Professional Documents
Culture Documents
IPL Cases Batch 2
IPL Cases Batch 2
IPL Cases Batch 2
DECISION
BELLOSILLO, J.:
The primary purpose of the patent system is not the reward of the individual
but the advancement of the arts and sciences. The function of a patent is to
add to the sum of useful knowledge and one of the purposes of the patent
system is to encourage dissemination of information concerning discoveries
and inventions. This is a matter which is properly within the competence of the
Patent Office the official action of which has the presumption of correctness
and may not be interfered with in the absence of new evidence carrying
thorough conviction that the Office has erred. Since the Patent Office is an
expert body preeminently qualified to determine questions of patentability, its
findings must be accepted if they are consistent with the evidence, with
doubts as to patentability resolved in favor of the Patent Office.1
Testifying for herself petitioner narrated that her husband Ong Bun Tua
worked as a helper in the UNITED FOUNDRY where respondent Melecia
Madolaria used to be affiliated with from 1965 to 1970; that Ong helped in the
casting of an LPG burner which was the same utility model of a burner for
which Letters Patent No. UM-4609 was issued, and that after her husbands
separation from the shop she organized Besco Metal Manufacturing (BESCO
METAL, for brevity) for the casting of LPG burners one of which had the
configuration, form and component parts similar to those being manufactured
by UNITED FOUNDRY. Petitioner presented in evidence an alleged model of
an LPG burner marked Exh. K and covered by the Letters Patent of
respondent, and testified that it was given to her in January 1982 by one of
her customers who allegedly acquired it from UNITED FOUNDRY. Petitioner
also presented in evidence her own model of an LPG burner called Ransome
burner marked Exh. L, which was allegedly manufactured in 1974 or 1975 and
sold by her in the course of her business operation in the name of BESCO
METAL. Petitioner claimed that this Ransome burner (Exh. L) had the same
configuration and mechanism as that of the model which was patented in
favor of private respondent Melecia Madolaria. Also presented by petitioner
was a burner cup of an imported Ransome burner marked Exh M which was
allegedly existing even before the patent application of private respondent.
Petitioner presented two (2) other witnesses, namely, her husband Ong Bun
Tua and Fidel Francisco. Ong testified that he worked as a helper in the
UNITED FOUNDRY from 1965 to 1970 where he helped in the casting of LPG
burners with the same form, configuration and mechanism as that of the
model covered by the Letters Patent issued to private respondent. Francisco
testified that he had been employed with the Manila Gas Corporation from
1930 to 1941 and from 1952 up to 1969 where he retired as supervisor and
that Manila Gas Corporation imported Ransome burners way back in 1965
which were advertised through brochures to promote their sale.
Private respondent, on the other hand, presented only one witness, Rolando
Madolaria, who testified, among others, that he was the General Supervisor of
the UNITED FOUNDRY in the foundry, machine and buffing section; that in
his early years with the company, UNITED FOUNDRY was engaged in the
manufacture of different kinds of gas stoves as well as burners based on
sketches and specifications furnished by customers; that the company
manufactured early models of single-piece types of burners where the mouth
and throat were not detachable; that in the latter part of 1978 respondent
Melecia Madolaria confided in him that complaints were being brought to her
attention concerning the early models being manufactured; that he was then
instructed by private respondent to cast several experimental models based
on revised sketches and specifications; that private respondent again made
some innovations; that after a few months, private respondent discovered the
solution to all the defects of the earlier models and, based on her latest
sketches and specifications, he was able to cast several models incorporating
the additions to the innovations introduced in the models. Various tests were
conducted on the latest model in the presence and under the supervision of
Melecia Madolaria and they obtained perfect results. Rolando Madolaria
testified that private respondent decided to file her application for utility model
patent in December 1979.
Petitioner submits that the differences cited by the Court of Appeals between
the utility model of private respondent and the models of Manila Gas
Corporation and Esso Standard Eastern, Inc., are more imaginary than real.
