Judicial Symposium on Intellectual Property (JSIP) 2022
Case for Mock Trial

I.
Background ....................................................................................................................... 1
II.
Scope of Claims .................................................................................................................. 1
III. Description ........................................................................................................................ 2
IV. Entities Involved in the System .............................................................................................. 14
V.
Structure of the System ....................................................................................................... 14
VI. Whether the System satisfies Elements of the Invention ................................................................ 16VII. Summary of the arguments of Pony (Plaintiff) ............................................................................ 16
VIII. Summary of the arguments of Donkey (Defendant) ..................................................................... 18
IX. Matters to be noted in the examination of this case ...................................................................... 19(Appendix) ................................................................................................................................. iI.
Schematic Diagram of the Invention ....................................................................................................... i
II. Schematic Diagram of the System at issue ............................................................................................... iIII. Glossary ............................................................................................................................................. ii

I.

Background
Pony Corporation (“Pony”) filed a patent application for the invention titled “Spectacle Lens

Edging System” (the “Invention”) on September 24, 2007, and was granted a registration of patentright on April 23, 2008 (hereinafter the patent right is referred to as the “Patent Right” and thepatent pertaining to the Patent Right is referred to as the “Patent”).
Pursuant to a contract with Donkey Limited (“Donkey”), on October 1, 2021, Turtle Inc.
(“Turtle”) developed and delivered to Donkey a system named “Meganetic” for handling orders
for processing spectacle lenses from the optician's shops that are Donkey’s customers using
Internet communications (the “System”), and Donkey began operating the System. Under thecontract with Donkey, Turtle operates some of the equipment constituting the System.
On January 31, 2022, Pony filed a patent infringement lawsuit against Donkey (defendant),
seeking permanent injunction to enjoin use of the System on the basis of infringement of the
Patent Right.
* In the Appendix you can find reference materials showing the schematic diagrams of theInvention and the System together with a minimal glossary of technical words.
II.

Scope of Claims[Claim 1](A)

A spectacle lens edging system comprising:a frame measurement unit for measuring a three-dimensional shape of a rim of aspectacle frame; anda lens edging unit, connected to the frame measurement unit via a network, for bevelinga spectacle lens,1(B)wherein the frame measurement unit comprises:(B1) a frame tracer configured to obtain rim shape data regarding the three-dimensional shapeof the rim;(B2) a measurement terminal configured to calculate the rim circumferential length along agroove of the rim based on the rim shape data and to transmit data of the rim
circumferential length to the lens edging unit, and(C)

wherein the lens edging unit comprises:(C1) an edger configured to bevel a spectacle lens based on prescribed edging conditions;(C2) a lens shape measurer configured to obtain lens shape data regarding the threedimensional shape of the beveled spectacle lens; and(C3) an edger terminal configured to calculate the lens circumferential length along the bevel
top of the beveled spectacle lens based on the lens shape data and to determine that thebeveled spectacle lens can be fitted to the rim of the spectacle frame if the difference
between the lens circumferential length and the rim circumferential length received fromthe measurement terminal of the frame measurement unit is within a prescribed range.
III.

Description[Detailed description of the invention][Technical field][0001]The present invention relates to a spectacle lens edging system.
[Background art]
[0002]In spectacles 100 as shown in FIG. 3, a spectacle lens 110 is fixed to a rim 120 by fitting a
convex protrusion 111 called a bevel that is formed on the edge side (edge surface) of the spectaclelens 110 into a concave groove formed on the inner side of the rim 120 of the spectacle frame (seeFIG. 4). As such, a spectacle lens cannot be processed without determining a spectacle frame.
Accordingly, in sales of spectacles, when unprocessed spectacle lenses are processed to beaccommodated in the rim of a spectacle frame at an optician's shop, an optician's shop will orderfrom a lens manufacturer lenses that are determined based on the prescription of a person whoorders the spectacles and the rim shape and the size of the spectacle frame, and then at the
optician's shop, by operating a variety of processing equipment, edging and beveling of the lenses
will be carried out so that they may fit the rim of the spectacle frame.
[0003]
Here, edging refers to the process of grinding the edge of a spectacle lens. Beveling refers to
the process of forming a bevel on the edge of a spectacle lens.
2[0004]
Spectacle lens edging and beveling are often performed at a lens processing factory as well
as at an optician's shop. In the former case, a frame tracer (frame shape measurer) installed in an
optician's shop is used to acquire rim shape data, which is then transmitted via network to a lensprocessing factory, where edging and beveling of spectacle lenses will be performed using thatdata, and the processed spectacle lenses will be provided to the optician’s shop.
[Summary of the invention][Problem to be solved by the invention][0005]
When lenses are processed outside the optician’s shop, the lens processing factory will nothave the spectacle frame itself but the shape data about the rim of it, so in the conventional
technology at the lens processing factory it is unable to confirm that the processed lenses will beaccommodated in the rim. As such, the processed lenses delivered to the optician’s shop from thelens processing factory can have some defects like being too large to fit in the rim, or conversely
fitting loosely, leaving gaps between the processed lens and the rim. In such cases, the lensprocessor has to reprocess the lenses however expensive they are, which causes losses to the lensprocessor who has to bear that expense.
[0006]
Also, for the optician’s shop it is troublesome to separately inquire of the lens processing
factory about the inventory availability and the possibility of delivery at the desired date of thelenses that will fit the rim of the customer’s spectacle frame before transmitting the rim shapedata of the spectacle frame.
[0007]
Accordingly, the purpose of the present invention is to provide a spectacle lens edging systemthat allows spectacle lenses to be fitted to the rim of a spectacle frame with a high degree ofcertainty and efficiency, even when the spectacle lenses are processed at a location where thespectacle frame is not immediately at hand.
[Means of solving the problem][0008]
To solve the above problem, a spectacle lens edging system according to the present
invention comprises:
a frame measurement unit for measuring a three-dimensional shape of a rim of a spectacle
frame; anda lens edging unit, connected to the frame measurement unit via a network, for beveling aspectacle lens,
wherein the frame measurement unit comprises:3

