LKI sues PhotoScribe for patent infringement; PhotoScribe says suit is ‘without merit’

Lazare Kaplan International Inc. has initiated litigation against PhotoScribe Technologies, Inc. asserting infringement of LKI’s intellectual property rights with respect to laser inscription of diamonds. The complaint seeks injunctive relief as well as damages.

The legal action was filed May 25 with the U.S. District Court for the Southern District of New York. LKI announced the action Tuesday. David Benderly, PhotoScribe’s president and CEO, said the suit is “without merit.”

This litigation has potentially far reaching consequences as LKI’s patent portfolio includes claims directed to the inscribed gemstone itself, LKI said in a statement. The patents also have claims relating to methods of, and apparatus for, laser inscribing gemstones. LKI intends to seek damages and pursue remedies relating to the value added to the infringing gemstones in the retail marketplace. LKI anticipates that upon its success in this litigation, it will initiate other proceedings seeking seizure by the U.S. Customs Border Patrol Agency of infringing diamonds and other gemstones at their point of importation into the United States. LKI also is considering initiating action against gem-grading laboratories and other parties that may be infringing the LKI patent portfolio.

“This is a necessary step to protect the significant investments LKI has made as an innovator of laser inscription technology in the diamond industry, and specifically our investment in the development of a laser inscription patent portfolio,” said Leon Tempelsman, president of LKI. “We intend to pursue vigorously all available legal remedies to protect that portfolio, and to seek out all parties, their clients, and their clients’ gemstones, which infringe on LKI’s patent rights. LKI has always believed in and stood for a diamond business based on trust, integrity and adherence to the law, and we expect these same ethical standards to be honored where our legal rights in intellectual property are concerned.”

Benderly in a separate statement the following day said, “We were very surprised by Lazare Kaplan’s action. It is totally without merit, and we will strongly defend our right to use our patented technology to provide the diamond inscription equipment that the industry wants and needs. … We are not infringing the patents asserted in the LKI lawsuit, because we use a fundamentally different and more advanced laser technology.”

PhotoScribe’s Laser Marking Systems uses, what Benderly describes as an exclusive “Excimer,” or cold laser, technology.  “The cold laser is the only technology that has proven itself to be safe for diamonds,” Benderly said.

PhotoScribe Technologies introduced its first diamond inscription laser in 1999, “after doing its due diligence,” according to Alan Israel and Martin W. Schiffmiller, partners in the New York City patent law firm of Kirchstein, Ottinger, Israel & Schiffmiller, P.C.  “After a thorough patent search, we gave PhotoScribe our assurance that the company was not infringing on any existing patents,” said Israel and Schiffmiller. 

In 2000, PhotoScribe received a letter from LKI alleging patent infringement, said Benderly.  “We knew we were not violating any intellectual property, however, in good faith, we invited LKI’s patent attorneys to inspect our systems with the understanding that they keep our technology confidential, which they agreed to,” said Benderly.  “That was about six years ago, and they took no legal action against us until last week.  If LKI’s patent claim against us had any merit, certainly they would have taken action much earlier.”

LKI sells its diamonds and jewelry products through a worldwide distribution network. The Company is noted for its ideal cut diamonds, which it markets internationally under the brand name, Lazare Diamonds.

PhotoScribe Technologies, headquartered in New York City, was established in 1998.  In addition to manufacturing diamond laser inscription equipment for the jewelry industry, its precision marking technology is used in the fields of aerospace, biotech, medical, optical, ophthalmology, fiber optics, electronics, semi conductors, and MEMS (micro electrical mechanical systems).