A general review of U.S. patent law as it applies to diamond cuts can be found in the Winter 2002 Gems & Gemology (T. W. Overton, “Legal protection for proprietary diamond cuts,” pp. 310–325). One of the factors that the USPTO considers in awarding a patent is whether the claimed invention is a development that would be “obvious” to a person having ordinary skill in the relevant field. An obvious invention is not eligible for a patent. Until the KSR International case, the U.S. Court of Appeals for the Federal Circuit (which has jurisdiction over patent disputes) applied a fairly narrow definition of obviousness: whether a specific motivation or suggestion to combine prior inventions or knowledge (referred to as prior art in patent law) could be found in the patent literature, the nature of the problem, or the knowledge of a person having ordinary skill in the field. The justification for this narrow test was the recognition that nearly all inventions involve some synthesis of previous knowledge, and that fact alone does not make an invention obvious.
In this case, the invention consisted of an adjustable electronic gas pedal that was a combination of several previous patents covering the component parts and the method by which they were arranged. Teleflex (the patent holder) sued KSR for infringement. Although KSR argued that the progress of science would have inevitably led to the combination at issue here (and previous patents had addressed the problem in a general sense), the Federal Circuit upheld the patent because, looking strictly at the language in the previous patents, there was no specific suggestion to combine them.
The Supreme Court, however, held that the Federal Circuit was applying this test too rigidly. Instead, the Court held that obviousness should be determined against a general background considering the scope of the prior art, the differences between the prior art and the invention, and the level of ordinary skill—essentially, much more of a holistic, common sense approach. Where a certain combination of elements is something obvious to try—as it was in this case—the invention itself is likely obvious as well.
Although this new standard has implications for a broad range of issues, this contributor believes it presents a particular hazard to diamond cut patents, since so many recent cut designs are minor variations of previous cuts (see, e.g., Overton, 2002; Spring 2004 Gem News International, pp. 75–76). As the Supreme Court stated, “If a person of ordinary skill can implement a predictable variation, [the law] likely bars its patentability” (KSR International, p.13). Further, the Court held that when there is market pressure to solve a problem for which there are a finite number of predictable solutions, an invention resulting from the pursuit of known options is likely the product not of innovation but of ordinary skill and common sense. For this reason, it will probably be more difficult to defend those cut patents that are but minor evolutions of previous designs. There is, after all, little question that there has been substantial market pressure for manufacturers and jewelers to develop in-house variations of traditional round and square diamond cuts.
This decision (which overturns several decades of established precedent) still needs to be interpreted and applied by the Federal Circuit and the USPTO, so it is premature to say whether any particular diamond cut patent is in danger. It does, however, suggest caution in the enforcement of existing cut patents and in the development of new designs.
