DCT

1:20-cv-00189

Carnegie Institution Of Washington v. Pure Grown Diamonds Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-00189, S.D.N.Y., 01/09/2020
  • Venue Allegations: Venue for Pure Grown Diamonds, Inc. is alleged based on its residence and regular and established place of business in New York City, where acts of infringement allegedly occurred. Venue for IIA Technologies is based on its status as a foreign entity not resident in the United States.
  • Core Dispute: Plaintiff alleges that Defendants’ lab-grown diamonds, created through a Chemical Vapor Deposition (CVD) process and subsequent annealing, infringe patents related to specific methods of diamond production and post-growth enhancement.
  • Technical Context: The technology concerns methods for manufacturing and improving high-quality, single-crystal diamonds using microwave-plasma CVD and high-pressure, high-temperature annealing, a key area in the growing market for lab-created gemstones.
  • Key Procedural History: U.S. Patent No. RE41,189 is a reissue of U.S. Patent No. 6,811,610. This procedural step, which can involve changes to claim scope, may introduce issues of intervening rights for the defense.

Case Timeline

Date Event
2001-11-07 ’078 Patent Priority Date
2002-06-03 ’189 Patent (Original) Priority Date
2005-02-22 ’078 Patent Issue Date
2010-04-06 ’189 Patent Reissue Date
2014-12-08 PGD Press Release Describing its Diamond Growing Process
2017-11-29 PGD Announces Launch of Bridal Jewelry Collection
2018-06-18 PGD Allegedly Moves to a New Location in New York City
2020-01-09 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,858,078 - "Apparatus and Method for Diamond Production," issued February 22, 2005

The Invention Explained

  • Problem Addressed: The patent’s background section notes that prior art methods for growing synthetic diamonds via chemical vapor deposition (CVD) were limited to slow growth rates (typically under a few micrometers per hour) and often produced lower-quality, polycrystalline, or heavily twinned diamond material (’078 Patent, col. 1:47-57).
  • The Patented Solution: The invention describes a method and apparatus for growing high-quality, single-crystal diamond at high rates using microwave plasma CVD (MPCVD). The solution centers on precise thermal management, specifically using a heat-sinking holder in thermal contact with the side surfaces of the diamond seed and actively controlling the process to maintain a very uniform temperature (gradients less than 20°C) across the diamond's growth surface (’078 Patent, Abstract; col. 2:16-28). This precise control allows for high-quality growth at moderate pressures (at least 130 torr), conditions under which prior art methods often failed.
  • Technical Importance: The claimed method enables the production of large, single-crystal diamonds at commercially significant growth rates (over 50 microns per hour in examples), addressing a key bottleneck that previously limited the viability of lab-grown diamonds for many applications (’078 Patent, col. 13:58-60).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 12 (Compl. ¶94).
  • Independent Claim 1: A method comprising:
    • controlling the temperature of a diamond's growth surface so that temperature gradients are less than 20°C; and
    • growing a single-crystal diamond via MPCVD in a chamber with an atmospheric pressure of at least 130 torr.
  • Independent Claim 12: A method comprising:
    • controlling the temperature of a diamond's growth surface so that temperature gradients are less than 20°C; and
    • growing a single-crystal diamond via MPCVD at a growth temperature of 900-1400°C.
  • The complaint alleges infringement of "one or more claims," which may imply an intent to assert dependent claims later in the litigation (Compl. ¶94).

U.S. Reissue Patent No. RE41,189 - "Method of Making Enhanced CVD Diamond," issued April 6, 2010

The Invention Explained

  • Problem Addressed: As-grown CVD diamonds often contain structural defects and impurities that make them "opaque or very dark," limiting their utility. Previous attempts to improve these diamonds with high-temperature treatment were unsuccessful, as heating above 850°C typically caused the diamond to degrade or convert to graphite (’189 Patent, col. 1:10-32).
  • The Patented Solution: The invention is a post-growth annealing method to improve the optical properties of single-crystal CVD diamond. The diamond is subjected to a combination of very high temperature (at least 1500°C) and very high pressure (at least 4.0 GPa). The application of extreme pressure is the key innovation, as it prevents the diamond's crystal lattice from degrading at temperatures far beyond its normal stability point (’189 Patent, Abstract; col. 2:40-50).
  • Technical Importance: This high-pressure, high-temperature (HPHT) treatment can convert a low-quality, dark, or opaque CVD diamond into a clear, more perfect crystal, thereby significantly enhancing its value for both gem and industrial applications (’189 Patent, col. 2:30-34).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶120).
  • Independent Claim 1: A method for improving the optical clarity of a single-crystal CVD diamond, comprising:
    • raising the diamond to a temperature of at least 1500°C; and
    • simultaneously applying a pressure of at least 4.0 GPa.
  • The complaint alleges infringement of "one or more claims," which may imply an intent to assert dependent claims later in the litigation (Compl. ¶120).

