G.R. No.
L-32160 January 30, 1982 sustained by the plaintiff; that there is an urgent need for the immediate
DOMICIANO A. AGUAS, petitioner, vs.CONRADO G. DE LEON and
COURT OF APPEALS, respondents.
FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of Appeals
in CA G.R. NO. 37824-R entitled "Conrado G. de Leon, plaintiff-appelle vs.
Dominciano Aguas and F.H. Aquino and Sons, defendants-appellants," the
dispositive portion of which reads:
WHEREFORE, with the modification that plintiff-applee's award of moral
damages is hereby redured to P3,000.00, the appealed judgment is hereby
affirmed, in all othe respects, with costs against appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of
Rizal at Quezon City a complaint for infringement of patent against
Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the
original first and sole inventor of certain new and useful improvements in the
process of making mosaic pre-cast tiles, he lawfully filed and prosecuted an
application for Philippine patent, and having complied in all respects with the
statute and the rules of the Philippine Patent Office, Patent No. 658 was
lawfully granted and issued to him; that said invention was new, useful, not
known or used by others in this country before his invention thereof, not
patented or described in any printed publication anywhere before his
invention thereof, or more than one year prior to his application for patent
thereof, not patented in any foreign country by him or his legal
representatives on application filed more than one year prior to his
application in this country; that plaintiff has the exclusive license to make,
use and sell throughout the Philippines the improvements set forth in said
Patent No. 658; that the invention patented by said Patent No. 658 is of
great utility and of great value to plaintiff and of great benefit to the public
who has demanded and purchased tiles embodying the said invention in
very large quantities and in very rapidly increasing quant ies; that he has
complied with the Philippine statues relating to marking patented tiles sold
by him; that the public has in general acknowledged the validity of said
Patent No. 658, and has respected plaintiff's right therein and thereunder;
that the defendant Domiciano A. Aguas infringed Letters of Patent No. 658
by making, using and selling tiles embodying said patent invention and that
defendant F. H. Aquino & Sons is guilty of infringement by making and
furnishing to the defendant Domiciano A. Aguas the engravings, castings
and devices designed and intended of tiles embodying plaintiff;s patented
invention; that he has given direct and personal notice to the defendants of
their said acts of infringement and requested them to desist, but
nevertheless, defendants have refused and neglected to desist and have
disregarded such request, and continue to so infringe causing great and
irreparable damage to plaintiff; that if the aforesaid infringement is permitted
to continue, further losses and damages and irreparable injury will be
1
issuance of a preliminary injunction; that as a result of the defendants'
wrongful conduct, plaintiff has suffered and the defendants are liable to pay
him, in addition to actual damages and loss of profits which would be
determined upon proper accounting, moral and exemplary or corrective
damages in the sum of P90,000.00; that plaintiff has been compelled to go
to court for the protection and enforcement of his and to engage the service
of counsel, thereby incurring attorney's fees and expenses of litigation in the
sum of P5,000.00. 2
On April 14, 1962, an order granting the plaintiff's petition for a Writ of
Preliminary Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer
denying the allegations of the plaintiff and alleging that: the plaintiff is neither
the original first nor sole inventor of the improvements in the process of
making mosaic pre-cast tiles, the same having been used by several tile-
making factories in the Philippines and abroad years before the alleged
invention by de Leon; that Letters Patent No. 658 was unlawfully acquired by
making it appear in the application in relation thereto that the process is new
and that the plaintiff is the owner of the process when in truth and in fact the
process incorporated in the patent application has been known and used in
the Philippines by almost all tile makers long before the alleged use and
registration of patent by plaintiff Conrado G. de Leon; that the registration of
the alleged invention did not confer any right on the plaintiff because the
registration was unlawfully secured and was a result of the gross
misrepresentation on the part of the plaintiff that his alleged invention is a
new and inventive process; that the allegation of the plaintiff that Patent No.
658 is of great value to plaintiff and of great benefit to the public is a mere
conclusion of the plaintiff, the truth being that a) the invention of plaintiff is
neither inventive nor new, hence, it is not patentable, b) defendant has been
granted valid patents (Patents No. 108, 109, 110 issued on December 21,
1961) on designs for concrete decorative wall tiles; and c) that he can not be
guilty of infringement because his products are different from those of the
plaintiff. 4
The trial court rendered a decision dated December 29, 1965, the dispositive
portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and against
the defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their officers,
agents, employees, associates, confederates, and any and all persons
acting under their authority from making and/or using and/or vending tiles
embodying said patented invention or adapted to be used in combination
embodying the same, and from making, manufacturing, using or selling,
engravings, castings and devises designed and intended for use in
apparatus for the making of tiles embodying plaintiff's patented invention,
and from offering or advertising so to do, and from aiding and abetting or in
any way contributing to the infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings, castings and
devices, which are in the possession or under the control of defendants be
delivered to plaintiff;
4. Ordering the defendants to jointly and severally pay to the plaintiff the
following sums of money, to wit:
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney's fees and
(e) costs of suit. 5
The defendant Domiciano Aguas appealed to the Court of Appeals,
assigning the following errors. 6
I physical evidence introduced consisting of samples of the tiles and
THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF'S
PATENT FOR THE 'PROCESS OF MAKING MOSAIC PRE-CAST TILE' IS
INVALID BECAUSE SAID ALLEGED PROCESS IS NOT AN INVENTION
OR DISCOVERY AS THE SAME HAS ALREADY LONG BEEN USED BY
TILE MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.
II
THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF
PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-
OLD TILE MAKING SYSTEM.
III
THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE'S LETTERS PATENT NO. 658, EXHIBIT L, IN
ACCORDANCE WITH THE PERTINENT PROVISIONS OF THE PATENT
LAW, REPUBLIC ACT 165.
IV
THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT
DOMICIANO A. AGUAS IS GUILTY OF INFRINGEMENT DESPITE THE
FACT THAT PLAINTIFF'S PATENT IS NOT A VALID ONE.
V explanation of the lip width, artistic slope of easement and critical depth of
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT
COULD NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF'S
PATENT BECAUSE EVEN IN MATTERS NOT PATENTED BY THE
PLAINTIFF - LIKE THE COMPOSITION AND PROPORTION OF
INGREDIENTS USED AND THE STRUCTURAL DESIGNS OF THE
MOULD AND THE TILE PRODUCED - THAT OF THE DEFENDANT ARE
DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND
IN HOLDING THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE
FOR DAMAGES, AND ATTORNEY'S FEES.
2
On August 5, 1969, the Court of Appeals affirmed the decision of the trial
court, with the modification that plaintiff-appellee's award of moral damages
was reduced to P3,000.00. 7
The petitioner assigns the following errors supposedly committed by the
Court of Appeals:
It is now respectfully submitted that the Court of Appeals committed the
following errors involving questions of law, to wit:
First error. — When it did not conclude that the letters patent of the
respondent although entitled on the cover page as a patent for
improvements, was in truth and in fact, on the basis of the body of the same,
a patent for the old and non-patentable process of making mosaic pre-cast
tiles;
Second error. — When it did not conclude from the admitted facts of the
case, particularly the contents of the letters patent, Exh. L and the pieces of
catalouges, that the alleged improvements introduced by the respondent in
the manufacture of mosaic pre-cast tiles are not patentable, the same being
not new, useful and inventive.
Third error. — As a corollary, when it sentenced the herein petitioner to pay
the damages enumerated in the decision of the lower court (Record on
Appeal, pp. 74-75), as confirmed by it (the Court of Appeals), but with the
modification that the amount of P50,000.00 moral damages was reduced to
P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record are to the effect that on December 1,
1959 plaintiff-appellee filed a patent application with the Philippine Patent
Office, and on May 5, 1960, said office issued in his favor Letters Patent No.
658 for a "new and useful improvement in the process of making mosaic pre-
cast tiles" (Exh, "L"); that defendant F.H. Aquino & Sons engraved the
moulds embodying plaintiff's patented improvement for the manufacture of
pre-cast tiles, plaintiff furnishing said defendant the actual model of the tiles
in escayola and explained to said engraver the plans, specifications and the
details of the engravings as he wanted them to be made, including an
the engraving that plaintiff wanted for his moulds; that engraver Enrique
Aquino knew that the moulds he was engraving for plaintiff were the latter's
very own, which possession the new features and characteristics covered by
plaintiff's parent; that defendant Aguas personally, as a building contractor,
purchased from plaintiff, tiles shaped out of these moulds at the back of
which was imprinted plaintiff's patent number (Exhs., "A" to "E"); that
subsequently, through a representative, Mr. Leonardo, defendant Aguas
requested Aquino to make engravings of the same type and bearing the
characteristics of plaintiff's moulds; that Mr. Aquino knew that the moulds he
was asked to engrave for defendant Aguas would be used to produce
cement tiles similar to plaintiff's; that the moulds which F.H. Aquino & Sons
eventually engraved for Aguas and for which it charged Aguas double the
rate it charged plaintiff De Leon, contain the very same characteristic
features of plaintiff's mould and that Aguas used these moulds in the
manufacture of his tiles which he actually put out for sale to the public (Exhs.
"1" to "3" and Exhs. "A" to "E"); that both plaintiff's and defendant Aguas'
tiles are sculptured pre-cast wall tiles intended as a new feature of
construction and wag ornamentation substantially Identical to each other in
size, easement, lip width and critical depth of the deepest depression; and
that the only significant difference between plaintiff's mould and that
engraved by Aquino for Aguas is that, whereas plaintiff's mould turns out
tiles 4 x 4 inches in size, defendant Aguas' mould is made to fit a 4-1/4 x 4-
1/4 inch tile. 9
The patent right of the private respondent expired on May 5, 1977. 10 The
errors will be discuss only to determine the right of said private respondent
to damages.
The petitioner questioned the validity of the patent of the private respondent,
Conrado G. de Leon, on the ground that the process, subject of said patent,
is not an invention or discovery, or an improvement of the old system of
making tiles. It should be noted that the private respondent does not claim to
be the discoverer or inventor of the old process of tile-making. He only
claims to have introduced an improvement of said process. In fact, Letters
Patent No. 658 was issued by the Philippine Patent Office to the private
respondent, Conrado G. de Leon, to protect his rights as the inventor of "an
alleged new and useful improvement in the process of making mosaic pre-
cast tiles." 11 Indeed, Section 7, Republic Act No. 165, as amended
provides: "Any invention of a new and useful machine, manufactured product
or substance, process, or an improvement of the foregoing, shall be
patentable.
The Court of Appeals found that the private respondent has introduced an
improvement in the process of tile-making because:
... we find that plaintiff-appellee has introduced an improvement in the
process of tile-making, which proceeds not merely from mechanical skill,
said improvement consisting among other things, in the new critical depth,
lip width, easement and field of designs of the new tiles. The improved lip
width of appellee's tiles ensures the durability of the finished product
preventing the flaking off of the edges. The easement caused by the
inclination of the protrusions of the patented moulds is for the purpose of
facilitating the removal of the newly processed tile from the female die.
Evidently, appellee's improvement consists in the solution to the old critical
problem by making the protrusions on his moulds attain an optimum height,
so that the engraving thereon would be deep enough to produce tiles for
sculptured and decorative purposes, strong optimum thickness of appellee's
new tiles of only 1/8 of an inch at the deepest easement (Exhs. "D" and "D-
1") is a most critical feature, suggestive of discovery and inventiveness,
especially considering that, despite said thinness, the freshly formed tile
3
remains strong enough for its intended purpose.
While it is true that the matter of easement, lip width, depth, protrusions and
depressions are known to some sculptors, still, to be able to produce a new
and useful wall tile, by using them all together, amounts to an invention.
More so, if the totality of all these features are viewed in combination with
the Ideal composition of cement, sodium silicate and screened fine sand.
