Hoya Corporation has signed a license agreement with Carl Zeiss Vision for its U.S. and Australian patents for back-surface free-from progressive lenses and the processes used to make them. In particular, the deal concerns progressive lenses whose front surfaces are rotationally symmetric with the back-surface design determined by individual prescriptions or in combination with other customization options. The two companies said they are exploring the exchange of licenses in other technology areas.
The deal was signed after the conclusion of a lengthy patent infringement lawsuit brought in the U.S. by Zeiss against Signet Armorlite over back-side progressive lenses ended last month in Zeiss' favor when a federal court judge tripled the amount of damages a jury had awarded Zeiss and ordered Signet to pull its Kodak Unique progressive lens from distribution.
The battle started in 2007 when Zeiss claimed that its San Diego-based competitor was copying its patented technology for “spectacle lenses with spherical front side and multifocal back side and process for production” (Patent No. 6,089,713) though its Kodak Unique line of products, without authorization. Signet was producing Kodak Unique under a licensing agreement for Seiko Epson's technology.
The case, which led to three different jury verdicts, has been followed with particular attention throughout the optical industry because it concerns back-side progressive lenses, a fast-growing product category. Signet Armorlite was taken over by Essilor in 2009.
Issued Aug. 6 in the U.S. District Court's Southern District of California, the verdict awarded “enhanced damages” of $2,054,892, up from the compensatory damages of $684,964 that were awarded to Zeiss by the jury in April. The court supported Zeiss' claim that “Signet never investigated the scope of the patent and never formed a good-faith belief that the patent was invalid or not infringed,” and that it did not obtain a “competent” legal opinion on whether or not it would infringe on Zeiss' patent, relying instead on the opinions of internal staff members.
The court also issued a permanent injunction requiring Signet to “remove and recall all Kodak Unique lenses from the marketplace” within 14 days and turn them over to Zeiss, as well as “any other lens product that is no more than colorably different.”
As reported in the press, Signet is planning to appeal the American court's verdict and considers the case to be a long way from completion, expressing confidence that the latest decision by the court will be overturned. However, Essilor said it has taken a charge of €12 million in its accounts in relation to Signet's dispute with Zeiss.
In the meantime, the company has suspended production of Kodak Unique and launched a new Kodak Unique DS line featuring a dual-sided design, as opposed to the back-side design of Kodak Unique.
Subsidiaries, lab partners, distributors and joint ventures located outside the U.S. will continue to manufacture and sell Kodak Unique lenses there, whereas all the lenses in the series manufactured in the U.S. and sold in the U.S. or internationally have been discontinued and will be converted, where appropriate, into Kodak Unique DS.