055 - Sapalo Digest Compiled

koche roducts, Inc. v.
8o|ar harmaceut|ca|s (1984) (ualmane Lhe Sleeplng lll)

uocLrlne:
1he uS aLenLs Law prohlblLs, on lLs face, any and all uses of a paLenLed lnvenLlon.
1he experlmenLal use" excepLlon ls a narrow one, LhaL ls, lL musL sLrlcLly be for amusemenL, Lo
saLlsfy ldle curloslLy, or for phllosophlcal lnqulry and noL for any buslness reasons, elLher
prlnclpally or lncldenLally.
lacLs:
8oche was Lhe asslgnee of Lhe rlghLs ln u.S. aLenL no. 3,299,033 (Lhe '033 paLenL). Cne of Lhe
chemlcal compounds clalmed ln Lhe '033 paLenL ls flurazepam hydrochlorlde (flurazepam hcl), Lhe acLlve
lngredlenL ln 8oche's successful brand name prescrlpLlon sleeplng plll "ualmane". 8olar became
lnLeresLed ln markeLlng, afLer Lhe '033 paLenL explred, a generlc drug equlvalenL Lo ualmane. 8ecause a
generlc drug's commerclal success ls relaLed Lo how qulckly lL ls broughL on Lhe markeL afLer a paLenL
explres, and because approval for an equlvalenL of an esLabllshed drug can Lake more Lhan 2 years,
8olar, noL walLlng for Lhe '033 paLenL Lo explre, lmmedlaLely began lLs efforL Lo obLaln federal approval
Lo markeL lLs generlc verslon of ualmane. 8ecause of Lhls, 8oche flled a case for ln[uncLlon Lo en[oln
8olar, from Laklng, durlng Lhe llfe of a paLenL, Lhe sLaLuLory and regulaLory sLeps necessary Lo markeL,
afLer Lhe paLenL explred, a drug equlvalenL Lo a paLenLed brand name drug. 8oche argued LhaL Lhe use
of a paLenLed drug for federally mandaLed premarkeLlng LesLs ls a use" ln vlolaLlon of Lhe paLenL laws.
8olar argues LhaL lLs lnLended use of flurazepam hcl ls excepLed from Lhe use" prohlblLlon. lL clalms Lwo
grounds for excepLlon: llrsL, Lhe flrsL ground ls based on a llberal lnLerpreLaLlon of Lhe LradlLlonal
experlmenLal use excepLlon. lL argued LhaL lnfrlngemenL only happens lf Lhe acLlvlLles belng conLesLed
are hosLlle Lo Lhe pecunlary lnLeresL of Lhe paLenLee. An unauLhorlzed sale of Lhe lnvenLlon ls always
such an acL. 8uL Lhe manufacLure or Lhe use of Lhe lnvenLlon may be lnLended only for oLher purposes,
and produce no pecunlary resulL. 1hus where lL ls made or used as an experlmenL, wheLher for Lhe
graLlflcaLlon of sclenLlflc LasLes, or for curloslLy, or for amusemenL, Lhe lnLeresLs of Lhe paLenLee are noL
anLagonlzed, Lhe sole effecL belng of an lnLellecLual characLer ln Lhe promoLlon of Lhe employer's
knowledge or Lhe relaxaLlon afforded Lo hls mlnd. 8uL lf Lhe producLs of Lhe experlmenL are sold, or used
for Lhe convenlence of Lhe experlmenLor, or lf Lhe experlmenLs are conducLed wlLh a vlew Lo Lhe
adapLaLlon of Lhe lnvenLlon Lo Lhe experlmenLor's buslness, Lhe acLs of maklng or of use are vlolaLlons of
Lhe rlghLs of Lhe lnvenLor and lnfrlngemenLs of hls paLenL. ln reference Lo such employmenLs of a
paLenLed lnvenLlon Lhe law ls dlllgenL Lo proLecL Lhe paLenLee, and even experlmenLal uses wlll be
someLlmes en[olned Lhough no ln[ury may have resulLed admlLLlng of poslLlve redress. 1he second
ground 8olar ralses ls LhaL publlc pollcy favors generlc drugs and Lhus mandaLes Lhe creaLlon of a new
excepLlon ln order Lo allow luA (unlLed SLaLes lood and urug AdmlnlsLraLlon) requlred drug LesLlng.