By using his improved process, plaintiff has succeeded in producing a new
product - a concrete sculptured tile which could be utilized for walling and
decorative purposes. No proof was adduced to show that any tile of the
same kind had been produced by others before appellee. Moreover, it
appears that appellee has been deriving considerable profit from his
manufacture and sale of such tiles. This commercial success is evidence of
patentability (Walker on Patents, Dellers Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines Patent Office in favor of
the private respondent and the question over the inventiveness, novelty and
usefulness of the improved process therein specified and described are
matters which are better determined by the Philippines Patent Office. The
technical staff of the Philippines Patent Office, composed of experts in their
field, have, by the issuance of the patent in question, accepted the thinness
of the private respondent's new tiles as a discovery. There is a presumption
that the Philippines Patent Office has correctly determined the patentability
of the improvement by the private respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence sufficient to overcome the above
established legal presumption of validity or to warrant reversal of the findings
of the lower court relative to the validity of the patent in question. In fact, as
we have already pointed out, the clear preponderance of evidence bolsters
said presumption of validity of appellee's patent. There is no indication in the
records of this case and this Court is unaware of any fact, which would tend
to show that concrete wall tiles similar to those produced by appellee had
ever been made by others before he started manufacturing the same. In
fact, during the trial, appellant was challenged by appellee to present a tile of
the same kind as those produced by the latter, from any earlier source but,
despite the fact that appellant had every chance to do so, he could not
present any. There is, therefore, no concrete proof that the improved
process of tile-making described in appellee's patent was used by, or known
to, others previous to his discovery thereof. 13
The contention of the petitioner Aguas that the letters patent of de Leon was
actually a patent for the old and non-patentable process of making mosaic
pre-cast tiles is devoid of merit. De Leon never claimed to have invented the
process of tile-making. The Claims and Specifications of Patent No. 658
show that although some of the steps or parts of the old process of tile
making were described therein, there were novel and inventive features
mentioned in the process. Some of the novel features of the private
respondent's improvements are the following: critical depth, with
corresponding easement and lip width to such degree as leaves the tile as
thin as 1/8 of an inch at its thinnest portion, Ideal composition of cement and
fine river sand, among other ingredients that makes possible the production
of tough and durable wall tiles, though thin and light; the engraving of deep
designs in such a way as to make the tiles decorative, artistic and suitable
for wall ornamentation, and the fact that the tiles can be mass produced in
commercial quantities and can be conveniently stock-piled, handled and
packed without any intolerable incidence of breakages. 14
The petitioner also contends that the improvement of respondent is not
patentable because it is not new, useful and inventive. This contention is
without merit.
The records disclose that de Leon's process is an improvement of the old
process of tile making. The tiles produced from de Leon's process are
suitable for construction and ornamentation, which previously had not been
achieved by tiles made out of the old process of tile making. De Leon's
invention has therefore brought about a new and useful kind of tile. The old
type of tiles were usually intended for floors although there is nothing to
prevent one from using them for walling purposes. These tiles are neither
artistic nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond the
exercise of mechanical skill. He has introduced a new kind of tile for a new
purpose. He has improved the old method of making tiles and pre-cast
articles which were not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the tile. He has
overcome the problem of producing decorative tiles with deep engraving, but
with sufficient durability. 15 Durability inspite of the thinness and lightness of
the tile, is assured, provided that a certain critical depth is maintained in
relation to the dimensions of the tile. 16
The petitioner also claims that changing the design from embossed to
engraved tiles is neither new nor inventive because the Machuca Tile
Factory and the Pomona Tile Manufacturing Company have been
manufacturing decorative wall tiles that are embossed as well as engraved;
17 that these tiles have also depth, lip width, easement and field of designs;
18 and that the private respondent had copied some designs of Pomona. 19
The Machuca tiles are different from that of the private respondent. The
designs are embossed and not engraved as claimed by the petitioner. There
may be depressions but these depressions are too shallow to be considered
engraved. Besides, the Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and de Leon's tiles. The
Pomona tiles are made of ceramics. 20 The process involved in making
cement tiles is different from ceramic tiles. Cement tiles are made with the
use of water, while in ceramics fire is used. As regards the allegation of the
petitioner that the private respondent copied some designs of Pomona,
suffice it to say that what is in issue here is the process involved in tile
making and not the design.
4
In view of the foregoing, this Court finds that Patent No. 658 was legally
issued, the process and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the
petitioner Domiciano A. Aguas did infringe de Leon's patent. There is no
showing that this case falls under one of the exceptions when this Court may
overrule the findings of fact of the Court of Appeals. The only issue then to
be resolved is the amount of damages that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages
awarded by the lower court with the modification that the respondent is only
entitled to P3,000.00 moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attomey's fees and
e) Costs of suit
because:
An examination of the books of defendant Aguas made before a
Commissioner reveals that during the period that Aguas was manufacturing
and selling tiles similar to plaintiff's, he made a gross income of P3,340.33,
which can be safely be considered the amount by which he enriched himself
when he infringed plaintiff's patent. Under Sec. 42 of the Patent Law any
patentee whose rights have been infringed is entitled to damages which,
according to the circumstances of the case may be in a sum above the
amount found as actual damages sustained provided the award does not
exceed three times the amount of such actual damages. Considering the
wantonness of the infringement committed by the defendants who knew all
the time about the existence of plaintiff's patent, the Court feels there is
reason to grant plaintiff maximum damages in the sum of P10,020.99. And in
order to discourage patent infringements and to give more teeth to the
provisions of the patent law thus promoting a stronger public policy
committed to afford greater incentives and protection to inventors, the Court
hereby awards plaintiff exemplary damages in the sum of P5,000.00 to be
paid jointly and severally by defendants. Considering the status of plaintiff as
a reputable businessman, and owner of the likewise reputed House of Pre-
Cast, he is entitled to an award of moral damages in the sum of P50,000.00.
23
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown that as a
result of the unlawful acts of infringment committed by defendants, plaintiff
was unstandably very sad; he worried and became nervous and lost
concentration on his work in connection with his tile business (pp. 28, 30,
t.s.n., Feb. 28, 1964). In addition, plaintiff's character and reputation have
been unnecessarily put in question because defendants, by their acts of
infringement have created a doubt or suspicion in the public mind
concerning the truth and honesty of plaintiff's advertisements and public
announcements of his valid patent. Necessarily, said acts of defendants
have caused plaintiff considerable mental suffering, considering especially,
the fact that he staked everything on his pre-cast tile business (p. 36, t.s.n.,
Id.) The wantonness and evident bad faith characterizing defendants'
prejudicial acts against plaintiff justify the assessment of moral damages in
plaintiff's favor, though we do not believe the amount of P50,000.00 awarded
by the lower court is warranted by the circumstances. We feel that said
amount should be reduced to P3,000.00 by way of compensating appellee
for his moral suffering. "Willful injury to property may be a legal ground for
awarding moral damages if the court should find that, under the
circumstances such damages are justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages and attorneys fees
awarded by the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R
appealed from is hereby affirmed, without pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herrera and Plana, JJ., concur.
Teehankee, J., took no part.

5
[G. R. No. 126627. August 14, 2003]
SMITH KLINE BECKMAN CORPORATION, Petitioner, vs. THE
HONORABLE COURT OF APPEALS and TRYCO PHARMA
CORPORATION, Respondents.
DECISION
CARPIO-MORALES, J.: chanroblesvirtuallawlibrary
Smith Kline Beckman Corporation (petitioner), a corporation existing by
virtue of the laws of the state of Pennsylvania, United States of America
(U.S.) and licensed to do business in the Philippines, filed on October 8,
1976, as assignee, before the Philippine Patent Office (now Bureau of
Patents, Trademarks and Technology Transfer) an application for patent
over an invention entitled Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.
The application bore Serial No. 18989.chanroblesvirtuallawlibrary
On September 24, 1981, Letters Patent No. 14561[1] for the aforesaid
invention was issued to petitioner for a term of seventeen (17)
years.chanroblesvirtuallawlibrary
The letters patent provides in its claims[2] that the patented invention
consisted of a new compound named methyl 5 propylthio-2-benzimidazole
carbamate and the methods or compositions utilizing the compound as an
active ingredient in fighting infections caused by gastrointestinal parasites
and lungworms in animals such as swine, sheep, cattle, goats, horses, and
even pet animals.chanroblesvirtuallawlibrary
Tryco Pharma Corporation (private respondent) is a domestic corporation
that manufactures, distributes and sells veterinary products including
Impregon, a drug that has Albendazole for its active ingredient and is
claimed to be effective against gastro-intestinal roundworms, lungworms,
tapeworms and fluke infestation in carabaos, cattle and
goats.chanroblesvirtuallawlibrary
Petitioner sued private respondent for infringement of patent and unfair
competition before the Caloocan City Regional Trial Court (RTC).[3] It
claimed that its patent covers or includes the substance Albendazole such
that private respondent, by manufacturing, selling, using, and causing to be
sold and used the drug Impregon without its authorization, infringed Claims
2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561[4] as well as committed unfair
competition under Article 189, paragraph 1 of the Revised Penal Code and
Section 29 of Republic Act No. 166 (The Trademark Law) for advertising and
selling as its own the drug Impregon although the same contained
petitioners patented Albendazole.[5]chanroblesvirtuallawlibrary
On motion of petitioner, Branch 125 of the Caloocan RTC issued a
temporary restraining order against private respondent enjoining it from
committing acts of patent infringement and unfair competition.[6] A writ of
preliminary injunction was subsequently issued.[7]chanroblesvirtuallawlibrary
Private respondent in its Answer[8] averred that Letters Patent No. 14561
does not cover the substance Albendazole for nowhere in it does that word
6
appear; that even if the patent were to include Albendazole, such substance
is unpatentable; that the Bureau of Food and Drugs allowed it to
manufacture and market Impregon with Albendazole as its known ingredient;
that there is no proof that it passed off in any way its veterinary products as
those of petitioner; that Letters Patent No. 14561 is null and void, the
application for the issuance thereof having been filed beyond the one year
period from the filing of an application abroad for the same invention covered
thereby, in violation of Section 15 of Republic Act No. 165 (The Patent Law);
and that petitioner is not the registered patent
holder.chanroblesvirtuallawlibrary
Private respondent lodged a Counterclaim against petitioner for such
amount of actual damages as may be proven; P1,000,000.00 in moral
damages; P300,000.00 in exemplary damages; and P150,000.00 in
attorneys fees.chanroblesvirtuallawlibrary
Finding for private respondent, the trial court rendered a Decision dated July
23, 1991,[9] the dispositive portion of which
reads:chanroblesvirtuallawlibrary
WHEREFORE, in view of the foregoing, plaintiffs complaint should be, as it
is hereby, DISMISSED. The Writ of injunction issued in connection with the
case is hereby ordered DISSOLVED.chanroblesvirtuallawlibrary
The Letters Patent No. 14561 issued by the then Philippine Patents Office is
hereby declared null and void for being in violation of Sections 7, 9 and 15 of
the Patents Law.chanroblesvirtuallawlibrary
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is
hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff and
to publish such cancellation in the Official
Gazette.chanroblesvirtuallawlibrary
Defendant Tryco Pharmaceutical Corporation is hereby awarded
P330,000.00 actual damages and P100,000.00 attorneys fees as prayed for
in its counterclaim but said amount awarded to defendant is subject to the
lien on correct payment of filing fees.chanroblesvirtuallawlibrary
SO ORDERED. (Underscoring supplied)chanroblesvirtuallawlibrary
On appeal, the Court of Appeals, by Decision of April 21, 1995,[10] upheld
the trial courts finding that private respondent was not liable for any
infringement of the patent of petitioner in light of the latters failure to show
that Albendazole is the same as the compound subject of Letters Patent No.
14561. Noting petitioners admission of the issuance by the U.S. of a patent
for Albendazole in the name of Smith Kline and French Laboratories which
was petitioners former corporate name, the appellate court considered the
U.S. patent as implying that Albendazole is different from methyl 5
propylthio-2-benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by misrepresenting that
Impregon is its product.chanroblesvirtuallawlibrary
The appellate court, however, declared that Letters Patent No. 14561 was
not void as it sustained petitioners explanation that Patent Application Serial
No. 18989 which was filed on October 8, 1976 was a divisional application of
Patent Application Serial No. 17280 filed on June 17, 1975 with the
Philippine Patent Office, well within one year from petitioners filing on June
19, 1974 of its Foreign Application Priority Data No. 480,646 in the U.S.
covering the same compound subject of Patent Application Serial No.
