis added). Moreover, prior art under pre-AIA § 102(b) “cannot

be overcome by . . . foreign priority dates” or “affidavits and declarations [of prior

invention] under [37 C.F.R. § 1.131] (Rule 131 Declarations).” MPEP

§ 2133.02(II).

Similarly, the pre-AIA version of 35 U.S.C. § 119(a) considers as prior art

any invention “described in a printed publication in any country more than one

year before the date of the actual filing of the application in [the United States] .”

35 U.S.C. § 119(a) (pre-AIA) (emphasis added). As with §102(b), prior art for



23

purposes of § 119(a) is measured in reference to a patent’s U.S. filing date—

regardless of whether the patent claims an earlier foreign priority date.

The ‘132 Patent’s U.S. application was filed on February 11, 2009. See

Exhibit 1001 ¶ 22. Thus, any “printed publication” published on or before the

critical date of February 10, 2008 (i.e., one year prior to the ‘132 Patent’s U.S.

filing date) is prior art as to the ‘132 Patent. As described in further detail in

Section XI.B., infra, each of the Lin References and each of the Auction House

Catalogs was printed and published before February 10, 2008, and thus each is

unassailable prior art for purposes of the ‘132 Patent. Moreover, the

‘132 Patent’s inventors cannot overcome the Lin References or the Auction House

Catalogs by an affidavit of prior inventorship.

Moreover, as also described in further detail in Section XI.B., infra, each of

the Lin References and the Auction House Catalogs readily meets the definition of

a “printed publication,” as that term is defined for purposes of pre-AIA §§ 102(b)

and 119(a).

A reference is considered a “printed publication” where it has “‘been

sufficiently accessible to the public interested in the art.’” In re Klopfenstein, 380

F.3d 1345, 1348 (Fed. Cir. 2004) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed.

Cir. 1989)) (other citation omitted). “[D]issemination and public accessibility are

the keys to the legal determination whether a prior art reference was ‘published.’”



24

Id. (citations & quotations omitted); see also SRI Int’l, Inc. v. Internet Sec. Sys.,

511 F.3d 1186, 1194 (Fed. Cir. 2008) (“‘[P]ublic accessibility’ has been called the

touchstone in determining whether a reference constitutes a ‘printed publication’

bar under 35 U.S.C. § 102(b).”) (emphasis in original, citation & quotations

omitted).

Put another way, “[a] reference is publicly accessible ‘upon a satisfactory

showing that such document has been disseminated or otherwise made available to

the extent that persons interested and ordinarily skilled in the subject matter or art

exercising reasonable diligence, can locate it . . . .’” Kyocera Wireless Corp. v.

ITC , 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, 511 F.3d at 1194)

(other citation omitted). Although the determination of public accessibility is

made “on a case-by-case basis,” id., the Federal Circuit has held that even the

dissemination of a printed publication “without restriction to at least six persons” is

sufficient to establish public accessibility or where “between 50 and 500 persons

interested and of ordinary skill in the subject matter were actually told of the

existence of the . . .” reference. Massachusetts Inst. of Tech. v. AB Fortia, 774

F.2d 1104, 1109 (Fed. Cir. 1985).11

11 Moreover, the Lin Publication is a published Chinese patent application—and, as

a leading patent law treatise confirms, where “the specification of a[] [patent]

application is published or otherwise made available to the public prior to



25

Thus, all of the references submitted by Petitioners meet the requirements to

be considered prior art under pre-AIA §§ 102(b) and 119(a). Specifically, all of

the Lin References and all of the Auction House Catalogs (1) were published more

than one year before the ‘132 Patent’s February 11, 2009 U.S. filing date and (2)

meet the definition of a “printed publication,” as described in detail in

Section XI.B., infra.