8olar argues LhaL Lhe paLenL laws are lnLended Lo granL Lo lnvenLors only a llmlLed 17-year properLy
rlghL Lo Lhelr lnvenLlons so LhaL Lhe publlc can en[oy Lhe beneflLs of compeLlLlon as soon as posslble,
conslsLenL wlLh Lhe need Lo encourage lnvenLlon. 1he luCA (Lhe lederal lood, urug, and CosmeLlc AcL),
8olar conLends, was only lnLended Lo assure safe and effecLlve drugs for Lhe publlc, and noL Lo exLend a
pharmaceuLlcal company's monopoly for an lndeflnlLe and subsLanLlal perlod of Llme whlle Lhe luA
conslders wheLher Lo granL a pre-markeLlng clearance. 8ecause Lhe luCA (whlch ls enacLed alLer)
affecLed prevalllng law, namely Lhe aLenL AcL, 8olar argues LhaL Lhe paLenL laws should apply Lo drugs
dlfferenLly.
lssue:
WCn Lhe llmlLed use of a paLenLed drug for LesLlng and lnvesLlgaLlon sLrlcLly relaLed Lo luA drug
approval requlremenLs durlng Lhe Lerm of Lhe paLenL consLlLuLe a use whlch, unless llcensed, Lhe paLenL
sLaLuLe makes acLlonable.
Peld/8aLlo:
?LS. Whoever w|thout author|ty makes, uses or se||s any patented |nvent|on, w|th|n the Un|ted States
dur|ng the term of the patent, |nfr|nges the patent. lL ls beyond argumenL LhaL performance of only one
of Lhe Lhree enumeraLed acLlvlLles ls paLenL lnfrlngemenL. lL ls well-esLabllshed, ln parLlcular, LhaL Lhe
use of a paLenLed lnvenLlon, wlLhouL elLher manufacLure or sale, ls acLlonable. 1hus, Lhe paLenLee does
noL need Lo have any evldence of damage or losL sales Lo brlng an lnfrlngemenL acLlon. SecLlon 271(a) of
Lhe uS aLenLs Law prohlblLs, on lLs face, any and a|| uses of a paLenLed lnvenLlon. Moreover, 8olar's
argumenL ls acLually mlsleadlng. uesplLe 8olar's argumenL LhaL lLs LesLs are "Lrue sclenLlflc lnqulrles" Lo
whlch a llLeral lnLerpreLaLlon of Lhe experlmenLal use excepLlon loglcally should exLend, Lhe
experlmenLal use excepLlon Lruly narrow, and wlll noL expanded under Lhe presenL clrcumsLances ln
LruLh 8o|ar's |ntended "exper|menta|" use |s so|e|y for bus|ness reasons and not for amusement, to
sat|sfy |d|e cur|os|ty, or for str|ct|y ph||osoph|ca| |nqu|ry. 8olar's lnLended use of flurazepam hcl Lo
derlve luA requlred LesL daLa ls Lhus an lnfrlngemenL of Lhe '033 paLenL. 8o|ar may |ntend to perform
"exper|ments," but un||censed exper|ments conducted w|th a v|ew to the adapt|on of the patented
|nvent|on to the exper|mentor's bus|ness |s a v|o|at|on of the r|ghts of the patentee to exc|ude others
from us|ng h|s patented |nvent|on. lL ls obvlous here LhaL lL ls a mlsnomer Lo call Lhe lnLended use de
mlnlmls. lL ls no Lrlfle ln lLs economlc effecL on Lhe parLles even lf Lhe quanLlLy used ls small. 1he
experlmenLal use rules should noL be consLrued so broadly as Lo allow a vlolaLlon of Lhe paLenL laws ln
Lhe gulse of "sclenLlflc lnqulry," when LhaL lnqulry has deflnlLe, cognlzable, and noL lnsubsLanLlal
commerclal purposes.
As Lo Lhe second argumenL, slmply because a laLer enacLed sLaLuLe affecLs ln some way an earller
enacLed sLaLuLe ls poor reason Lo ask Lhe courL Lo rewrlLe Lhe earller sLaLuLe. 8epeals by lmpllcaLlon are
noL favoured. 8ecause "laws are presumed Lo be passed wlLh dellberaLlon, and wlLh full knowledge of all
exlsLlng ones on Lhe same sub[ecL," lL musL be presumed Congress was aware LhaL Lhe luCA would
affecL Lhe earnlng poLenLlallLy of a drug paLenL, and chose Lo permlL lL. lL musL be noLed LhaL durlng
Congress' dellberaLlons on Lhe 1962 amendmenLs Lo Lhe luCA, lL consldered Lhe relaLlonshlp and
lnLeracLlon of Lhe paLenL laws wlLh Lhe drug laws. lurLher, no maLLer how persuaslve Lhe pollcy
argumenLs are for or agalnsL Lhe laws, Lhe courL ls noL Lhe proper forum ln whlch Lo debaLe Lhem.