III. The Accused Instrumentality

  • Product Identification: The accused products are "lab-grown CVD diamonds and/or annealed diamonds" manufactured, imported, and sold by Defendants Pure Grown Diamonds, Inc. (PGD) and IIA Technologies (Compl. ¶¶31, 46, 81).
  • Functionality and Market Context:
    • The complaint alleges that Defendants manufacture diamonds using a microwave plasma chemical vapor deposition (MPCVD) process (Compl. ¶¶81, 88). A graphic from PGD's website, cited in the complaint, illustrates this process starting with a carbon seed in a microwave chamber (Compl. p. 17, FIG. at ¶82).
    • Defendants' own marketing materials, referenced in the complaint, describe the process as placing a "diamond seed" inside a "low-pressure microwave chamber," introducing hydrogen and methane gas, and using a microwave generator to create a "glowing plasma ball" that deposits carbon onto the seed (Compl. ¶¶83-84).
    • The resulting diamonds are marketed as "Type IIa," a category defined by high purity and clarity due to the absence of nitrogen or other trace elements (Compl. ¶¶85-86). The complaint includes a screenshot from PGD's website that highlights this "Type IIa" classification (Compl. p. 18, FIG. at ¶86).
    • The complaint alleges that IIa Technologies is the manufacturer of the diamonds and PGD acts as the "exclusive retailer and distributor" (Compl. ¶39). The diamonds are sold both as loose stones and incorporated into finished products like bridal jewelry (Compl. ¶¶21, 23).

IV. Analysis of Infringement Allegations

’078 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
controlling temperature of a growth surface of the diamond such that all temperature gradients across the growth surface are less than 20° C. The complaint alleges, upon information and belief, that Defendants’ process requires maintaining the growth surface temperature gradient to within 20°C. ¶98 col. 2:25-28
growing single-crystal diamond by microwave plasma chemical vapor deposition on the growth surface Defendants’ websites and press releases describe their manufacturing as a “Microwave Plasma Chemical Vapor Deposition” process that grows diamonds from a “small carbon seed.” ¶¶81, 95-97 col. 1:16-19
at a growth temperature in a deposition chamber having an atmosphere with a pressure of at least 130 torr. The complaint alleges, upon information and belief, that Defendants’ process requires an atmospheric pressure of at least 130 torr. ¶99 col. 15:1-4
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint's allegations regarding the specific temperature gradient (<20°C) and pressure (>130 torr) are made "upon information and belief" and lack direct factual support from Defendants' public materials. A central question will be what evidence Plaintiff can obtain through discovery to substantiate these claims about Defendants' proprietary process.
    • Scope Questions: Defendants describe their process as occurring in a "low-pressure" chamber (Compl. ¶¶83, 89). A dispute may arise over whether the actual operating pressure of this chamber falls within the scope of the claim term "at least 130 torr." The case may turn on the reconciliation of the patent's "moderate pressure" teaching with the accused "low-pressure" description.