B. The Lin References and the Auction House Catalogs Are Prior

Art Under Pre-AIA 35 C.F.R. §§ 102(b) and 119(a)

Under the pre-AIA version of 35 U.S.C. §§ 102(b) and 119(a), a reference is

prior art to a patent if that reference was described in a “printed publication” more

than one year before the date that the patent’s application was filed in the United

States. See Section XI.A., supra. The ‘132 Patent’s U.S. patent application was

issuance,” it is “[t]hus a ‘printed publication’” that “will constitute . . . prior art

for obviousness purposes under Section 103 in determining the patentability of

claims in any U.S. application with an effective filing date more than twelve

months after such publication.” Donald S. Chisum, Chisum on Patents § 6.02[9].

Thus, the Lin Publication of the earlier-filed Chinese patent application by Lin is

an unquestionably “printed publication” for purposes of pre-AIA §§ 102(b) and

119(a). And, as mentioned, it was published more than a year before the U.S.

filing date of the application leading to the ‘132 Patent.



26

filed on February 11, 2009—thus, any “printed publication” that was published on

or before February 10, 2008 is prior art as to the ‘132 Patent. Further, the

“touchstone” for determining whether a reference is a “printed publication” is that

reference’s public accessibility. SRI Int’l, 511 F.3d at 1194.

1. The Lin References

The Lin Publication (Exhibit 1011) was published by the Chinese

government on January 30, 2008 (i.e., before February 10, 2008). This Publication

was disseminated via the Internet, and therefore has been publicly accessible, with

minimal diligence, since its publication. Indeed, copies of the Lin Publication are

available via a simple Google Patent Search. See Publication No. CN101112263A,

http://www.google.com/patents/CN101112263A (last visited Dec. 17, 2015).

Because the Lin Publication is a “printed publication” that was publicly

disseminated before February 10, 2008, it is available and applicable prior art as to

the ‘132 Patent.12

Moreover, Patent Owner’s counsel has essentially admitted that

the Lin Publication is unassailable prior art as to the ‘132 Patent. See

Prestige Action Letter, Exhibit 1021 (noting that the Lin Publication “could be

considered prior art under [pre-AIA] 35 U.S.C. 102(b)”).

12 Further, as described in note 11, supra, the Lin Publication is a “printed

publication” because it is a published Chinese patent application.



27

The Lin Article (Exhibit 1013) was published on or around October 16, 2007

(i.e., well before February 10, 2008). This Article was disseminated to the public

via publication on the Internet. The Lin Article remains readily accessible to

interested members of the public. See

http://www.0755zb.com/Association/Index_View.asp?ID=316 (last visited Dec. 17,

2015). Because the Lin Article is a “printed publication” that was publicly

available before February 10, 2008, it is also prior art as to the ‘132 Patent.

The Lin Magazine (Exhibit 1014) was published on or before January 2008

(i.e., before February 10, 2008). This Magazine—referring to, describing, and

teaching the Lotus Carat design—was disseminated at least in part over the

Internet and, upon information and belief, is readily accessible to interested

members of the public.

In light of the foregoing, each one of the Lin References constitutes a valid

prior art reference for purposes of the ‘132 Patent. All of the Lin References relate

to the concept of surrounding one larger round, full-cut diamond with several

smaller, canted and overlapped, full-cut, round diamonds. Indeed, the Lin

References refer to the concept of arranging the diamonds so as to simulate a

single larger solitaire diamond than the central large and round diamond by itself.

Furthermore, the U.S. Patent Office had originally invalidated the ‘132 Patent

during the prior ex parte reexamination proceedings based on anticipation by the



28

Lin U.S. Patent. See Non-Final Rejection, Exhibit 1020 at 5-6. And the District

Court’s Chief Judge in the pending Prestige Action has held that “[t]he Lin [U.S.]

Patent shows a full-cut central diamond surrounded by eight full-cut peripheral

diamonds which are angled against the central diamond.” Exhibit 1005 at 14 n.10.

2. The Auction House Catalogs

The Heritage 2007 Catalog (Exhibit 1015) was published in anticipation of

an auction scheduled to take place on May 21, 2007, which necessarily means that

it was published before the critical date of February 10, 2008. The Heritage 2007

Catalog was intended to be distributed and disseminated to interested members of

the public. The purpose of such an auction catalog is to generate interest in buyers

for the displayed items of jewelry, all to increase the sales price to the auction

house/seller. Thus, Heritage Auctions—like each other Auction House whose

catalog(s) are presented herein—has a professional interest in ensuring that both

the descriptions and photographs depicted in its catalogs are as accurate as possible.

