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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

JACOB’S JEWELRY CO. LTD.

1:20-cv-04291
Civil Action No. __________
Plaintiff,

v.

TIFFANY AND COMPANY.; TIFFANY AND

COMPANY U.S. SALES LLC; AND TIFFANY (NJ)
LLC

Defendants.

COMPLAINT FOR PATENT INFRINGEMENT AND DEMAND FOR JURY TRIAL

Plaintiff, Jacob’s Jewelry Co. Ltd. (hereinafter “Plaintiff” or “Jacob’s”) for its

complaint against Defendants TIFFANY AND COMPANY.; TIFFANY AND COMPANY U.S.

SALES LLC; AND TIFFANY (NJ) LLC (Collectively “Tiffany” or “Defendants”), alleges as

follows:

NATURE OF THE ACTION

1. This is an action for infringement of United States Letters Patent and arises under

the Patent Laws of the United States Title 35 of the United States Code. Plaintiff is the holder of

exclusive rights under United States Letters Patent No. 9,609,923 B2 (the “’923 Patent”), entitled

“Color Changing Multiple Stone Setting”.

2. Upon information and belief, Defendants have infringed, induced infringement of

and contributed to the infringement of the ’923 Patent by making, using, selling and/or offering

to sell jewelry comprising gem stones so arranged and colored that the overall jewelry practices

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the teachings of and incorporates the features of certain patent claims presented in Jacob’s ’923

Patent.

JURISDICTION AND VENUE

3. This Court has personal jurisdiction over Defendants by reason of its residence

status in this District, its transaction of business in this District, and commission of tortious acts

within this District.

4. Subject matter jurisdiction is conferred upon this Court pursuant to 28 U.S.C.

§1331 and §1338(a). Venue is proper in this Court pursuant to 28 U.S.C. §1391 and §1400.

THE PARTIES

5. Plaintiff Jacob’s Jewelry Co., Ltd. is located at 232-236 Mahesak Soi 2 Road,

Bangrak, Thailand 10500 and is the owner of United States Patent Number 9,609,923 (“the ‘923

Patent”), entitled “Color Changing Multiple Stone Setting”.

6. Upon information and belief, Defendant Tiffany And Company is located at and

has a place of business at 727 Fifth Avenue, New York, New York 10022.

7. Upon information and belief, Defendant Tiffany and Company U.S. Sales LLC

has a registered Agent given as CT Corporation System, 28 Liberty St., New York, New York

10005 as well as store locations throughout the United States, including several such store

locations in this District.

8. Upon information and belief, Defendant Tiffany (NJ) LLC is located at and has a

place of business at 15 Sylvan Way, Parsippany, New Jersey 07054.

THE ACTION FOR PATENT INFRINGEMENT

9. On April 4, 2017, United States Letters Patent No. 9,609,923 B2 (hereinafter

“the ’923 Patent”) entitled “Color Changing Multiple Stone Setting” was duly and legally issued

and assigned to Jacob’s. A copy of the ’923 Patent is attached hereto as Exhibit A and made a

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part hereof. Plaintiff Jacob’s is the owner of the exclusive rights under the ’923 Patent here in

suit.

10. Jacob’s has been making and marketing color changing jewelry since several

years prior to the issuance of and its mentioned jewelry products covered by the ’923 Patent have

proved to be commercially successful and valuable to Jacob’s.

11. Upon information and belief, one or more of the Defendants acting alone and in

participation of the other defendants purchases and sells color changing jewelry that is/are within

the purview of the ’923 Patent, including the color changing jewelry shown in Exhibit B hereto,

called “Jewellery Insights by Katerina Perez”, (the “Accused Products”).

12. On information and belief, the Accused Products sold by the Defendants are

constructed according to the teachings of the patent claims in the ’923 Patent, without authority

from Jacob’s. Specifically, at least patent claim no. 16 of the ‘923 Patent is being infringed by

the Accused Products because they contain all the limitations of claim 16.

13. The Defendants’ actions described herein constitute acts of infringement,

contributory infringement and inducement of infringement of the ‘923 Patent in violation of 35

U.S.C. §271(a), (b) and (c).

14. On information and belief, the Defendant(s) has not taken any steps to cease and

desist from any further acts of infringement.

15. Jacob’s has been in contact with the Defendant Tiffany and Company about the

foregoing infringement of the ’923 Patent and that Defendant has not denied the Accused

Products do not infringe on the ‘923 Patent, but has insisted that the relevant claims are invalid in

view of certain prior art, a so-called Cartier Tourmaline brooch, dating back to the 1940’s (the

“Cartier Brooch”). See attached Exhibit C.

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16. Upon information and belief, contrary to Defendants’ aforementioned allegations,

the Cartier Brooch does not contain the relevant features and elements of any of the patent claims

of the ‘923 Patent, which patent is therefore being willfully infringed by Defendants’ sales of the

Accused Products since the date of issuance of the ‘923 Patent.

17. Since the Defendants have been fully apprised of and are and have been cognizant

of the ongoing infringement and have taken no action to cease their knowing infringement of the

‘923 Patent, their conduct has caused Plaintiff irreparable harm and damage.

18. The Defendants’ actions constitute willful and deliberate infringement of the ’923

Patent and will continue to cause more harm unless enjoined by this Court. The Defendants’ acts

of infringement have caused and continue to cause Jacob’s irreparable injury, for which it has no

adequate remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Jacob’s prays as follows:

a. that United States Letters Patent No. 8,406,923 B2 be adjudged valid and

enforceable;

b. that Defendants be adjudged to have infringed United States Letters Patent No.