a frame tracer configured to obtain rim shape data regarding the three-dimensional shape ofthe rim;a measurement terminal configured to calculate the rim circumferential length along agroove of the rim based on the rim shape data and to transmit the data of the rim circumferential
length to the lens edging unit, andwherein the lens edging unit comprises:
an edger configured to bevel a spectacle lens based on prescribed edging conditions;a lens shape measurer configured to obtain lens shape data regarding the three-dimensional
shape data of the beveled spectacle lens; andan edger terminal configured to calculate the lens circumferential length along the bevel topof the beveled spectacle lens based on the lens shape data and to determine that the beveled
spectacle lens can be fitted to the rim of the spectacle frame if the difference between the lenscircumferential length and the rim circumferential length received from the measurement terminalof the frame measurement unit is within a prescribed range.
[Effect of the invention][0009]
According to the present invention, in determining whether spectacle lenses will fit aspectacle frame, by using as a decision criterion the gap between the rim circumferential lengthof a spectacle frame and the lens circumferential length along the bevel top of a spectacle lens, it
is possible to allow spectacle lenses to be fitted to the rim of a spectacle frame with a high degreeof certainty and efficiency, even when the spectacle lenses are processed at a location where thespectacle frame is not immediately at hand.
[Brief explanation of the drawings][0010]
FIG. 1 is an overall configuration diagram of a spectacle lens edging system as anembodiment.
FIG. 2 is a flowchart illustrating the process of ordering, order receiving and processing ofspectacle lenses.
FIG. 3 shows the way that a spectacle lens and the rim of a spectacle frame fit together.
FIG. 4 is a schematic depiction of a cross-section on line IV-IV in FIG. 3 as viewed from thedirection shown by the arrows.
[Description of embodiments][0011]
The following describes the spectacle lens edging system that is an embodiment pertaining
to the present invention with referring to the figures. Note that the following descriptions express
one aspect of the present invention and are not intended to limit the present invention to the4embodiment.
[0012]
In processing and measuring, etc. of spectacle lenses, a lens for the left eye and a lens for theright eye are treated individually, but treatments of them share a common substance. Therefore,
the following paragraphs will describe things common to both, without distinguishing between
uses for the left eye and the right eye.
[0013]
1. Configuration of the spectacle lens edging system
FIG. 1 shows an overall configuration diagram of a spectacle lens edging system 1 as anembodiment. The spectacle lens edging system 1 comprises: a frame measurement unit 10, whichis installed in an optician’s shop or other places where spectacle lenses are ordered, and a lensedging unit 50, which is installed in a lens processing factory of a lens maker or other places; andthe frame measurement unit 10 and an edging management server 57 of a lens edging unit 50 areconnected via the Internet 90 or a wide-area network. Also as shown in FIG. 1, the spectacle lensedging system 1 can be configured so that the lens edging unit 50 is connected via the Internet 90
or a wide-area network to a plurality of the frame measurement units 10.
[0014]
2. Configuration of the frame measurement unit
The frame measurement unit 10 is equipment for measuring the three-dimensional shape ofa spectacle frame and comprises a frame tracer 11 and a measurement terminal 12. The frame
measurement unit 10 is installed in the optician’s shop as equipment for ordering spectacle lenses
from the lens processing factory.
[0015]
2-1. Configuration of the frame tracer
The frame tracer 11, also called a frame shape measurer, is configured to obtain data
regarding the three-dimensional shape of a spectacle frame, including rim shape data. The rim
shape data acquired by measuring with the frame tracer 11 is generated so that the rim shape canbe determined in three-dimensional coordinate space. The frame tracer 11 has a contacting probe
for measuring shape and a support shaft that supports the contacting probe, and the frame tracer
11 measures the shape of the spectacle frame by touching the contacting probe to the groove of
the rim of the spectacle frame being measured. A known frame tracer may be used as the frame
tracer 11.
[0016]
2-2. Configuration of the measurement terminal
The measurement terminal 12 is a computer equipped with a keyboard and a display (notshown) and is connected to the Internet 90. The measurement terminal 12 has software installed
5

