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

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

XI.

A.

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

B.

The 132 Patents Claim Should Be Construed by Reference Only

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

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

i

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 of

Secondary References ...............................................................38

3.

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

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

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

ii

EXHIBIT LIST
Exhibit

Description

Ex. 1001

U.S. Design Patent No. D618,132 to Tse-Kok Wong & LokSung 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

Courts Order, filed September 15, 2014 in the Prestige Action,

granting partial summary judgment regarding the 132 Patents
validity

Ex. 1006

Prestige Jewelry International, Inc.s Request for Ex Parte

Reexamination of the 132 Patent, dated March 2, 2012

Ex. 1007

Patent Offices 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 Offices Notice of Intent to Issue an Ex Parte Reexamination

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

Ex. 1010

Patent Owners 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 Lins Peoples Republic of China Patent Application

No. 200710076738.6, published under Publication No. CN
101112263A on January 30, 2008 (Lin Publication),
along with English-language translation of page 1 of the same

Ex. 1012

Tian-Wei Lins U.S. Patent Application No. 11/959,620, published

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

iii

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 Christies catalog for an auction scheduled to

take place on September 20, 2005 (Christies September 2005
Catalog)

Ex. 1017

Selected pages from the Christies catalog for an auction scheduled to

take place on March 20, 2005 (Christies March 2005 Catalog)

Ex. 1018

Selected pages from the Sothebys catalog for an auction scheduled to

take place on February 4, 2003 (Sothebys February 2003 Catalog)

Ex. 1019

Selected pages from the Sothebys catalog for an auction scheduled to

take place on April 20, 2005 (Sothebys April 2005 Catalog)

Ex. 1020

Patent Offices Non-Final Rejection of the 132 Patents claim, dated

January 15, 2013 (Non-Final Rejection)

Ex. 1021

Letter from Patent Owners counsel letter to the Court in the Prestige
Action, dated July 13, 2015 (Prestige Action Letter)

Ex. 1022

Patent Owners Written Statement of Issues to Be Discussed at

Interview Pursuant to MPEP 2281, transmitted February 25, 2013

iv

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,

2008the result of an earlier patent application filed in Hong Kong under serial
no. 0802018for 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.

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 Patents 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 applications actual U.S. filing date. Thus, the 132 Patents
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, 2010that is, before the earliest effective date of the AIA
(September 16, 2011).

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 Patents 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 Patents 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.

Indeed, Patent Owners 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)).

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 Patents 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

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 Courts Order, however, was
rendered without consideration of the printed publications comprising the
references submitted with this Request.

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 TianWei Lins 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 Patents
inventors could swear behind (i.e., establish a conception and reduction to
practice earlier than) the Lin U. S. Patents 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. Patents 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).

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 Patents
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 Patents claimed design except for the use of single-cut diamonds at the
periphery. In doing so, the Examiners credited the Patent Owners assertion that
it would not have been obvious to substitute one cut style for another in the
peripheral diamonds of the Lotus Carats design, which shows a round, larger, fullcut diamond at the center with smaller, full-cut diamonds surrounding the larger
diamond (as opposed to the 132 Patents 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..

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 Owners 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 Patents 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 designas 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 Patents claimed

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: alangsam@pryorcashman.com

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.

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 Counsels law firms
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
Owners 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 Lins Peoples Republic of China Patent Application
No. 200710076738.6, printed and published under Publication
No. CN 101112263A on January 30, 2008 (the Lin Publication),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

10

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 Lins 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. Lins 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.

11

(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 Christies catalog for an
auction scheduled to take place on September 20, 2005 (the
Christies September 2005 Catalog), the cover and selected pages
of which are attached hereto as Exhibit 1016 (the Christies
Diamond Ring);
(iv) the Diamond Cluster Ring, Item No. 227 photographed, shown, and
described in the printed and published Christies catalog for an
auction scheduled to take place on March 20, 2005 (the Christies
March 2005 Catalog), the cover and selected pages of which are
attached hereto as Exhibit 1017 (the Christies Diamond Cluster
Ring);

12

(v) the Diamond Ring, Item No. 15 photographed, shown, and described
in the printed and published Sothebys catalog for an auction
scheduled to take place on February 4, 2003 (the Sothebys
February 2003 Catalog), the cover and selected pages of which are
attached hereto as Exhibit 1018 (the Sothebys Ring); and/or
(vi) the Diamond Necklace, Circa 1890, Item No. 225 photographed,
shown, and described in the printed and published Sothebys catalog
for an auction scheduled to take place on April 20, 2005 (the
Sothebys April 2005 Catalog), the cover and selected pages of
which are attached hereto as Exhibit 1019 (the Sothebys
Necklace).
For ease of reference, the Catalogs described in (i) to (vi)i.e., Exhibits 1015
to 1019are collectively referred to as the Auction House Catalogs.

