Del Rosario vs. CA, G.R. No. 11506, 1996

 Facts:

On January 18, 1993, Del Rosario (petitioner) filed a complaint against Janito Corporation (private respondent) for patent infringement. Del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke under 2 Letters Patents. The effectivity of both Letters Patents was for 5 years and was extended for another 5 years. He described his sing-along system as a handy multi-purpose compact machine which incorporates an amplifier speaker, 1 or 2 tape mechanisms, optional tuner or radio and microphone mixer with features to enhance ones voice,     such as the echo or reverb to stimulate an opera hall or a studio sound, with the whole system enclosed in one cabinet. In the early part of 1990, Del Rosario learned that Janito Corporation was manufacturing a sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not identical to the singalong system covered by the patents issued in his favor. Thus, he sought from the trial court a writ of preliminary injunction to enjoin Janito Corporation from using, selling and advertising the miyata. The trial court ruled in favor of Del Rosario however, the CA set aside the decision of the Trial Court. It expressed the view that there was no infringement of the patents of Del Rosario by the fact that Janito Corporation had manufactured the miyata karaoke, and that the karaoke system was a universal product, manufactured, advertised and marketed in most countries long before the patent was issued to Del Rosario. Hence, the instant petition for review.

 

Issues:

 1. Whether or not Del Rosario’s equipment may be the subject of a patent (Yes)

2. Whether or not the respondent has sufficiently proven that the utility model covered by the patents were not new (No)

3. Whether or not the patents issued in favor of Del Rosario may be infringed (No)

Ruling:

1. 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. Here, there is no dispute that the letters patent issued to Del Rosario 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 of 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. Janito Corporation failed to present before the trial court competent evidence that utility models covered by the Letters Patents issued to petitioner were not new. Under Sec. 37 of the Patent Law, the patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.

 

2. Where a party 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 Director of Patents in granting the patent is always presumed to be correct, and the burden then shifts to the other party to overcome this presumption by competent evidence.—

 

In issuing, reissuing or withholding patents and extensions thereof, the Director of Patents determines whether the patent is new and whether the machine or device is the proper subject of patent. In passing on an application, the Director decides not only questions of law but also questions of fact, i.e. whether there has been a prior public use or sale of the article sought to be patented. Where petitioner 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 Director of Patents in granting the patent is always presumed to be correct, and the burden then shifts to respondent to overcome this presumption by competent evidence.

 

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.

 

3. A patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.—

 

As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established, contrary to the findings and conclusions of respondent Court of Appeals. Consequently, under Sec. 37 of The Patent Law, petitioner as a patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such making, using or selling by any person without authorization of the patentee constitutes infringement of his patent.

 

In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same.—

 

It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. 

Patent Infringement: Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17 November 2010

 Facts: 

Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under the brand name “Unasyn.” Sometime in January and February 2003, Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids. Pfizer also demanded that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin. Pharmawealth and the hospitals ignored the demands. 

Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and forfeiture of the infringing products. A preliminary injunction effective for 90 days was granted by the IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension filed by Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial.

 

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a complaint for infringement and unfair competition, with a prayer for injunction. The RTC issued a temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping. Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making the case moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted to the Director General. The CA denied all the motions. Pharmawealth filed a petition for review on Certiorari with the Supreme Court.

 

Issues:

a) Can an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed?

b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office?

c) Is there forum shopping when a party files two actions with two seemingly different causes of action and yet pray for the same relief?

 

Held:

a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that "[the] 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 term of the patent; and such making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to make, use, and sell the products covered by their patent. The CA was wrong in issuing a temporary restraining order after the cut-off date.

 

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment has been rendered in one forum, of seeking another (and possibly favorable) opinion in another forum (other than by appeal or the special civil action of certiorari), or the institution of two (2) or more actions or proceedings grounded on the same cause on the supposition that one or the other court would make a favorable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such parties that represent the same interests in both actions; (b) identity of rights asserted and reliefs prayed for, the reliefs being founded on the same facts; (c) identity of the two preceding particulars, such that any judgment rendered in the other action will, regardless of which party is successful, amount to res judicata in the action under consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights allegedly violated and the acts allegedly violative of such rights are identical, regardless of whether the patents on which the complaints were based are different. In both cases, the ultimate objective of Pfizer was to ask for damages and to permanently prevent Pharmawealth from selling the contested products. Relevantly, the Supreme Court has decided that the filing of two actions with the same objective, as in this instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a decision in one case will necessarily amount to res judicata in the other action.

Bar Questions from UST Reviewer:

l  Can Pfizer validly seek for the issuance of a restraining order or injunction to enjoin Pharmawealth from selling the product when the patent allegedly infringed has already lapsed?

ANSWER:  NO. The exclusive right to make, use and sell the patented machine, article, product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines exists only during the term of the patent. Since the patent has expired, there is no more basis for the issuance of a restraining order or injunction against Pharmawealth insofar as the disputed patent is concerned.

l Did the Court of Appeals have jurisdiction to rule on the order of the IPO-BLA?

ANSWER: YES. In the case at bar, the question in the CA concerns an interlocutory order, and not a decision. According to IP Code, it is the Director General of the IPO that exercises exclusive jurisdiction over decisions of the IPO-BLA. However, the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules of Court suppletorily. Under the Rules of Court, a petition for certiorari to the CA is the proper remedy. Hence, the CA had jurisdiction to rule on the order.

Godines v. CA | G.R. No. 97343 | 13 September 1993 | Romero, J.