17280.chanroblesvirtuallawlibrary
Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that
Patent Application Serial No. 18989 was deemed filed on June 17, 1995 or
still within one year from the filing of a patent application abroad in
compliance with the one-year rule under Section 15 of the Patent Law. And it
rejected the submission that the compound in Letters Patent No. 14561 was
not patentable, citing the jurisprudentially established presumption that the
Patent Offices determination of patentability is correct. Finally, it ruled that
petitioner established itself to be the one and the same assignee of the
patent notwithstanding changes in its corporate name. Thus the appellate
court disposed:chanroblesvirtuallawlibrary
WHEREFORE, the judgment appealed from is AFFIRMED with the
MODIFICATION that the orders for the nullification of Letters Patent No.
14561 and for its cancellation are deleted
therefrom.chanroblesvirtuallawlibrary
SO ORDERED.chanroblesvirtuallawlibrary
Petitioners motion for reconsideration of the Court of Appeals decision
having been denied[11] the present petition for review on certiorari[12] was
filed, assigning as errors the following:chanroblesvirtuallawlibrary
I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT
ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCOS IMPREGON
DRUG, IS INCLUDED IN PETITIONERS LETTERS PATENT NO. 14561,
AND THAT CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT
INFRINGEMENT.chanroblesvirtuallawlibrary
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO
PRIVATE RESPONDENT TRYCO PHARMA CORPORATION P330,000.00
ACTUAL DAMAGES AND P100,000.00 ATTORNEYS
FEES.chanroblesvirtuallawlibrary
Petitioner argues that under the doctrine of equivalents for determining
patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is substantially the
same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation
in animals. It cites the unrebutted testimony of its witness Dr. Godofredo C.
Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561
refers to the compound Albendazole. Petitioner adds that the two
substances substantially do the same function in substantially the same way
to achieve the same results, thereby making them truly identical. Petitioner
thus submits that the appellate court should have gone beyond the literal
wordings used in Letters Patent No. 14561, beyond merely applying the
7
literal infringement test, for in spite of the fact that the word Albendazole
does not appear in petitioners letters patent, it has ably shown by evidence
its sameness with methyl 5 propylthio-2-benzimidazole
carbamate.chanroblesvirtuallawlibrary
Petitioner likewise points out that its application with the Philippine Patent
Office on account of which it was granted Letters Patent No. 14561 was
merely a divisional application of a prior application in the U. S. which
granted a patent for Albendazole. Hence, petitioner concludes that both
methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented
Albendazole are dependent on each other and mutually contribute to
produce a single result, thereby making Albendazole as much a part of
Letters Patent No. 14561 as the other substance
is.chanroblesvirtuallawlibrary
Petitioner concedes in its Sur-Rejoinder[13] that although methyl 5
propylthio-2-benzimidazole carbamate is not identical with Albendazole, the
former is an improvement or improved version of the latter thereby making
both substances still substantially the same.chanroblesvirtuallawlibrary
With respect to the award of actual damages in favor of private respondent
in the amount of P330,000.00 representing lost profits, petitioner assails the
same as highly speculative and conjectural, hence, without basis. It assails
too the award of P100,000.00 in attorneys fees as not falling under any of
the instances enumerated by law where recovery of attorneys fees is
allowed.chanroblesvirtuallawlibrary
In its Comment,[14] private respondent contends that application of the
doctrine of equivalents would not alter the outcome of the case, Albendazole
and methyl 5 propylthio-2-benzimidazole carbamate being two different
compounds with different chemical and physical properties. It stresses that
the existence of a separate U.S. patent for Albendazole indicates that the
same and the compound in Letters Patent No. 14561 are different from each
other; and that since it was on account of a divisional application that the
patent for methyl 5 propylthio-2-benzimidazole carbamate was issued, then,
by definition of a divisional application, such a compound is just one of
several independent inventions alongside Albendazole under petitioners
original patent application.chanroblesvirtuallawlibrary
As has repeatedly been held, only questions of law may be raised in a
petition for review on certiorari before this Court. Unless the factual findings
of the appellate court are mistaken, absurd, speculative, conjectural,
conflicting, tainted with grave abuse of discretion, or contrary to the findings
culled by the court of origin,[15] this Court does not review
them.chanroblesvirtuallawlibrary
From an examination of the evidence on record, this Court finds nothing
infirm in the appellate courts conclusions with respect to the principal issue
of whether private respondent committed patent infringement to the
prejudice of petitioner.chanroblesvirtuallawlibrary
The burden of proof to substantiate a charge for patent infringement rests on
the plaintiff.[16] In the case at bar, petitioners evidence consists primarily of
its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products Division, by which
it sought to show that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance
Albendazole.chanroblesvirtuallawlibrary
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the
other portions thereof, no mention is made of the compound Albendazole. All
that the claims disclose are: the covered invention, that is, the compound
methyl 5 propylthio-2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy parasites without
harming the host animals; and the patented methods, compositions or
preparations involving the compound to maximize its efficacy against certain
kinds of parasites infecting specified animals.chanroblesvirtuallawlibrary
When the language of its claims is clear and distinct, the patentee is bound
thereby and may not claim anything beyond them.[17] And so are the courts
bound which may not add to or detract from the claims matters not
expressed or necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent office allowed,
even if the patentee may have been entitled to something more than the
words it had chosen would include.[18]chanroblesvirtuallawlibrary
It bears stressing that the mere absence of the word Albendazole in Letters
Patent No. 14561 is not determinative of Albendazoles non-inclusion in the
claims of the patent. While Albendazole is admittedly a chemical compound
that exists by a name different from that covered in petitioners letters patent,
the language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic evidence had been adduced to
prove that Albendazole inheres in petitioners patent in spite of its omission
therefrom or that the meaning of the claims of the patent embraces the
same.chanroblesvirtuallawlibrary
While petitioner concedes that the mere literal wordings of its patent cannot
establish private respondents infringement, it urges this Court to apply the
doctrine of equivalents.chanroblesvirtuallawlibrary
The doctrine of equivalents provides that an infringement also takes place
when a device appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve
substantially the same result.[19] Yet again, a scrutiny of petitioners
evidence fails to convince this Court of the substantial sameness of
petitioners patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as the
patented compound, even though it performs the same function and
achieves the same result.[20] In other words, the principle or mode of
8
operation must be the same or substantially the same.
[21]chanroblesvirtuallawlibrary
The doctrine of equivalents thus requires satisfaction of the function-means-
and-result test, the patentee having the burden to show that all three
components of such equivalency test are met.[22]chanroblesvirtuallawlibrary
As stated early on, petitioners evidence fails to explain how Albendazole is
in every essential detail identical to methyl 5 propylthio-2-benzimidazole
carbamate. Apart from the fact that Albendazole is an anthelmintic agent like
methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted
and accordingly substantiated regarding the method or means by which
Albendazole weeds out parasites in animals, thus giving no information on
whether that method is substantially the same as the manner by which
petitioners compound works. The testimony of Dr. Orinion lends no support
to petitioners cause, he not having been presented or qualified as an expert
witness who has the knowledge or expertise on the matter of chemical
compounds.chanroblesvirtuallawlibrary
As for the concept of divisional applications proffered by petitioner, it comes
into play when two or more inventions are claimed in a single application but
are of such a nature that a single patent may not be issued for them.[23] The
applicant thus is required to divide, that is, to limit the claims to whichever
invention he may elect, whereas those inventions not elected may be made
the subject of separate applications which are called divisional applications.
[24] What this only means is that petitioners methyl 5 propylthio-2-
benzimidazole carbamate is an invention distinct from the other inventions
claimed in the original application divided out, Albendazole being one of
those other inventions. Otherwise, methyl 5 propylthio-2-benzimidazole
carbamate would not have been the subject of a divisional application if a
single patent could have been issued for it as well as
Albendazole.chanroblesvirtuallawlibrary
The foregoing discussions notwithstanding, this Court does not sustain the
award of actual damages and attorneys fees in favor of private respondent.
The claimed actual damages of P330,000.00 representing lost profits or
revenues incurred by private respondent as a result of the issuance of the
injunction against it, computed at the rate of 30% of its alleged P100,000.00
monthly gross sales for eleven months, were supported by the testimonies of
private respondents President[25] and Executive Vice-President that the
average monthly sale of Impregon was P100,000.00 and that sales
plummeted to zero after the issuance of the injunction.[26] While
indemnification for actual or compensatory damages covers not only the loss
suffered (damnum emergens) but also profits which the obligee failed to
obtain (lucrum cessans or ganacias frustradas), it is necessary to prove the
actual amount of damages with a reasonable degree of certainty based on
competent proof and on the best evidence obtainable by the injured party.
[27] The testimonies of private respondents officers are not the competent
proof or best evidence obtainable to establish its right to actual or
compensatory damages for such damages also require presentation of
documentary evidence to substantiate a claim therefor.
[28]chanroblesvirtuallawlibrary
In the same vein, this Court does not sustain the grant by the appellate court
of attorneys fees to private respondent anchored on Article 2208 (2) of the
Civil Code, private respondent having been allegedly forced to litigate as a
result of petitioners suit. Even if a claimant is compelled to litigate with third
persons or to incur expenses to protect its rights, still attorneys fees may not
be awarded where no sufficient showing of bad faith could be reflected in a
partys persistence in a case other than an erroneous conviction of the
righteousness of his cause.[29] There exists no evidence on record
indicating that petitioner was moved by malice in suing private
respondent.chanroblesvirtuallawlibrary
This Court, however, grants private respondent temperate or moderate
damages in the amount of P20,000.00 which it finds reasonable under the
circumstances, it having suffered some pecuniary loss the amount of which
cannot, from the nature of the case, be established with certainty.
[30]chanroblesvirtuallawlibrary
WHEREFORE, the assailed decision of the Court of Appeals is hereby
AFFIRMED with MODIFICATION. The award of actual or compensatory
damages and attorneys fees to private respondent, Tryco Pharma
Corporation, is DELETED; instead, it is hereby awarded the amount of
P20,000.00 as temperate or moderate damages.chanroblesvirtuallawlibrary
SO ORDERED.chanroblesvirtuallawlibrary
Puno, (Chairman), Panganiban, Sandoval-Gutierrez, and Corona, JJ.,
concur.

9
G.R. No. 97343 September 13, 1993
PASCUAL GODINES, petitioner, vs.THE HONORABLE COURT OF
APPEALS, SPECIAL FOURTH DIVISION and SV-AGRO ENTERPRISES,
INC., respondents.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review in certiorari of a decision of the Court of
Appeals affirming the decision of the trial court, petitioner Pascual Godines
seeks to reverse the adverse decision of the Court a quo that he was liable
for infringement of patent and unfair competition. The dispositive portion of
the assailed decision is hereby quoted to wit:
WHEREFORE, with the elimination of the award for attorney's fees, the
judgment appealed from is hereby AFFIRMED, with costs against appellant.
1 defendant as permanent;
The patent involved in this case is Letters Patent No. UM-2236 issued by the
Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It
covers a utility model for a hand tractor or power tiller, the main components
of which are the following: "(1) a vacuumatic house float; (2) a harrow with
adjustable operating handle; (3) a pair of paddy wheels; (4) a protective
water covering for the engine main drive; (5) a transmission case; (6) an
operating handle; (7) an engine foundation on the top midportion of the
vacuumatic housing float to which the main engine drive is detachedly
installed; (8) a frontal frame extension above the quarter — circularly shaped
water covering hold (sic) in place the transmission case; (9) a V-belt
connection to the engine main drive with transmission gear through the
pulley, and (10) an idler pulley installed on the engine foundation." 2 The
patented hand tractor works in the following manner: "the engine drives the
transmission gear thru the V-belt, a driven pulley and a transmission shaft.
The engine drives the transmission gear by tensioning of the V-belt which is
controlled by the idler pulley. The V-belt drives the pulley attached to the
transmission gear which in turn drives the shaft where the paddy wheels are
attached. The operator handles the hand tractor through a handle which is
inclined upwardly and supported by a pair of substanding pipes and
reinforced by a U-shaped G.I. pipe at the V-shaped end." 3
The above mentioned patent was acquired by SV-Agro Industries
Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its
chairman and president, by virtue of a Deed of Assignment executed by the
latter in its favor. On October 31, 1979, SV-Agro Industries caused the
publication of the patent in Bulletin Today, a newspaper of general
circulation.