that is needed to order processing of spectacle lenses, and it is configured to receive input fromthe frame tracer 11 and calculate the rim circumferential length along the groove of the rim basedon the rim shape data, and to transmit the rim circumferential length data to the edging
management server 57 of the lens edging unit 50.
[0017]
Specifically, using installed software, the measurement terminal 12 conducts smoothing asnecessary of the rim shape data input by the frame tracer 11, and in addition to the rim
circumferential length along the groove of the rim, it calculates the frame curve, the frame PD(pupil distance), the frame nose width, the maximum horizontal and vertical widths of the frame,
and the angle formed by the left and right frameworks, etc. These calculated data are then shownon the display.
[0018]The measurement terminal 12 is also configured so that spectacle frame information(indication of material of the frame, indication of whether the frame can flex, etc.), spectacle lensinformation (material of the lens, lens color, use/nonuse of hard coat film, etc.), layout information(the pupil distance, the pupil height, etc.), and prescription information (the spherical diopter
power, the degree of astigmatism, etc.) can be entered using the keyboard.
[0019]The data calculated and entered with the measurement terminal 12 is configured to betransmittable via the Internet 90 from the measurement terminal 12 to the edging management
server 57. Note that among the data transmitted to the edging management server 57, the rim
circumferential length data of the spectacle frame is used to determine whether a spectacle lens
will fit the spectacle frame. Hereinafter, among the data calculated and entered with themeasurement terminal 12, the data except the rim circumferential length data and the rim shapedata is referred to as the “order data.”[0020]
3. Configuration of the lens edging unit
The lens edging unit 50 is composed of a plurality of devices for carrying out edging andbeveling of spectacle lenses; it comprises a plurality of edgers 51, a plurality of lens shapemeasurers 52, a plurality of edger terminals 53, and the edging management server 57. Within
this lens edging unit 50, one of the edgers 51, one of the lens shape measurers 52, and one of theedger terminals 53 form one sub-unit, which is installed in a factory that receives orders from an
optician’s shop and processes spectacle lenses. The lens edging unit 50 in FIG. 1 shows the casein which a single sub-unit comprising an edger 51, a lens shape measurer 52, and an edger terminal
53 is installed in a single lens processing factory, but a single lens processing factory can have aplurality of sub-units. In either case, the sub-unit is configured to be able to receive the order data,6

the rim shape data, and the rim circumferential length data from the edging management server
57 via a network 55. The network 55 can be a wide-area network such as the Internet, or a private
network that uses a leased line or VPN.
[0021]
3-1 Configuration of the edger
The edger 51 is configured to carry out edging and beveling on spectacle lenses based onprescribed edging conditions. The setting of the prescribed edging conditions is performed by theedger terminal 53, which is connected to the edger 51, using data calculated and entered with themeasurement terminal 12 of the frame measurement unit 10.
[0022]
In processing of a spectacle lens, an unprocessed lens is processed to match the shape of thespectacle frame in which the spectacle lens will be inserted. Processing of a spectacle lens by theedger 51 is conducted by going through the two steps of the rough grinding process and thefinishing process. In the rough grinding process, the spectacle lens is processed to a shape that islarger than the planned final finished shape. In the finishing process, the spectacle lens after therough grinding process is processed to match the planned final finished shape. The finishingprocess is the step that includes the beveling that forms the convex protrusion (bevel) on the edgeof the lens.
[0023]In beveling, a bevel is formed on the edge of the spectacle lens to match the lens design madeusing software installed in the edger terminal 53. Because there are cases where another shapesuch as a groove is to be formed on the edge of the lens, in the finishing process the tool used forprocessing will be changed according to the shape to be formed.
[0024]
Additionally, as to the rough grinding process and the finishing process, the processing
method may be changed for each process. For example, the rough grinding process may bereplaced by cutting while the finishing process may be done by grinding. The same processing
method may be employed for both.
[0025]
3-2 Configuration of the lens shape measurer
The lens shape measurer 52 is configured to obtain lens shape data regarding the threedimensional shape of the beveled spectacle lens. A known lens shape measurer may be used as
the lens shape measurer 52.
[0026]The lens shape measurer 52 measures the size of the spectacle lens processed by the edger
51 in three dimensions using a contacting probe (stylus). Note that when measuring a convex
7