Where Congress has Lhe clear power Lo enacL leglslaLlon, Lhe courL's role ls only Lo lnLerpreL and apply
LhaL leglslaLlon.
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PATENTS DIGESTS ALS2014B ATTY. BARANDA

ALS2014B Page 59 of 99
Quanta Computer Inc. v. LG Electronics (2008)
Facts:
LG Electronics (LGE), the plaintiffs in the case owned patents on microprocessors, chipsets, systems containing
such microprocessors and chipsets and methods of operating systems containing such chipsets and microprocessors. LGE
had granted a license under the patents to Intel which contained no limitations on how Intel could exploit its rights under
the license and specifically stated that notwithstanding anything to the contrary contained in this Agreement, the parties
agree that nothing herein shall in any way limit or alter the effect of patent exhaustion that would otherwise apply when a
party hereto sells any of its Licensed Products. By a separate agreement, Intel agreed that it would give notice to its
customers that the license given to Intel by LGE and which covered the product sold by Intel to its customers does not
extend expressly or by implication to any product you make by combining an Intel product with any non-Intel product.
Intel manufactured microprocessors and chipsets under the agreements and sold them to Quanta which
incorporated them into systems (i.e. computers) covered by the licensed patents. Intel gave Quanta the notice required
under its agreement with LGE, but Quanta nevertheless combined the purchased microprocessors and chipsets with
parts not obtained from Intel. LGE sued Quanta for infringement of its claims relating to the systems and methods
but not for infringement of patents relating to the microprocessors or chipsets themselves.
The district court found that LGEs rights in the system patents had been exhausted by Intels sale of
microprocessors that could effectively only be used in the patented systems, but, relying on some bald statements in
earlier Federal Circuit decisions, held that sale of a product could not exhaust rights in a method patent. In this context,
the court pointed out the differences between the exhaustion doctrine and that of an implied license in the following
terms:
The patent exhaustion doctrine applies when a patentee has, in essence, sold its statutory right to
exclusivity through the unrestricted sale or license of the patent. A patentee who has not abandoned its statutory
right to exclude others from the use of its patent may nevertheless, through conduct that induces reliance, grant to
particular parties an implied license to practice the patent.
The court held that there was no implied license in the present case because of the notice given to Quanta
by Intel.
On appeal to the Court of Appeals for the Federal Circuit, that court simply stated that there was no exhaustion of
rights in patents to either the systems or the methods. The exhaustion doctrine does not apply to an expressly conditional
sale or license.
According to Quanta, LGEs and Intels rights to restrict the use of articles after an authorized sale, were confined
to what could be secured under contract law in the same way as for articles that had not been patented. Such a rule was
also correct in making sound economic and policy sense: it required the patent owner (or manufacturing licensee) to
extract the full value of its patent rights in one negotiation with the first purchaser, which can then share the burden with
the rest of the distribution chain by charging a higher price. Down-stream purchasers were then safe to use what they had
bought without fear of being sued for patent infringement. Quanta also argued that the exhaustion doctrine was equally
applicable to method claims and system claims when the articles sold had no other reasonable use than in the systems and
methods claimed and that this had been found by the district court and was unchallenged by the Federal Circuit.
According to LGE the traditional exhaustion doctrine is that the unconditional sale of a patented article exhausts
patent rights in that article, but not in other patented systems of which that article might become a component. LGE
further argued that the exhaustion doctrine could only apply to acts of selling or using a patented article obtained from the
patent owner or its licensee. It could not apply to the separate right of making a patented system, which of necessity had to
be a different invention from the invention embodied in the article that had been sold. What Quanta was doing in the
present case was making the systems covered by the patents in suit. What Quanta was seeking to do was to trivialize the
value of combination inventions by requiring patent owners to extract full economic value of all their the patent rights
from the original purchaser of any component that was to be used in a patented combination. This would discourage
innovation and rational risk and cost allocations among different users of technology.