In accordance with the patent, private respondent manufactured and sold
the patented power tillers with the patent imprinted on them. In 1979, SV-
Agro Industries suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered that power
10
tillers similar to those patented by private respondent were being
manufactured and sold by petitioner herein. Consequently, private
respondent notified Pascual Godines about the existing patent and
demanded that the latter stop selling and manufacturing similar power tillers.
Upon petitioner's failure to comply with the demand, SV-Agro Industries filed
before the Regional Trial Court a complaint for infringement of patent and
unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent
and unfair competition. The dispositive portion of the decision reads as
follows:
WHEREFORE, premises considered, JUDGMENT is hereby rendered in
favor of the plaintiff SV-Agro Industries Enterprises, Inc., and against
defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this Court against
2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty
Thousand Pesos (P50,000.00) as damages to its business reputation and
goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for
unrealized profits during the period defendant was manufacturing and selling
copied or imitation floating power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum of Eight
Thousand Pesos (P8,000.00) as reimbursement of attorney's fees and other
expenses of litigation; and to pay the costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he
raised before the trial and appellate courts, to wit: that he was not engaged
in the manufacture and sale of the power tillers as he made them only upon
the special order of his customers who gave their own specifications; hence,
he could not be liable for infringement of patent and unfair competition; and
that those made by him were different from those being manufactured and
sold by private respondent.
We find no merit in his arguments. The question of whether petitioner was
manufacturing and selling power tillers is a question of fact better addressed
to the lower courts. In dismissing the first argument of petitioner herein, the
Court of Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture or make
imitations or copies of plaintiff's turtle power tiller as what he merely did was
to fabricate his floating power tiller upon specifications and designs of those
who ordered them. However, this contention appears untenable in the light
of the following circumstances: 1) he admits in his Answer that he has been
manufacturing power tillers or hand tractors, selling and distributing them
long before plaintiff started selling its turtle power tiller in Zamboanga del Sur
and Misamis Occidental, meaning that defendant is principally a
manufacturer of power tillers, not upon specification and design of buyers,
but upon his own specification and design; 2) it would be unbelievable that
defendant would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a job order where the
specification and designs of those ordered are specified. No document was
(sic) ever been presented showing such job orders, and it is rather unusual
for defendant to manufacture something without the specification and
designs, considering that he is an engineer by profession and proprietor of
the Ozamis Engineering shop. On the other hand, it is also highly unusual
for buyers to order the fabrication of a power tiller or hand tractor and allow
defendant to manufacture them merely based on their verbal instructions.
This is contrary to the usual business and manufacturing practice. This is not
only time consuming, but costly because it involves a trial and error method,
repeat jobs and material wastage. Defendant judicially admitted two (2) units
of the turtle power tiller sold by him to Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our jurisprudence that ". . .
the jurisdiction of the Supreme Court in cases brought to it from the Court of
Appeals in a petition for certiorari under Rule 45 of the Rules of Court is
limited to the review of errors of law, and that said appellate court's findings
of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power tillers without
patentee's authority has been established by the courts despite petitioner's
claims to the contrary.
The question now arises: Did petitioner's product infringe upon the patent of
private respondent?
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. 7 In using literal
infringement as a test, ". . . resort must be had, in the first instance, to the
words of the claim. If accused matter clearly falls within the claim,
infringement is made out and that is the end of it." 8 To determine whether
the particular item falls within the literal meaning of the patent claims, the
court must juxtapose the claims of the patent and the accused product within
the overall context of the claims and specifications, to determine whether
there is exact identity of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been produced and
inspected by the court and compared with that of the turtle power tiller of the
plaintiff (see Exhibits H to H-28). In appearance and form, both the floating
power tillers of the defendant and the turtle power tiller of the plaintiff are
virtually the same. Defendant admitted to the Court that two (2) of the power
inspected on March 12, 1984, were manufactured and sold by him (see
TSN, March 12, 1984, p. 7). The three power tillers were placed alongside
with each other. At the center was the turtle power tiller of plaintiff, and on
both sides thereof were the floating power tillers of defendant (Exhibits H to
H-2). Witness Rodrigo took photographs of the same power tillers (front,
side, top and back views for purposes of comparison (see Exhibits H-4 to H-
11
28). Viewed from any perspective or angle, the power tiller of the defendant
is identical and similar to that of the turtle power tiller of plaintiff in form,
configuration, design and appearance. The parts or components thereof are
virtually the same. Both have the circularly-shaped vacuumatic housing float,
a paddy in front, a protective water covering, a transmission box housing the
transmission gears, a handle which is V-shaped and inclined upwardly,
attached to the side of the vacuumatic housing float and supported by the
upstanding G.I. pipes and an engine base at the top midportion of the
vacuumatic housing float to which the engine drive may be attached. In
operation, the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff. This was admitted by the
defendant himself in court that they are operating on the same principles.
(TSN, August 19, 1987, p. 13) 10
Moreover, it is also observed that petitioner also called his power tiller as a
floating power tiller. The patent issued by the Patent Office referred to a
"farm implement but more particularly to a turtle hand tractor having a
vacuumatic housing float on which the engine drive is held in place, the
operating handle, the harrow housing with its operating handle and the
paddy wheel protective covering." 11 It appears from the foregoing
observation of the trial court that these claims of the patent and the features
of the patented utility model were copied by petitioner. We are compelled to
arrive at no other conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from private
respondent's is that of a drowning man clutching at straws.
Recognizing that the logical fallback position of one in the place of defendant
is to aver that his product is different from the patented one, courts have
adopted the doctrine of equivalents which recognizes that minor
modifications in a patented invention are sufficient to put the item beyond the
scope of literal infringement. 12 Thus, according to this doctrine, "(a)n
infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and
change, performs substantially the same function in substantially the same
way to achieve substantially the same result." 13 The reason for the doctrine
of equivalents is that to permit the imitation of a patented invention which
does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such imitation would leave
room for — indeed encourage — the unscrupulous copyist to make
unimportant and insubstantial changes and substitutions in the patent which,
though adding nothing, would be enough to take the copied matter outside
the claim, and hence outside the reach of the law. 14
In this case, the trial court observed:
Defendant's witness Eduardo Cañete, employed for 11 years as welder of
the Ozamis Engineering, and therefore actually involved in the making of the
floating power tillers of defendant tried to explain the difference between the
floating power tillers made by the defendant. But a careful examination
between the two power tillers will show that they will operate on the same Considering the foregoing, we find no reversible error in the decision of the
fundamental principles. And, according to establish jurisprudence, in Court of Appeals affirming with modification the decision of the trial court.
infringement of patent, similarities or differences are to be determined, not WHEREFORE, premises considered, the decision of the Court of Appeals is
by the names of things, but in the light of what elements do, and substantial, hereby AFFIRMED and this petition DENIED for lack of merit.
rather than technical, identity in the test. More specifically, it is necessary Bidin, Melo and Vitug, JJ., concur.
and sufficient to constitute equivalency that the same function can be Feliciano, J., is on leave.
performed in substantially the same way or manner, or by the same or
substantially the same, principle or mode of operation; but where these tests
are satisfied, mere differences of form or name are immaterial. . . . 15
It also stated:
To establish an infringement, it is not essential to show that the defendant
adopted the device or process in every particular; Proof of an adoption of the
substance of the thing will be sufficient. "In one sense," said Justice Brown,
"it may be said that no device can be adjudged an infringement that does not
substantially correspond with the patent. But another construction, which
would limit these words to exact mechanism described in the patent, would
be so obviously unjust that no court could be expected to adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms
and proportions. If two devices do the same work in substantially the same
way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape. 16
We pronounce petitioner liable for infringement in accordance with Section
37 of Republic Act No. 165, as amended, providing, inter alia:
Sec. 37. Right of Patentees. — A patentee shall have the exclusive right to
make, use and sell the patented machine, article or product, and to use the
patented process for the purpose of industry or commerce, throughout the
territory of the Philippines for the terms of the patent; and such making,
using, or selling by any person without the authorization of the Patentee
constitutes infringement of the patent. (Emphasis ours)
As far as the issue regarding unfair competition is concerned, suffice it to
say that Republic Act No. 166, as amended, provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. — . . .
xxx xxx xxx
In particular, and without in any way limiting the scope of unfair competition,
the following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers that the goods
offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade. . . .
xxx xxx xxx

12
G.R. No. 118708 February 2, 1998
CRESER PRECISION SYSTEMS, INC., petitioner, vs.COURT OF
APPEALS AND FLORO INTERNATIONAL CORP., respondents.
MARTINEZ, J.:
This petition for review on certiorari assails the decision 1 of the Court of
Appeals dated November 9, 1994 in C.A.-G.R. SP No. 34425 entitled "Floro
International Corp. vs. Hon. Tirso D.C Cruz and Creser Precision System,
Inc.", the dispositive portion of which reads:
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE COMPLAINT
FOR INJUNCTION AND DAMAGES, CIVIL CASE NO. 93-1856 BEFORE
THE RESPONDENT JUDGE IS HEREBY ORDERED DISMISSED AND HIS
ORDERS THEREIN OF DECEMBER 29, 1993 AND MAY 11, 1994 ARE
ORDERED SET ASIDE.
Private respondent is a domestic corporation engaged in the manufacture,
production, distribution and sale of military armaments, munitions,
airmunitions and other similar materials. 2
On January 23, 1990, private respondent was granted by the Bureau of
Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent
No. UM-6938 3 covering an aerial fuze which was published in the
September-October-1990, Vol. III, No. 5 issue of the Bureau of Patent's
Official Gazette. 4
Sometime in November 1993, private respondent, through its president, Mr.
Gregory Floro, Jr., discovered that petitioner submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing.
He learned that petitioner was claiming the aforesaid aerial fuze as its own
and planning to bid and manufacture the same commercially without license
or authority from private respondent. To protect its right, private respondent
on December 3, 1993, sent a letter 5 to petitioner advising it of its existing
patent and its rights thereunder, warning petitioner of a possible court action
and/or application for injunction, should it proceed with the scheduled testing
by the military on December 7, 1993.
In response to private respondent's demand, petitioner filed on December 8,
1993 a complaint 6 for injunction and damages arising from the alleged
infringement before the Regional Trial Court of Quezon City, Branch 88. The
complaint alleged, among others: that petitioner is the first, true and actual
inventor of an aerial fuze denominated as "Fuze, PDR 77 CB4" which it
developed as early as December 1981 under the Self-Reliance Defense
Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner
began supplying the AFP with the said aerial fuze; that private respondent's
aerial fuze is identical in every respect to the petitioner's fuze; and that the
only difference between the two fuzes are miniscule and merely cosmetic in
nature. Petitioner prayed that a temporary restraining order and/or writ of
preliminary injunction be issued enjoining private respondent including any
and all persons acting on its behalf from manufacturing, marketing and/or
13
profiting therefrom, and/or from performing any other act in connection
therewith or tending to prejudice and deprive it of any rights, privileges and
benefits to which it is duly entitled as the first, true and actual inventor of the
aerial fuze.
On December 10, 1993, the trial court issued a temporary restraining order.
Thereafter, hearings were held on the application of petitioner for the
issuance of a writ of preliminary injunction, with both parties presenting their
evidence. After the hearings, the trial court directed the parties to submit
their respective memoranda in support of their positions.
On December 27, 1993, private respondent submitted its memorandum 7
alleging that petitioner has no cause of action to file a complaint for
infringement against it since it has no patent for the aerial fuze which it
claims to have invented; that petitioner's available remedy is to file a petition
for cancellation of patent before the Bureau of Patents; that private
respondent as the patent holder cannot be stripped of its property right over
the patented aerial fuze consisting of the exclusive right to manufacture, use
and sell the same and that it stands to suffer irreparable damage and injury if
it is enjoined from the exercise of its property rights over its patent.
On December 29, 1993, the trial court issued an Order 8 granting the
issuance of a writ of preliminary injunction against private respondent the
dispositive portion of which reads:
WHEREFORE, plaintiffs application for the issuance of a writ of preliminary
injunction is granted and, upon posting of the corresponding bond by plaintiff
in the amount of PHP 200,000.00, let the writ of preliminary injunction be
issued by the branch Clerk of this Court enjoining the defendant and any and
all persons acting on its behalf or by and under its authority, from
manufacturing, marketing and/or selling aerial fuzes identical, to those of
plaintiff, and from profiting therefrom, and/or from performing any other act in
connection therewith until further orders from this Court.
