Case Digest (G.R. No. 38010)
Case Digest (G.R. No. 38010)
Facts:
Patrick Henry Frank and William Henry Gohn v. G. Kosuyama, G.R. No. 38010. December 21, 1933, the Supreme Court, Imperial, J., writing for the Court.Plaintiffs-appellants Patrick Henry Frank and William Henry Gohn owned United States Patent No. 1519579 (Exhibit 117) for an "Improvement in Hemp Stripping Machines," issued December 16, 1924, and registered in the Bureau of Commerce and Industry of the Philippine Islands on March 17, 1925. They sued defendant-appellee G. Kosuyama seeking injunctive relief to stop him from manufacturing and selling machines allegedly infringing their patent; an accounting of profits or, in lieu thereof, P60 per machine; a preliminary injunction to be made permanent; and costs and damages.
In their original pleading the plaintiffs emphasized a conical drum or "spindle" as the principal feature of their machine, but in an amended complaint removed the spindle from the description and characterized the patent as covering a set of improvements (stripping head, horizontal table, stripping knife, tapering spindle [initially alleged], adjustable rest holder, lever and means to force the knife on the table, pallet/rest and resilient cushion). During trial both parties introduced extensive evidence concerning prior machines used in Davao and elsewhere.
The trial court found that the plaintiffs' machine was only an improvement on existing hemp stripping machines and lacked the required novelty, originality and precedence; it noted prior use of similar components (including spindles) dating back to 1909–1910 and the existence of machines known as Molo, Riesgo, Crumb, Icsiar, Browne and McFie. The trial court dismissed the plaintiffs' complaint with costs and also disposed of the defendant's P10,000 counterclaim in the same judgment; the defendant did not appeal. The plaintiffs appealed the dismissal to the Supreme Court.
On appeal the Supreme Court reviewed the evidence and the trial court's findings. Although the Court agreed that the patent lacked the attributes of a pioneer invention and that elements claimed were known before the plaintiffs' application, it declined to annul the patent because plaintiffs did not seek cancellation by way of cross-complaint in the present action. The Court affirmed the judgment dismissing the infringement suit.
Issues:
- Are the plaintiffs entitled to civil relief for infringement of United States Patent No. 1519579 as against G. Kosuyama?
- May the Court, in this infringement action where no cross-complaint for annulment was filed, declare the plaintiffs' patent null and void for lack of novelty?
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)