Jacob's Jewelry Co. Ltd v. Tiffany and Company
- Katherine Failla
- 1:20-cv-04291
- U.S. District Court · Southern District of New York
- 10
In Jacob’s Jewelry v. Tiffany, Judge Failla denied Defendants’ motion to dismiss the patent-infringement complaint.
Jacob’s Jewelry Co., Ltd. may continue pursuing its patent-infringement claims against Tiffany and Company, Tiffany and Company U.S. Sales LLC, and Tiffany (NJ) LLC; the defendants must file a responsive pleading and participate in case management.
What happened
Jacob’s Jewelry Co., Ltd. sued Tiffany and Company and two related entities, alleging that their color-changing jewelry infringed its patent for multi-stone settings. The patent describes stone arrangements that create changing color as the viewing angle changes.
The defendants argued that the patent was invalid because it merely claimed the natural phenomenon that objects can look different from different angles. Jacob’s Jewelry responded that the patent claimed a specific physical stone arrangement, not the general phenomenon of changing appearance.
Judge Katherine Polk Failla denied the defendants’ motion to dismiss. She ruled that the patent described specific applications of light reflection and refraction and, alternatively, included an inventive arrangement of stones. The court did not decide whether the patent satisfied separate novelty or non-obviousness requirements.
The detailed version
- Jacob's Jewelry Co. Ltd v. Tiffany and Company · No. 1:20-cv-04291
- Katherine Failla
- June 28, 2021
Background
Jacob’s Jewelry Co., Ltd. alleged that it owns U.S. Patent No. 9,609,923, titled “Color Changing Multiple Stone Setting.” The patent concerns multi-stone settings designed to display different colors from different viewing angles, without a topcoat or gemstones that naturally change color. Jacob’s Jewelry alleged that the defendants sold color-changing jewelry containing the limitations of at least Claim 16 without authorization.
The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not adequately state a legal claim. They argued that the patent was directed to the natural phenomenon that objects appear different from different viewing angles and therefore was not eligible for patent protection under 35 U.S.C. § 101.
Legal standard
The court applied the two-step Alice/Mayo framework for determining whether a patent claims eligible subject matter. First, the court asks whether the claim is directed to a law of nature, natural phenomenon, or abstract idea. If so, the court asks whether the claim contains an “inventive concept”—an element or combination of elements that adds significantly more than the ineligible concept itself.
At the motion-to-dismiss stage, the court generally accepts well-pleaded factual allegations as true and may consider the complaint, attached documents, and certain documents incorporated into or integral to the complaint.
Court’s analysis
The court concluded that the patent claims an application of a natural phenomenon rather than the phenomenon itself. Although the patent uses light reflection and refraction and the fact that gemstones may appear to change color depending on the viewer’s position, it does not claim a monopoly over those general principles. Instead, it describes specific multi-stone settings intended to produce color-changing surfaces without a topcoat or gemstones that independently change color.
The court also stated that, even if the claims were directed to an ineligible concept at the first step, the specific stone arrangements described in the patent would qualify as an inventive concept at the second step. The court found that the arrangements purported to use light reflection and refraction in a way distinct from and improving on existing art.
The court emphasized that it was not deciding whether the stone arrangements actually satisfy the separate patent requirements of novelty and non-obviousness under 35 U.S.C. §§ 102 and 103. Those issues were not before the court because the defendants’ motion addressed only subject-matter eligibility under § 101.
Disposition
The court denied the defendants’ motion to dismiss. It ordered the defendants to file a responsive pleading by July 19, 2021, and ordered the parties to submit a proposed case-management plan by July 26, 2021.
Read the full 10-page opinion on CourtListener, the free public archive maintained by the Free Law Project.