By Michelle Graff
Washington, D.C.--The U.S. Patent & Trademark Office ruled that two main sections of Lazare Kaplan International Inc.’s patent for laser-inscribing diamonds are invalid, the latest twist in LKI’s long-running legal battles over this patent.

Back in 2014, Tiffany petitioned the USPTO to do an inter partes review of LKI’s 2002 gemstone micro-inscribing patent. An inter partes review is a procedure that challenges the validity of a U.S. patent and is conducted by the Patent Trial and Appeal Board.

Tiffany’s request came amid a long-running legal battle between LKI and PhotoScribe Technologies Inc. over this same technology.

LKI alleged in a lawsuit filed in federal court in New York in 2006 that PhotoScribe was infringing upon its diamond inscription patent, and the case has seen numerous decisions and appeals over the past 10 years. It was stayed pending the board’s decision and any possible appeals that might follow.

In petitioning the appeal board, Tiffany, which is one of the many companies that uses PhotoScribe’s technology to etch serial numbers on its diamonds that are invisible to the naked eye, argued that LKI’s patent was invalid because it was “obvious,” court papers show, meaning that a person of “ordinary skill” in the art of micro-inscribing could have combined existing patents and teachings to arrive at the same invention.

On April 13, the board issued a 43-page written decision siding with Tiffany and stating that claims one and seven of U.S. Patent No. 6,476,351 belonging to Lazare Kaplan are un-patentable.

What the decision means for Tiffany is that it “can continue to use laser technology to inscribe unique and invisible-to-the-naked-eye serial numbers onto Tiffany diamonds,” the jeweler said in a statement released via one of its attorneys, Wes Musselman of Fish & Richardson. 

The Patent Trial and Appeal Board’s decision can be appealed to the Court of Appeals for the Federal Circuit, though it was unclear at press time what LKI will do. 

The company’s attorneys did not respond to request for comment on the decision and no one at LKI’s New York headquarters could be reached for comment Thursday morning.

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