She alleges that based on Exhs. E, E-1, F and F-1 or the brochures of Manila
Gas Corporation and Esso Standard Eastern, Inc., presented by petitioner,
the cup-shaped burner mouth and threaded hole on the side are shown to be
similar to the utility model of private respondent. The exhibits also show a
detachable burner mouth having a plurality of upwardly existing undulations
adopted to act as gas passage when the cover is attached to the top of said
cup-shaped mouth all of which are the same as those in the patented model.
Petitioner also denies as substantial difference the short cylindrical tube of the
burner mouth appearing in the brochures of the burners being sold by Manila
Gas Corporation and the long cylindered tube of private respondents model of
the gas burner.
Petitioner argues that the actual demonstration made during the hearing
disclosed the similarities in form, operation and mechanism and parts
between the utility model of private respondent and those depicted in the
brochures. The findings of the Patent Office and the Court of Appeals that the
brochures of Manila Gas Corporation and Esso Standard Eastern, Inc., are
undated cannot overcome the fact of their circulation before private
respondent filed her application for utility model patent. Petitioner thus asks
this Court to take judicial notice of the fact that Esso Standard Eastern, Inc.,
disappeared before 1979 and reappeared only during the Martial Law years
as Petrophil Corporation. Petitioner also emphasizes that the brochures
indicated the telephone number of Manila Gas Corporation as 5-79-81 which
is a five (5) numbered telephone number existing before 1975 because
telephones in Metro Manila started to have six (6) numbers only after that
year.
Sec. 55. Design patents and patents for utility models. - (a) Any new, original
and ornamental design for an article of manufacture and (b) any new model of
implements or tools or of any industrial product or of part of the same, which
does not possess the quality of invention, but which is of practical utility by
reason of its form, configuration, construction or composition, may be
protected by the author thereof, the former by a patent for a design and the
latter by a patent for a utility model, in the same manner and subject to the
same provisions and requirements as relate to patents for inventions insofar
as they are applicable except as otherwise herein provided.
Scrutiny of Exhs. D and E readily reveals that the utility model (LPG Burner) is
not anticipated. Not one of the various pictorial representations of burners
clearly and convincingly show that the device presented therein is identical or
substantially identical in construction with the aforesaid utility model. It is
relevant and material to state that in determining whether novelty or newness
is negatived by any prior art, only one item of the prior art may be used at a
time. For anticipation to occur, the prior art must show that each element is
found either expressly or described or under principles of inherency in a single
prior art reference or that the claimed invention was probably known in a
single prior art device or practice. (Kalman v. Kimberly Clark, 218 USPQ 781,
789)
Furthermore, and more significantly, the model marked Exh. K does not show
whether or not it was manufactured and/or cast before the application for the
issuance of patent for the LPG burner was filed by Melecia Madolaria.
xxxx
But a careful examination of Exh. L would show that it does not bear the word
Ransome which is the burner referred to as the product being sold by the
Petitioner. This is not the way to prove that Exh. L anticipates Letters Patent
No. UM-4609 through Exhs. C and D. Another factor working against the
Petitioners claims is that an examination of Exh. L would disclose that there is
no indication of the time or date it was manufactured. This Office, thus has no
way of determining whether Exh. L was really manufactured before the filing
of the aforesaid application which matured into Letters Patent No. UM-4609,
subject matter of the cancellation proceeding.
At this juncture, it is worthwhile to point out that petitioner also presented Exh.
M which is the alleged burner cup of an imported Ransome burner. Again, this
Office finds the same as unreliable evidence to show anticipation. It observed
that there is no date indicated therein as to when it was manufactured and/or
imported before the filing of the application for issuance of patent of the
subject utility model. What is more, some component parts of Exh. M are
missing, as only the cup was presented so that the same could not be
compared to the utility model (subject matter of this case) which consists of
several other detachable parts in combination to form the complete LPG
burner.