bevel, the lens shape measurer 52 measures the size by bringing a stylus into contact with thepeak of the bevel formed on the edge side (edge surface) of the lens and rotating the spectaclelens with the stylus kept in contact. The lens shape measurer 52 measures in three-dimensional
coordinate space the displacement magnitude and the displacement direction of the contacting
probe accompanying the rotation of the spectacle lens, and transmits the lens shape data that is
the result of the measurement to the edger terminal 53.
[0027]
3-3 Configuration of the edger terminal
The edger terminal 53 is a computer equipped with a keyboard and a display (not shown),
and is connected via the network 55 to the edging management server 57. The edger terminal 53
has software installed to control the edger 51 and the lens shape measurer 52, and it is configured
to calculate the lens circumferential length of the spectacle lens based on the lens shape datameasured by the lens shape measurer 52, to obtain the rim circumferential length data from theedging management server 57, and to determine that the beveled spectacle lens fits the spectacle
frame when the difference between the rim circumferential length and the lens circumferential
length is within a prescribed range.
[0028]The edger terminal 53 also has software installed relating to the design of spectacle lenses
that includes bevel shapes.
[0029]The edger terminal 53 is configured to receive via the Internet 90 and the network 55 data
calculated or entered with the measurement terminal 12 of the frame measurement unit 10, and totransmit to the edger 51 such data as is needed from among that stored in the edging management
server 57. This configuration allows the edging management server 57 to be able to manage
collectively the data received from the frame measurement units 10 installed in a plurality of
optician’s shops, and the required data can be transmitted as requested by the edger terminal 53
at the lens processing factory which has accepted the processing order. This enables a reductionin the troublesomeness for the optician’s shop, in requesting processing of spectacle lenses, toseparately inquire of the lens processing factory about the inventory availability before
transmitting data like the rim shape data of the spectacle frame.
[0030]
3-4 Configuration of the edging management server
The edging management server 57 is configured to store the data received from themeasurement terminal 12 and to transmit the data to one of a plurality of the edger terminals 53of the lens edging unit 50. The data received and transmitted by the edging management server
57 includes at least the rim circumferential length data of the spectacle frame.
8[0031]The edging management server 57 is configured using a computer, and comprises a data
management part and a database part (not shown). The data management part uses the database
part to record and manage the data received via the Internet 90 from the measurement terminal
12.
[0032]
Additionally, the database part may also store a variety of data relating to spectacle lensorders. For example, design data and processing history data, etc. of spectacle lenses in addition
to the accepted order data can be stored, and the results of processing on the edger terminal 53 of
the lens edging unit 50 can be recorded and managed in the edging management server 57.
[0033]
4. Processes related to ordering, order receiving and processing of spectacle lenses
The following is a description of the processes relating to ordering, order receiving andprocessing of spectacle lenses that include spectacle lens processing methods pertaining to theembodiment.
[0034]
The following description assumes that a single frame measurement unit 10 is installed in an
optician’s shop and a single sub-unit of the lens edging unit 50 is installed in a lens processing
factory. As shown in FIG. 1, a spectacle lens edging system, in which a plurality of the frame
measurement units 10 and the sub units of the lens edging unit 50 are installed, is configured sothat order data from the plurality of the frame measurement units 10 is stored on the edging
management server 57, and the edger terminal 53 of the sub unit of the lens edging unit 50
acquires data of the spectacle frame for which acceptance of a lens processing order has been
decided.
[0035]
FIG. 2 is a flowchart illustrating the process of ordering, order receiving and processing ofspectacle lenses.
[0036]First, a spectacle frame selected by a customer is placed in the frame tracer 11 of the frame
measurement unit 10 installed in the optician’s shop, which acquires the rim shape data of thespectacle frame (Step 1).
[0037]The rim shape data acquired by the frame tracer 11 is read into the measurement terminal 12,
and the rim circumferential length of the spectacle frame (the circumferential length along thegroove of the rim of the spectacle frame) is calculated by the measurement terminal 12 based on
the rim shape data (Step 2).
9[0038]
Also, an operator at the optician’s shop (shop employee) enters order data using themeasurement terminal 12 (Step 3). Order data includes spectacle frame information, spectaclelens information, layout information, prescription information, etc. The spectacle frame
information includes the frame manufacturer and the model name, material of the frame,
indication of whether the frame can flex, frame size, frame pattern, frame color, etc. The spectaclelens information includes material of the lens, use/nonuse of functional film (dimming,polarization), lens color, use/nonuse of hard coat film, product codes, etc. The layout information
includes the pupil distance, the pupil height, etc. The prescription information includes thespherical diopter power, the degree of astigmatism, the astigmatic axis, etc.
[0039]
Next, the rim shape data, the rim circumferential length data, and the order data aretransmitted from the measurement terminal 12 via the Internet 90 to the edging management
server 57 (Step 4).
[0040]In the lens edging unit 50, the edging management server 57 obtains and stores theaforementioned data transmitted from the measurement terminal 12 of the frame measurement
unit 10 (Step 5). The edging management server 57 compares the order data with previously stored
data regarding spectacle lens inventory to determine whether processing is acceptable (Step 6),
and, if processing is not possible, the edging management server 57 transmits order-rejection data
to the measurement terminal 12 (Step 61), and terminates processing.
[0041]The edging management server 57 transmits the data corresponding to the lens processing,for which acceptance of order was decided, from among the aforementioned stored data to theedger terminal 53 at a lens processing factory capable of processing, and the edger terminal 53
designs the spectacle lens including the bevel shape based on the rim shape data, the rim
circumferential length data and the order data corresponding to that lens processing, and sets
edging conditions to be used for lens processing by the edger 51 (Step 7).
[0042]The prescribed edging conditions set by the edger terminal 53 and the spectacle lensinformation included in the order data are transmitted to the edger 51, and based on the data theedger 51 carries out lens processing of an unprocessed spectacle lens including beveling (Step 8).
[0043]
Next, the lens shape measurer 52 is used to obtain the lens shape data regarding the threedimensional shape of the spectacle lens on which beveling, etc. were conducted (the processed
spectacle lens), and the lens shape data is transmitted to the edger terminal 53 that is connected10

