PTAB

IPR2025-00807

Henri DauSSI LLC v. Ecna LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Oblong Precious Stone
  • Brief Description: The ’791 patent discloses a specific cut for oblong-shaped, shallow precious stones, such as diamonds, intended to enhance brilliance. The invention is defined by specific angular ranges for the crown and pavilion surfaces and their relationship to each other.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kanner and Schmidt - Claims 1-14 are obvious over Kanner in view of Schmidt.

  • Prior Art Relied Upon: Kanner (U.S. Design Patent No. D465,431) and Schmidt (Swiss Patent No. CH 684301).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kanner disclosed the basic ornamental design for an oblong, emerald-cut diamond, including the crown, pavilion, table, and girdle, but did not provide specific angles or dimensions. Schmidt taught a cut for relatively flat precious stones to achieve "good brilliance" and a "large appearance." Schmidt disclosed specific, overlapping angular ranges for the crown (28-32°) and pavilion (32-37°), which fall within or overlap the ranges recited in claim 1 of the ’791 patent (crown 30-36°, pavilion 30-34°). For dependent claims, Petitioner asserted Schmidt’s exemplary dimensions yielded a total depth percentage (41.18%) within the claimed ranges, and that applying Schmidt's teachings to other known stone shapes was admitted prior art.
    • Motivation to Combine: A POSITA would combine the references to apply the brilliance-enhancing parameters of Schmidt to the oblong diamond shape of Kanner. Petitioner asserted Schmidt explicitly taught its cut could be applied to various gemstone shapes, including rectangular ones, to solve the problem of achieving brilliance in flat stones. The combination would have been a matter of routine optimization to improve the appearance of a known diamond shape using known cutting principles.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Schmidt provided a known method for improving the brilliance of flat stones by controlling specific angles, and applying these known parameters to a standard oblong shape like Kanner’s would predictably enhance its visual properties as intended.

Ground 2: Anticipation by Grossbard - Claims 1, 5, and 6 are anticipated by Grossbard.

  • Prior Art Relied Upon: Grossbard (Patent 4,555,916).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Grossbard disclosed every element of independent claim 1. Grossbard taught an emerald-cut diamond designed to be more brilliant and less wasteful of raw material. It disclosed a crown angle range of 35-45° and a pavilion angle range of 33-42°. Petitioner argued these ranges anticipated the claimed ranges because they overlap (35-36° for crown angle and 33-34° for pavilion angle). Grossbard also disclosed that within these ranges, the crown angle can be larger than the pavilion angle by less than 6 degrees (e.g., 35° crown and 33° pavilion). For dependent claims, Petitioner argued Grossbard's disclosed pavilion angle of 33° anticipated claim 5, and its disclosure of a diamond anticipated claim 6.

Ground 3: Obviousness over Greeff and Grossbard - Claims 1 and 5-12 are obvious over Greeff in view of Grossbard.

  • Prior Art Relied Upon: Greeff (U.S. Design Patent No. D463,315) and Grossbard (Patent 4,555,916).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Greeff, similar to Kanner, disclosed the basic ornamental design for an emerald-cut gemstone without specifying any functional angles. Grossbard provided the missing elements: specific crown and pavilion angle ranges (35-45° and 33-42°, respectively) that overlap with the claimed ranges. The combination of Greeff's shape and Grossbard's angles would render claim 1 obvious. Dependent claims related to specific non-round shapes were argued to be obvious based on admitted prior art that these shapes were extremely well-known.
    • Motivation to Combine: A POSITA would combine Greeff's emerald-cut gemstone design with Grossbard's teachings to enhance the fire and yield of the cut. Grossbard was directed at the known problem of making step-cut stones more brilliant while conserving raw material. Therefore, a POSITA would have been motivated to apply Grossbard's proven angular parameters to the basic gemstone shape shown in Greeff to achieve a predictable improvement in brilliance.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Sung (U.S. Design Patent No. 524,682) and Alburger (Patent 4,708,001) with the primary references of Schmidt and Grossbard, relying on similar theories of combining a basic stone shape with prior art teachings on brilliance-enhancing angles and dimensions.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv because the parallel district court litigation was in a very early stage. Key factors cited in favor of institution included: no trial date had been set, the parties had made minimal investment in the parallel proceeding, the petition was filed well before the one-year time bar, and Petitioner stipulated not to pursue the same grounds in district court if the IPR is instituted. Petitioner also contended that the petition presented a compelling case of invalidity based on prior art not considered during prosecution, favoring institution under §325(d).

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of the ’791 patent as unpatentable.