The United States government filed an amicus brief in support of Quanta arguing that any restrictions on
downstream use or resale of an article embodying patentees invention had to be a matter of contract law rather than
patent law. Those who acquired valid title to such an article also acquire the right to use it and sell it without fear of patent
infringement claims. According to the governments argument, the Court of Appeals for the Federal Circuit had been
wrong to create an exception from the traditional rule on patent exhaustion by holding that it could be avoided by
imposing conditions on the sale. Creation of such an exception meant that the patent owner could demand royalties along
the entire length of the distribution chain. This went beyond what the patent statute was intended to provide and gave
inadequate scope to the antitrust laws.
Held/Ratio:
The Supreme Courts decision was unanimous and delivered by Justice Thomas. It succinctly disposed of
arguments that there could be no exhaustion of patent rights just because the claims in question were directed to a
combination including the article sold or to a method involving use of the article sold.
On the question of whether sale of an article by the patent owner or its licensee could exhaust rights in method claims, the
court held:
Nothing in this Courts approach to patent exhaustion supports LGEs arguments that method patents cannot be
exhausted. Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine. Patentees
seeking to avoid patent infringement could simply draft patent claims to describe a method rather than an apparatus.
This case illustrates the danger of allowing such an end run around exhaustion. On LGEs theory, although Intel is
authorized to sell a completed computer system that practices the LGE patents, any downstream purchasers of the system
could nevertheless be liable for patent infringement. We therefore reject LGEs argument that method claims, as a
category, are never exhaustible.
On the question of whether sale of a component in a patented combination could exhaust rights in such method or
combination patents, the court held that the products sold by Intel:
constitute a material part of the patented invention and all but completely practice the patent. the incomplete
article substantially embodies the patent because the only step necessary to practice the patent is the application of
common practices or standard parts. Everything inventive about each patent is embodied in the [products sold by Intel].
Quanta was not required to make any creative or inventive decision when it added [these products]. Indeed Quanta had
no alternative but to follow Intels instructions in incorporating [such] products into its computers because it did not know
their internal structure, which Intel guards as a trade secret.
The mere fact that the microprocessors and chipsets were claimed in different patents from those which were being sued
upon did not help either. The Court noted:
With regard to LGEs argument that exhaustion does not apply across patents, we agree on the general principle. The sale
of a device that practices patent A does not, by virtue of practicing patent A exhaust patent B. But if the device practices
patent A, while substantially embodying patent B, its relationship to patent A does not prevent exhaustion of patent B.
(Emphasis in the original).
This then left the question of whether the initial sale was of a type that could trigger patent exhaustion. Well, because the
license from LGE to Intel (as opposed to any other agreement) did not in itself impose any conditions on Intel and because
Intel did not impose any conditions on its purchasers, the initial sale was an unconditional one and so clearly fell within
any definition of the type of sale that would trigger patent exhaustion.

United States v. Unives Lens Co. (1942)
QUICK FACTS: UC has a patent over the finished multi-focal lenses. However, it delivers to licensees (wholesalers and
finishing retailers) only blank lenses so that these 2 groups will be the ones to make the finished lenses. UC has a
licensing system which imposes fixed prices on the finished products sold by its licensees. Is such system valid? Is it
covered by patent monopoly? NO.
The patentee may surrender his monopoly in whole by the sale of his patent, or in part by the sale of an article
embodying the invention. His monopoly remains so long as he retains the ownership of the patented article. But
sale of it exhausts the monopoly in that article, and the patentee may not thereafter, by virtue of his patent, control
the use or disposition of the article.
Doctrines:
1. Sale by a patent owner of an article which is capable of use only in practicing the patent is a relinquishment of
the patent monopoly with respect to that article.
2. A patent does not confer the right to control the resale prices of the patented articles after their sale by the
patentee.
3. That, with the sale of the lens blanks for use in manufacturing lenses, the patent owner conferred on the buyer the
right to practice the patent with respect to the blanks, and parted with the right to assert its patent monopoly with
respect to them, and could no longer control the price at which they might be sold in their unfinished, or their
finished, forms.
Facts:
Univis Lens Company was the owner of a number of patents (and trademarks) relating to multi-focal lenses. In
1931, it organized Univis Corporation (UC). After the organization of the latter, the Lens Company transferred all its
interest in the patents involved. Since then, the Corporation set up the LICENSING SYSTEM which is in issue in this
case.
