Tiffany & Co. has convinced the United States Patent Trial and Appeal Board (PTAB) to review Lazare Kaplan International’s patent for laser-inscribing diamonds, currently the subject of long-running litigation.
The dispute between the two prominent, and often-litigious, industry names was revealed in LKI’s Sept. 1 filing with the Securities and Exchange Commission.
In October 2014, Tiffany first asked the PTAB for inter partes review of LKI’s 2002 patent for laser inscription technology. The lead inventor on the patent is former company vice chairman George R. Kaplan, who died last month.
On April 20, the PTAB granted the request, finding “information presented establishes with a reasonable likelihood that [Tiffany & Co.] would prevail in showing that [two claims in LKI’s patent] are unpatentable.”
The ruling stresses it has not made a final determination of claims in the case. The board also urged the parties to seek alternative dispute resolution.
The review has temporarily halted LKI’s long-running litigation against PhotoScribe, which dates from 2006, for allegedly infringing its inscription patent. (According to an LKI filing, Tiffany is a customer of PhotoScribe.) PhotoScribe says it uses “different technology” and has tried to rule LKI’s patent invalid. The suit has seen many decisions and appeals, with LKI claiming victory in the most recent round.
The Gemological Institute of America was also originally named in LKI’s lawsuit. However, GIA settled with LKI in September 2013, agreeing to make a onetime payment to LKI of $15 million and to pay inscription royalties through July 31, 2016.
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