to the lens shape measurer 52 (Step 9).
[0044]
Based on the transmitted lens shape data, the edger terminal 53 calculates the lenscircumferential length along the bevel top of the processed spectacle lens (Step 10).
[0045]The edger terminal 53 uses the aforementioned lens circumferential length and the rim
circumferential length data obtained from the edging management server 57 to determine whether
the difference between the rim circumferential length and the lens circumferential length is withina prescribed range. If it is within the prescribed range, the processed spectacle lens that wasbeveled is determined to fit the spectacle frame selected by the customer (Step 11).
[0046]The processed spectacle lenses that were determined to fit are shipped to the ordering
optician’s shop (Step 12), and are received by the optician’s shop (Step 13).
[0047]In addition, in processing of spectacle lenses, besides the data acquisition and calculation
described herein, a variety of other equipment and information may be used, but a description
thereof has been omitted.
[Reference numerals]
1

Spectacle lens edging system

10

Frame measurement unit

11

Frame tracer

12

Measurement terminal

50

Lens edging unit

51

Edger

52

Lens shape measurer

53

Edger terminal

55

Network (Internet, VPN, etc.)

57

Edging management server

90

Internet (wide-area network)11

【FIG. 1】

11

12

12

Measurement
terminal

Frame tracer

1

Frame measurement unit 10

Frame measurement unit 10

11

Measurement
terminal

Frame tracer

・・・・・・

90
Lens edging unit 50
51

Lens processing
factory

57
Edging management
server

Edger

53

53
55

52
Edger
terminal

51

Edger

52
Edger
terminal

Lens shape measurer

Lens shape measurer

・・・

・・・

・・・

12

【FIG. 2】【FIG. 3】

【FIG. 4】

111

100

120

IV

120

110
120

110
111

IV

13

IV.

Entities Involved in the System
1.

Relationship between Donkey and Turtle

Donkey is a lens manufacturer engaged in the sales and processing of spectacle lenses, andhas a number of domestic lens processing factories. Turtle is a company engaged in the
manufacturing and sales of machine tools including spectacle lens edgers, and in the developmentof computer systems. In January 2021, Donkey engaged Turtle to develop software customized
for the System (the “Software”), and Turtle completed the development in July 2021. Since thelaunch of the System, Turtle has been assigned by Donkey to operate the data management device
that is part of the System, and receiving the service fees for operation of the data management
device from Donkey.
2.

Relationship between optician’s shops and Donkey.

