A nearly $1 million pink sapphire and diamond bracelet from Tiffany & Co.’s 2016 Masterpieces Collection is at the center of a newly-filed lawsuit. By making and selling the bracelet, and presumably, others like it, Thailand-based jewelry company Jacob’s Jewelry Co. (not to be confused with New York-based jeweler to the stars, Jacob & Company) claims that Tiffany & Co. of infringing its exclusive rights in a utility patent for a “Color Changing Multiple Stone Setting.”
According to the complaint that it filed in a New York federal court late last week, Jacob’s Jewelry Co. asserts that since 2017, it has maintained a utility patent that covers “a multiple stone setting” in which the stones are positioned in such a way that when “the viewing angle of an observer changes, [the color of] each of the [stones] changes.” The invention, according to Jacob’s Jewelry, “may be useful to create articles of jewelry, as well as to enhance objects and designs of various natures.”
And useful it has been for Tiffany & Co., Jacob’s Jewelry alleges in its complaint, arguing that the 182-year old jewelry stalwart sells color-changing jewelry – including the aforementioned bracelet, which was designed by the brand’s former design director Francesca Amfitheatrof and constructed by its “master stonecutters and setters” – that is “constructed according to the teachings of the patent claims in [its] patent, without [its] authority,” thereby giving rise to claims of patent infringement.
In a back-and-forth between the two companies’ counsels, Jacob’s claims that Tiffany “has not denied the accused products infringe [the patent at issue],” but has, instead, insisted that the patent is invalid, meaning that its jewelry is not infringing.
The problem with the patent, according to Tiffany? The “relevant” claims are “invalid in view of certain prior art,” namely, a Cartier Tourmaline brooch, which dates back to the 1940s. In other words, Tiffany & Co. has seemingly challenged the novelty of some of the claims that Jacob’s makes in its patent. This is significant, as patent claims as subject to a strict novelty requirement, which means that an invention cannot be patented if certain public disclosures of the invention have been made – or the invention was described in a printed publication or was in public use – prior to the filing of the patent application.
Here, Tiffany is allegedly asserting that at least one of the claims in Jacob’s Jewelry’s patent was known to the public – due to the Cartier brooch – and thus, it is off the hook.
Counsel for Jacob’s Jewelry contests Tiffany’s position, of course, arguing in its complaint that “contrary to [Tiffany’s] allegations, the Cartier Brooch does not contain the relevant features and elements of any of the claims of [its] patent,” meaning that the patent is “therefore, being willfully infringed by [Tiffany’s] sales of the accused products since the date of issuance of [Jacob’s Jewelry’s] patent” in 2017.
The company goes on to assert that despite being “fully apprised of and … cognizant of the ongoing infringement,” Tiffany has “taken no action to cease its knowing infringement of the patent,” and as a result, has caused Jacob’s “irreparable harm and damage.”
In addition to a formal declaration from the court that its patent is “valid and enforceable,” Jacob’s is seeking injunctive relief and monetary damages.
Tiffany & Co. has not yet formally responded to the suit, it will almost certainly – based on its alleged arguments thus far – seek to formally invalidate the patent at issue, a move that would enable it to escape infringement liability, and continue to sell color-changing jewelry of its own.
*The case is Jacob’s Jewelry Co., Ltd. et al. v. Tiffany and Co. US Sales, LLC, 1:20-cv-04291 (S.D.N.Y.).
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