Prestige Jewelry International, INC., 11-CV-2930 (LAP) V. BK Jewellery HK, BK Jewelry (N.Y) INC., Wing Yee Gems & Jewellery Limited and A.V. Jewelry Export-Import, LTD.

Case Number: 1:11-cv-02930-LAP-DCF

Date: September 15, 2014

Summary: In this dispute concerning U.S. Patent No. D618,132 (“Diamond jewellery (sic)”), Judge Preska denied declaratory judgment plaintiff’s request for summary judgment of patent invalidity and non-infringement, but granted the patentee defendant’s summary judgment of validity.

The patent-in-suit claims diamond jewelry, as shown in the following figures.

In these figures, one central full-cut diamond is surrounded by nine  smaller single-cut diamonds. The patent survived an ex parte reexamination, where one basis for distinguishing it from the prior art was the fact that the central and the peripheral diamonds were of different cuts.

Concerning invalidity, Prestige argued that the design was not ornamental. In support, it cited the inventor’s testimony that he tested his design using test equipment, and that he concluded that the design with the one full-cut stone surrounded by nine single-cut stones “performed the best.” Prestige argued that for diamonds, appearance is function, and thus the claimed design was functional and not ornamental. The court disagreed:

This argument incorrectly blurs the distinction between ornamental and functional designs. Admittedly, [the inventor] sometimes described the design of the ‘132 Patent in language that superficially might suggest a functional design. He admitted that his design “performed the best” and stated that he used a light box to test various arrangements in search of the “best refraction.”  . . . But these statements do not change the fact that the ultimate purpose of the ‘132 Patent design is to have a pleasing appearance—a quintessentially ornamental purpose. Simply because an inventor experiments with alternative designs or uses rudimentary tools and tests does not mean the resulting design is functional. Presumably, most designs are developed not on a whim but rather through some process of trial and error—whether by using a light box, consumer surveys, or simply taking a few steps back and squinting at the design from a distance. The relevant inquiry is the nature of the design, not how the design was developed.

Concerning infringement, Prestige raised two arguments supporting non-infringement. Both failed. The first argument was that the figures show only diamonds, but fail to show any of a ring’s or earing’s precious metal. Judge Preska rejected Prestige’s argument, citing Spanx v. Times Three Clothier for the proposition that, “[A] patentee may claim a design for a portion of an article of manufacture and need not claim a design for a complete article.”

Prestige’s second non-infringement argument was that all its designs contained 8 or 10 peripheral diamonds, not 9 as shown in the patents’ figures. Unfortunately for plaintiffs, the record contained a statement by Prestige’s counsel to his client advising that it was a “close call” concerning infringement as to whether the number of peripheral stones mattered. Further, Prestige had previously sent a cease and desist letter to one of patentee’s licensees subsequent to his sale of 9-peripheral diamond products, suggesting that the 9-diamond design could be confused with Prestige’s 8- and 10-diamond designs. Concluding that infringement was a close call, the court denied summary judgment of non-infringement.

The patentee defendant moved for summary judgment of no invalidity, and won. The court found that Prestige’s evidence opposing the motion to be inadequate. Discovery had closed, and although Prestige stated that it would present expert testimony at trial, it offered no expert testimony at summary judgment. It did offer the testimony of two of its employees about designers’ and customers’ perceptions of jewelry, but the court found that evidence insufficient, noting that “‘[t]he law has long looked with disfavor upon invalidating patents on the basis of mere testimonial evidence absent other evidence that corroborates that testimony.’ . . .  Such testimonial evidence is particularly disfavored if it is given by an interested party, such as [the party’s employee].