Frank V Kosuyama59 Phil 206

FRANK v KOSUYAMA59 PHIL 206
FACTS:
Patent on improvement in hemp stripping machines, issued by the United States Patent Office and
registered in the Bureau of Commerce and Industry of the Philippine, was the origin of this
action brought
by the
plaintiffs
herein
who prayed
that
the
judgment
be
renderedagainst the defendant, ordering him thereby to refrainimmediately from the manufacture
and sale of machines similar to the one covered by the patent: to render an accounting of the profits
realized from the manufacture and sale of the machines in question; that in case of refusal or
failure to render such accounting, the defendants be ordered to pay the plaintiffs the sum of P60 as
profit on each machine manufactured or sold by him; that upon approval of the required bond, said
defendant be restrained from continuing the manufacture and sale of the same kind of machines; that
after the trial the preliminary injunction issued therein be declared permanent and, lastly, that the said
defendant be sentenced to pay the costs and whatever damages the plaintiffs might be able to prove
therein. The action therefore was based upon alleged infringement by the defendant of the rights and
privileges acquired by the plaintiffs over the aforesaid patent through the manufacture and sale by the
former of machines similar to that covered by the aforesaid patent. The plaintiffs appealed from the
judgment rendered by the trial court dismissing their complaint, with cost, as
well as the defendant's counterclaim of P10,000. The defendant did not appeal.
In their amended complaint, the plaintiff alleged that their hemp stripping machines, for which they
obtaineda patent, have the following characteristics: "A strippinghead, a horizontal table, a stripping
knife
supported
upon
such table,
a tapering spindle, a rest
holder
adjustablysecured on the table portion, a lever and means of compelling the knife to close upon the
table, a pallet or rest in the bottom of the table, a resilient cushion under such pallet or rest." In spite
of the fact that they filed an amended complaint from which the "spindle" or conical drum,
whichwas the only characteristic feature of the machinementioned in the original complaint, was elimi
nated, theplaintiffs
insisted
that
the
said
part
constitutes
the
essentialdifference between the machine in question and othermachines and that it was the principal
consideration upon which their patent was issued. The said plaintiffs sustained their contention
on this point even in their printed brief and memorandum filed in this appeal. During the trial, both
parties
presented
voluminousevidence from which the trial court concluded that inconstructing their machine the plaintiff
s did nothing butimprove, to a certain degree, those that were already in vogue and in actual
us in hemp producing provinces. It cannot be said that they have invented the "spindle" inasmuch as
this was already known since the year 1909 or 1910. Neither it can be said that they have invented
thestripping knife and the contrivance which controls themovement and pressure thereof on the groun
d thatstripping knives together with their control sets were
already in actual use
in the different stripping machines long before their machine appeared.
ISSUE: Whether there is an infringement on the patents
HELD: The trial court did not decree the annulment of the plaintiffs' patent and the herein defendantappellee insists that the patent in question should be declared null and void.
We are of the opinion that it would be improper and untimely to render a similar judgment, in view of
the nature of the action brought by the plaintiffs and in the absence of a cross-complaint to that effect.
For the purposes of this appeal, suffice it to hold that the defendant is not civilly liable for alleged
infringement of the patent in question. In the light of sound logic, the plaintiffs cannot insist that the
"spindle" was a patented invention on the ground that said part of the machine was voluntarily
omitted by them from their application, as evidenced by the photographic copy thereof (Exhibit 41)
wherein it likewiseappears that the patent on Improved Hemp StrippingMachines was issued minus
the "spindle" in question. Were we to stress to this part of the machine, we would be giving the patent
obtained
by
the
plaintiffs
a
wider
range
than
itactually has, which is contrary to the principles of interpretation in matters relating to patents. In
support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and
Gohn vs. Benito (51 Phil., 712), wherein it was held that the therein defendant really infringed upon
the patent of the therein plaintiffs. It may be noted that the plaintiffs in the former and those of the
latter case are the same and that the patent then involved is the very same one upon which the
present action of the plaintiffs is based. The above-cited case, however, cannot be invoked as a
precedent to justify a judgment in favor of the plaintiffs-appellants on the ground that the facts in one
case entirely different from those in the other. In the former case the defendant did not set up the
same special defenses as those alleged by the herein defendant in his answer and the plaintiffs
therein
confined
themselves to presenting the patent, or rather a copythereof, wherein the "spindle" was mentioned, a
nd thiscourt
took
for
granted
their
claim
that
it
was
one
of
the
essential characteristics thereof which was imitated or copied by the then defendant. Thus it came to
pass that the"spindle" in question was insistently mentioned in thedecision rendered on appeal as the
essential
part
of
the
plaintiffs'
machine
allegedly
imitated
by
the
then
defendant.In the case under consideration, it is obvious that the"spindle" is not an integral part of the
machine patented by the plaintiffs on the ground that it was eliminated from
theirpatent inasmuch as it was expressly excluded in theirapplication, as evidenced by the aforesaid
Exhibit 41.Wherefore, reiterating that the defendant cannot be held civilly liable for alleged
infringement of the patent upon which the present action is based on the ground that there is
no essential part of the machine manufactured and sold by him, which was unknown to
the public in the Province of Davao at the time the plaintiffs applied for and
obtained their patent for improved hemp stripping machines, the judgment appealed from is hereby
affirmed, with the costs against the plaintiffs-appellants. So ordered.

Frank V Kosuyama59 Phil 206

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