VMail Extra

[Judy Canty]

U.S. Patent Office Confirms Seiko Epson Patent 6,019,470 and Grants Six New Claims

MAHWAH, N.J.—The U.S. Patent and Trademark Office terminated its re-examination of Seiko Epson patent 6,019,470 on Feb. 19, 2014 after confirming all of the patent’s 20 original claims. The USPTO has also ruled that six additional claims submitted by Seiko, numbers 1 through 26, are confirmed and patentable.

The request for a re-examination of Seiko Epson’s ’470 patent was filed by Ocuco Inc. on May 21, 2013, as reported in VMail. The patent, issued to Seiko Epson on Feb. 1, 2000, covers the invention of back-surface progressive lenses. It is one of the key patents for free-form progressive lens designs, and is the basis for the royalty that Seiko charges to optical laboratories that produce back-surface progressive lenses.

Citing deficiencies in the references submitted by Ocuco Inc., the Patent Office examiner wrote, "Patent Owner...argues that [the references fail] to disclose or to have rendered obvious providing both a progressive refractive surface and an astigmatism surface on the same side of the lens… The examiner agrees.”

Commenting on the Patent Office’s action, Aki Sukegawa, president of Seiko Optical Products of America, said, “We are extremely grateful for the swift and decisive action taken by the USPTO. This broad, fundamental patent covers both product designs and manufacturing methods for back-surface progressive lenses to treat astigmatism. The new claims 21 to 26 give our licensed partners additional protections to the original patent. We look forward to discussing the implications of this decision with those parties who have thus far refused to engage in good-faith negotiations to license the patent.”

Robert Shanbaum, president of Ocuco Inc., remarked, “We’re very disappointed in the outcome in the Seiko re-examination. We think that the patent examiner’s reasoning was demonstrably wrong, but in an ‘ex parte’ re-examination, we don’t get to argue our case beyond the initial submission.”

To date, Seiko Optical Products of America has licensed over 50 partners to produce back-surface progressive lenses using the technology claimed and taught in 6,019,470. Seiko Epson also won an innovation award for this technology from the Japanese Government in 2007.

[optical24/7]

Would this be considered a design patent? Don't design patents expire after 14 years?

[Stan Tabor]

Would this be considered a design patent? Don't design patents expire after 14 years?

I looked this up and it is a utility patent and expires 20 years after the initial filing, so it expires in Feb of 2016. My understanding is that design patents do not protect the functional features of an invention and therefore are rarely used for this type of innovation.

Does anyone know why this patent was challenged this late in its life?

[Judy Canty]

One big corporation forcing another to spend lots of time and money?

[shanbaum]

One big corporation forcing another to spend lots of time and money?

Seiko Epson Corporation is on the order of 5000 times the size of Ocuco Inc.

[shanbaum]

I looked this up and it is a utility patent and expires 20 years after the initial filing, so it expires in Feb of 2016. My understanding is that design patents do not protect the functional features of an invention and therefore are rarely used for this type of innovation.

It will expire June 2, 2017.

Does anyone know why this patent was challenged this late in its life?

Do you mean, "why bother so late in its term" or "why didn't you do something earlier"?

[Stan Tabor]

Do you mean, "why bother so late in its term" or "why didn't you do something earlier"?

Both are interesting questions.

[shanbaum]

We bothered to do it so late because in my opinion, the patent exacted an unfair rent from the industry; we figured that over the remainder of the term of the patent, that will amount to some millions of dollars.

We didn't do it earlier because I didn't know it could be done. They didn't teach us about patent re-examinations in IP class, unfortunately.

[Stan Tabor]

I cut the following from your company's website when you filed the request for re-examination and I believe the quotes are from you:

“I began this inquiry because I was familiar with engineering projects back in the early 1990’s at both Gerber Optical and Coburn Optical, which had as their objective the production of back-surface progressives. It struck me as absurd that Seiko Epson, or anyone else, could claim to have invented a category of lenses that we were feverishly trying to make years before they were allegedly invented,” said Robert Shanbaum, president of Ocuco Inc., Ocuco’s U.S. subsidiary.
“Digging into it, we found that both back-side and dual-sided progressive lenses were anticipated in prior patents, going back to the 1930’s. We further discovered numerous defects in Seiko Epson’s patent, which we have enumerated in our re-examination request”, Shanbaum said.


Why didn't Gerber or Coburn (or anybody else working on these new lens designs) make a prior art claim when Seiko filed for their patent in the 1990s? They could have saved millions in click fees if they had prevailed.

[shanbaum]

Why didn't Gerber or Coburn (or anybody else working on these new lens designs) make a prior art claim when Seiko filed for their patent in the 1990s? They could have saved millions in click fees if they had prevailed.

Gerber was busy buying Coburn when these patent applications were filed, and at that time, neither company was actively pursuing freeform (nor was the combined entity), having given that up a couple of years earlier. Basically, both companies failed to produce systems capable of producing freeform lenses with those earlier efforts - their machines couldn't produce surfaces having the required form accuracy and smoothness.

In any case, Gerber Coburn had no direct financial interest in these patents; the patents claim the invention of a new kind of lens. The royalties are due from people who produce or sell the patented lenses (namely, the labs, or the ECPs), not the people who produce the machines that are used to produce them. There might be a colorable action for “contributory infringement” against the machine-makers, but it would be a weak one, because their machines are used for extensive non-infringing uses (namely, producing non-infringing lenses) as well.

I doubt that anyone at GC was aware of the re-examination procedure. The corporate legal staff may have been aware of it, but they lived on a higher plane in the corporate hierarchy, and the question may not have been raised with them, at least not until much (like, a decade) later.

Please note that I’m not a patent lawyer and I do not intend my comments to constitute legal advice.