xxxx
It must likewise be pointed out that Ong Bun Tua testified on the brochures
allegedly of Manila Gas and of Esso Gasul marked Exhs. E and F and on the
alleged fact that Manila Gas Corporation was importing from the United States
Ransome burners. But the same could not be given credence since he
himself admitted during cross- examination that he has never been connected
with Manila Gas Corporation. He could not even present any importation
papers relating to the alleged imported ransome burners. Neither did his wife.6
The above findings and conclusions of the Director of Patent were reiterated
and affirmed by the Court of Appeals.7
The validity of the patent issued by the Philippine Patent Office in favor of
private respondent and the question over the inventiveness, novelty and
usefulness of the improved model of the LPG burner are matters which are
better determined by the Patent Office. The technical staff of the Philippine
Patent Office composed of experts in their field has by the issuance of the
patent in question accepted private respondents model of gas burner as a
discovery. There is a presumption that the Office has correctly determined the
patentability of the model8 and such action must not be interfered with in the
absence of competent evidence to the contrary.
The rule is settled that the findings of fact of the Director of Patents, especially
when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence. Petitioner has failed to show compelling
grounds for a reversal of the findings and conclusions of the Patent Office and
the Court of Appeals.
The alleged failure of the Director of Patents and the Court of Appeals to
accord evidentiary weight to the testimonies of the witnesses of petitioner
showing anticipation is not a justification to grant the petition. Pursuant to the
requirement of clear and convincing evidence to overthrow the presumption of
validity of a patent, it has been held that oral testimony to show anticipation is
open to suspicion and if uncorroborated by cogent evidence, as what
occurred in this case, it may be held insufficient.9
Finally, petitioner would want this Court to review all over again the evidence
she presented before the Patent Office. She argues that contrary to the
decision of the Patent Office and the Court of Appeals, the evidence she
presented clearly proves that the patented model of private respondent is no
longer new and, therefore, fraud attended the acquisition of patent by private
respondent.
It has been held that the question on priority of invention is one of fact.
Novelty and utility are likewise questions of fact. The validity of patent is
decided on the basis of factual inquiries. Whether evidence presented comes
within the scope of prior art is a factual issue to be resolved by the Patent
Office.10 There is question of fact when the doubt or difference arises as to the
truth or falsehood of alleged facts or when the query necessarily invites
calibration of the whole evidence considering mainly the credibility of
witnesses, existence and relevance of specific surrounding circumstances,
their relation to each other and to the whole and the probabilities of the
situation.11
Time and again we have held that it is not the function of the Supreme Court
to analyze or weigh all over again the evidence and credibility of witnesses
presented before the lower tribunal or office. The Supreme Court is not a trier
of facts. Its jurisdiction is limited to reviewing and revising errors of law
imputed to the lower court, its findings of fact being conclusive and not
reviewable by this Court.
PARAS, J.:p
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing business
under the firm name and style of "SUSANA LUCHAN POWDER PUFF
MANUFACTURING."
In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner
informed private respondent that the powder puffs the latter is
manufacturing and selling to various enterprises particularly those in
the cosmetics industry, resemble Identical or substantially Identical
powder puffs of which the former is a patent holder under Registration
Certification Nos. Extension UM-109, Extension UM-110 and Utility
Model No. 1184; petitioner explained such production and sale
constitute infringement of said patents and therefore its immediate
discontinuance is demanded, otherwise it will be compelled to take
judicial action. (Rollo, pp. 7-8).
Private respondent replied stating that her products are different and
countered that petitioner's patents are void because the utility models
applied for were not new and patentable and the person to whom the
patents were issued was not the true and actual author nor were her
rights derived from such author. (Taken from allegations in the Answer,
par. 4, Rollo, p. 93). And on July 25, 1974, private respondent assailed
the validity of the patents involved and filed with the Philippine Patent
Office petitions for cancellation of (1) Utility Model Letter Patent
Extension No. UM-109 (Inter Partes Case No. 838, Susana Luchan v.
Rosario C. Tan), (2) Utility Model Letters Patent No. UM-1184 (Inter
Partes Case No. 839, Susana Luchan v. Rosario C. Tan), (3) Utility Model
Letters Patent Extension No. UM-110 (Inter Partes Case No. 840, Susana
Luchan v. Rosario C. Tan. (Taken from allegations in the Answer, par.
10, Rollo, pp. 94-95).