Optician’s shops are domestic business operators that are engaged in the sales of spectacle
frames and processed spectacle lenses in response to orders from general customers, and none ofthem have personal or capital relationship with Turtle or Donkey. In order for an optician’s shop
to place orders for processing spectacle lenses to Donkey through the System, the optician’s shop
needs to have entered into a transaction agreement with Donkey in advance. Upon the executionof such transaction agreement with Donkey, the optician’s shop is granted a license to use theclient software which is a part of the Software.
After the client software of the Software is installed in its personal computer (the “Shop PC”),
the optician’s shop places orders to and conducts other transactions with Donkey using Internet
communications.
3.

Relationship between optician’s shops and Turtle

When an optician’s shop starts the client software of the Software installed in the Shop PC,
it is connected to the data management device in the data center operated by Turtle (the “DataManagement Device”), and displays a page on which Donkey is indicated as an entity having
prepared the page, where necessary information is to be entered. Since the name Turtle cannot befound anywhere on this page, an optician’s shop has no idea that Turtle is involved in the System.
V.

Structure of the System[a]

In an optician’s shop that places orders for spectacle lenses the Shop PC having Internet
access is installed, and the Shop PC is equipped with a keyboard and a display and isconnected to a frame tracer;
The Data Management Device in the data center has Internet access;A personal computer with Internet access is installed in a lens processing factory (the14“Factory PC”), and the Factory PC is connected to an edger and a lens shape measurer;
Spectacle lenses processed at the lens processing factory are delivered from the lensprocessing factory to the optician’s shop that has ordered the spectacle lenses.
[b]

The optician’s shop is equipped with the frame tracer and the Shop PC.

[b1]

the frame tracer measures a movement amount r in the radial direction, a movement
amount Z in the height direction, and a rotation angle θ of a contacting probe along aspectacle frame, obtains 1000-point data (coordinate data at 0.36° intervals) that
represents three-dimensional value regarding the rim shape of the spectacle frame outof the measurement data, and transmits the 1000-point data to the Shop PC.

[b2]

When the client software of the Software installed in the Shop PC is started, the Shop
PC is automatically connected to the Data Management Device and the frame tracer,
and also displays an entry screen. On this entry screen, an operator at the optician’s shop
(shop employee) is able to enter data such as the orderer, spectacle lens information,frame fitting information, bevel type information, and frame type information. Whenthese pieces of information are transmitted to the Data Management Device, the 1000point data is automatically transmitted to the Data Management Device.

[c′]Upon the receipt of the orderer, spectacle lens information, frame fitting information,
bevel type information, frame type information, and the 1000-point data from the Shop
PC at the optician’s shop, the Data Management Device calculates the rim
circumferential length based on the 1000-point data transmitted from the Shop PC.
Using the data registered in advance such as customers, products, colors, delivery dates,
producible range of lens powers, and inventory, the Data Management Device can also
check the inventory availability of spectacle lenses of the type ordered, whether lensprocessing is acceptable, and which lens processing factory can process the lenses. To
the Factory PC at the lens processing factory so identified as being capable of processing
the lenses, the Data Management Device transmits at least the spectacle lens information,
the 1000-point data, and the rim circumferential length data.

[c1]

Based on the 1000-point data and the rim circumferential length data, the Factory PC
calculates the shape of the lens and transmits the result to the edger, and then, based on
the result of calculation, the edger processes uncut lenses corresponding to the spectaclelens information.

[c2]

The lens shape measurer measures a movement amount r in the radial direction, amovement amount Z in the height direction, and a rotation angle θ of a contacting probe
along the bevel top of the beveled spectacle lens, obtains out of the measurement data
the lens shape data that represents three-dimensional value regarding the shape of thebevel top, and transmits the lens shape data to the Factory PC.
15

[c3]

The Factory PC calculates the lens circumferential length based on the lens shape datatransmitted from the lens shape measurer, compares the lens circumferential length socalculated with the rim circumferential length data transmitted from the DataManagement Device, and determines “fit” if the difference between them is within aprescribed range.

[d]

The System is a system for processing spectacle lenses as described above.

VI.

Whether the System satisfies Elements of the Invention
Although whether the System satisfies Elements B2 and C3 (only the part “the rim

circumferential length received from the measurement terminal of the frame measurement unit”)
is contested, the parties acknowledge that the System satisfies all other elements.
VII.

Summary of the arguments of Pony (Plaintiff)
1.