Private respondent moved for reconsideration but this was denied by the trial
court in its Order 9 of May 11, 1994, pertinent portions of which read:
For resolution before this Court is the Motion for Reconsideration filed by the
defendant and the plaintiff's Opposition thereto. The Court finds no sufficient
cause to reconsider its order dated December 29, 1993. During the hearing
for the issuance of the preliminary injunction, the plaintiff has amply proven
its entitlement to the relief prayed for. It is undisputed that the plaintiff has
developed its aerial fuze way back in 1981 while the defendant began
manufacturing the same only in 1987. Thus, it is only logical to conclude that
it was the plaintiff's aerial fuze that was copied or imitated which gives the
plaintiff the right to have the defendant enjoined "from manufacturing,
marketing and/or selling aerial fuzes identical to those of the plaintiff, and
from profiting therefrom and/or performing any other act in connection
therewith until further orders from this Court." With regards to the
defendant's assertion that an action for infringement may only be brought by
"anyone possessing right, title or interest to the patented invention," (Section
42, RA 165) qualified by Sec. 10, RA 165 to include only "the first true and
actual inventor, his heirs, legal representatives or assignees, "this court finds
the foregoing to be untenable. Sec. 10 merely enumerates the persons who
may have an invention patented which does not necessarily limit to these
persons the right to institute an action for infringement. Defendant further
contends that the order in issue is disruptive of the status quo. On the
contrary, the order issued by the Court in effect maintained the status quo.
The last actual, peaceable uncontested status existing prior to this
controversy was the plaintiff manufacturing and selling its own aerial fuzes
PDR 77 CB4 which was ordered stopped through the defendant's letter. With
the issuance of the order, the operations of the plaintiff continue. Lastly, this
court believes that the defendant will not suffer irreparable injury by virtue of
said order. The defendant's claim is primarily hinged on its patent (Letters
Patent No. UM-6983) the validity of which is being questioned in this case.
WHEREFORE, premises considered, the Motion for Reconsideration is
hereby denied for lack of merit.
SO ORDERED.
Aggrieved, private respondent on June 27, 1994, filed a petition for certiorari,
mandamus and prohibition 10 before respondent Court of Appeals raising as
grounds the following:
a. Petitioner has no cause of action for infringement against private
respondent, the latter not having any patent for the aerial fuze which it
claims to have invented and developed and allegedly infringed by private
respondent;
b. the case being an action for cancellation or invalidation of private
respondent's Letters Patent over its own aerial fuze, the proper venue is the
Office of the Director of Patents;
c. The trial court acted in grave abuse of discretion and/or in excess of
jurisdiction in finding that petitioner has fully established its clear title or right
to preliminary injunction;
d. The trial court acted in grave abuse of discretion and/or in excess of
jurisdiction in granting the preliminary injunction, it being disruptive of the
status quo; and
e. The trial court acted in grave abuse of discretion and/or in excess of
jurisdiction in granting the preliminary injunction thereby depriving private
respondent of its property rights over the patented aerial fuze and cause it
irreparable damages.
On November 9, 1994, the respondent court rendered the now assailed
decision reversing the trial court's Order of December 29, 1993 and
dismissing the complaint filed by petitioner.
The motion for reconsideration was also denied on January 17, 1995. 11
Hence, this present petition.
It is petitioner's contention that it can file, under Section 42 of the Patent Law
(R.A. 165), an action for infringement not as a patentee but as an entity in
possession of a right, title or interest in and to the patented invention. It
14
advances the theory that while the absence of a patent may prevent one
from lawfully suing another for infringement of said patent, such absence
does not bar the first true and actual inventor of the patented invention from
suing another who was granted a patent in a suit for declaratory or injunctive
relief recognized under American patent laws. This remedy, petitioner points
out, may be likened to a civil action for infringement under Section 42 of the
Philippine Patent Law.
We find the above arguments untenable.
Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly
provides:
Sec. 42. Civil action for infringement. — Any patentee, or anyone
possessing any right, title or interest in and to the patented invention, whose
rights have been infringed, may bring a civil action before the proper Court of
First Instance (now Regional Trial court), to recover from the infringer
damages sustained by reason of the infringement and to secure an
injunction for the protection of his right. . . .
Under the aforequoted law, only the patentee or his successors-in-interest
may file an action for infringement. The phrase "anyone possessing any
right, title or interest in and to the patented invention" upon which petitioner
maintains its present suit, refers only to the patentee's successors-in-
interest, assignees or grantees since actions for infringement of patent may
be brought in the name of the person or persons interested, whether as
patentee, assignees, or as grantees, of the exclusive right. 12 Moreover,
there can be no infringement of a patent until a patent has been issued,
since whatever right one has to the invention covered by the patent arises
alone from the grant of patent. 13 In short, a person or entity who has not
been granted letters patent over an invention and has not acquired any light
or title thereto either as assignee or as licensee, has no cause of action for
infringement because the right to maintain an infringement suit depends on
the existence of the patent. 14
Petitioner admits it has no patent over its aerial fuze. Therefore, it has no
legal basis or cause of action to institute the petition for injunction and
damages arising from the alleged infringement by private respondent. While
petitioner claims to be the first inventor of the aerial fuze, still it has no right
of property over the same upon which it can maintain a suit unless it obtains
a patent therefor. Under American jurisprudence, an inventor has no
common-law right to a monopoly of his invention. He has the right to make,
use and vend his own invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with impunity. A
patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention.
15
Further, the remedy of declaratory judgment or injunctive suit on patent
invalidity relied upon by petitioner cannot be likened to the civil action for
infringement under Section 42 of the Patent Law. The reason for this is that
the said remedy is available only to the patent holder or his successors-in-
interest. Thus, anyone who has no patent over an invention but claims to
have a right or interest thereto can not file an action for declaratory judgment
or injunctive suit which is not recognized in this jurisdiction. Said person,
however, is not left without any remedy. He can, under Section 28 of the
aforementioned law, file a petition for cancellation of the patent within three
(3) years from the publication of said patent with the Director of Patents and
raise as ground therefor that the person to whom the patent was issued is
not the true and actual inventor. Hence, petitioner's remedy is not to file an
action for injunction or infringement but to file a petition for cancellation of
private respondent's patent. Petitioner however failed to do so. As such, it
can not now assail or impugn the validity of the private respondent's letters
patent by claiming that it is the true and actual inventor of the aerial fuze.
Thus, as correctly ruled by the respondent Court of Appeals in its assailed
decision: "since the petitioner (private respondent herein) is the patentee of
the disputed invention embraced by letters of patent UM No. 6938 issued to
it on January 23, 1990 by the Bureau of Patents, it has in its favor not only
the presumption of validity of its patent, but that of a legal and factual first
and true inventor of the invention."
In the case of Aguas vs. De Leon, 16 we stated that:
The validity of the patent issued by the Philippine Patent Office in favor of
the private respondent and the question over the investments, novelty and
usefulness of the improved process therein specified and described are
matters which are better determined by the Philippines Patent Office. The
technical Staff of the Philippines Patent Office, composed of experts in their
field, have, by the issuance of the patent in question, accepted the thinness
of the private respondent's new tiles as a discovery. There is a presumption
that the Philippine Patent Office has correctly determined the patentability of
the improvement by the private respondent of the process in question.
In fine, in the absence of error or abuse of power or lack of jurisdiction or
grave abuse of discretion, we sustain the assailed decision of the
respondent Court of Appeal.
WHEREFORE, the decision of the Court of Appeals is hereby AFFIRMED.
No pronouncement as to costs.
SO ORDERED.
Regalado, Melo, Puno and Mendoza, JJ., concur.

15
G.R. No. L-1816 April 17, 1906
CARLOS GSELL, plaintiff-appellee, vs.VALERIANO VELOSO YAP-JUE,
defendant-appellant.
Chicote, Miranda and Sierra, for appellant.Coudert Brothers, for appellee.
JOHNSON, J.:
This was an action by the plaintiff to recover of the defendant damages for
the infringement of a certain patent issued by the Spanish Government to
the assignor of the plaintiff.
An examination of the evidence adduced during the trial shows that upon the
17th day of June, 1896, Henry Alfred Gsell presented a petition to the
"Spanish Government to be granted a patent for manufacturing umbrella and
cane handles, which patent was as follows:
Descriptive statement which accompanies the application for patent of
invention for the industrial product 'handles for canes and umbrellas, curred
by means of a small lamp or blowpipe, fed buy petroleum or mineral fuel.'
After the canes have been cut for cane or umbrella handles, the outsides are
thoroughly cleaned. This operation having been performed, they are then
trimmed and the interior cleaned by means of a gimlet of about fifteen
centimeters in length operated by a wheel, by means of which the knots
inside are broken. There is then introduced to a depth of about fifteen
centimeters a piece of very clean: bamboo, which completely fills the hole
made by the gimlet, thereby giving to the cane necessary strength to resist
the heat of the lamp or blowpipe without breaking or cracking.
This operation having been performed, the cane, the end of which is
attached to a fixed point, is given the shape of a hook or some other form by
means of fire and pressure. Once the cane has been shaped desired, it is
allowed to cool, and is then cleaned, varnished, and ornamented at will.
This industry requires skillful handiwork, owing to the great risk engendered
by the treatment of such fragile material as a light cane. On the other hand,
however, it affords large profits to the workman.
NOTE. — The patent applied for shall be for the industrial product 'cane
handles for walking sticks and umbrellas, curved by means of a small lamp
or blowpipe, fed by petroleum or mineral fuel.'
Madrid, June 17, 1896.
Which petition was granted in the following decree:
Whereas Mr. Henry Alfred Gsell, of ............. has filed under date of the 17th
of June, 1896, in the civil government of Madrid, an application for a patent
of an invention, consisting of a process for curving handles for canes and
umbrellas by means of a lamp or blowpipe fed by petroleum or mineral fuel.
He having complied with the provisions of the law of July 30, 1878, the
undersiged by virtue of the power conferred upon him by article 4 of the
royal decree of July 30, 1887, issues by order of his excellency the minister
of the interior, in favor of said party, the present patent of invention which
guarantees to him the Peninsula and adjacent islands, for the term of
vein ...... from the date of the present title, the exclusive right to the
16
exploitation of the said industry, in the form described in the statement
attached to ........ He may extend it to the colonies, provided he complies
with the provisions of article 2 of the royal decree of May 14, 1880.
Of this patent the division of industry and registration of industrial
property ............ shall make a record to be forwarded to the minister of the
interior; and it is provided that the same shall expire and shall be null and
void if the interested party should fail to pay to the said division, and
in ............ section 14 of the law, the annual fees prescribed in article 13, and
fails to show to the chief of the same division within the fixed time of ............
from this date, which has been put in practice in Spain, the object of the
patent, establishing a new industry in the country. Madrid, 28 ............, 1896.
(Signed) FEDERICO COBO DE GUZMAN.
Seal of division of industry and registration of industrial and commercial
property.
Recorded in book 25, page 111, under No. 19228.
OFFICE OF THE COLONIES.
Article 2 of the royal decree of May 14, 1880, complied with.
Madrid, October 31, 1896.The chief of the division: (Signed) TOMAS
LUCEÑO.
[SEAL]
By virtue of this patent Henry Alfred Gsell was granted the exclusive right to
use the same in the Philippine Islands for a period of twenty years. On May
1, 1899, Henry Alfred Gsell transferred the said patent and the exclusive
right to use the same to the plaintiff herein.
The evidence clearly shows that the defendant was manufacturing umbrella
and cane handles bag the same method as that used by the plaintiff, under
and by virtue of his said patent.
Under the treaty of Paris the United States Government undertook to protect
citizens of the Philippine Islands in their rights secured by copyrights,
patents, etc., from the Spanish Government, in the following language:
ART. 13. The rights of property secured by copyrights and patents acquired
by Spaniards in the Island of Cuba, and in Porto Rico, the Philippines, and
other ceded territories, at the time of the exchange of the ratifications of this
treaty, shall continue to be respected. Spanish scientific, literary, and artistic
works not subversive of public order in the territories in question shall
continue to be admitted free of duty into such territories, for a period of ten
years, to be reckoned from the date of the exchange of the ratifications of
this treaty.
