U.S. Patent Office Affirms Ocuco Challenge to Seiko Patent

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MANCHESTER, Conn.—The U.S. Patent Office has found that the request for re-examination of Seiko Epson’s patent 6,019,470 filed by Ocuco Inc. on May 21 raises “a substantial new question of patentability,” and has recommended that all 20 claims in the patent be canceled in a “Non-Final Office Action” published in October.

The ’470 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.

“This is the next step in our effort to get Seiko’s patent canceled—our request for re-examination of the patent was granted, and now, upon re-examination, the patent office has found our arguments persuasive,” said Robert Shanbaum, president of Ocuco. “The Office Action is ‘non-final,’ and Seiko Epson now has an opportunity to respond to the examiner’s findings,” Shanbaum said.

He added, “As we’ve said all along, this patent is valid until it’s actually canceled by the patent office, so none of Seiko’s licensees should take this non-final action to mean that they are relieved of their obligation to pay royalties,” Shanbaum further explained. “We’re encouraged by the Patent Office’s action, and look forward to the ultimate outcome, which we hope will be positive. Cancellation of this patent, if it comes to pass, will save the optical industry—our customers—a substantial amount of money on lenses produced with free-form technology.”

In response to both the Patent Office’s action and Ocuco, Seiko Epson, in a statement to VMail, said it is “encouraged by recent developments in the re-examination and is confident that all claims of U.S. Patent No. 6,019,470 will remain.” Seiko Epson noted that “The re-examination remains ongoing at the Patent Office. While a first Office Action has been issued by the Patent Office setting forth its preliminary views, all claims of the re-examined patent remain valid and enforceable until a re-examination certificate is issued. As recognized by Ocuco's president, "[a] patent is valid until it's not—no one should think that [the re-examination] in any way invalidates the patent at this point." In fact, with the issuance of a re-examination certificate, the claims in the certificate will become enforceable and, if enforced, will enjoy an enhanced presumption of validity as a result of the re-examination.”

Seiko Products based on the technology described and claimed in U.S. Patent No. 6,019,470 won an Innovation Award from the Japanese government in 2007.