DCT

1:20-cv-04291

Jacob's Jewelry Co Ltd v. Tiffany Co

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-04291, S.D.N.Y., 06/05/2020
  • Venue Allegations: Venue is based on Defendants' residence, transaction of business, and commission of tortious acts within the Southern District of New York.
  • Core Dispute: Plaintiff alleges that Defendant’s color-changing jewelry infringes a patent related to a method of setting multiple stones at specific angles to create a color-shifting optical effect based on the viewer's perspective.
  • Technical Context: The technology concerns jewelry design, specifically the creation of dynamic visual effects through the geometric arrangement of gemstones rather than the intrinsic properties of the stones themselves.
  • Key Procedural History: The complaint states that Plaintiff contacted Defendant Tiffany and Company regarding infringement prior to filing suit. In response, Defendant allegedly asserted that the patent's claims are invalid in view of prior art, specifically a "Cartier Tourmaline brooch, dating back to the 1940's." This exchange establishes a basis for the complaint's allegations of pre-suit knowledge and willfulness.

Case Timeline

Date Event
2011-01-25 ’923 Patent Priority Date
2017-04-04 ’923 Patent Issue Date
2020-06-05 Complaint Filing Date

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

U.S. Patent No. 9,609,923 - "Color Changing Multiple Stone Setting"

The Invention Explained

  • Problem Addressed: The patent's background describes the challenge of creating color-changing jewelry. Prior methods relied either on rare and expensive gemstones that naturally change color in different lighting (e.g., alexandrite) or on applying coatings to crystals, which may obscure the natural beauty of the stone and be undesirable. (’923 Patent, col. 1:11-44).
  • The Patented Solution: The invention proposes a structural solution where the color-changing effect is created by the physical arrangement of the stones, independent of lighting conditions. It teaches setting multiple stones on a base at 90-degree angles relative to one another. As the jewelry moves or the observer's viewing angle shifts, the facets of different stones are presented to the viewer, causing the perceived color of the overall piece to change. (’923 Patent, col. 2:1-7, 40-42). Figures 2-4 illustrate a three-stone arrangement where each stone is perpendicular to the other two. (’923 Patent, Fig. 2-4).
  • Technical Importance: This technique allows for the creation of a dynamic, color-shifting visual effect using conventional stones (such as white diamonds) that do not themselves change color, thereby offering a novel aesthetic design principle. (’923 Patent, col. 4:33-37).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 16. (Compl. ¶12).
  • The essential elements of independent claim 16 include:
    • A base.
    • A plurality of first stones in a first row on a first plane surface of the base, displaying a first color.
    • A plurality of second stones in a second row on a second, contiguous plane surface, positioned "substantially perpendicularly" to the first stones and displaying a different, second color.
    • Each stone includes a "table facing outwards."
    • The girdles and pavilions of the first stones are in "close proximity" to the girdles and pavilions of the second stones, "thereby substantially covering and obscuring the base."
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as "color changing jewelry" sold by Defendants, as depicted in Exhibit B to the complaint, which is titled "Jewellery Insights by Katerina Perez." (Compl. ¶11).

Functionality and Market Context

  • The complaint alleges that the Accused Products are "constructed according to the teachings of the patent claims" and create a color-changing effect. (Compl. ¶11-12). The image provided as Exhibit B shows a piece of jewelry with densely set stones that appear to exhibit different colors or sheens. (Compl., Ex. B). The complaint does not provide further technical detail on how the Accused Products operate or achieve their visual effect. It alleges the products are commercially successful and valuable. (Compl. ¶10).

IV. Analysis of Infringement Allegations

The complaint does not include a claim chart or provide detailed, element-by-element infringement contentions. It makes a general allegation that the Accused Products "contain all the limitations of claim 16." (Compl. ¶12).