By virtue of the foregoing provisions of said treaty, Circular No. 12, Division
of Customs and Insular Affairs, dated Washington, D. C., April 11, 1899, was
issued by the Assistant Secretary of War and is as follows:
In territory subject to military government by the military forces of the United
States, owners of patents, including design patents, which have been issued
or which may hereafter be issued, and owners of trade-marks, prints, and
labels, duly registered in the United States Patent Office, under the laws of
the United States relating to the grant of patents and the registration of
trade-marks, prints, and labels, shall receive the protection accorded them in
the United States under said laws; and an infringement of the rights secured
by lawful issue of a patent or by registration of a trade-mark, print, or label
shall subject the person or party guilty of such infringement to the liability
created and imposed by the laws of the United States relating to said
matters: Provided, That a duly certified copy of the patents or of the
certificate of registration of the trade-mark, print, or label shall be filed in the
office of the Governor-General of the Island wherein such protection is
desired: And provided further, That the rights of property in patents and
trade-mark, secured in the Islands of Cuba, Porto Rico, the Philippines, and
other ceded territory to persons under the Spanish laws shall be respected
in said territory the same as if such laws were in full force and effect.
(Signed) G. D. MEIKLEJOHN,Assistant Secretary of War.
Circular No. 21, Division of Customs and Insular Affairs, dated Washington,
D. C., June 1, 1899, as amended by Circular No. 34 of the same
Department, dated September 25, 1899, required the holds of patents in the
insular possessions of the United States to file with the proper authorities a
certified copy of a patent or a certificate of registration, etc.
In a letter dated Manila, P. I., August 12, 1899, George P. Ahern, captain,
Ninth Infantry United States Army, who was then in charge of the Office of
Patent, Copyrights, and Trade-Marks, which letter was directed to the
plaintiff herein, said:
I have the honor to hand you herewith nine patents, namely (among others
was mentioned the patent here in question), now legally held by you, which
have been granted under the Spanish law.
Said patent right will be protected by the United States authorities in these
Islands, pursuant to Circular No. 12, Division of Customs and Insular Affairs,
War Department, Washington, D. C., April 11, 1899.
"Provided further, That the rights of property in patents and trade-marks
secured in the Islands of Cuba, Porto Rico, the Philippines, and other ceded
territory to persons under the Spanish laws shall be respected in said
territory the same as if such laws were in full force and effect."
On the 29th on January, 1900, Capt. George P. Ahern, who was then in
charge of the Office of Patents, Copyrights, and Trade-Marks, addressed the
following letter to the plaintiff herein:
MANILA, P. I.
SIR: This is to certify, in reply to your request of December 20, 1899, and
pursuant to the provisions of Spanish law, and by virtue of the duties as
prescribed for the undersigned in General Orders, No. 24, office of the
17
United States military governor in the Philippine Islands, Manila, P. I., June
26, 1899, an inspection was made of your factory in Calle San Pedro,
Manila, by the undersigned officer on the 26th day of January, 1900, patent
number 19228, granted H. A. Gsell, Madrid, Spain, September 28, 1896,
transferred to Carlos Gsell, May 1, 1899, for an exclusive privilege of twenty
years of a process for curving sticks and umbrella handles.
A careful inspection was made of the process as per the specifications
accompanying said patent, and all of said specifications and process were
found to be in operation as required by law.
(Signed) GEORGE P. AHERN,Captain, Ninth United States Infantry,In
Charge of Office.
At the close of the trial, and after the evidence had all been introduced, the
lower court gave the plaintiff permission to amend his complaint, and also
gave the defendant an opportunity to file an amended answer. The court
granted this permission to amend the original complaint under and by virtue
of the provisional of section 110 of the Code of Procedure in Civil Actions.
This order of the court was excepted to on the part of the defendant. Said
section 110 provides that —
The court shall, in furtherance of justice, and on such terms, if any, as may
be proper, allow a party to amend any pleading or proceeding and at any
stage of the action, in either the Court of First Instance or the Supreme
Court, by adding or striking out the name of any party, either plaintiff or
defendant, or by correcting a mistake in the name of a party, or s mistaken
or inadequate allegation or description in any other respect, so that the
actual merits of the controversy may speedily be determined, without regard
to technicalities, and in the most expeditious and inexpensive manner. The
court may also, upon like terms, allow an answer or other pleading to be
made after the time limited by the rules of the court for filing the same.
Orders of the court upon the matters provided in this section shall be made
upon motion filed in court, and after notice to the adverse party, and an
opportunity to be heard.
We are of the opinion that this section justified the court in allowing the
amendment.
The appellant assigned several other errors alleged to have been committed
by the inferior court, some of which we deem unnecessary to be considered
here in the decision of this cause. The trial court, in his decision, stated that
there were but two questions at issue: First, Did the Government issue to
plaintiff's assignor the patent which covers the process in question? And
second, Did the defendant infringe upon that process?
An examination of the evidence adduced during the trial shows clearly that
the Government of Spain did, upon the 28th day of September, 1896, grant
to the plaintiff's assignor the patent in question, giving to him the exclusive
right to use the name for a period of twenty years from that date. The
evidence also shows clearly that the defendant used, and had been using,
the same process for the manufacture of walking sticks and umbrella handle,
the exclusive right to which had been granted to, the plaintiff's assignor. The
evidence also shows that the original grantee of the patent, Henry Alfred
Gsell, had duly transferred to the plaintiff herein, and that the plaintiff herein
thereby succeeded to all of the right granted in said letter patent.
The lower court made no finding as to the damages suffered by the plaintiff
by reason to-the unlawful use by the defendant of the said patent.
From all of the evidence adduced during the trial of said cause, we are
convinced that the judgment to the inferior court should be affirmed with
costs. After the expiration of twenty days let a judgment be entered
perpetually enjoining the defendant, his attorneys, agents, and
representatives of whatever character, from the use of the process for
manufacture of walking sticks and umbrella handles, the exclusive right to
the manufacture of which was granted to plaintiff's assignor on the 28th day
September, 1896. So ordered.
Arellano, C.J., Torres, Mapa, and Carson, JJ., concur.

18
G.R. No. L-1952 December 6, 1906
CARLOS GSELL, plaintiff-appellant, vs.VALERIANO VELOSO YAP-JUE,
defendant-appellee.
Coudert Brothers for appellant.
Chicote, Miranda and Sierra for appellee.
MAPA, J.:
In an action between the plaintiff and the defendant herein judgment was
rendered in the court below on the 11th of December, 1903, the adjudging
part of which is as follows: "It is ordered that the defendant (the accused in
these proceedings) abstain from manufacturing canes and umbrellas with a
curved handle by means of lamp or blowpipe fed with mineral oil petroleum,
which process was protected by patent No. 19228, issued in favor of Henry
Gsell, and by him transferred to Carlos Gsell." In the month of February,
1904, the plaintiff presented a petition alleging that on "the 8th of the said
month, and some time prior to that date, the defendant in obedience of the
aforesaid judgment, and in violation of the same, was and is now engaged in
the unlawful manufacture of umbrella handles by the identical process so
like the patent process as to be indistinguishable," and accordingly asked
the court to punish the accused for contempt and to order the latter to
indemnify the plaintiff as damages in the sum of $1,000, United States,
currency, and to pay the costs.
The parties having appeared in open court and stipulated that "the
defendant had used, and was still using, as a process for curving canes and
umbrella handles, the same process described in the memoir which
accompanied the patent, with the exception that he has substituted for an oil
an alcohol-burning lamp."
The court considering that the plaintiff had only the exclusive right to the use
of the coal or mineral oil-burning lamp, held that the defendant was not guilty
of contempt, to which decision of the court the plaintiff duly excepted.
Patent No. 19228, referred to in the judgment of the 11th of December,
1903, does not appear in the bill of exceptions. Such these are contempt
proceedings for the disobedience of said judgment, we should have before
us the patent in order to determine whether there was any actual
disobedience of the order of the court. It is evident that the accused had not
committed any direct violation, plain and manifest, of the prohibition imposed
upon him in the judgment. The violation, if there has been any, was not of
such a character that it could be made patent by the mere enunciation of the
acts performed by the defendant, which are alleged to constitute the said
violation. These acts were not clearly and manifestly contrary to the precise
terms of the prohibition. According to the express language of the judgment,
the prohibition is against the manufacture of canes and umbrellas with
curved handles by blowpipe, and the parties have stipulated that the
defendant did not use a coal or mineral oil-burning lamp, but an alcohol-
burning lamp.
19
The question, however, arises as to whether that prohibition included the
substitution of alcohol for coal or mineral oil. In more abstract and general
terms, the appellant propounds this question in his brief as follows: "The
question presented by this appeal is whether or not the use of a patented
process by a third person, without license or authority therefor, constitutes
an infringement when the alleged infringer has substituted in a lieu of some
unessential part of the patented process a well-known mechanical
equivalent." It is seen that by it very terms this question implies in the
present case the existence of two fundamental facts which must first be duly
established, viz; (1) That the use of the lamp fed with petroleum or mineral
oil was unessential part of the patented process the use of which by the
accused was prohibited by the said judgment; and (2) that alcohol is
equivalent and proper substitute, well known as such, for mineral oil
petroleum in connection with the said process. The appellant has failed to
affirmatively establish either of these two essential facts. He has merely
assumed their existence, without proving the same, thus begging the whole
question. Consequently the contempt with which the accused is charged has
not been fully and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is not guilty of
contempt.
Having reached this conclusion, it is unnecessary for us to pass upon
plaintiff's prayer for a preliminary injunction, as the same is based upon the
alleged infringement of the patent upon which these proceedings for
contempt were based.
The order of the court below is hereby affirmed, with the costs of this
instance against the appellant. After the expiration of twenty days let
judgment be entered in accordance herewith, and ten days thereafter the
case be remanded to the court below for execution. So ordered.
Arellano, C.J., Torres, Carson, Willard and Tracey, JJ., concur.
G.R. No. L-4720 January 19, 1909
CARLOS GSELL, plaintiff-appellee, vs.VALERIANO VELOSO YAP-JUE,
defendant-appellant.
Chicote and Miranda, for appellant.Haussermann and Cohn, for appellee.
CARSON, J.:
This an appeal from a final order of the Court of First Instance of the city of
Manila, in contempt proceedings prosecuted under the provisions of section
172 of the Code of Civil Procedure. The principal case to which these
proceedings are ancillary, was an action to enjoin infringement of a patented
process for the manufacture of curved handles for canes, parasols, and
umbrellas. In that case plaintiff established his title to a valid patent covering
the process in question, and obtained against this defendant a judgment,
granting a perpetual injunction restraining its infringement, which judgment
was affirmed by this court on appeal (6 Phil. Rep., 143.) The order was
couched in the following terms:
It is ordered that the defendant abstain from manufacturing canes and
umbrellas with a curved handle by means of a lamp or blowpipe fed with
mineral oil or petroleum, which process was protected by patent No. 19228,
issued in favor of Henry Gsell, and by him transferred to Carlos Gsell —
and the process therein mentioned is fully described in the following
statement which accompanied the application for the patent:
After the canes have been cut for cane or umbrella handles, the outsides are
thoroughly cleaned. This operation having been performed, they are then
trimmed and the interior cleaned by means of a gimlet of about 15
centimeters in length operated by a wheel, by means of which the knots
inside are broken. There is then introduced to a depth of about 15
centimeters a piece of very clean bamboo, which completely fills the hole
made by the gimlet, thereby giving to the cane the necessary strength to
resist the heat of the lamp or blowpipe without breaking or cracking.
This operation having been performed, the cane, the end of which is
attached to a fixed point, is given the shape of a hook or some other form by
means of fire and pressure. Once the cane has been shaped as desired, it is
allowed to cool, and is then cleaned, varnished, and ornamented at will.
This industry requires skillful, handiwork, owing to the great risk engendered
by the treatment of such fragile material as a light cane. On the other hand,
however, it affords large profits to the workman.
NOTE. — The patent applied for shall be for the industrial product "cane
handles for walking sticks and umbrellas, curved by means of a small lamp
or blowpipe, fed by petroleum or mineral fuel."