Under the SYSTEM, UC licenses the Lens Company to manufacture lens blanks and sell them to designated
licensees of UC, upon payment of an agreed royalty (50 cents a pair) to UC.
Description of the lens blanks: rough opaque pieces of glass of suitable size, design, and composition for use,
when ground and polished, as multi-focal lenses in eyeglasses. Each blank is composed of two or more pieces of glass of
different refractive power of such size, shape, and composition, and so disposed that, when fused together in the blank, it
is said to conform to the specifications and claims of some one of the UC's patents.
UC issues 3 classes of licenses: (1) licenses to Wholesalers, (2) to finishing retailers, and (3) to prescription
retailers.
1. The license to wholesalers authorize the latter to purchase the blanks from Lens Company, finish them by
grinding and polishing, and sell them to prescription licensees only at a price fixed by UC. Similarly, the license
to finishing retailers allows the latter to purchase the blanks from Lens Company and sell them to their customers
at prices prescribed by UC.
2. The license to prescription retailers (PR), (who are without facilities for grinding and finishing the lenses by who
prescribe and adjust glasses for their customers), are signed by UC only when prescription retailers agree to sell
the only finished lenses to customers and only at prices prescribed by UC. Also, not everyone can become
prescription retailers. UC screens its prescription retailers so that those who are price-cutters would not be
qualified to offer their product.
3. IN SUM, UC retains control of the prices and of who can be licensed up to the prescription retailer.
The parties in this case are the government and the UC. The government is praying for an injunction for alleged
violation of sections 1 and 3 of the Sherman Act which make unlawful any contract, combination or conspiracy in
restraint of trade or commerce among the states.

The LICENSING SYSTEM of UC is allegedly violating these provisions.
The District court found that the patents are for finished lens, and that, consequently, the grinding and polishing of
the lenses by the wholesalers and finishing retailers after they get the blank lens, is part of the manufacturing of the
patented product. The court thought that, without the granted license, the final step in finishing the lens would infringe
the patent. For this reason, UC could validly condition its licenses upon compliance with the fixed prices. But it held that
the prescription retailer licenses (3rd type) are not within the patent monopoly, and are proscribed by the Sherman Act.
Issues:
1. WON the SYSTEM (for licensing the manufacture and sale of patented multifocal eyeglass lenses) of UC is
excluded by the patent monopoly --- YES
Held/Ratio:
1. The mere fact that the licensee takes the final step in the manufacture of the patented product, it does not follow
that the patentee can control the price at which the finished lens is sold. (So, the system fixing the prices is not
valid.)
Thus, the sale of a blank lens by the patentee or his licensee is thus, in itself, a complete transfer of ownership of
the blank and a license to complete the final stage of the patent procedure or production of the lenses.
In the present case, the entire consideration and compensation is the purchase price paid by the finishing licensee
to UC. The question is WON the patentee, no longer aided by the patent, may lawfully exercise control
over the disposition of the patented article after the sale to the licensee. --- NO
The declared purpose of the patent law is to promote the progress of science and the useful arts by granting to the
inventor a limited monopoly, the exercise of which will enable him to secure the financial rewards for his
invention.
The full extent of the monopoly is the patentee's "exclusive right to make use, and vend the invention or
discovery."
The patentee may surrender his monopoly in whole by the sale of his patent, or in part by the sale of an
article embodying the invention. His monopoly remains so long as he retains the ownership of the patented
article. But sale of it exhausts the monopoly in that article, and the patentee may not thereafter, by virtue
of his patent, control the use or disposition of the article.
Hence, the patentee cannot control the resale price of patented articles which he has sold, either by resort to an
infringement suit or, consistently with the Sherman Act by stipulating for prince maintenance by his vendees.
After selling the blank lenses, he has thus arted with his right to assert the patent monopoly with respect to it and
is no longer free to control the price at which it may be sold, either in its unfinished or finished form.
No one would doubt that, if the patentee's licensee had sold the blanks to a wholesaler or finishing retailer,
without more, the purchaser would not infringe by grinding and selling them. The added stipulation by the
patentee fixing resale prices derives no support from the patent, and must stand on the same footing under the
Sherman Act as like stipulations with respect to unpatented commodities.
Whether the licensee sells the patented article in its completed form or sells it before completion for the purpose
of enabling the buyer to finish and sell it, he has equally parted with the article, and made it the vehicle for
transferring to the buyer ownership of the invention with respect to that article. To that extent, he has parted with
his patent monopoly and has received the benefit of the patent law when he received the purchase price.
