Title
Maguan vs. Court of Appeals
Case
G.R. No. L-45101
Decision Date
Nov 28, 1986
Patent infringement dispute over powder puff designs; petitioner claims patents, respondent challenges validity; trial court's injunction overturned due to lack of patent validity determination.

Case Digest (G.R. No. L-44444-45)
Expanded Legal Reasoning Model

Facts:

  • Parties and Patents
    • Petitioner Rosario C. Maguan (formerly Tan) conducts business as “SWAN MANUFACTURING” and holds three utility-model patents:
      • UM-423 (extended under UM-109, 5 years from October 6, 1971)
      • UM-450 (extended under UM-110, 5 years from January 26, 1972)
      • UM-1184 (5 years from April 5, 1974)
    • Private respondent Susana Luchan operates as “SUSANA LUCHAN POWDER PUFF MANUFACTURING.”
  • Pre-litigation Correspondence and Cancellation Petitions
    • July 10, 1974 – Petitioner demands cessation of alleged infringing powder-puff manufacturing and sales.
    • Respondent denies infringement, challenges patent validity as void for lack of novelty and erroneous inventorship.
    • July 25, 1974 – Respondent files inter partes cancellation petitions before the Philippine Patent Office against UM-109, UM-110, and UM-1184.
  • Trial Court Proceedings (Civil Case No. 19908, CFI Rizal, Pasig)
    • August 24, 1974 – Petitioner sues for damages and seeks preliminary injunction for patent infringement.
    • September 18, 1974 – Trial court grants preliminary injunction enjoining respondent from making, using, or selling products embodying the patented models.
    • September 11, 1975 – Trial court denies respondent’s motion for reconsideration of the injunction order.
  • Court of Appeals Proceedings (CA-G.R. No. SP-04706)
    • September 29, 1975 – Respondent petitions for certiorari, praying to enjoin enforcement of the trial court’s orders.
    • October 15, 1975 – CA issues writ enjoining enforcement of the injunction and related orders.
    • February 16, 1976 – CA Decision dismisses certiorari petition, sets aside injunction for lack of grave abuse of discretion.
    • July 6, 1976 – On reconsideration, CA Resolution reverses itself, reinstates and makes permanent the preliminary injunction.
    • November 4, 1976 – CA denies further motion for reconsideration, affirming the July 6 Resolution.
  • Supreme Court Review
    • December 3, 1976 – SC requires respondent’s comment; briefs are thereafter submitted.
    • May 30, 1977 – Petition for review on certiorari is given due course.
    • December 9, 1977 – Case submitted for decision.

Issues:

  • Jurisdiction
    • Whether a trial court in an infringement suit may determine the validity or invalidity of patents pending cancellation in the Patent Office.
  • Preliminary Injunction
    • Whether the trial court committed grave abuse of discretion in issuing a preliminary injunction despite a fair question as to patent validity.
  • Certiorari Remedy
    • Whether certiorari was the proper remedy to assail the trial court’s injunctive orders given the alleged inadequacy of appeal.

Ruling:

  • (Subscriber-Only)

Ratio:

  • (Subscriber-Only)

Doctrine:

  • (Subscriber-Only)

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