Moreover, the Heritage auction house makes available for download on its

website catalogs from prior auctions. See Heritage Auctions,

https://www.ha.com/c/catalog-orders.zx (last visited Dec. 17, 2015). Thus, the

Heritage 2007 Catalog is and was publicly accessible, rendering it a “printed

publication” that predates the ‘132 Patent’s U.S. filing date by more than one

year—which means that it is prior art for purposes of the ‘132 Patent.



29

The Christie’s September 2005 Catalog (Exhibit 1016) was published in

anticipation of an auction scheduled to take place on September 20, 2005, which

necessarily means that it was published before the critical date of February 10,

2008. Similarly, the Christie’s March 2005 Catalog (Exhibit 1017) was published

and distributed in anticipation of an auction scheduled to take place on

March 20, 2005, which necessarily means that it was also published years before

the critical date of February 10, 2008. The Christie’s Catalogs were widely

distributed and disseminated to interested members of the public—all to increase

the interest in the proposed sales of the photographed, displayed, and described

jewelry at the impending auctions. Further, Christie’s makes available on its

website the results (with photographs) of past auctions. See Auction Results,

Christie’s, http://www.christies.com/results/ (last visited Dec. 17, 2015). Thus, the

Christie’s September 2005 and March 2005 Catalogs are publicly accessible,

rendering them “printed publications” that predate the ‘132 Patent’s U.S. filing

date by more than one year—which means that they are prior art for purposes of

consideration of the patentability and obviousness of the invention claimed by the

‘132 Patent.

The Sotheby’s February 2003 Catalog (Exhibit 1018) was published in

anticipation of an auction scheduled to take place on February 4, 2003. It was

published years before the critical date of February 10, 2008. Similarly, the



30

Sotheby’s April 2005 Catalog (Exhibit 1019) was published in anticipation of an

auction scheduled to take place on April 20, 2005, which necessarily means that it,

too, was published on or before the critical date of February 10, 2008. The

Sotheby’s Catalogs were disseminated to interested members of the public as the

intended function of any auction catalog is to increase possible purchasers’ interest

in the items being auctioned. Furthermore, Sotheby’s makes pictorial results of

past sold auction lots and items available on its website. See Sold Lot Archive,

Sotheby’s, http://www.sothebys.com/en/auctions/lots-archive.html (last visited

Dec. 17, 2015). Thus, the Sotheby’s February 2003 and April 2005 Catalogs are

publicly accessible, rendering them “printed publications” that predate the

‘132 Patent’s U.S. filing date by more than one year—which means that they are

prior art for purposes of consideration of the patentability and obviousness of the

claimed invention of the ‘132 Patent.

Moreover, counsel for Petitioners was able to readily locate and order online

all of the Auction House Catalogs, which further corroborates the fact that they

were and still are publicly available printed publications.

For the reasons stated above, all of the Lin References and the Auction

House Catalogs constitute prior art for purposes of consideration of the

patentability and obviousness of the claimed invention of the ‘132 Patent.



31

XII. Obviousness Under 35 U.S.C. § 103

A. Legal Standard

“In the design patent context, the ultimate inquiry under [35 U.S.C. § 103] is

whether the claimed design would have been obvious to a designer of ordinary

skill who designs articles of the type involved.” Durling v. Spectrum Furniture

Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citation omitted); see 35 U.S.C. § 103(a)

(a patent cannot be obtained for subject matter that, “as a whole” and in light of the

prior art, “would have been obvious at the time [of] invention . . . to a person

having ordinary skill in the [relevant] art . . .”). The § 103 obviousness “inquiry

focuses on the visual impression of the claimed design as a whole and not on

selected individual features.” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996)

(emphases added, citation omitted).

In this case, a designer having ordinary skill in the art is someone with a

background and training in diamond jewelry design and who is presumed to have

knowledge of the prior art relevant to jewelry designs featuring one or more

diamonds or gems. See In re Nalbandian, 661 F.2d 1214, 1216 (C.C.P.A. 1981).