(1) at the time of filing of application for the patents involved, the utility
models applied for were not new and patentable under Sec. 55 of R.A.
165, as amended by R.A. 864; and
(2) the person to whom the patents were issued was not the true and
actual author of the utility models applied for, and neither did she derive
her rights from any true and actual author of these utility models.
(a) since years prior to the filing of applications for the patents involved,
powder puffs of the kind applied for were then already existing and
publicly being sold in the market; both in the Philippines and abroad;
and
On September 18, 1974, the trial court issued an Order (Annex "K",
Rollo, p. 125) granting the preliminary injunction prayed for by
petitioner. Consequently, the corresponding writ was subsequently
issued (Annex "K-1", Rollo, p. 131) enjoining the herein private
respondent (then defendant) and all other persons employed by her, her
agents, servants and employees from directly or indirectly
manufacturing, making or causing to be made, selling or causing to be
sold, or using or causing to be used in accordance with, or embodying
the utility models of the Philippine Patent Office Utility Model Letters
Patent Nos. 423 (Extension No. UM-109), No. 450 (Extension No. UM-
110), and Utility Model No. 1184 or from infringement upon or violating
said letters patent in any way whatsoever (Annex " K-1 ", Rollo, p. 131).
In an Order dated September 11, 1975, the trial court denied private
respondent's motion for reconsideration (Annex "N", Rollo, p. 142).
(1) Order dated September 18, 1974, granting the preliminary injunction;
(3) Order dated September 11, 1974 denying petitioner's motion petition
for reconsideration.
II
The assignment of errors raised by the petitioner in this case (Rollo, pp.
15-16) may be reduced to three main issues:
The first issue has been laid to rest in a number of cases where the
Court ruled that "When a patent is sought to be enforced, the questions
of invention, novelty or prior use, and each of them, are open to judicial
examination." (Vargas v. F.M. Yaptico & Co. 40 Phil. 199 [1919]; Vargas
v. Chua, 57 Phil. 790-791 [1933]; Frank and Gohn v. Kosuyana 59 Phil.
207 [1933]).
Under the present Patent Law, there is even less reason to doubt that
the trial court has jurisdiction to declare the patents in question invalid.
A patentee shall have the exclusive right to make, use and sell the
patented article or product and the making, using, or selling by any
person without the authorization of the patentee constitutes
infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights
have been infringed upon may bring an action before the proper CFI
now (RTC) and to secure an injunction for the protection of his rights
(Sec. 42, R.A. 165). Defenses in an action for infringement are provided
for in Section 45 of the same law which in fact were availed of by private
respondent in this case. Then, as correctly stated by respondent Court
of Appeals, this conclusion is reinforced by Sec. 46 of the same law
which provides that if the Court shall find the patent or any claim thereof
invalid, the Director shall on certification of the final judgment ... issue
an order cancelling the patent or the claims found invalid and shall
publish a notice thereof in the Official Gazette." Upon such certification,
it is ministerial on the part of the patent office to execute the judgment.
(Rollo, pp. 221-222).
II.
The question then in the instant case is whether or not the evidence
introduced by private respondent herein is sufficient to overcome said
presumption.
It has been repeatedly held that an invention must possess the essential
elements of novelty , originality and precedence and for the patentee to
be entitled to protection, the invention must be new to the world.
Accordingly, a single instance of public use of the invention by a
patentee for more than two years (now for more than one year only
under Sec. 9 of the Patent Law) before the date of his application for his
patent, will be fatal to, the validity of the patent when issued. (Frank, et
al. v. Kosuyama Vargas v. F.M. Yaptico & Co. and Vargas v. Chua, et
al., supra).
Thus, more specifically, under American Law from which our Patent Law
was derived (Vargas v. F.M. Yaptico & Co. supra) it is generally held that
in patent cases a preliminary injunction will not issue for patent
infringement unless the validity of the patent is clear and beyond
question. The issuance of letters patent, standing alone, is not sufficient
to support such drastic relief (8 Deller's Walker on Patents p. 406). In
cases of infringement of patent no preliminary injunction will be granted
unless the patent is valid and infringed beyond question and the record
conclusively proves the defense is sham. (Ibid., p. 402)
III.
