Facts:: 11. Gsell vs. Yap-Jue (G.R. No. 4720)

11. Gsell vs. Yap-Jue (G.R. No.
4720)
Facts:
Plaintiff filed a contempt proceeding against the defendant alleging that the latter is still engaged in
unlawful manufacture of industrial product protected by a patent in favor of the plaintiff – an act
contrary to a prior judgement ordering the defendant a perpetual injunction restraining its infringement
of the said manufacturing of industrial product, which reads:
“It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle
by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by
patent No. 19228, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell —"
The aforementioned Patent No. 19228 expressly provides that it shall be for the industrial product "cane
handles for walking sticks and umbrellas, curved by means of a small lamp or blowpipe, fed by
petroleum or mineral fuel.”
However, the defendant still continue to manufacture the aforementioned industrial product identical
to that of the plaintiff’s, except only that former substituted for a lamp fed with petroleum or mineral
oil, lamp fed with alcohol.
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:
No, the acts done by the defendant were not clearly and manifestly contrary to the precise terms of the
prohibition.
According to the express language of the judgment, the prohibition is against the manufacture of canes
and umbrellas with curved handles by means of the use of a cool or mineral oil-burning lamp or
blowpipe and the parties have stipulated that the defendant did not use a coal or mineral oil-burning
lamp but an alcohol-burning lamp.
12. Frank & Gohn vs. Benito (G.R. No. 27293)
FACTS:
Plaintiffs, owners of a patent, allege that the defendant manufactured a hemp-stripping machine in
which, without authority from the plaintiffs, and 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. Plaintiffs alleged that using of such machine in the stripping of hemp is in violation of, and in
conflict with, plaintiffs' patent, together with its conditions and specifications.
With that, the plaintiffs filed an action for injunction and damages be instituted against Benito.
Respondent contends that it had no prior knowledge of the prior existence of the hemp-stripping
invention and also defendant had no intention to copy the same.
The defendant demurred to the complaint upon the ground that the facts alleged therein do not
constitute a cause of action, that it is ambiguous and vague, and that it was error to make William Henry
Gohn plaintiff.
Issue:
Who has the burden of proof to substantiate a charge of infringement?
Ruling:
The burden of proof to substantiate a charge of infringement is with the plaintiff. A presumption of its
validity and correctness arise whenever the patent is presented as an evidence. The decision of the
Commissioner of Patents in granting the patent is always presumed to be correct. The burden then shifts
to the defendant to overcome by competent evidence this legal presumption.
The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of
its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the
recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United
States ruled “an improper cannot appropriate the basic patent of another, and if he does so without
license is an infringer, and may be used as such. It is well established that an improver cannot
appropriate the basic patent of another and that the improver without a license is an infringer and may
be sued as such.”
13. Godines vs. Court of Appeals (G.R. No. 97343)
Facts:
Respondent company acquired a letter patent issued to one Magdalena Villaruz which for a utility model
for hand tractor or power tiller.
Respondent discovered that petitioner was manufacturing the same power tillers as they have.
Respondent thus filed a complaint for patent infringement and unfair competition against petitioner
Godines which both the trial court and CA held petitioner liable for infringement
Issue:
Whether or not petitioner infringes the patent of the private respondent.
Ruling:
Yes.
The following are the tests to determine infringement:
(a) literal infringement; and (b) the doctrine of equivalents.
Literal infringement involves:, “. . . 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. It appears from
the observation of the trial court that these claims of the patent and the features of the patented utility
model were copied by petitioner: In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same. Viewed from any perspective
or angle, the power tiller of the defendant is identical and similar to that of the turtle power tiller of
plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually
the same. In operation, the floating power tiller of the defendant operates also in similar manner as the
turtle power tiller of plaintiff.
Petitioner’s argument that his power tillers were different from private respondent’s is that of a
drowning man clutching at straws, the courts have adopted the doctrine of equivalents.
According to this doctrine, “(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.”
In this case, the two power tillers will show that they will operate on the same fundamental principles.

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11. Gsell vs. Yap-Jue (G.R. No.

12. Frank & Gohn vs. Benito (G.R. No. 27293)

Who has the burden of proof to substantiate a charge of infringement?

13. Godines vs. Court of Appeals (G.R. No. 97343)

Whether or not petitioner infringes the patent of the private respondent.

(a) literal infringement; and (b) the doctrine of equivalents.

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