The Federal Circuit employs a two-step process for determining obviousness

in the design patent context. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314,

1329 (Fed. Cir. 2012).



32

“First, ‘one must find a single reference, a something in existence, the design

characteristics of which are basically the same as the claimed design.’” Id.

(quoting Durling, 101 F.3d at 103) (other citation & quotations omitted). “Second,

‘other references may be used to modify [the primary reference] to create a design

that has the same overall visual appearance as the claimed design.’” Id. (quoting

Durling, 101 F.3d at 103) (alteration in original).

A primary reference may be modified by secondary references that are “so

related [to the primary reference] that the appearance of certain ornamental

features in one would suggest the application of those features to the other.”

Borden, 90 F.3d at 1575 (citation & quotations omitted). See also KSR Int’l Co. v.

Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements

according to known methods is likely to be obvious when it does no more than

yield predictable results.”); Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d

1372, 1384-85 (Fed. Cir. 2009) (“Design patents, like utility patents, must meet the

nonobviousness requirement of 35 U.S.C. § 103, and it is not obvious that the

Supreme Court necessarily intended to exclude design patents from the reach of

KSR”).



34

Carat design as depicted in the Lin Article (Lotus Carat Fig. 2, infra) and in the

Lin Magazine (Lotus Carat Fig. 3, infra). They are all available and unassailable

as prior art and all primary references with respect to the ‘132 Patent’s claimed

invention.

Both the Lotus Carat jewelry design (as depicted in any one of the

Lin References) and the ‘132 Patent’s “diamond jewellery” design (as depicted in

the ‘132 Patent’s drawings) depict a larger, round, central, full-cut (also called

brilliant-cut) diamond surrounded by a plurality of smaller, canted or angled, round

diamonds.13

The Lotus Carat’s smaller round and peripheral diamonds are full-cut,

while the ‘132 Patent’s smaller peripheral round diamonds are single-cut. That is

the sole visual, if discernible at all, difference between the Lin References and their

teachings of the Lotus Carat jewelry design, on the one hand, and that of the

‘132 Patent’s claimed invention, on the other hand.

13 Though the Lotus Carat, depicted in the Lin References, teaches eight peripheral

stones while the ‘132 Patent teaches nine peripheral stones, this difference is

inconsequential for the purposes of the issue of obviousness. See Notice of Intent,

Exhibit 1009 at 6 (“[T]he Examiner considered a periphery having only nine stones

to be but a minor difference in appearance from an arrangement having eight or ten

stones.”).



35

Thus, the only relevant, “salient” difference between the prior art Lotus

Carat design and the ‘132 Patent’s claimed design is that the ‘132 Patent teaches

smaller diamonds at the periphery that are single-cut, while the Lotus Carat

teaches smaller, full-cut diamonds at the periphery. Indeed, as Patent Owner itself

stated in convincing the Patent Office to confirm the ‘132 Patent during the prior

ex parte reexamination and in also convincing the Court of the patentability of the

‘132 Patent, “the crucial and most salient teaching in the ‘132 Patent is to provide

[] single cut diamonds only at the periphery . . . .” Reconsideration Request,

Exhibit 1010 at 4 (emphases added).

Patent Owner therefore concedes that all of the other features of the

‘132 Patent—i.e., those other than the mixing or combination of smaller, round

peripheral diamonds of one cut (e.g., single cut) around a central larger and round

diamond of a different cut (e.g., full cut)—are known in the field and/or obvious.

Patent Owner has likewise conceded that a ± 1 difference in the number of

peripheral diamonds is irrelevant. See, e.g., Patent Owner’s Written Statement of

Issues to Be Discussed at Interview Pursuant to MPEP 2281, transmitted

February 25, 2013 and attached hereto as Exhibit 1022, at 2 (“[P]atentee agrees

that, to an ordinary observer, the appearance with 8 stones is the same as with the 9

stones. No one ‘counts’ around the circle to discern the ‘number,’ or more

specifically the one stone difference in the stone count.”) (emphasis in original).



