The Lab-Grown Diamond Patent Battle Is Heating Up
To grow diamonds, you need a lot of heat and pressure. And now,we’re seeing that on the legal front as well.
On Friday, the High Court of Singapore ruled that diamond growerIIa Technologies had infringed on a patent (SG 872) held by De Beers’industrial diamond division, Element Six.
The patent relates to the production of diamonds using the chemicalvapor deposition method.
In her 199-page ruling, which followed a trial and four years oflitigation, Justice Valerie Thean ordered IIa—whose diamonds are sold by sistercompany Pure Grown Diamonds—to cease producing any items that infringe onElement Six’s CVD growing patent.
In a statement, IIa said the company and its “lawyers are studyingthe judgment and will consider its next steps.”
“IIa Technologies has developed its proprietary process in thelast 15 years and is proud of the work we have done to bring lab grown diamondsto the world,” said chief executive officer Vishal Mehta in the statement. “Thecurrent judgment will be considered in its entirety and then the company willtake necessary steps to protect its interests.”
Element Six did lose on one claim. The court cancelled its patent(SG 508) for treating CVD diamonds after growth, a process known as annealing.Thean found that past patents had documented much the same method.
Element Six said it is “considering its legal options with regardto this decision.”
Both parties have the right to appeal the rulings.
Element Six, the parent of the Lightbox jewelry brand,first launched the suit against IIa in 2016. It based itsinfringement claims on three samples: a diamond plate purchased from IIadirectly; a diamond plate purchased from Microwave Enterprises, one of IIa’sU.S. partners; and a gem diamond that was purchased from Pure Grown Diamonds.(Pure Grown and Microwave did not respond to requests for comment.)
The litigation involved numerous disputes over discovery andevidence. IIa cast doubt on whether it produced any of the samples—butThean said she was satisfied that the chain of custody had been backed up byinvoices and paperwork. That particular issue led Element Six tofile an ex parte action in New York federal court to obtain information fromPure Grown in 2018.
Thean said that, until February 2019, IIa declined toproduce documents about one of its manufacturing methods,as executives said it used a “secret process” that had never beenpreviously documented. The justice expressed skepticism that therewas not a written record of this method.
It’s not clear how this will affect companies in the UnitedStates. De Beers spokesperson David Petrie said, “We would encourage retailersand distributors selling CVD LGDs in the U.S. (where we hold a similar patentto the Singapore one) to engage with their supplier as a matter of priority sothey can be confident they are not at risk of selling material that infringesElement Six IP.”
It could also affect the three patent suits, filed inJanuary, from Carnegie Institution of Washington and its licensee M7D,which does business as WD Lab Grown.
As with the Element Six suit, WD’s complaints claim sixcompetitors—including IIa Technologies and Pure Grown—infringed ontwo of its patents, one for growing diamonds via CVD and one for post-growthtreatment.
(WD’s lawyers said they were not aware of the ruling at presstime, and De Beers’ Petrie said, “We don’t have any comment on any othercompanies’ legal actions.”)
Some in the lab-grown business feel that the ongoing legal threatseems to be adding to interest in “as-grown” (untreated) CVDs. When Signetentered the lab-grown business, it searched for diamonds grown with thehigh-pressure, high-temperature method, which are generally produced in China.
In any case, these actions may be followed by others, warnedElement Six CEO Walter Hühn in a statement.
“This decision confirms the validity of our patent for theproduction of CVD synthetic diamonds, and we hold similar patents in manyjurisdictions,” he said. “We will continue to be vigilant for any otherpotential infringement of our IP rights around the globe, and we will defendour rights vigorously—just as any company would—because protecting our abilityto get a full return on our investment in R&D is vital to our future.”
And so the battles over lab-grown patents may be justbeginning.