If he were permitted to control the price at which it could be sold by others, he would extend his monopoly quite
as much in the one case as in the other, and he would extend it beyond the fair meaning of the patent statutes and
the construction which has hitherto been given to them.
Thus, the price-fixing features of the licensing system which are not within the protection of the patent law violate
the Sharman Act (save only as to the fair trade agreeements). Agreements for price maintenance of articles
moving in interstate commerce are, without more, unreasonable restraints within the meaning of the Sherman Act

because they eliminate competition, and restrictions imposed by the seller upon resale prices of articles moving in
interstate commerce.
Roche Products v. Bolar Pharmaceuticals (1984)

Creser Precision System v. Court of Appeals (1998)
Doctrine:
Only the patentee or his successors-interest may file an action for infringement.
There can be no infringement until a patent has been issued, since whatever right one has to the invention covered
by the patent arises alone from the grant of patent.
Facts:
Floro International Corp. is a domestic corporation engaged in the manufacture, production, distribution and sale
of military armaments, munitions, airmunitions and other similar materials. On Jan. 23, 1990, the Bureau of Patents,
Trademarks and Technology Transfer (BTTT) granted a Letter Patent No. UM-6938 covering an aerial fuze which was
published in the Sept-Oct 1990 Bureau of Patents Official Gazette.
Sometime in November 1993, Floro Intl, through its President, Gregory Floro Jr., discovered that Creser Precision
Systems submitted samples of its parented aerial fuze to the Armed Forces of the Philippines (AFP) for testing. He
learned that petitioner was claiming the aerial fuze as its own and planning to bid and manufacture the same commercially
without license or authority from Floro Intl. To protect its right, Floro Intl. sent a letter to Creser advising it from its
existing patent and its rights thereunder, warning Creser of a possible court action and/or application for injunction,
should it proceed with the scheduled testing by the military.
In response to the demand, Creser filed a complaint for injunction and damages arising from the alleged
infringement before the RTC of QC. The complaint alleged, among others: that petitioner is the first, true and actual
inventor of an aerial fuze denominated as Fuze, PDR 77 CB4 which is developed as early as December 1981
under the Self-Reliance Defense Posture Program (SDRP) of the AFP; that sometime in 1986, Creser began supplying the
AFP with the said aerial fuze; that Floros aerial fuze is identical in every respect to Cresers fuze; and that the only
difference between the two are miniscule and merely cosmetic in nature.
RTC issued a TRO and eventually a writ of preliminary injunction in favor of Creser. CA reversed.
Creser argues that it can file, under Section 42 of the Patent Law, an action for infringement not as patentee but as
entity in possession of a right, title or interest to the patented invention. It claims that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent, such absence does not bar the first true and actual
inventor of the patented invention from suing another who was granted a patent in a suit for declaratory relief recognized
under Patent Laws.
Issue:
1. Whether or not Creser correctly filed a complaint for injunction and damages against Floro Intl?
Held/Ratio:
1. NO. Section 42 of the Patent Law (RA 165) provides:
Sec.42 Civil action for infringement-Any patentee, or anyone possessing any right, title or interest
in and to the patented invention, whose rights have been infringed, may bring a civil action before
the proper CFI (now RTC), to recover from the infringer damages sustained by reason of the
infringement and to secure an injunction for the protection of his right. Xxx
Under this law, only the patentee or his successors-interest may file an action for infringement. There can
be no infringement until a patent has been issued, since whatever right one has to the invention covered by
the patent arises alone from the grant of patent. In short, a person or entity who has not been granted letters
patent over an invention and has not acquired any right or title thereto either as assignee or as licensee, has no
cause of action for infringement because the right to maintain an infringement suit depends on the existence of the
patent.
Creser admits it has no patent over it aerial fuze. Therefore, it has no legal basis or cause of action to institute
petition for injunction and damages arising from the alleged infringement. While Creser claims to be the first

inventor of the aerial fuze, still it has no right of property over the same upon which it can maintain a suit unless it
obstains a patent therefor. Under American Jurisprudence, an inventor has no common-law right to a monopoly of
his invention. He has the right to make, use and vend his own invention, but if he voluntarily discloses it, such as
by offering it for sale, the world is free to copy and use it with impunity. A patent, however, gives the inventor the
right to exclude all other. As patentee, he has the exclusive right of making, using, or selling the invention.