36

However, as Petitioners now show, the feature asserted and claimed to be “salient”

and distinct—which was crucial to the issue of non-obviousness during the prior

ex parte reexamination—was common and well-known to designers skilled in the

art prior to the effective priority date of the ‘132 Patent. The Auction House

Catalogs teach, by photos and description, the mixing of a large, round, full-cut

diamond surrounded by a plurality of smaller, round, single-cut diamonds. The

sole claim of the ‘132 Patent is clearly obvious.

Therefore, in light of the combinations of references listed in

Section XII.B.2., infra, the “diamond jewellery” design claimed in the ‘132 Patent

is obvious—thus unpatentable.

Lotus Carat Fig. 1 (Ex. 1011) ‘132 Patent Fig. 1 (Ex. 1001)

Likewise, when the Lotus Carat, as depicted in the Lin Article (Lotus Carat

Fig. 2, infra) and/or in the Lin Magazine (Lotus Carat Fig. 3, infra), is viewed side-

by-side with the claimed design of the ‘132 Patent (‘132 Patent Fig. 1, infra), it is



37

evident that the Lotus Carat is “basically the same” as the ‘132 Patent’s claimed

design for the reasons laid out above.

Lotus Carat Fig. 2 (Ex. 1013) 132 Patent Fig. 1 (Ex. 1001)

Lotus Carat Fig. 3 (Ex. 1014) 132 Patent Fig. 1 (Ex. 1001)

Thus, the Lotus Carat diamond jewelry design that is depicted in all three

Lin References is “basically the same” as the ‘132 Patent’s claimed design, with

only one relevant difference: the Lin References’ Lotus Carat design does not

teach the mixing of peripheral smaller round single-cut diamonds about a larger,

central round diamond of a full-cut.

Yet each of the Auction House Catalogs teaches just that: large, full-cut

round central diamonds surrounded on their periphery by smaller, round, single-



38

cut diamonds. As described immediately below, the secondary references (i.e., the

Auction House Catalogs) teach the one aspect of the ‘132 Patent that was

emphasized by the Patent Owner as missing from the Lin References—which,

again, is the use of smaller, round peripheral diamonds of one cut (e.g., a single cut)

to surround a larger central diamond of a different cut (e.g., a full cut). But that is

shown by the prior art now brought to the Patent Office.

2. Proposed Rejections: Primary Reference in View of

Secondary References

Under the second step of the Federal Circuit’s two-step test for determining

obviousness under 35 U.S.C. § 103, set forth in more detail in Section XII.A.,

supra, Petitioners next identify secondary references that “modify [the primary

reference] to create a design that has the same overall visual appearance as the

claimed design.” Apple, 678 F.3d at 1329-30 (citations & quotations omitted,

alteration in original).

Each jewelry design depicted in the Auction House Catalogs, each showing

and teaching the concept of mixing of a large, central, round full-cut diamond with

smaller, round and peripheral single-cut diamonds, as identified in Section IX.,

supra, would be thought of by a designer in the field to modify the Lotus Carat

design to create a design having the same overall visual appearance as the

‘132 Patent’s claimed design.



39

Moreover, such mixing is not “counterintuitive” at all. Contra

Reconsideration Request, Exhibit 1010 at 6 (“It was counterintuitive. . . to

deliberately choose some of the stones to be ‘full cut’ and to provide the other

stones as ‘single cut’ diamonds.”). Indeed, it makes sense because (a) the prior art

teaches it and (b) the cost of making single-cut diamonds is ordinarily less (due to

the labor savings) than the cost to manufacture full-cut diamonds.

Specifically, each of the Heritage Art Deco Diamond Ring,

Heritage Diamond Ring, Christie’s Diamond Ring, Christie’s Diamond Cluster

Ring, Sotheby’s Ring, and Sotheby’s Necklace teaches and shows the common

concept in the field of jewelry design relating to diamond jewelry of mixing of

smaller peripheral round stones of one cut (e.g., a single cut) around a larger,

central and round diamond of a different cut (e.g., a full cut).

a.

