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.
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