Thus, Creser cannot file a declaratory judgment or injunctive suit on the alleged patent invalidity against Floro
because such remedy is available only to the patent holder or his successors-in-interest. The remedy of Creser
would have been to file a petition for cancellation of the patent and raise as a ground therefor that the person to
whom the patent was issued is not the true and actual inventor. Under Sec.28, this action for cancellation is
available within 3 years from the publication of said patent with the Director of Patents.
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:"-;$: 1hls case lnvolves a chemlcal compound known Lo sclenLlsLs as "3, 4-dlchloroproplonanlllde" and
referred Lo ln Lhe chemlcal lndusLry as propanll. ln Lhe laLe 1930's, lL was dlscovered LhaL Lhls compound
had properLles LhaL made lL useful as a selecLlve, posL-emergence herblclde parLlcularly well sulLed for
Lhe culLlvaLlon of rlce. lf applled ln Lhe proper quanLlLles, propanll kllls weeds normally found ln rlce
crops wlLhouL adversely affecLlng Lhe crops Lhemselves. lL Lhus permlLs spraylng of general areas where
Lhe crops are already growlng, and ellmlnaLes Lhe necesslLy for hand weedlng or floodlng of Lhe rlce
flelds. 1he lnlLlal conLender for paLenL monopoly of Lhls propanll ls MosanLo Co., whlch recelved Lhe
paLenL granL ln 1968, buL was laLer on proved Lo be lnvalld ln a case agalnsL 8ohm & Paas Co. for dlrecL
lnfrlngemenL where Lhe paLenL was declared lmpllclLly revealed ln prlor arL. 1hls lnvalldaLlon cleared Lhe
way for 8ohm & Paas Co. Lo obLaln a paLenL on Lhe meLhod or process for applylng propanll, whlch was
lssued ln 1974 (Wllson aLenL). 1he peLlLloners are chemlcal manufacLurers and Lhey have
manufacLured and sold propanll for appllcaLlon Lo rlce crops slnce before 8ohm & Paas recelved lLs
paLenL. 1hey markeL Lhe chemlcal ln conLalners on whlch are prlnLed dlrecLlons for appllcaLlon ln
accordance wlLh Lhe meLhod clalmed ln Lhe Wllson aLenL, and desplLe Lhelr knowledge LhaL farmers
purchaslng Lhelr producLs would lnfrlnge on Lhe paLenLed meLhod by applylng propanll Lo Lhelr crops,
uawson Chemlcal conLlnued manufacLurlng and selllng Lhe producL. 1hus, 8ohm & Paas flled Lhls sulL
agalnsL uawson Chemlcal, seeklng ln[uncLlve rellef agalnsL peLlLloners on Lhe ground LhaL Lhelr
manufacLure and sale of propanll lnLerfered wlLh lLs paLenL rlghLs. And furLher alleglng LhaL noL only LhaL
peLlLloners conLrlbuLed Lo lnfrlngemenL by farmers who purchased and used peLlLloners' propanll, buL
also LhaL Lhey acLually lnduced such lnfrlngemenL by lnsLrucLlng farmers how Lo apply Lhe herblclde.
eLlLloners requesLed llcenses Lo pracLlce Lhe paLenLed meLhod buL 8ohm & Paas refused Lo granL such
llcenses. WlLh Lhls, peLlLloners ralsed a defense of paLenL mlsuse and counLerclalmed for alleged
anLlLrusL vlolaLlons by respondenL.
<$$=*: WheLher 8ohm & Paas ls precluded from obLalnlng rellef agalnsL lnfrlngers of lLs paLenL due Lo an
aLLempL Lo lllegally exLend lLs paLenL monopoly
3*.>: ?@. 1he docLrlnes of conLrlbuLory lnfrlngemenL and paLenL mlsuse have long and lnLerrelaLed
hlsLorles. 1he ldea LhaL a paLenLee should be able Lo obLaln rellef agalnsL Lhose whose acLs faclllLaLe
lnfrlngemenL by oLhers and Lhe ldea LhaL a paLenLee should be denled rellef agalnsL lnfrlngers lf he has
aLLempLed lllegally Lo exLend Lhe scope of hls paLenL monopoly have been reclLed ln a number
[urlsprudence. 1he Lwo concepLs, conLrlbuLory lnfrlngemenL and paLenL mlsuse, ofLen are [uxLaposed,
because boLh concern Lhe relaLlonshlp beLween a paLenLed lnvenLlon and unpaLenLed arLlcles or
elemenLs LhaL are needed for Lhe lnvenLlon Lo be pracLlced. lL ls lmporLanL Lo noLe 33 uSC 271 (c) and
(d):
"(c) Whoever $*..$ " -%+A%&*&; %B " A";*&;*> +"-),&*C +"&=B"-;=D*C -%+E,&";,%& %D -%+A%$,;,%&C %D " +";*D,".