Lin Publication and Heritage Art Deco Diamond Ring

When the Lotus Carat as depicted in the Lin Publication (Lotus Carat Fig. 1,

infra) is combined with the teaching of the Heritage 2007 Catalog’s Heritage Art

Deco Diamond Ring (Secondary Ref. Fig. 1, infra) it renders obvious, under

35 U.S.C. § 103, the ‘132 Patent’s claimed design. That is because the Heritage

Art Deco Diamond Ring teaches (understood by the photo and associated

description) a “round brilliant cut diamond . . . enhanced by single-cut diamonds”



40

(Exhibit 1015 at 20152): the larger central and round diamond is brilliant-cut (i.e.,

full-cut) while the smaller peripheral stones feature single cut diamonds.

Consequently, the Heritage Art Deco Diamond Ring teaches the one

element argued as “missing” from the Lotus Carat as depicted in the Lin

Publication—namely, the mixing of round diamond peripherals of one cut (single

cut) with a central, larger, and round diamond stone of a different cut (full cut).

The Lin Publication teaches all the other elements of the ‘132 Patent’s claimed

design, including the use of a larger central diamond as well as the use of smaller,

canted and slightly overlapped round diamonds extending around the periphery of

the center and larger stone.

A jewelry designer having ordinary skill in the art would have been

motivated to use the Heritage Art Deco Diamond Ring’s teachings (mixing of

smaller, round, single-cut diamonds to surround a larger, round and full-cut

diamond) to modify the Lotus Carat of the Lin References. Use of the single cut

diamonds would be a cost savings. And, specifically, a person having ordinary

skill in the art would have been motivated to modify the Lotus Carat design to

include the combination of different cuts taught by the Heritage Art Deco Diamond

Ring. Thus, the combination of these two references is obvious and there is no

advancement of the prior art by the claimed design of the ‘132 Patent. The

‘132 Patent’s claimed invention is not patentable.



41

Therefore, the claimed design of the ‘132 Patent is obvious in light of the

teaching of the Lin Publication in combination with the teaching of the

Heritage 2007 Catalog, specifically the Heritage Art Deco Diamond Ring.

Secondary Ref. Fig. 1 (Ex. 1015) Lotus Carat Fig. 1 (Ex. 1011)

b.

Lin Publication and Heritage Diamond Ring

The Heritage 2007 Catalog’s Heritage Diamond Ring (Secondary Ref. Fig. 2,

infra), like the Heritage Art Deco Diamond Ring described in Section XIII.B.2.a.,

supra, modifies the Lotus Carat design as depicted in the Lin Publication

(Lotus Carat Fig. 1, infra) such that, when the two references’ teachings are

combined, they render the ‘132 Patent’s claimed design obvious under § 103. This

is due to the Heritage Diamond Ring’s teaching of a “round brilliant cut

diamond . . . enhanced by single-cut diamonds” (Exhibit 1015 at 20153): the larger

central diamond features a brilliant cut (i.e., a full cut) while the smaller peripheral



42

stones are single-cut.14

This concept of mixing single cut diamonds and a larger

round and full-cut diamond is common and old; it is clearly a concept taught by the

prior art. There is nothing at all “counterintuitive” to such a combination, despite

the statement to the contrary by Patent Owner in the prior ex parte reexamination.

Thus, the Heritage Diamond Ring teaches and supplies the one element

“missing” from the Lotus Carat design of diamond jewelry as depicted in the Lin

Publication. Therefore, the claimed design of the ‘132 Patent is obvious in light of

the Lin Publication’s teaching when combined with the Heritage 2007 Catalog’s

Heritage Diamond Ring teaching. See also discussion in Section XIII.B.2.a., supra.


14 It should be noted that the photo of the Heritage Diamond Ring shows two rings

one placed atop another for illustrative purposes. The description describes both

rings. For present purposes, Petitioners refer to the top ring of the set, as it shows a

large, central and full-cut diamond surrounded on its periphery, as set forth in the

written description, by several, smaller, round and single-cut diamonds.