8,406,923 B2, including contributing to and actively inducing infringement of the ’923 Patent;

c. that the acts of infringement by the Defendants be adjudged to be willful and

deliberate;

d. that Defendants be ordered to account for and pay to Jacob’s the damages

sustained by Jacob’s due to the Defendants’ infringement of United States Letters Patent No.

8,406,923 B2, but in no event less than a reasonable royalty, pursuant to 35 U.S.C. §§284 and

289;

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e. that Defendants be ordered to pay pre-judgment and post-judgment interest on the

damages awarded against them;

f. that Defendants, its officers, agents, servants, employees and attorneys and any

and all persons in active concert or participation with them be preliminarily and permanently

enjoined and restrained from infringing United States Letters Patent No. 8,406,923 B2;

g. that this case be adjudged an exceptional case, and that Jacob’s be awarded its

costs and attorney's fees pursuant to 35 U.S.C. §285; and

h. that the court grant such other and further relief as it deems just and proper under

the circumstances.

DEMAND FOR TRIAL BY JURY

Jacob’s demands a trial by jury on all issues that are triable by a jury.

Dated: June 5, 2020 Respectfully submitted,

New York, New York
/s Max Moskowitz
Max Moskowitz
mmoskowitz@ostrolenk.com
Ariel S. Peikes
apeikes@ostrolenk.com
OSTROLENK FABER LLP
845 Third Avenue
New York, New York 10022
Telephone: (212) 596-0500
Facsimile: (212) 382-0888

Attorneys for Plaintiff

Jacob’s Jewelry Co. Ltd.

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EXHIBIT A
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EXHIBIT B
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EXHIBIT C
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LUCAS & MERCANTI, LLP

Attorneys INTELLECTUAL PROPERTY LAW Mailer’s Information
Donald C. Lucas Peter J. Phillips
Michael N. Mercanti 212-661-8000 ext. 122
Peter J. Phillips 30 BROAD STREET pjphillips@lmiplaw.com
Klaus P. Stoffel 21st FLOOR
Elizabeth Lee D’Amore NEW YORK, NY 10004
Barry Evans
William J. Spatz Telephone: 212-661-8000 Registered Patent Agents
Alfred W. Froebrich Facsimile: 212-661-8002 Yun H. Choe, Ph.D.
Laurence Manber, Ph.D. Email: info@lmiplaw.com Shintaro Yamada
Thomas J. Vetter www.lmiplaw.com Frederick P. Bills
Jonathan E. Myers Gwen L. Bleckner, Ph.D.
Lindsay S. Adams
Albert B. Chen May 22, 2017
James R. Major, D.Phil.
Jonathan A. Tyler
Sung Joo

Max Moskowitz, Esq.

Ostrolenk Faber LLP
1180 Avenue of the Americas
New York, NY 10036

Re: Claim of Infringement of U.S. Patent No. 9,609,923

Against Tiffany Jewelry
Your Ref: 7/6457-1
Our Ref.: 7267.76121

Dear Mr. Moskowitz:

Your letter of April 21, 2017 addressed to Tiffany & Company (“Tiffany”) has been
referred to me for a reply.

We have reviewed your letter and your client’s U.S. Patent No. 9,609,923 (“ ‘923
Patent”), which alleges infringement by Tiffany Jewelry item by Katerina Perez cited in your
letter.

Your letter does not explain how the claims of the ‘923 Patent allegedly relate to the
Tiffany Jewelry, so we do not know the basis of your infringement allegation. Nonetheless, we
have concluded that the accused Tiffany Jewelry does not infringe the ‘923 Patent.

The ‘923 Patent has two independent claims 1 and 16. As you know, for a claim to be
infringed, a claim must be valid, and each and every limitation of the claim must be found in the
accused device. If the accused device does not infringe an independent claim, it cannot be found
to infringe any claims which are dependent on that claim.

Claim 1 of the ‘923 Patent requires three stones, each of which is positioned
perpendicular to the other two. This feature is not found in the Tiffany Jewelry, so infringement
of this claim, as well as claims 2-15 which depend thereon, is absent.
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Max Moskowitz, Esq.
May 22, 2017
Page 2

Claim 16 is clearly invalid as lacking novelty over “Art Deco Cartier Tourmaline
Diamond Gold Bow Brooch Double Clips”, circa 1940, (“Cartier”) which is shown in the
attached 1stdibs.com document. At the end of each section of the jewelry piece, a row of square
cut green tourmalines is set perpendicularly to a row of brilliant cut diamonds. This Cartier prior
jewelry design is clearly more relevant than the prior art cited and the Examiner would not have
allowed claim 16 if he was aware of this reference. This reference also discloses features of the
dependent claims 17-25 to the extent that they may be relevant. As you know an invalid claim
cannot be infringed.

In the jewelry field there is a large body of non-patent literature in prior art jewelry items,
trade magazines and brochures which would likely contain other relevant prior art disclosures.
There are likely many other similar jewelry pieces having rows of gemstones arranged
perpendicularly to each other that can be found.

For the reasons stated above, the Tiffany Jewelry does not infringe any claim of the ‘923
Patent. Tiffany reserves its right to assert other non-infringement defenses should your client
persist in an infringement charge.

Tiffany considers this matter closed. If your client continues to assert an infringement
charge, Tiffany not only reserves all of its rights to other defenses, but also would seek attorney’s
fees to defend what it believes would be a baseless infringement charge.

Very truly yours,

LUCAS & MERCANTI, LLP

PJP:jp Peter J. Phillips

Enclosure
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