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

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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.