43

c. Lin Publication and Christie’s Diamond Ring

The Christie’s September 2005 Catalog’s Christie’s Diamond Ring

(Secondary Ref. Fig. 3, infra) can be used to modify the Lotus Carat design as

depicted in the Lin Publication (Lotus Carat Fig. 1, infra) such that, when the two

references’ teachings are combined, they render the ‘132 Patent’s claimed

“diamond jewellery” design obvious under § 103. The Christie’s Diamond Ring

shows and is described to teach a “central old-brilliant-cut15

diamond” to pierced

gallery and “shoulders set with single-cut diamonds” (Exhibit 1016 at 19869)—it

15 A brilliant (i.e., full) cut is, by definition, a modern cut that was developed in or

around 1919. See, e.g., Antique Diamond Cuts, Brilliant Earth,

http://www.brilliantearth.com/antique-diamond/ (last visited Dec. 16, 2015). Thus,

Petitioners presume that the Christie’s September 2005 Catalog intends to describe

a brilliant (i.e., full) cut.

However, even if the description refers to an older cut, such as an old mine

cut, the Christie’s Diamond Ring nevertheless teaches the mixing of one style of

cut diamonds set around the periphery of a differently-cut central, large and round

diamond. Consequently, the teaching of the Christie’s Diamond Ring of mixing of

such cuts, when used to modify the Lotus Carat design of the Lin Publication,

renders the ‘132 Patent’s claimed design obvious and unpatentable under §103.



44

teaches a large, central, round and brilliant-cut (i.e., full-cut) diamond surrounded

by a set of smaller, round, and single-cut peripheral diamonds.

When combined with the teaching of the Lotus Carat design, as depicted in

the Lin Publication, the Christie’s Diamond Ring teaching of mixing of diamond

cuts renders the claimed design of the ‘132 Patent obvious—because the Christie’s

Diamond Ring teaches the common concept and combination of single-cut, smaller

peripheral round diamonds placed and set around a full-cut, larger central round

diamond. See also discussion in Section XIII.B.2.a., supra.


d. Lin Publication and Christie’s Diamond Cluster Ring

The Christie’s March 2005 Catalog’s Christie’s Diamond Cluster Ring

(Secondary Ref. Fig. 4, infra) can be used to modify the Lotus Carat design as

depicted in the Lin Publication (Lotus Carat Fig. 1, infra) such that the

combination renders the ‘132 Patent merely obvious under § 103. The Christie’s



45

Diamond Cluster Ring shows, describes, and teaches a “brilliant-cut diamond

single stone centre with old and single-cut diamond gallery and shoulders”

(Exhibit 1017 at 20210): i.e., a brilliant-cut (i.e., full-cut) larger central and round

stone surrounded by a plurality of smaller, round, and single-cut (and old-cut)

diamonds.

The Christie’s Diamond Cluster Ring teaches the one element missing from

the Lotus Carat design, as depicted in the Lin Publication, namely, the surrounding

of a full-cut and round large center diamond with single-cut, round and smaller

peripheral diamonds. Consequently, the teaching of the Diamond Cluster Ring,

when combined with the teaching of the Lotus Carat design of the Lin Publication,

renders the ‘132 Patent’s claimed design obvious. See also discussion in

Section XIII.B.2.a., supra.




46

e. Lin Publication and Sotheby’s Ring

The Sotheby’s February 2003 Catalog’s Sotheby’s Ring (Secondary Ref.

Fig. 5, infra) would be considered by one of skill in the art to modify the Lotus

Carat design as depicted in the Lin Publication (Lotus Carat Fig. 1, infra) so as to

render the ‘132 Patent’s claimed design obvious under § 103. The Sotheby’s Ring

teaches the combination of one type of cut for a large and central round diamond

with peripheral, smaller, and round diamonds of a different cut. Specifically, the

Sotheby’s Ring features a “cluster set with brilliant-, circular-, and single-cut

diamonds.” (Exhibit 1018 at 19790.)

Thus, the Sotheby’s Ring teaches the one critical element that the Lotus

Carat, as depicted in the Lin Publication, lacks: the mixing of different diamond

cuts at the periphery, i.e., smaller round single-cut diamonds in comparison to the

larger, single, round and center stone, in a jewelry design. As such, the Sotheby’s

Ring’s teachings, in combination with the teachings of the Lotus Carat, render the

‘132 Patent’s claimed design merely obvious. See also discussion in

Section XIII.B.2.a., supra.