Satisfaction of Element B2

In terms of the calculation of a rim circumferential length, the Data Management Device of
the System falls under the “measurement terminal” constituting a “frame measurement unit” in
the Invention.
In the System, it is true that a rim circumferential length is calculated by the DataManagement Device that is connected to a frame tracer via the Shop PC and the network.
However, the function of the client software of the Software installed in the Shop PC at an
optician’s shop is limited to the communication function and the function to display an entry
screen in a dedicated format, and 1000-point data obtained through the measurement by the frame
tracer is merely automatically transmitted to the Data Management Device through the Shop PC.
It can be seen that the Shop PC and the Data Management Device work together to calculate therim circumferential length based on the1000-point data obtained through the measurement by theframe tracer. Thus, the Data Management Device should be regarded as a device constituting a“frame measurement unit.”
Further, the 1000-point data constitutes the “rim shape data” regarding the three-dimensional
shape of the rim, and the Data Management Device transmits the rim circumferential length data
calculated from the rim shape data through the network to the Factory PC that constitutes a “lensedging unit.” The Data Management Device therefore falls under the “measurement terminal” in
the Invention.
As a supplemental note, in the embodiment in the Description disclose the structure whereinboth a “frame tracer” and a “measurement terminal” of a “frame measurement unit” are installed
in an optician’s shop; however, that is a mere working example. According to the Scope of Claims,
a “measurement terminal” is not necessarily a device that is installed in a shop, and can be any
16device insofar as it is structured to transmit the rim circumferential length data to a device on thelens edging unit’s side that has function to “determine”. The technical idea of the Invention liesin the feature to compare the rim circumferential length and the lens circumferential length so as
to achieve the purpose to solve the problem of providing “a spectacle lens edging system thatallows spectacle lenses to be fitted to the rim of a spectacle frame with a high degree of certainty
and efficiency” ([0007]), and which device makes the calculation from a physical perspective is
not necessarily important. Further, the feature to effectively edge lenses by mediating a pluralityof remotely located optician’s shops and an edging factory capable of processing desired spectaclelenses only comes from well-known art. The feature that whether processing is possible isdetermined by the Data Management Device should not be particularly focused on when defining
the scope of the “lens edging unit.”
The System therefore satisfies Element B2.
2.

Satisfaction of the part “the rim circumferential length received from the measurement

terminal of the frame measurement unit” of Element C3
As stated earlier in 1, the Data Management Device of the System falls under the“measurement terminal” constituting a “frame measurement unit” in the Invention, calculates therim circumferential length, and transmits the result to the Factory PC. Thus, “the rim
circumferential length” is “received” by the Factory PC of the System, which corresponds to the“edger terminal,” “from the measurement terminal of the frame measurement unit.”
The System therefore satisfies Element C3.
3.

Multiple Actors

If a plurality of entities is found to jointly fulfill all the elements prescribed in the Scope ofClaims of a patent, it constitutes a patent infringement, as joint patent infringement, where eachof such actors should be regarded as having committed the whole acts. The System was developed
by Turtle pursuant to a contract with Donkey, and they both know much about the System. Under
the contract with Donkey, Turtle has been engaged in, and has also gained revenues from, theoperation of the Data Management Device of the System. Optician’s shops actively use the
System by having entered into transaction agreements with Donkey, having been provided withthe client software of the Software and making the Shop PCs into devices of the System, etc. andhave gained revenues from sales of spectacle lenses. Turtle and optician’s shops are therefore
regarded as using the System jointly with Donkey.
Thus, Donkey is found to infringe the Patent jointly with Turtle and optician’s shops, and isregarded as having committed the whole acts even if Turtle and optician’s shops might havecommitted part thereof.
17

Even if it cannot be said as described above, Turtle just lets the Data Management Device
respond automatically, by using the Software, to orders from the Shop PCs connected via the
network; optician’s shops just connect the Shop PC to the Data Management Device via the
network and order spectacle lenses with data transmitted from the frame tracer, by the use of theclient software of the Software to the extent that the shops can operate it. Accordingly, acts of
Turtle and optician’s shops, with which they are regarded as acting as a pawn or tool for Donkey
in terms of the use of the System, are deemed to be the acts of Donkey itself.
VIII.

Summary of the arguments of Donkey (Defendant)
1.