For failure to determine first the validity of the patents before aforesaid
issuance of the writ, the trial court failed to satisfy the two requisites
necessary if an injunction is to issue, namely: the existence of the right
to be protected and the violation of said right. (Buayan Cattle Co., Inc. v.
Quintillan, 128 SCRA 276).
Under the above established principles, it appears obvious that the trial
court committed a grave abuse of discretion which makes certiorari the
appropriate remedy.
SO ORDERED.
PASCUAL GODINES, petitioner,
vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION
and SV-AGRO ENTERPRISES, INC., respondents.
ROMERO, J.:
WHEREFORE, with the elimination of the award for attorney's fees, the
judgment appealed from is hereby AFFIRMED, with costs against appellant.1
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
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
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:
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
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.
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
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-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
It also stated:
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
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. . . .
x x x x x x x x x
BELLOSILLO, J.:p
Roberto del Rosario petitions this Court to review the decision of the Court of
Appeals 1 which set aside the order of the Regional Trial Court of Makati
granting a writ of preliminary injunction in his favor.
In the early part of 1990 petitioner learned that private respondent was
manufacturing a sing-along system bearing the trademark miyata or miyata
karaoke substantially similar if not identical to the sing-along system covered
by the patents issued in his favor. Thus he sought from .the trial court the
issuance of a writ of preliminary injunction to enjoin private respondent, its
officers and everybody elsewhere acting on its behalf, from using, selling and
advertising the miyata or miyata karaoke brand, the injunction to be made
permanent after trial, and praying for damages, attorney's fees and costs of
suit.
On 15 November 1993 respondent appellate court granted the writ and set
aside the questioned order of the trial court. It expressed the view that there
was no infringement of the patents of petitioner by the fact alone that private
respondent had manufactured the miyata karaoke or audio system, and that
the karaoke system was a universal product manufactured, advertised and
marketed in most countries of the world long before the patents were issued
to petitioner. The motion to reconsider the grant of the writ was
denied;4 hence, the instant petition for review.
This petition alleges that: (a) it was improper for the Court of Appeals to
consider questions of fact in a certiorari proceeding; (b) the Court of Appeals
erred in taking judicial notice of private respondent's self-serving presentation
of facts; (c) the Court of Appeals erred in disregarding the findings of fact of
the trial court; and, (d) there was no basis for the Court of Appeals to grant a
writ of preliminary injunction in favor of private respondent.5
In this regard Sec. 55 of R.A. 165 as amended, known as The Patent Law,
provides —
Sec. 55. Design patents and patents for utility models. — (a) Any new,
original, and ornamental design for an article of manufacture and (b) new
model or implements or tools or of any industrial product or of part of the
same, which does not possess the quality of invention but which is of practical
utility by reason of its form, configuration, construction or composition, may be
protected by the author thereof, the former by a patent for a design and the
latter by a patent for a utility model, in the same manner and subject to the
same provisions and requirements as relate to patents for inventions insofar
as they are applicable, except as otherwise herein provide . . . .
Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-
6237 for a term of five (5) years from the grant of a Utility Model described as
—
The terms of both Letters Patents were extended for another five (5) years
each, the first beginning 2 June 1988 and the second, 14 November 1991.
The Patent Law expressly acknowledges that any new model of implements
or tools of any industrial product even if not possessed of the quality of
invention but which is of practical utility is entitled to a patent for utility
model. 10 Here, there is no dispute that the letters patent issued to petitioner
are for utility models of audio equipment.
Under Sec. 55 of The Patent Law a utility model shall not be considered "new"
if before the application for a patent it has been publicly known or publicly
used in this country or has been described in a printed publication or
publications circulated within the country, or if it is substantially similar to any
other utility model so known, used or described within the country.