Thereafter the defendant continued to manufacture curved cane handled for
walking sticks and umbrellas by a process in all respectes identical with that
used by the plaintiff under his patent, except only that he be substituted for a
lamp fed with petroleum or mineral oil, lamp fed with alcohol, as appears
from a stipulation entered into between plaintiff and defendant in the
following terms:
20
The plaintiff and defendant agree upon the fact that the defendant has used
and is still using a process for curving handles of canes and umbrellas
identical with that described in the application for the patent by the plaintiff
with the exception that he has substituted for the lamp fed with all other lamp
fed with alcohol.
Contempt proceedings were instituted against the defendant in the month of
February, 1904, the plaintiff in the original action alleging that the —
Defendant in disobediencce of the judgment of the same was and is now
engaged in the unlawful manufacture of umbrella handles by the identical
process described in and protected said patent, No. 19228, or a process so
like the patented process as to be indistinguishable.
The trial court found the defendant "not guilty" of contempt as charged; and
this court, on appeal, held that — a character that it could be made patent by
the mere annunciation of the acts performed by the defendant, which are
alleged to constitute the said violation. These acts were not clearly and
manifestly contrary to the precise terms of the prohibition. According to the
express language of the judgment, the prohibition is against the manufacture
of canes and umbrellas with curved handles by means of the use of a cool or
mineral oil-burning lamp or blowpipe and the parties have stipulated that the
defendant did not use a coal or mineral oil-burning lamp but an alcohol-
burning lamp.
The question, however, arises as to whether that prohibition included the
substitution of alcohol for coal or mineral oil. In more abstract and general
terms, the appellant propounds this question in his brief, as follows: "The
question presented by this appeal is whether or not the use of a patented
process by a third person, without license or authority therefor, constitutes
an infringement when the alleged infringer has substituted in lieu of some
unessential part of the patented process a well-known mechanical
equivalent." It has seen that by its very terms this question implies in the
present case the existence of two fundamental facts which must first be duly
established, viz: (1) That the use of the lamp fed with petroleum or mineral
oil was an unessential part of the patented process the use of which by the
accused was prohibited by the said judgment; and (2) that alcohol is an
equivalent and proper substitute, well known as such, for mineral oil or
petroleum in connection with the said process. The appellant has failed to
affirmatively establish either of these two essential facts. He has merely
assumed their existence, without proving the same, thus begging the whole
question. Consequently the contempt with which the accused is charged has
not been fully and satisfactorily proved, and the order appealed from should
accordingly be affirmed in so far as it holds that the defendant is not guilty of
contempt. (7 Phil. Rep., 130).
Thereafter the plaintiff continued the use of the patented process, save only
for the substitutions of a lamp fed by alcohol for a lamp fed by petroleum or
mineral oil, and new proceedings were instituted under the provisions of
section 172 for the purpose of enforcing the original injunction above cited.
Substantially the same question is submitted in these new proceedings as
that submitted in the former case, but at the trial of this case testimony was
introduced which, in our opinion, leaves no room for doubt, first, that alcohol
is an equivalent or substitute, well known as such at the time when the
patent was issued, for mineral oil or petroleum, in connection with blast
lamps or blowpipes such as that which plaintiff uses in the patented process,
and, second, that the use of a blast lamp or blowpipe fed with petroleum or
mineral oil, rather than one fed with alcohol, is an unessential part of the
patented process the use of which was prohibited by the said judgment.
It was clearly proven at the trial, that kerosene and alcohol blast lamps are
agencies for producing and applying heat, well known throughout the world
long prior to 1906, the date of the issue of the patent; that it is and for many
years has been known that one may for all ordinary purposes be used in the
place of the other, and especially for the purpose of applying heat in the
manner described in the patent; that the only consideration which
determines the employment of one in place of the other is the convenience
of the user and the question of relative cost; and that the principle upon
which both lamps work is substantially identical, the only difference in
construction being occasioned by the application of this principle to oils of
different physical and chemical composition.
The plaintiff does not and can not claim a patent upon the particular lamp
used by him. The patent, however, gives him the exclusive right to the use of
"la lamparilla o soplete, alimentada de petroleo o esencia mineral" (the small
lamp or blowpipe fed with petroleum or mineral oil) in manufacturing curved
handles for umbrellas and canes, to which reference is made in the above-
cited descriptive statement and annexed note. "The small lamp or blowpipe"
mentioned in the descriptive statement and annexed note which
accompanied the application for the patent, evidently referred to the design
of a blast lamp which was attached thereto; and in our opinion both plaintiff
and defendant make use of a blast lamp substantially similar, in principle
and design, to that referred to in the descriptive statement and the annexed
note, for the exclusive use of which in the manufacture of curved handles,
plaintiff holds a patent. True, defendant's blast lamp is fed with alcohol, and
its shape varies in unimportant details, for the purpose of accommodating
the principle, by which the flame is secured, to the different physical and
chemical composition of the fuel used therein; but the principle on which it
works, its mode of application, and its general design distinguish it in no
essential particular from that used by the plaintiff. If the original design
accompanying the statement had shown a blast lamp made of brass or delf,
he would be a reckless advocate who would claim that the patent might
lawfully be evaded by the use of a lamp made of iron or tin; or if the original
design had shown a blast lamp 6 inches high with a nozzle 4 inches long it
would hardly be seriously contended that the use of lamp 8 inches high with
a nozzle 3 inches long would protect the ingenious individual, who in all
other respects borrowed the patented process, from the consequences of an
21
action for damages for infringement. But in the light of the evidence of record
in this case, the reasoning upon which these hypothetical claims should be
rejected applies with equal force to the contentions of the defendant, the
ground for the rejection of the claims in each case being the same, and
resting on the fact that unessential changes, which do not affect the principle
of the blast lamp used in the patented process, or the mode of application of
heat authorized by the patent, are not sufficient to support a contention that
the process in one case is in any essential particular different from that used
in the other.
Counsel for plaintif invokes the doctrine of "mechanical equivalents" in
support of his contention, and indeed that doctrine is strikingly applicable to
the facts in this case. This doctrine is founded upon sound rules of reason
and logic, and unless restrained or modified by law in particular jurisdiction,
is of universal application, so that it matters not whether a patent be issued
by one sovereignty or another, the doctrine may properly be invoked to
protect the patentee from colorable invasions of his patent under the guise of
substitution of some part of his invention by some well known mechanical
equivalent. Our attention has not been called to any provision of the patent
law of Spain, which denies to patentees thereunder the just and equitable
protection of the doctrine; and indeed a patent law which failed to recognize
this doctrine would afford scant protection to inventors, for it is difficult if not
impossible to conceive an invention, which is incapable of alteration or
change in some unessential part, so as to bring that part outside of the
express terms of any form of language which might be used in granting a
patent for the invention; and has been well said by counsel for plaintiff,
human ingenuity would be taxed beyond its powers in preparing a grant of a
patent so comprehensive in its terms, "as to include within the express terms
of its detailed description every possible alternative of form, size, shape,
material, location, color, weight, etc., of every wheel, rod, bolt, nut, screw,
plate, and other component parts of an invention."
The following citations from various decisions of the Federal Courts of the
United States illustrate the application of the doctrine in that jurisdiction, and
clearly point the way to the proper solution of the questions involved in the
case at bar:
Can the defendant have the right of infringement, by substituting in lieu of
some parts of the combination well-known mechanical equivalents? I am
quite clear that be can not, both on principle and authority. It is not to be
disputed that the inventor of an ordinary machine is, by his letters patent,
protected against all mere formal alterations and against the substitution of
mere mechanical equivalents. Why should not the inventor of a new
combination receive the same protection? If he can not, then will his patent
not be worth the parchment on which it is written.
If no one can be held to infringe a patent for a combination unless he uses
all the parts of the combination and the identical machinery as that of the
patentee, then will no patent for a combination be infringed; for certainly no
one capable of operating a machine can be incapable of adopting some
formal alteration in the machinery, or of substituting mechanical equivalents.
No one infringes a patent for a combination who does not employ all of the
ingredients of the combination; but if he employs all the ingredients, or
adopts mere formal alterations, or substitutes, for one ingredient another
which was well known at the date of the patent as a proper substitute for the
one withdrawn, and which performs substantially the same function as the
one withdrawn, he does infringe. (King vs. Louisville Cement Co., Fed. Cas.,
7798.)
Bona fide inventors of a combination are as much entitled to equivalents as
the inventors other patentable improvements; by which is meant that a
patentee in such a case may substitute another ingredient for any one of the
ingredients of his invention, if the ingredient substituted performs the same
function as the one omitted and as well known at the date of his patent as a
proper substitute for the one omitted in the patented combination. Apply that
rule and it is clear that an alteration in a patented combination which merely
substitutes another old ingredient for one of the ingredients in the patented
combination, is an infringement of the patent, if the substitute performs the
same function and was well known at the date of the patent as a proper
substitute for the omitted ingredient. (Gould vs. Rees, 82 U.S., 187, 194.)
Mere formal alterations in a combination in letters patent are no defense to
the charge of infringement and the withdrawal of one ingredient from the
same and the substitution of another which was well known at the date of
the patent as a proper substitute for the one withdrawn is a mere formal
alteration of the combination if the ingredient substituted performs
substantially the same function as the one withdrawn.
Bona fide inventors of a combination are as much entitled to suppress every
other combination of the same ingredients to produce the same result, not
substantially different from what they have invented and caused to be
patented as to any other class of inventors. All alike have the right to
suppress every colorable invasion of that which is secured to them by letters
patent. (Seymour vs. Osborne, 78 U.S., 516, 556.)
A claim for the particular means and mode of operation described in the
specification extends, by operation of law, to the equivalent of such means
— not equivalent simply because the same result is thereby produced — but
equivalent as being substantially the same device in structure, arrangement
and mode of operation. (Burden vs. Corning, Fed. Cas., 2143. Gottfried vs.
Philip Best Brewing Co., Fed. Cas., 5633.)
An equivalent device is such as a mechanic of ordinary skill in construction
of similar machinery, having the forms, specifications and machine before
him, could substitute in the place of the mechanism described without the
exercise of the inventive faculty. (Burden vs. Corning, supra.)
All the elements of the invention in this case are old, and the rule in such
cases, as before explained, undoubtedly is that a purpose can not invoke the
doctrine of equivalents to suppress all other improvements of the old
22
machine, but he is entitled to treat everyone as an infringer who makes,
uses, or vends his patented improvement without any other change than the
employment of a substitute for one of its elements, well known as such at
the date of his invention, and which any constructor acquainted with the art
will know how to comply. The reason for the qualification of the rule as
stated is, that such change — that is, the mere substitution of a well- known
element for another — where it appears that the substituted element was
well known as a usual substitute for the element left out — is merely a formal
one, and nothing better than a colorable evasion of the patent. (Union Sugar
Refining Co. vs. Matthieson, Fed. Cas., 14399.)
Counsel for the defendant insists that, under Spanish law, none of the steps
of the process described in the descriptive statement, save those mentioned
in the "note" thereto attached are included in the patent, and that the patent
rights secured thereunder are strictly limited to the precise language of the
"note" attached to the descriptive statement; while counsel for plaintiff
appears to think that the language of the patent covers any process or
device whereby wood or cane may be bent or curved by the use of heat. But
for the purpose of this decision it is not necessary to consider these
questions, further than to hold, as we do, that under the doctrine of
equivalents, the language of the note in the descriptive statement applies to
the operation of applying heat for the purpose of curving handles or canes
and umbrellas by means of a blast lamp fed with alcohol, as well as by
means of a blast lamp fed with petroleum or mineral oil; and the defendant
having admitted the fact that he applied heat for the purpose of curving
handles for canes and umbrellas by means of a blast lamp fed with alcohol,
he must be deemed to have contempt of violating the terms and the
injunction issued in the principal case, wherein plaintiff was declared the
owner of the patent in question, and defendant enjoined from its
infringement.
The argument of counsel for defendant and appellant, based on the theory
that the questions herein discussed and decided to have been heretofore
settled by this court, and that the subject-matter of this proceeding is res
adjudicata between the parties thereto is sufficiently refuted by the simple
reading of the decision of this court in the case relied upon. (Gsell vs.
Veloso, 7 Phil. Rep., 130.)
The judgment of the lower court should be and is hereby affirmed, with the
costs of this instance against the appellant.
Arellano, C.J., Torres, Mapa, Willard, and Tracey, JJ., concur.
G.R. No. 14101 September 24, 1919
ANGEL VARGAS, plaintiff-appellant, vs.F. M. YAPTICO & CO. (Ltd.),
defendant-appellee.