Nonsatisfaction of Element B2

The Data Management Device in the System is a device constituting a “lens edging unit.”
To be specific, the purpose of the Invention is to make it possible to effectively process lenses
by mediating a plurality of remotely located optician’s shops and an edging factory capable ofprocessing desired spectacle lenses ([0009], [0029]). To achieve the purpose, the Invention adopts
the following structure: the “edging management server” in the lens edging unit is an independent
device to which a measurement terminal is connected ([0013], [0019]); the “edging management
server” determines whether processing of spectacle lenses is possible ([0029], [0040]); then the“edging management server” transmits the rim shape data, the rim circumferential length data,
and the order data to the edger terminal in the edging factory capable of processing ([0041]). In
the Invention, each frame measurement unit is individually connected to the lens edging unit
through the network, and it is obvious that the system is designed on the assumption that ameasurement terminal calculating the rim circumferential length data is also equipped in eachframe measuring unit (the Scope of Claims, FIG. 1).
On the other hand, the Data Management Device of the System is connected to the Shop PCsof a plurality of optician’s shops, determines whether processing of spectacle lenses is possible,
and transmits the 1000-point data which corresponds to the rim shape data, the rim circumferential
length data, and the order data to an edging factory capable of processing. This means, the DataManagement Device of the System falls under the “edging management server” of the Invention,and obviously constitutes the lens edging unit. Therefore, what is corresponding to the“measurement terminal” of the Invention is the Shop PC connected to the Data Management
Device; and the Shop PC of the System fails to calculate the rim circumferential length data. In
the System, no frame measurement unit calculates the rim circumferential length after all.
Thus, the System is characteristic in its structure where only the frame shape is measured atshops and all the following steps are undertaken by the lens edging unit; which is different
fundamental technical idea from that of the Invention.
The System therefore does not satisfy Element B2.
18

2.

Nonsatisfaction of the part “the rim circumferential length received from themeasurement terminal of the frame measurement unit” of Element C3
As stated earlier in 1, the rim circumferential length is calculated in the System not by a“frame measuring unit” but by the Data Management Device constituting the lens edging unit.
Thus, “the rim circumferential length” is not “received” by an edger terminal “from […] the frame
measurement unit.”
The System therefore does not satisfy Element C3.
3.

Multiple Actors

A patent infringement by an entity is established only if the entity fulfills all the elements
prescribed in the Scope of Claims of a patent alone by itself, with the exception of indirect
infringement only. In the present case, none of Turtle holding the Data Management Device,
optician’s shops and Donkey independently own any device whose function satisfies all theelements. Optician’s shops, Turtle, and Donkey are involved in just part of the System as totallyindividual and independent actors. Neither Turtle nor optician’s shops cannot be regarded as
acting as a pawn or tool for Donkey. Also because optician’s shops could never be aware of thedetails of the System or even the existence of Turtle, it is impossible that optician’s shops infringe
the Patent jointly with Donkey or Turtle.
IX.

Matters to be noted in the examination of this case
It is requested for each participating country in the JSIP to examine whether direct and literal

infringement can be found in its respective jurisdiction. Whether infringement under the doctrineof equivalents or indirect infringement can be found may also be considered if it is useful for
judgment.
(End)

19

October 12, 2022

(Appendix)
Reference Material
I.

Schematic Diagram of the Invention
Ｂ Frame measurement unit 10
11

Ｂ１

1

Frame measurement unit 10
12

12

Ｂ２

11

Invention
Frame tracer

Measurement
terminal

Obtain rim shape data

Frame tracer

Measurement
terminal

・・・・・・

Calculate rim
circumferential length
Network
Rim circumferential
length data

90

Ｃ
Lens edging unit 50
51

57
Edging management
serverEdger

53beveling

Ｃ２
Edger
terminal・・・

Calculate lens circumferential・・・

length・・・

Lens shape measurer

Determine fit

Obtain lens shape data

Schematic Diagram of the System at issueｂ
System at issue

Optician’s shop

ｂ１

ｂ２
Frame tracer

Shop PC

Obtain 1000-point data

Transmit 1000-point data

・・・・・・
Network

ＤｏｎｋｅｙＴｕｒｔｌｅData center

C´

Data Management
DeviceProcessing
factory

c1
Edger

c3

Calculate rim
circumferential length

beveling

Factory PC

・・・・・・

52

Edger
terminal

Lens shape measurer

II.

Edger

53

Ｃ３

55

52

51

Ｃ１

Calculate lenscircumferential
length Determine

Rim circumferential
・・・・・・ length data

fit

i

c2
Lens shape measurer

Obtain lens shape data

October 12, 2022

III.

Glossaryedge surface of the lens: the side surface of the edge of a spectacle lensbevel: to process the edge surface (the side surface of the edge) of a spectacle lens to form a
convex protrusionlens shape data: data regarding the three-dimensional shape of the edge of a spectacle lenslens circumferential length: the circumferential length along the bevel top of a beveled
spectacle lensrim: the part of a spectacle frame which surrounds a spectacle lensrim shape data: data regarding the three-dimensional shape of the groove of the rim of aspectacle lensrim circumferential length: the circumferential length along the groove of the rim of aspectacle lensorder data (in the Invention): data calculated and entered with a measurement terminal
except the rim circumferential length data and the rim shape datacontacting probe: the tip of a part of a measurement device which contacts an object to bemeasured
1000-point data (in the System): data regarding the three-dimensional shape of a groove ofa rim of the spectacle lens which are measured at 0.36° intervalsii