Respondent corporation failed to present before the trial court competent
evidence that the utility models covered by the Letters Patents issued to
petitioner were not new. This is evident from the testimony of Janito Cua,
President of respondent Janito Corporation, during the hearing on the
issuance of the injunction, to wit —
Q. Mr. Cua, you testified that there are (sic) so many other companies which
already have (sic) the sing-along system even before the patent application of
Mr. del Rosario and as a matter of fact you mentioned Sanyo, Sony and
Sharp, is that right?
Q. Now you will agree with me that in your statement Sharp you put the date
as 1985 agreed?
A. No.
Q. You mean your lawyer was wrong when he put the word Sharp 1985?
x x x x x x x x x
Q. You mean your lawyer was wrong in alleging to this Court that Sharp
manufactured and sold (in) 1985 as found in the Urgent Motion?
Q. The same also with Sanyo 1985 which you put, more or less?
A. Sanyo is wrong.
Q. It is not 1985?
A. Panasonic I think.
A. The date?
Q. So you don't think also that this allegation here that they manufactured in
1986 is correct?
A. Wrong. Earlier.
A. I think earlier.
Q. So that means all your allegations here from 2 to 5 are wrong? OK. By
Philipps Philippines 1986, this is also correct or wrong?
A. No that is 1979.
A. It is more or less because it is urgent. We don't have time to exact the date.
Q. Musicmate of G.A. Yupangco 1981 this is more or less? You are not also
sure?
A. 95% sure.
Q. Mr. Witness so you are now trying to tell this Honorable Court that all your
allegations here of the dates in this Urgent Motion except for Musicmate
which you are only 95% sure they are all wrong or they are also more or less
or not sure, is that right?
A. More or less.
Q. Now do you have any proof, any advertisement, anything in writing that
would show that all these instruments are in the market, do you have it.
Q. No I am satisfied with your answer. Now Mr. Witness, you don't also have
a proof that Akai instrument that you said was also in the market before 1982?
You don't have any written proof, any advertisement?
Q. But you have not brought the product in (sic) this Honorable Court, right?
A. No. 13
Petitioner established before the trial court that respondent Janito Corporation
was manufacturing a similar sing-along system bearing the
trademark miyata which infringed his patented models. He also alleged that
both his own patented audio equipment and respondent's sing-along system
were constructed in a casing with a control panel, the casing having a vertical
partition wall defining the rear compartment from the front compartment, with
the front compartment consisting of a loud speaker baffle, both containing a
transistorized amplifier circuit capable of being operated from outside through
various controls mounted on the control panel, and that both had loud
speakers fitted inside the front compartment of the casing and connected to
the output of the main audio amplifier section both having a tape recorder and
a tape player mounted on the control panel with the tape recorder and tape
player being both connected to the transistorized amplifier circuit. 14
First. Under Utility Model 5269, the unit is a substantially cubical casing with a
window at its rear and upper corner fitted with slightly inclined control panel,
while the miyata equipment is a substantially rectangular casing with panel
vertically positioned.
Second. Under Utility Model 5269, the cubical casing has a vertical partition
wall defining a rear compartment and a front compartment serving as a
speaker baffle, while the miyata equipment has no rear compartment and
front compartment in its rectangular casing; it has only a front compartment
horizontally divided into 3 compartments like a 3-storey building, the 1st
compartment being a kit, the 2nd also the speaker, and the 3rd are kits.
Third. Under Utility Model No. 5269, a transistorized amplifier circuit with an
echo section wired in at least 2 printed circuit boards is placed inside the rear
compartment of the casing and attached to the vertical partition wall, the
printed circuit board having 1 amplifier and 1 echo, while in
the miyata equipment the amplifier is mainly IC (Integrated Circuit) —
powered with 8 printed circuit boards almost all of which are IC controlled,
with 1 amplifier with power supply, 1 main tuner, 1 equalizer (3-band), 1 IC
controlled volume control, 1 echo IC, 1 tape pream, 1 instrument and 1
wireless microphone.
Fourth. Under Utility Model 5269, 4 printed circuits are placed inside the
compartment of its casing attached to the vertical partition wall, while in
the miyata, the 7 printed circuit boards (PCB) are attached to the front panel
and 1 attached to the horizontal divider.