Charles C. Cohn for appellants .John Bordman for appellee.
MALCOLM, J.:
Rude wooden implements for tilling the soil have been in use in the
Philippines, possibly not since the Israelites "went down to sharpen every
man his share and his coulter," but certainly for many years. Iron plows
called "Urquijo" and "Pony" have latterly been the vogue.
Angel Vargas, a farmer acquainted with local conditions and alive to the
commercial possibilities, took it upon himself to produce, with the native plow
as the model, an improved, adjustable plow. On July 22, 1910, he made
application for a United States patent to cover his so-called invention. On
March 12, 1912, letters patent were issued by the United States Patent
Office in favor of Vargas .On April 24, 1912, a certified copy of the patent
was filed in the Division of Patents, Copyrights, and Trademarks of the
Executive Bureau, Government of the Philippine Islands. The patent and its
registry was also published in the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of these plows in the
city of Iloilo, Philippine Islands. On the plows there was first stamped the
words "Patent Applied For," later after the patent had been granted, changed
to "Patented Mar. 12, 1912." Ninety per cent of the plows in use in the
Visayas (Iloilo and vicinity) are said to be Vargas plows.
During this same period, the firm of F. M. Yaptico & Co. (Ltd.), was engaged
in the foundry business in the City of Iloilo. It openly held itself out as a
manufacturer of plow parts. It has in fact produced points, shares, shoes,
and heel pieces in a considerable amount adapted to replace worn-out parts
of the Vargas plow.
Such was the existing situation when, in the early part of 1918, the owner of
the patent, and thus the proper party to institute judicial proceedings, began
action in the Court of First Instance of Iloilo to enjoin the alleged infringement
of U.S. Patent No. 1020232 by the defendant F. M Yaptico & Co. (Ltd.), and
to recover the damages suffered by reason of this infringement. The court
issued the preliminary injunction as prayed for. The defendant, in addition to
a general denial, alleged, as special defenses, that the patent lacked novelty
or invention, that there was no priority of ideas or device in the principle and
construction of the plow, and that the plow, whose manufacture it was
sought to have enjoined by the plaintiff, had already been in public use for
more than two years before the application of the plaintiff for his patent. The
parties subsequently entered into a stipulation that the court should first
resolve the question of whether or not there had been an infraction of the
patent, reserving the resultant question of damages for later decision. After
the taking of evidence, including the presentation of exhibits, the trial judge,
the Honorable Antonio Villareal, in a very exhaustive and learned decision,
rendered judgment in favor of the defendant and against the plaintiff,
23
declaring null and without effect the patent in question and dismissing the
suit with costs against the plaintiff .The preliminary injunction theretofore
issued was dissolved.
From this judgment the plaintiff has appealed, specifying five errors. The
principal assignment No. 1 is, that the trial court erred in finding that the
patented invention of the plaintiff is lacking in novelty and invention.
Defendant, in reply, relies on three propositions, namely: (1) The judgment
of the trial court in finding the patent granted plaintiff void for lack of novelty
and invention should be affirmed; (2) The patent granted plaintiff is void from
the public use of his plow for over two years prior to his application for a
patent, and (3) If the patent is valid, there has been no contributory
infringement by defendant.
Before resolving these rival contentions, we should have before us the
relevant law. Act No. 2235 of the Philippine Legislature, enacted on
February 10, 1913, in effect makes the United States Patent Laws applicable
in the Philippine Islands. It provides that "owners of patents, including design
patents, which have been issued or may hereafter be issued, duly registered
in the United States Patent Office under the laws of the United States
relating to the grant of patents, shall receive in the Philippine Islands the
protection accorded them in the United States under said laws." (Sec. 1.)
Turning to the United States Patent Laws, we find the Act of Congress of
March 3, 1897, amendatory of section 4886 of the United States Revised
Statutes, reading as follows:
Any person who has invented or discovered any new and useful art,
machine, manufacture, or composition of matter, or any new an useful
improvements thereof, not known or used by others in this country, before
his invention or discovery thereof, and not patented or described in any
printed publication in this or any foreign country, before his invention or
discovery thereof, or more than two years prior to his application, and not in
public use or on sale in this country for more than two years prior to his
application, unless the same is proved to have been abandoned, may upon
payment of the fees required by law, and other due proceeding had, obtain a
patent therefor. (29 Stat. L., 692, 7 Fed .Stat. Ann. [2d Ed.], p. 23.)
When a patent is sought to be enforced, "the question of invention, novelty,
or prior use, and each of them, are open to judicial examination." The
burden of proof to substantiate a charge of infringement is with the plaintiff.
Where, however, the plaintiff introduces the patent in evidence, if it is in due
form, it affords a prima facie presumption of its correctness and validity. The
decision of the Commissioner of Patents in granting the patent is always
presumed to be correct. The burden then shifts to the defendant to
overcome by competent evidence this legal presumption .With all due
respect, therefore, for the critical and expert examination of the invention by
the United States Patent Office, the question of the validity of the patent is
one for judicial determination, and since a patent has been submitted, the
exact question is whether the defendant has assumed the burden of proof as
to anyone of his defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs .Putnam [1869], 8 Wall., 420; Seymour vs. Osborne [1871], 11
Wall., 516; Reckendorfer vs. Faber [1876], 92 U.S., 347; 20 R. C. L., 1112,
1168, 1169.)
As herein before stated, the defendant relies on three special defenses. One
such defense, on which the judgment of the lower court is principally
grounded, and to which appellant devotes the major portion of his vigorous
argument, concerns the element of novelty, invention, or discovery, that
gives existence to the right to a patent. On this point the trial court reached
the conclusion that "the patented plow of the plaintiff, Exhibit D, is not
different from the native plow, Exhibit 2, except in the material, in the form, in
the weight and the grade of the result, the said differences giving it neither a
new function nor a new result distinct from the function and the result
obtained from the native plow; consequently, its production does not
presuppose the exercise of the inventive faculty but merely of mechanical
skill, which does not give a right to a patent of an invention under the
provisions of the Patent Law." In thus finding, the court may have been right,
since the Vargas plow does not appear to be such a "combination" as
contains a novel assemblage of parts exhibiting invention. (See Stimpson vs.
Woodman [1870], 10 Wall., 117 — rollers; Hicks vs. Kelsey [1874], 20 Wall.,
353 — stoves; Washburn & Moen Mfg. Co. vs. Beat 'Em All Barbed Wire Co.
[1892], 143 U.S., 275 — barbed wire; Lynch vs .Dryden [1873], C. D., 73 —
walking cultivators; Torrey vs. Hancock [1910], 184 Fed., 61 — rotary
plows.)
A second line of defense relates to the fact that defendant has never made a
complete Vargas plow, but only points, shares, shoes, and heel pieces, to
serve as repairs. Defendant's contention is, that in common with other
foundries, he has for years cast large numbers of plow points and shares
suitable for use either on the native wooden plow, or on the Vargas plow. A
difference has long been recognized between repairing and reconstructing a
machine. If, for instance, partial injuries, whether they occur from accident or
from wear and tear, to a machine for agricultural purposes, are made this is
only re-fitting the machine for use, and thus permissible. (Wilson vs.
Simpson [1850], 9 How., 109.) Even under the more rigorous doctrine of
Leeds & Catlin Co. vs. Victor Talking Machine Co. ([1909], 213 U.S., 325), it
may be possible that all the defendant has done is to manufacture and sell
isolated parts to be used to replace worn-out parts.
The third defense is, that under the provisions of the statute, an inventor's
creation must not have been in public use or on sale in the United States
(and the Philippine Islands) for more than two years prior to his
application .Without, therefore, committing ourselves as to the first two
defenses, we propose to base our decision on the one just suggested as
more easily disposing of the case. (See 20 R. C. L., 1140-1142.) We do so
with full consciousness of the doubt which arose in the mind of the trial court,
but with the belief that since it has been shown that the invention was used
24
in public at Iloilo by others than Vargas, the inventor, more than two years
before the application for the patent, the patent is invalid.
Although we have spent some time in arriving at this point, yet having
reached it, the question in the case is single and can be brought to a narrow
compass. Under the English Statute of Monopolies (21 Jac. Ch., 3), and
under the United States Patent Act of February 21, 1793, later amended to
be as herein quoted, it was always the rule, as stated by Lord Coke, Justice
Story and other authorities, that to entitle a man to a patent, the invention
must be new to the world. (Pennock and Sellers vs. Dialogue [1829], 2 Pet.,
1.) As said by the United States Supreme Court, "it has been repeatedly held
by this court that a single instance of public use of the invention by a
patentee for more than two years before the date of his application for his
patent will be fatal to the validity of the patent when issued." (Worley vs.
Lower Tobacco Co .[1882], 104 U. S., 340; McClurg vs. Kingsland [1843], I
How., 202; Consolidated Fruit Jar Co. vs. Wright [1877], 94 U. S., 92; Egbert
vs. Lippmann [1881], 104 U. S., 333; Coffin vs. Ogden [1874], 18 Wall., 120;
Manning vs. Cape Ann Isinglass and Glue Co. [1883], 108 U. S., 462;
Andrews vs. Hovey [1887], 123 U. S., 267; Campbell vs. City of New York
[1881], 1 L. R. A., 48.)
On the facts, we think the testimony shows such a public use of the Vargas
plow as to render the patent invalid Nicolas Roces, a farmer, testified that he
had bought twenty Vargas plows, of which Exhibit 5 was one, in December,
1907; and Exhibit 5, the court found, was a plow completely identical with
that for which the plaintiff had received a patent. The minor exception, and
this in itself corroborative of Roces' testimony, is that the handle of plow
Exhibit 5 is marked with the letters "A V" and not with the words "Patent
Applied For" or "Patented Mar.12, 1912." Salvador Lizarraga, a clerk in a
business house, testified that he had received plows similar to Exhibits D, 5,
and 4, for sale on commission on May, 1908, from Bonifacio Araneta,
partner of Vargas in the plow business. Ko Pao Ko, a blacksmith, testified
that he had made fifty plow frames in 1905 for Vargas and Araneta, of which
Exhibit 4 is one; Exhibit 4, the court found, is a plow identical with that
patented by Vargas, but without share and mould-board. Alfred Berwin, an
employee in the office of Attorney John Bordman, testified that on
September 21, 1908, he had knowledge of a transaction wherein Vargas
and Araneta desired to obtain money to invest in a plow factory. George
Ramon Saul, a mechanic of the "Taller Visayas" of Strachan and
MacMurray, testified that he had made Vargas plow points and shares of the
present form upon order of Araneta and Vargas in 1906 and 1907 .William
MacMurray, proprietor of the "Taller Visayas," corroborated the evidence of
the witness Saul by the exhibition of the account against Vargas and
Araneta wherein, under date of December 13, 1906, appears the item "12
new soft steel plow shares forged and bored for rivets as per sample."
Against all this, was the testimony of the plaintiff Angel Vargas who denied
that Saul could have been seen the Vargas plow in 1907 and 1907, who
denied that Roces purchased the Vargas plow in 1907, who denied that
Lizarraga could have acted as an agent to sell two plows in November,
1908, who denied any remembrance of the loan mentioned by Berwin as
having been negotiated in September, 1908, who denied that Ko Pao Ko
made fifty plows one of which is Exhibit 4, for Araneta and Vargas in 1905.
Plaintiff introduced his books to substantiate his oral testimony .It is hardly
believable that five or six witnesses for the defense would deliberately
perjure themselves under oath. One might, but that all together, of different
nationalities, would enter into such a conspiracy, is to suppose the
improbable.
Tested by the principles which go to make the law, we think a
preponderance of the evidence is to the effect that for more than two years
before the application for the original letters patent, or before July 22, 1908,
there was, by the consent and allowance of Vargas, a public use of the
invention covered by them.
To conclude, we are not certain but that appellee has proved every one of
his defenses. We are certain that he has at least demonstrated the public
use of the Vargas plow over two years prior to the application for a patent.
Such being the case, although on a different ground, we must sustain the
judgment of the lower court, without prejudice to the determination of the
damages resulting from the granting of the injunction, with the costs of this
instance against the appellant. So ordered.
Arellano, C.J. Torres, Johnson, Araullo, Street, Avanceña and Moir, JJ.,
concur.

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