13

(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 Christies Diamond Ring, attached hereto at Exhibit 1016;
(iv) the Christies Diamond Cluster Ring, attached hereto at
Exhibit 1017;
(v) the Sothebys Ring, attached hereto at Exhibit 1018; and/or
(vi) the Sothebys Necklace, attached hereto at Exhibit 1019.

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

certified translation of the same. See Exhibit 1013.

14

(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 Christies Diamond Ring, attached hereto at Exhibit 1016;
(iv) the Christies Diamond Cluster Ring, attached hereto at
Exhibit 1017;
(v) the Sothebys Ring, attached hereto at Exhibit 1018; and/or
(vi) the Sothebys Necklace, attached hereto at Exhibit 1019.

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 Offices request, to provide a translation of the
same.

15

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 Christies
September 2005 Catalog (Exhibit 1016), the Christies March 2005 Catalog
(Exhibit 1017), the Sothebys February 2003 Catalog (Exhibit 1018), and the
Sothebys 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

16

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 wellestablished 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

17

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 inventors 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), affd, 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 Patents 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

18

drawings depicted therein. Patent Owners professed intent, even if genuine,

should be disregarded as irrelevant.
B.

The 132 Patents 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 inventors 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 Patents claim describes the

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

shown and described. Exhibit 1001 57.

19

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 Patents 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 Patents 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 inventors 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
consideredand rejectedthe Patent Owners argument that the 132 Patents
claimed design is intended to depict a solitaire simulation (rather than the

20

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

round stones about a larger central round stone, as actually shown in the
132 Patents 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 Owners 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 applications 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,

21

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

22

purposes of 119(a) is measured in reference to a patents U.S. filing date

regardless of whether the patent claims an earlier foreign priority date.
The 132 Patents 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 Patents 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 Patents 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.

23

Id. (citations & quotations omitted); see also SRI Intl, 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 Intl, 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 applicationand, 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

24

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 Patents 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 patents application was filed in the United
States. See Section XI.A., supra. The 132 Patents 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.

25

filed on February 11, 2009thus, 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
references public accessibility. SRI Intl, 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 Owners 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.

26

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 Magazinereferring to, describing, and
teaching the Lotus Carat designwas 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

27

Lin U.S. Patent. See Non-Final Rejection, Exhibit 1020 at 5-6. And the District
Courts 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 Auctionslike each other Auction House whose
catalog(s) are presented hereinhas 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 Patents U.S. filing date by more than one
yearwhich means that it is prior art for purposes of the 132 Patent.

28

The Christies 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 Christies 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 Christies Catalogs were widely
distributed and disseminated to interested members of the publicall to increase
the interest in the proposed sales of the photographed, displayed, and described
jewelry at the impending auctions. Further, Christies makes available on its
website the results (with photographs) of past auctions. See Auction Results,
Christies, http://www.christies.com/results/ (last visited Dec. 17, 2015). Thus, the
Christies September 2005 and March 2005 Catalogs are publicly accessible,
rendering them printed publications that predate the 132 Patents U.S. filing
date by more than one yearwhich means that they are prior art for purposes of
consideration of the patentability and obviousness of the invention claimed by the
132 Patent.
The Sothebys 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

29

Sothebys 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
Sothebys 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, Sothebys makes pictorial results of
past sold auction lots and items available on its website. See Sold Lot Archive,
Sothebys, http://www.sothebys.com/en/auctions/lots-archive.html (last visited
Dec. 17, 2015). Thus, the Sothebys February 2003 and April 2005 Catalogs are
publicly accessible, rendering them printed publications that predate the
132 Patents U.S. filing date by more than one yearwhich 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.

30

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).

31

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 Intl 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).

32

B.

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

Further View of the Auction House Catalogs
1.

Primary Reference

Under the first step of the Federal Circuits two-step test for determining
obviousness under 35 U.S.C. 103, Petitioners must identify a single
reference . . . the design characteristics of which are basically the same as the
claimed design. Apple, 678 F.3d at 1329 (citation & quotations omitted).
To this end, Petitioners submit the Lin References, any and all of which
show a single design (the Lotus Carat), the design characteristics of which are
basically the same as those of the 132 Patents claimed design. See
Exhibit 1011 (Lin Publication); Exhibit 1013 (Lin Article); Exhibit 1014
(Lin Magazine). Indeed, the Patent Office originally rejected the claimed
invention of the 132 Patent in the Reexamination solely based on the Lin U.S.
Patent. See Exhibit 1020 at 5-6. And, as mentioned above, the District Courts
Order in the Prestige Action indicates that [t]he Lin 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.
When the Lotus Carat design, as depicted in the Lin Publication
(Lotus Carat Fig. 1, infra) is viewed side-by-side with the claimed design of the
132 Patent (132 Patent Fig. 1, infra), it is clear that the Lotus Carat is basically
the same as the 132 Patents claimed design. The same holds true for the Lotus
33

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 Patents claimed
invention.
Both the Lotus Carat jewelry design (as depicted in any one of the
Lin References) and the 132 Patents diamond jewellery design (as depicted in
the 132 Patents 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 Carats smaller round and peripheral diamonds are full-cut,
while the 132 Patents 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 Patents 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.).