Fifth. Under Utility Model 5269, there are various controls mounted on the
control panel of the casing, while in miyata, the various controls are all
separated from the printed circuit boards and the various controls are all
attached thereto.
Sixth. Under Utility Model 5269, a loud speaker fitted inside the front
compartment of the casing is connected to the output of the main audio
amplifier section of the transistorized amplifier circuit, while in miyata, there is
no other way but to use 2 loud speakers connected to the amplifier.
Seventh. Under Utility Model 5269, a tape player is mounted on the top wall of
the casing, while in miyata, 2 tape players are used mounted side by side at
the front.
It may be noted that respondent corporation failed to present before the trial
court a clear, competent and reliable comparison between its own model and
that of petitioner, and disregarded completely petitioner's utility Model No.
6237 which improved on his first patented model. Notwithstanding the
differences cited by respondent corporation, it did not refute and disprove the
allegations of petitioner before the trial court that: (a) both are used by a
singer to sing and amplify his voice; (b) both are used to sing with a minus-
one or multiplex tapes, or that both are used to play minus-one or standard
cassette tapes for singing or for listening to; (c) both are used to sing with a
minus-one tape and multiplex tape and to record the singing and the
accompaniment; (d) both are used to sing with live accompaniment and to
record the same; (e) both are used to enhance the voice of the singer using
echo effect, treble, bass and other controls; (g) both are equipped with
cassette tape decks which are installed with one being used for playback and
the other, for recording the singer and the accompaniment, and both may also
be used to record a speaker's voice or instrumental playing, like the guitar and
other instruments; (h) both are
encased in a box-like cabinets; and, (i) both can be used with one or more
microphones. 17
The trial court is directed to continue with the proceedings on the main action
pending before it in order to resolve with dispatch the issues therein
presented.
SO ORDERED.
DECISION
CARPIO-MORALES, J.:
On September 24, 1981, Letters Patent No. 145611 for the aforesaid invention
was issued to petitioner for a term of seventeen (17) years.
The letters patent provides in its claims2 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.
Private respondent in its Answer8 averred that Letters Patent No. 14561 does
not cover the substance Albendazole for nowhere in it does that word 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.
Finding for private respondent, the trial court rendered a Decision dated July
23, 1991,9 the dispositive portion of which reads:
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.
The appellate court, however, declared that Letters Patent No. 14561 was not
void as it sustained petitioner’s 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 petitioner’s 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.
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
Office’s 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:
SO ORDERED.
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 literal infringement test, for in spite of the
fact that the word Albendazole does not appear in petitioner’s letters patent, it
has ably shown by evidence its sameness with methyl 5 propylthio-2-
benzimidazole carbamate.
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.
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.
From an examination of the evidence on record, this Court finds nothing infirm
in the appellate court’s conclusions with respect to the principal issue of
whether private respondent committed patent infringement to the prejudice of
petitioner.
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 compound’s 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.
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
It bears stressing that the mere absence of the word Albendazole in Letters
Patent No. 14561 is not determinative of Albendazole’s 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 petitioner’s 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 petitioner’s patent in spite of its omission therefrom or
that the meaning of the claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot
establish private respondent’s infringement, it urges this Court to apply the
doctrine of equivalents.
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 petitioner’s evidence
fails to convince this Court of the substantial sameness of petitioner’s
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 operation must be the same or substantially
the same.21
The foregoing discussions notwithstanding, this Court does not sustain the
award of actual damages and attorney’s fees in favor of private respondent.
The claimed actual damages of ₱330,000.00 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 ₱100,000.00
monthly gross sales for eleven months, were supported by the testimonies of
private respondent’s President25 and Executive Vice-President that the
average monthly sale of Impregon was ₱100,000.00 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 respondent’s 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
In the same vein, this Court does not sustain the grant by the appellate court
of attorney’s 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 petitioner’s suit. Even if a claimant is compelled to litigate with third
persons or to incur expenses to protect its rights, still attorney’s fees may not
be awarded where no sufficient showing of bad faith could be reflected in a
party’s 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.
SO ORDERED.