10. GSELL vs.

YAP-JUE
FACTS:
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 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.

Thereafter the defendant continued to manufacture curved cane handled for walking
sticks and umbrellas by a process in all respect 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.

ISSUE:
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.

RULING:
Yes. 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.

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 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.

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.
11. FRANK AND GOHN vs. BENITO
FACTS:
Plaintiffs allege that they are the owners of a patent covering hemp-stripping machine
No. 1519579 issued to them by the United States Patent Office of December 16,
1924, and duly registered in the Bureau of Commerce and Industry of the Philippine
Islands under the provisions of Act No. 2235 of the Philippine Legislature on March
17, 1925.

That plaintiffs have for some time been manufacturing the machine under the patent.
However, the defendant also manufactured a hemp-stripping machine in which,
without authority from the plaintiffs, he has embodied and used such spindles and
their method of application and use, and is exhibiting his machine to the public for the
purpose of inducing its purchase. That the use by the defendant of such spindles and
the principle of their application to the stripping of hemp is in violation of, and in
conflict with, plaintiffs' patent, together with its conditions and specifications

ISSUE:
Whether or not the defendant's machine is an infringement upon the patent granted
to plaintiffs.

RULING:
No. 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 the shifts to the defendant to overcome by competent evidence this legal
presumption. Yet, this is not a case of a conflict between two different patents

The spindle of the plaintiffs was made of wood, conical in shape and with a smooth
surface. That of the defendant was somewhat similar in shape, but was made of
metal with rough surface, and the defendant claims that his spindle was more
effective and would do better work than that of the plaintiffs. Be that as it may, the
plaintiffs have a patent for their machine, and the defendant does not have a patent,
and the basic principle of plaintiffs' patent is the spindle upon which they rely,
together with its specified manner and mode of operation, and in the final analysis, it
must be conceded that the basic principle of the spindle upon which the defendant
relies is founded upon the basic principle of the spindle for which the plaintiffs have a
patent. Assuming, without deciding, that the defendant's spindle is an improvement
upon and is a better spindle than that of the plaintiffs, yet, under the authority above
cited, the defendant had no legal right to appropriate the basic principle upon which
the plaintiffs obtained their patent. The plaintiffs having obtained their patent, which
was duly registered in the Philippines Islands, the defendant cannot infringe upon its
basic principle.

The defendant contends that the basic principle of the spindle was a very old one in
mechanics, and that there was nothing new or novel in the application of it by the
plaintiffs. Be that as it may, the plaintiffs applied for and obtained their patent with its
specifications which are attached to, and made part of, the patent, and the proof is
conclusive that the defendant is infringing upon the basic principle of the spindle as it
is defined and specified in plaintiffs' patent.
12. GODINES vs. COURT OF APPEALS
FACTS:
The patent involved is Letters Patent No. UM-2236 issued by the Philippine Patent
Office to one Magdalena S. Villaruz which covers a utility model for a hand tractor or
power tiller.

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 tillers similar to those patented
by private respondent were being manufactured and sold by petitioner herein.

ISSUE:
Whether or not petitioner's product infringe upon the patent of private respondent

RULING:
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

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. 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." 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.

"(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." A careful examination between the two power tillers
will show that they will operate on the same fundamental principles. And, according
to establish 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.
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.