’923 Patent Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
a base; a plurality of first stones placed in a first row...displaying a first color; and a plurality of second stones set in a second row...displaying a second color The Accused Products are alleged to be color-changing jewelry comprising arranged gem stones. ¶11, ¶12 col. 7:32-44
such that said plurality of second stones is positioned substantially perpendicularly to said plurality of first stones The complaint makes a general allegation that the Accused Products are constructed according to the patent's teachings, which include this perpendicular arrangement. ¶12 col. 7:38-42
wherein each of said first and second stones includes a table facing outwards The complaint does not specifically address this element but alleges all limitations are met. ¶12 col. 7:44-45
wherein said respective girdles and said respective pavilions of the first stones are located in close proximity to the respective girdles and respective pavilions of the second stones, thereby substantially covering and obscuring the base of the setting The complaint does not provide specific facts regarding the proximity of stones or the obscuring of the base in the Accused Products. ¶12 col. 7:50-8:3

Identified Points of Contention

  • Scope Questions: The interpretation of "substantially perpendicularly" will be a central issue. The dispute may turn on whether the term requires a strict 90-degree angle between the rows of stones, as shown in the patent's embodiments, or if it permits a wider range of angles found in the Accused Products.
  • Technical Questions: A primary factual question is whether the Accused Products actually meet the structural limitations of claim 16. Specifically, what evidence does the complaint provide that the stones are arranged in "close proximity" such that they "substantially cover[] and obscur[e] the base"? The visual evidence in Exhibit B suggests densely packed stones, but whether this meets the specific claim language is a question for discovery and expert analysis. (Compl., Ex. B).

V. Key Claim Terms for Construction

  • The Term: "substantially perpendicularly"

    • Context and Importance: This term defines the core geometric relationship between the sets of stones, which is the basis for the claimed color-changing effect. The breadth of "substantially" will be critical in determining whether the specific angles in the Accused Products fall within the claim's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The use of the word "substantially" itself implies that the perpendicular relationship is not strictly limited to 90 degrees.
      • Evidence for a Narrower Interpretation: The patent specification repeatedly refers to a "90° angle" when describing the embodiments, which may support an argument that "substantially" only covers minor deviations from a 90-degree orientation. (’923 Patent, col. 3:57-59).

  • The Term: "close proximity...thereby substantially covering and obscuring the base"

    • Context and Importance: This limitation defines how densely the stones must be packed. It requires not just proximity but proximity that achieves a specific functional result: hiding the underlying setting. Infringement will depend on the physical construction of the accused jewelry.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue this requires only that the stones are the dominant visual feature, creating a pave-like surface where the base is not readily apparent to a casual observer.
      • Evidence for a Narrower Interpretation: The language "substantially covering and obscuring" and "close proximity" could be interpreted to require a nearly seamless surface of stones where the underlying base is almost entirely invisible, as suggested by the description of how the pavilions and girdles of adjacent stones interact. (’923 Patent, col. 8:1-3).

VI. Other Allegations

  • Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement without pleading specific supporting facts, such as identifying instructions or components that would form the basis for such claims. (Compl. ¶13).
  • Willful Infringement: The willfulness allegation is based on alleged pre-suit notice. The complaint states that Plaintiff contacted Tiffany about the infringement, and Defendant continued its allegedly infringing conduct after being "fully apprised of and...cognizant of the ongoing infringement." (Compl. ¶15, ¶17).

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

  • A core issue will be one of claim scope and construction: How broadly will the court construe the structural limitations of claim 16, particularly the terms "substantially perpendicularly" and the requirement that stones be in "close proximity" to "substantially cover[] and obscur[e] the base"? The viability of the infringement claim depends on whether these terms can read on the specific design of the accused Tiffany jewelry.

  • A second key issue will be factual and evidentiary: As the complaint is sparse on technical details, the case will depend on evidence developed during discovery. A central question will be whether the accused products achieve their visual effect through the specific geometric arrangement claimed in the ’923 Patent, or through an alternative, non-infringing design.

  • Finally, the case presents a clear validity dispute from the outset. Defendant's alleged reliance on a 1940s Cartier brooch as invalidating prior art suggests that a significant portion of the litigation may focus on whether the claimed invention was truly novel and non-obvious. (Compl. ¶15).