Case Summary (G.R. No. 38010)
Factual Background
The plaintiffs obtained United States Patent No. 1519579 for an improvement in hemp stripping machines and thereafter registered that patent in the Philippines. The plaintiffs alleged that their machine contained a stripping head, a horizontal table, a stripping knife supported on the table, a tapering spindle, a rest holder adjustably secured on the table, a lever and means for compelling the knife to close on the table, a pallet or rest in the table bottom, and a resilient cushion under that pallet. The plaintiffs originally emphasized a conical spindle as the principal feature of their machine, but they subsequently filed an amended complaint omitting the spindle from the pleaded characteristics. The defendant manufactured and sold machines which the plaintiffs alleged were similar to the patented machine and thus infringed their patent rights.
Procedural History
The plaintiffs sued the defendant seeking injunctive relief to restrain manufacture and sale, an accounting of profits, payment of PHP 60 per machine in lieu of an accounting, approval of a bond, a permanent injunction following trial, and costs and damages. The trial court dismissed the complaint with costs and also dismissed the defendant's counterclaim of P10,000; the plaintiffs appealed the dismissal of their complaint, while the defendant did not appeal. The appeal reached this Court for review of the trial court's judgment and factual findings.
Trial Court Findings
After receiving voluminous evidence, the trial court found that the plaintiffs' machine was nothing more than an improvement to machines already in vogue and in actual use in hemp-producing provinces. The court concluded that the plaintiffs did not invent the spindle, which had been known since about 1909 or 1910; that stripping knives and their control mechanisms were long in use; that flywheels and pedals to raise the knife were longstanding features of hemp stripping machines; and that other machines identified as Molo, Riesgo, Crumb, Icsiar, Browne, and McFie had existed and served hemp producers in Davao before the plaintiffs' machine appeared. The trial court also noted that the plaintiffs' own application to the United States Patent Office described the device as an improvement rather than a pioneer invention and that a prior application by Adrian de Icsiar had contributed to rejection of the plaintiffs' original claim regarding the spindle.
Issues Presented
The primary issue on appeal was whether the defendant was civilly liable for infringement of the plaintiffs' patent for an improved hemp stripping machine. Ancillary issues included whether the spindle or conical drum constituted the essential patented feature, whether the patent possessed novelty and originality, and whether the plaintiffs could rely on a prior decision to establish infringement.
Parties' Contentions
The plaintiffs contended that their patent covered the machine described in their application and that the spindle constituted the principal and important feature distinguishing their machine from prior art; they relied upon a prior decision in Frank and Gohn vs. Benito (51 Phil., 712) to support their claim of infringement. The defendant contended that the plaintiffs' machine lacked novelty and that its essential parts, including the spindle, were known and used publicly in the Province of Davao before the plaintiffs' patent application, thereby negating civil liability for infringement.
Supreme Court's Analysis and Reasoning
This Court reviewed the evidence and agreed with the trial court that the plaintiffs' machine lacked the requisite elements of novelty, originality, and precedence to constitute a true invention. The Court observed that the plaintiffs themselves had publicly used a similar machine for months before obtaining the patent and that numerous earlier machines in Davao embodied the same general characteristics and important parts. The Court noted that the plaintiffs' United States patent application described the device as a "new and useful improvement" rather than a pioneer invention, and that the patentees had, by photographic copy (Exhibit 41), omitted the spindle from the issued patent. The Court reasoned that it would be improper to enlarge the scope of the patent by treating the spindle as an essential part after it had been excluded from the patent as issued, and that patent
...continue readingCase Syllabus (G.R. No. 38010)
Parties and Posture
- PATRICK HENRY FRANK AND WILLIAM HENRY GOHN, PLAINTIFFS AND APPELLANTS, brought the action alleging infringement of their patent in the trial court and appealed the adverse judgment.
- G. KOSUYAMA, DEFENDANT AND APPELLEE, was the accused manufacturer and seller of machines said to be similar to the patented device and did not appeal the judgment.
- The trial court dismissed the plaintiffs' complaint with costs and entered judgment on the defendant's counterclaim for PHP 10,000, from which only the plaintiffs appealed.
Patent and Documents
- The subject of the suit was Patent No. 1519579 (Exhibit 117) for an improvement in hemp stripping machines, issued by the United States Patent Office on December 16, 1924, and registered in the Bureau of Commerce and Industry of the Philippine Islands on March 17, 1925.
- The plaintiffs filed an original application and later an amended complaint reproducing parts of that application and produced Exhibit 41 which reflected the patent as issued.
- The plaintiffs relied on the issued patent as the basis for injunctive relief, an accounting, and damages against the defendant.
Relief Sought
- The plaintiffs sought an injunction ordering the defendant to cease manufacture and sale of machines similar to the patent.
- The plaintiffs demanded an accounting of profits and alternatively requested a fixed profit of P60 per machine in the event the defendant failed to render an accounting.
- The plaintiffs sought that the preliminary injunction be made permanent and that the defendant pay costs and proved damages.
Key Factual Allegations
- The plaintiffs initially alleged that the principal feature of their machine was a tapering spindle or conical drum upon which hemp was wound during stripping.
- In their amended complaint the plaintiffs omitted the spindle as an asserted feature but nonetheless continued to treat it as essential in correspondence and briefs.
- The plaintiffs averred additional characteristics including a stripping head, horizontal table, stripping knife, a rest holder adjustably secured on the table, a lever to compel the knife to close, a pallet in the bottom of the table, and a resilient cushion under the pallet.
Trial Court Findings
- The trial court found that the plaintiffs made only improvements on machines already in use and did not produce a pioneer invention.
- The trial court found that the spindle was kn