47


f.

Lin Publication and Sotheby’s Necklace

The Sotheby’s April 2005 Catalog’s Sotheby’s Necklace (Secondary Ref.

Fig. 6, infra) modifies the Lotus Carat design as depicted in the Lin Publication

(Lotus Carat Fig. 1, infra) such that the combination renders the ‘132 Patent’s

claimed design obvious under § 103. The Sotheby’s Necklace teaches, in its photo

and written description, diamond clusters extending around the necklace, each

“with brilliant- and circular-cut diamonds” (Exhibit 1019 at 19955), that is, a

combination of two different diamond cut styles: one larger, round and central

diamond with a brilliant (i.e., full) diamond cut at the center, and other, smaller,

and round diamonds with another cut style surrounding the central diamond.

Thus, the Sotheby’s Necklace teaches the one element that the Lotus Carat

design, as depicted in the Lin Publication, lacks. When the teaching of the

Sotheby’s Necklace is combined with the teaching of the Lotus Carat design, as



48

would be done by one of ordinary skill in the art of designing jewelry, the resulting

combination renders the ‘132 Patent’s claimed design merely obvious. See also

discussion in Section XIII.B.2.a., supra.


3.

Additional Proposed Rejections

Both the Lotus Carat designs as depicted in the Lin Article (Lotus Carat

Fig. 2, supra) and/or as depicted in the Lin Magazine (Lotus Carat Fig. 3, supra)

can easily replace the Lotus Carat design as depicted in the Lin Publication

(Lotus Carat Fig. 1, supra). These Lotus Carat designs can also be combined with

each of the Auction House Catalog teachings of the concept of mixing of a larger

single, round, full-cut diamond surrounded by a set of smaller, round, single-cut

diamonds. Thus, there are a total of 18 distinct invalidating combinations of prior

art references—each of the teachings of the Lin References (Publication, Article,

and Magazine) can be combined with any one of the Auction House Catalog



49

teachings to arrive at the same conclusion of mere obviousness and clear

unpatentability of the claimed invention of the ‘132 Patent.

XIII. Conclusion

For the reasons set forth above, Petitioners have demonstrated a reasonable

likelihood that they will prevail on the single claim of the ‘132 Patent. Petitioners’

Request for Inter Partes Review should therefore be granted, an inter partes

review should be instituted, and the single claim of the ‘132 Patent should be found

unpatentable and the ‘132 Patent cancelled.

Respectfully submitted,

Dated: January 7, 2016

By: /s/ Andrew S. Langsam/

Andrew S. Langsam

Reg. No. 28,556

Pryor Cashman LLP

7 Times Square, 38th Floor


Telephone:212-326-0180

Facsimile: 212-515-6969


Attorneys for Petitioners



CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that,

on January 7, 2016, a complete and entire copy of this Request for Inter Partes

Review and all supporting exhibits were provided via the United States Postal

Service and via email, to the Patent Owner by serving Patent Owner’s counsel of

record as follows:

Max Moskowitz

Reg. No. 30,576

Ostrolenk Faber LLP

1180 Avenue of the Americas



The undersigned further certifies that, on January 7, 2016, a complete and

entire copy of this Request for Inter Partes Review and all supporting exhibits

were provided via email to other counsel of record in the Action captioned BK

Jewellery et al. v. Kiran Gems Pvt. Ltd. et al. (S.D.N.Y. Civil Action No. 1:15-cv-

02333-LAP), as follows:

John Evans Jureller

Klestadt, Winters, Jureller, Southard & Stevens LLP

200 West 41st Street, 17th Floor



Dated: January 7, 2016

By: /s/ Andrew S. Langsam/

Andrew S. Langsam

Reg. No. 28,556

Pryor Cashman LLP7 Times Square, 38th Floor


Telephone:212 326 0180

premier gem v. wing yee gems & jewellery - petition for ipr

Documents