’189 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method to improve the optical clarity of CVD diamond where the CVD diamond is single crystal CVD diamond The complaint alleges that because Defendants market their diamonds as "Type IIa" (a high-purity, high-clarity designation), they must be using a method to improve the clarity of as-grown CVD diamonds, which are allegedly "unlikely to be Type IIa" without additional processing. A visual from PGD's website stating "PURE GROWN DIAMONDS ARE TYPE IIA" is used to support this inference (Compl. p. 18, FIG. at ¶85). ¶¶123-124 col. 1:10-14
by raising the CVD diamond to a set temperature of at least 1500° C. The complaint alleges on "information and belief" that Defendants' manufacturing process for Type IIa diamonds requires heating them to a temperature of at least 1500°C. ¶125 col. 4:14-15
and a pressure of at least 4.0 GPA outside of the diamond stable phase. The complaint alleges on "information and belief" that Defendants' process for manufacturing Type IIa diamonds requires a pressure of at least 4.0 GPa. ¶126 col. 4:15-16
  • Identified Points of Contention:
    • Inferential Infringement Theory: The infringement theory for the ’189 Patent is largely inferential. It posits that because the final product is "Type IIa," it must have been made using the claimed HPHT process. A key question is whether this inference is sound or if Defendants could achieve "Type IIa" quality through non-infringing methods.
    • Technical Questions: Similar to the '078 Patent, the complaint provides no direct evidence of the specific temperatures and pressures used in any post-growth treatment. The viability of this infringement count will depend entirely on evidence of Defendants' actual process parameters revealed in discovery.

V. Key Claim Terms for Construction

Term from the ’078 Patent: "pressure of at least 130 torr"

  • Context and Importance: This term is critical because Defendants' public statements describe their process as "low-pressure" (Compl. ¶¶83, 89), creating an apparent contradiction with the claim language. The viability of the infringement claim may depend on whether Defendants' actual, quantified operating pressure is found to be 130 torr or higher.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim uses the open-ended phrase "at least," establishing a floor at 130 torr with no explicit upper bound. The specification discloses a preferred range up to 400 torr, supporting the idea that the invention covers a range of pressures above the floor (’078 Patent, col. 15:47-50).
    • Evidence for a Narrower Interpretation: The specification distinguishes the invention from prior art that used "low pressures of less than 100 torr" (’078 Patent, col. 1:60-61). A party could argue that the term should be construed in this context to mean a "moderate" pressure, distinct from the very low pressures of the prior art. The primary example in the patent operates at 160 torr (’078 Patent, col. 13:51).

Term from the ’189 Patent: "improve the optical clarity"

  • Context and Importance: This phrase in the preamble sets the purpose of the method and is likely to be treated as a claim limitation. Practitioners may focus on this term because the infringement allegation hinges on the inference that achieving "Type IIa" quality necessarily constitutes an "improvement of optical clarity" via the patented method.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the outcome broadly, stating that the process "causes the optical properties to change so much that opaque material become clear" and improves thermal and electrical properties (’189 Patent, col. 2:30-34). This could support a reading where any measurable improvement in transparency or reduction in color qualifies.
    • Evidence for a Narrower Interpretation: The specification's primary example describes transforming an "opaque CVD diamond layer" that "turned clear" after treatment (’189 Patent, col. 4:9-12). A party might argue that the term requires a significant, transformative improvement, rather than a minor refinement of an already-translucent diamond.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement against both Defendants for both patents. The allegations are based on Defendants encouraging retailers and end-users to use, sell, and offer for sale the infringing diamonds through marketing, promotional materials, and establishing sales channels in the United States (Compl. ¶¶107-109, 131-133).
  • Willful Infringement: The complaint alleges willfulness based on two theories. First, it asserts that the patents-in-suit are "well known in the lab-grown diamond industry" (Compl. ¶¶29, 44). Second, it specifically alleges that Defendants' CTO, Dr. Devi Shankar Misra, is a named inventor on other diamond-related patents and therefore "did become aware, or should have become aware," of the patents-in-suit through routine prior art searches conducted during the prosecution of his own patents (Compl. ¶¶111, 135).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. The Evidentiary Hurdle: Will discovery yield evidence to substantiate the complaint's "information and belief" allegations regarding the specific, quantified process parameters (temperature gradients, pressures, annealing conditions) used in Defendants' proprietary manufacturing process? Without such evidence, the infringement claims, particularly for the specific numerical limitations, may not be sustainable.
  2. The Inferential Link: For the ’189 patent, a central issue will be the strength of the infringement theory itself. Can Plaintiff convince the court that marketing a product as "Type IIa" creates a sufficient and plausible inference that it must have been treated with the claimed high-pressure, high-temperature method, or are there alternative, non-infringing pathways to achieve that quality?
  3. The "Pressure" Paradox: For the ’078 patent, the case may turn on claim construction and factual findings related to pressure. How will the court construe "at least 130 torr" in light of the patent's context, and can this be reconciled with Defendants' public characterization of their process as "low-pressure"?