Thursday, October 6, 2016

Premiere Gem Corp. v. Wing Yee Gems – Petitioner Turned Down in Diamond Jewelry Design IPR

In July, the Patent Trials and Appeals Board (PTAB) declined to institute Inter Partes Review of a design patent for an ornamental design of diamond jewelry.  Then, just last week, the Board denied a petition to rehear that earlier decision.  These decisions in Premier Gem Corp. et al. v. Wing Yee Gems & Jewelry Ltd. (IPR2016-00434) demonstrate how failing to introduce into evidence the details of the prior art can be fatal to a claim of anticipation or obviousness. They also offer a reminder that challenged designs and the prior art are to be compared on the basis of “overall visual appearance,” not mere “design concepts.”

Petitioners Premier Gem Corp. and Jay Gems Inc. (collectively, “Petitioner”) petitioned the Board to invalidate U.S. Design Patent No. D618,132 (the “’132 patent”).  The patent claims a jewelry design in which a large “full cut” central diamond is surrounded by nine smaller “single cut” diamonds.  (As the decision explains, “[f]ull-cut diamonds have more facets than single-cut diamonds, and typically produce a greater sparking effect.”)  The two figures of the patent are reproduced below:

U.S. Design Patent. D618,132

The Board explains that, when considering whether a patented design is obvious, one must first determine whether a single primary reference creates “basically the same visual impression” as the patented design.  If so, the primary reference may be modified by secondary references to create a design that has the same overall visual appearance as the claimed design.  Such a modification may only be applied, however, where the secondary references are “so related to the primary reference” that the appearance of ornamental features in one would suggest their application in the other.

Here, Petitioner proposed the Lotus Carat, appearing in a number of interrelated publications, as the primary reference.  The Lotus Carat features a central, full-cut diamond surrounded by eight smaller diamonds that—unlike the ‘132 patent—are also full-cut, all in a setting including a number of “protrusions” 112:

The Lotus Carat (Prior Art)
According to Petitioner, the only “relevant, salient” difference between the ‘132 patent and the Lotus Carat was the full cut of the peripheral diamonds in the latter.  As such, Petitioner sought to introduce as secondary references a number of jewelry pieces pictured and described in several catalogs.  Each of the proposed Secondary References included a central “brilliant cut” (i.e., full-cut) diamond surrounded by a number of single-cut diamonds in a variety of designs.  A representative secondary reference is shown below, as provided by the Petitioner:

Christie's Diamond Cluster Ring (Prior Art)
While the patent owner did not contest that the Lotus Carat qualified as a primary reference, the board disagrees with the Petitioner’s assertion that the “mixing of diamonds with different cuts” is the only relevant difference between the ‘132 patent and the Lotus Carat for purposes of obviousness.  To the contrary, “[e]ven a cursory examination of the patented design” shows that other features (including the protrusions 112) contribute to each design’s overall visual appearance.

Nonetheless, the Board concludes that it need not decide whether the Lotus Carat qualifies as a primary reference—even if it did, the Board is unable to conclude, from the photographs presented, that the modifications made by the secondary references would properly “bridge the gap” to result in the same overall visual appearance as the patented design:
Here, the details of the secondary reference designs are not clearly discernable based on the evidence in the record.  For example, it is not clear, just by viewing the proffered photos, how each stone in a particular secondary reference design is cut (i.e., single vs. full cut), what the shape of each stone is, how the stones are angled and set in relation to one another, and what height the stones are in relation to one another.  All of these features, at least, contribute to the overall appearance of the patented design.  Without supporting evidence, we are left to guess at what is shown in the photos of the secondary references.  
The Board goes on to admonish Petitioner for improperly focusing on “design concepts” instead of overall visual appearance.  For example, while Petitioner argues that the claimed design and the Lotus Carat both feature “a larger, round, central, full-cut . . . diamond surrounded by a plurality of smaller, canted or angled, round diamonds,” and that the secondary references disclose “mixing stones of different cuts,” the Board rejects such reasoning as “too high a level of abstraction to be useful in this obviousness analysis.”  Petitioner also downplays a number of other differences between the references and the patented design, which the Board suggests is “driven by a hindsight reconstruction” rather than the teachings of the references.

For these reasons, the Board found that the Petitioner did not show a reasonable likelihood of prevailing, and so denied the petition.

Though Petitioner sought a rehearing, the Board was unswayed.  For example, the Board notes that Petitioner fails to address the lack of detail in the secondary references, and continues to rely on “conclusory attorney argument” in favor of a hindsight-driven combination of design features.  Thus, the Board denies Petitioner’s request for rehearing.

Those seeking Inter Partes Review of a design patent—or otherwise trying to invalidate one—should be sure to rely on clear, legible, sufficiently detailed copies of the references to be used.  Arguments putting forth prior art references should always be directed to the overall visual appearance of the respective designs, rather than focusing on “design concepts” or other improperly abstract characterizations of the designs.

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