34

Thus, the only relevant, salient difference between the prior art Lotus
Carat design and the 132 Patents 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 Patenti.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 Owners 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).

35

However, as Petitioners now show, the feature asserted and claimed to be salient
and distinctwhich was crucial to the issue of non-obviousness during the prior
ex parte reexaminationwas 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 obviousthus 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 sideby-side with the claimed design of the 132 Patent (132 Patent Fig. 1, infra), it is

36

evident that the Lotus Carat is basically the same as the 132 Patents 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 Patents 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-

37

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 Referenceswhich,
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 Circuits 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 Patents claimed design.

38

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, Christies Diamond Ring, Christies Diamond Cluster
Ring, Sothebys Ring, and Sothebys 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 Catalogs Heritage Art
Deco Diamond Ring (Secondary Ref. Fig. 1, infra) it renders obvious, under
35 U.S.C. 103, the 132 Patents 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

39

(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
Publicationnamely, 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 Patents 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 Rings 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 Patents claimed invention is not patentable.

40

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)

b.

Lotus Carat Fig. 1 (Ex. 1011)

Lin Publication and Heritage Diamond Ring

The Heritage 2007 Catalogs 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 Patents claimed design obvious under 103. This
is due to the Heritage Diamond Rings 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

41

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 Publications teaching when combined with the Heritage 2007 Catalogs
Heritage Diamond Ring teaching. See also discussion in Section XIII.B.2.a., supra.

Secondary Ref. Fig. 2 (Ex. 1015)

14

Lotus Carat Fig. 1 (Ex. 1011)

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.

42

c.

Lin Publication and Christies Diamond Ring

The Christies September 2005 Catalogs Christies 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 Patents claimed
diamond jewellery design obvious under 103. The Christies 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 Christies 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 Christies 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 Christies Diamond Ring of mixing of
such cuts, when used to modify the Lotus Carat design of the Lin Publication,
renders the 132 Patents claimed design obvious and unpatentable under 103.

43

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 Christies Diamond Ring teaching of mixing of diamond
cuts renders the claimed design of the 132 Patent obviousbecause the Christies
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.

Secondary Ref. Fig. 3 (Ex. 1016)

d.

Lotus Carat Fig. 1 (Ex. 1011)

Lin Publication and Christies Diamond Cluster Ring

The Christies March 2005 Catalogs Christies 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 Christies

44

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 Christies 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 Patents claimed design obvious. See also discussion in
Section XIII.B.2.a., supra.

Secondary Ref. Fig. 4 (Ex. 1017)

Lotus Carat Fig. 1 (Ex. 1011)

45

e.

Lin Publication and Sothebys Ring

The Sothebys February 2003 Catalogs Sothebys 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 Patents claimed design obvious under 103. The Sothebys 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
Sothebys Ring features a cluster set with brilliant-, circular-, and single-cut
diamonds. (Exhibit 1018 at 19790.)
Thus, the Sothebys 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 Sothebys
Rings teachings, in combination with the teachings of the Lotus Carat, render the
132 Patents claimed design merely obvious. See also discussion in
Section XIII.B.2.a., supra.

46

Secondary Ref. Fig. 5 (Ex. 1018)

f.

Lotus Carat Fig. 1 (Ex. 1011)

Lin Publication and Sothebys Necklace

The Sothebys April 2005 Catalogs Sothebys 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 Patents
claimed design obvious under 103. The Sothebys 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 Sothebys Necklace teaches the one element that the Lotus Carat
design, as depicted in the Lin Publication, lacks. When the teaching of the
Sothebys Necklace is combined with the teaching of the Lotus Carat design, as

47

would be done by one of ordinary skill in the art of designing jewelry, the resulting
combination renders the 132 Patents claimed design merely obvious. See also
discussion in Section XIII.B.2.a., supra.

Secondary Ref. Fig. 6 (Ex. 1019)

3.

Lotus Carat Fig. 1 (Ex. 1011)

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 referenceseach of the teachings of the Lin References (Publication, Article,
and Magazine) can be combined with any one of the Auction House Catalog

48

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
New York, New York 10036
Telephone:212-326-0180
Facsimile: 212-515-6969
Email:
alangsam@pryorcashman.com
Attorneys for Petitioners

49

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 Owners counsel of
record as follows:
Max Moskowitz
Reg. No. 30,576
Ostrolenk Faber LLP
1180 Avenue of the Americas
New York, New York 10036
Email: mmoskowitz@ostrolenk.com
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-cv02333-LAP), as follows:
John Evans Jureller
Klestadt, Winters, Jureller, Southard & Stevens LLP
200 West 41st Street, 17th Floor
New York, New York 10018
Email: jjureller@klestadt.com
Dated:

January 7, 2016
By: /s/ Andrew S. Langsam/
Andrew S. Langsam
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:
alangsam@pryorcashman.com