 FACTS

• Magdalena Villaruz (Villaruz) was issued a patent covering a utility model for a hand tractor or power tiller

• Patent was acquired by SV-Agro Enterprises, Inc. (SV) from Villaruz by virtue of a Deed of Assignment

• SV caused the publication of the patent in Bulletin Today, a newspaper of general circulation

• SV then manufactured and sold the patented power tillers with the patent imprinted on them

• SV suffered a decline of more than 50% in sales in its Zamboanga del Sur branch

• Upon investigation, it discovered that power tillers similar to those patented by them were being manufactured and sold by Pascual Godines (Godines)

• SV notified Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers

• Godines failed to comply with the demand so a complaint for infringement of patent and unfair competition was filed with the RTC

ISSUE: Tests to determine infringement (WON there was infringement YES)

Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 

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.” 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.

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. In appearance and form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. 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.

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. 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." 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.

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 fundamental principles. And, according to establish [sic] jurisprudence, in infringement of patent, similarities or differences are to be determined, not by the names of things, but in the light of what elements do, and substantial, rather than technical, identity in the test. More specifically, it is necessary and sufficient to constitute equivalency that the same function can be 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. . . . 

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. 

DISPOSITION: CA decision affirmed, petition denied for lack of merit.

Castillo v. Mungcal [1990] 90 O.G. 4194, 4198

 Facts:

Plaintiff Gerardo S. Castillo has been manufacturing and selling gas filter and filter drier under the trademark “Diamond”. Defendant Mungcal was one of his customers.

Defendant who is engaged in refrigeration and airconditioning made an improvement of the existing gas filter and gas filter drier made by Castillo. He applied for a utility model patent for the improvement which he invented on existing filter driers and strainers. He was assured by the Patent Office that he can apply for a patent for his improvement, after which he set up a small manufacturing establishment under the name Master Drier Manufacturing. He then started manufacturing and sold filter driers and strainers under his brand name “Klean Aire”

The application for utility patent for the filter driers was approved by the Philippine Patent Office and defendant was issued Utility Model Patent No. 5412.

Likewise, during the pendency of the case, the defendant applied for patents to cover the strainers. The application was however denied because the improvement in his strainers were substantially the same and had no patentable novelty over that of his improvement in his filter driers.

Issue: Was there patent infringement?

Ruling:

The court held that the products of the plaintiff and the defendant have distinguishing features.

Even if a device serves the same function as another device, there is no infringement if it lacks the features, methods or arrangements of the other device.

CRESER PRECISION SYSTEM INC. VS. CA AND FLORO INTERNATIONAL CORP. GR No. 118708 February 2, 1998 PONENTE: MARTINEZ,

 FACTS:

 

Private respondent Floro is a domestic corporation engaged in the manufacture, production, distribution and sale of military armaments, munitions, airmunitions and other similar materials. OnJan. 23, 1990, private respondent Floro was granted by the Bureau of Patents, Trademarks and Technology Transfer a Letters Patent covering an aerial fuze.

 

However, Floro’s President, Mr. Gregory Floro discovered that petitioner Creser submitted s

amples of its patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing and that petitioner is claiming the aerial fuze as its own and planning to bid and manufacture it commercially. 

 

Petitioner Creser contends that it is the first, true and actual inventor of an aerial fuze denominated as 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 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.

 

RTC issued a TRO and later on granted the preliminary injunction filed by plaintiff against private respondent. While CA reversed the RTC’s decision and dismissed the complaint filed by petitioner. 

 

ISSUE: Whether Petitioner can file 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?

 

RULING:

 

NO. 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. . . .

 

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. In short, a person or entity who has not been granted letters patent over an invention and has not acquired any right 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.

 

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.

Cuyos vs. Garcia

 Summary of Facts:

Complex Crime - Cargo Truck Driver charged with homicide with multiple serious physical injuries and damage to property, through reckless imprudence filed before MTC

Issue:

Does MTC has jurisdiction over the subject matter?

Resolution:

Jurisdiction over the whole complex crime must logically be lodged with the trial court having jurisdiction to impose the maximum penalty imposable on an of ense; A complex crime must be prosecuted integrally, and not split into its component offenses. Since the maximum fine imposable for the crime charged in case at bar is P54,000 and the maximum imprisonment imposable (for homicide through reckless imprudence) is six years, the criminal charge falls outside the jurisdiction of the Municipal Trial Court and within the jurisdiction of the Regional Tnal Court.

Zaldivia vs. Reyes, Jr.

 Summary of Facts:

Prescriptive period for violations of municipal ordinances.  The petitioner is charged with quarrying for commercial purposes without a mayor’s permit in violation of Ordinance No. 2. The offense was allegedly committed on May 11, 1990.

The referral-complaint of the police was received by the Office of the Provincial Prosecutor of Rizal on May 30, 1990. The corresponding information was filed with the Municipal Trial Court of Rodriguez on October 2, 1990. (5 months after)

Issue:

Has the action prescribed?

Resolution:

Crime prescribed. The prescriptive period for the crime imputed to the petitioner commenced from its alleged commission on May 11, 1990, and ended two months thereafter, on July 11, 1990, in accordance with Section 1 of Act No. 3326. It was not interrupted by the filing of the complaint with the Office of the Provincial Prosecutor on May 30, 1990, as this was not a judicial proceeding. The judicial proceeding that could have interrupted the period was the filing of the information with the Municipal Trial Court of Rodriguez, but this was done only on October 2, 1990, after the crime had already prescribed.

In case of conflict, the Rule on Summary Procedure as the special law prevails over Section 1 of Rule 110 of the Rules on Criminal Procedure and also Rule 110 of the Rules on Criminal Procedure must yield to Act No. 3326