%D "AA"D";=$ B%D =$* ,& AD"-;,-,&F " A";*&;*> AD%-*$$C -%&$;,;=;,&F " +";*D,". A"D; %B ;)* ,&0*&;,%&, G&%#,&F ;)*
$"+* ;% E* *$A*-,"..H +">* %D *$A*-,"..H ">"A;*> B%D =$* ,& "& ,&BD,&F*+*&; %B $=-) A";*&;, and &%; " $;"A.*
"D;,-.* %D -%++%>,;H %B -%++*D-* sulLable for subsLanLlal nonlnfrlnglng use, shall be llable as a -%&;D,E=;%DH
,&BD,&F*D."
"(d) No patent owner otherw|se ent|t|ed to re||ef for |nfr|ngement or contr|butory |nfr|ngement of a patent sha||
be den|ed re||ef or deemed gu||ty of m|suse or |||ega| extens|on of Lhe paLenL rlghL by reason of hls havlng done
one or more of Lhe followlng: (1) derlved revenue from acLs whlch lf performed by anoLher wlLhouL hls consenL
would consLlLuLe conLrlbuLory lnfrlngemenL of Lhe paLenL, (2) llcensed or auLhorlzed anoLher Lo perform acLs whlch
lf performed wlLhouL hls consenL would consLlLuLe conLrlbuLory lnfrlngemenL of Lhe paLenL, (3) soughL Lo enforce
hls paLenL rlghLs agalnsL lnfrlngemenL or conLrlbuLory lnfrlngemenL."
1he conLrlbuLory lnfrlngemenL docLrlne exlsLs Lo proLecL paLenL rlghLs from subverslon by Lhose who,
wlLhouL dlrecLly lnfrlnglng Lhe paLenL Lhemselves, engage ln acLs deslgned Lo faclllLaLe lnfrlngemenL by
oLhers. 1hls proLecLlon ls of parLlcular lmporLance ln slLuaLlons, as shown ln Lhe !"##"$% case, where
enforcemenL agalnsL dlrecL lnfrlngers would be dlfflculL, and where Lhe LechnlcallLles of paLenL law make
lL relaLlvely easy Lo proflL from anoLher's lnvenLlon wlLhouL rlsklng a charge of dlrecL lnfrlngemenL. ln Lhe
&%'$()* ,('-. cases, Lhe CourL held LhaL any aLLempL Lo conLrol Lhe markeL for unpaLenLed goods would
consLlLuLe paLenL mlsuse, even lf Lhose goods had no use ouLslde a paLenLed lnvenLlon.
1he court, |n th|s case be||eves that the |anguage and structure of the statute |end s|gn|f|cant support
to kohm & naas' content|on that, because 271(d) |mmun|zes |ts conduct from the charge of patent
m|suse, |t shou|d not be barred from seek|ng re||ef. SecLlon 271(c) ldenLlfles Lhe baslc dlvldlng llne
beLween conLrlbuLory lnfrlngemenL and paLenL mlsuse. lL adopLs a resLrlcLlve deflnlLlon of conLrlbuLory
lnfrlngemenL LhaL dlsLlngulshes beLween sLaple and nonsLaple arLlcles of commerce. lL also deflnes Lhe
class on nonsLaple lLems narrowly. 1he llmlLaLlons on conLrlbuLory lnfrlngemenL wrlLLen lnLo 271(c) are
counLerbalanced by llmlLaLlons on paLenL mlsuse ln 271(d). lor Lhe courL, the prov|s|ons of 271(d)
effect|ve|y confer upon the patentee, as a |awfu| ad[unct of h|s patent r|ghts, a ||m|ted power to
exc|ude others from compet|t|on |n nonstap|e goods. A paLenLee may sell a nonsLaple arLlcle hlmself
whlle en[olnlng oLhers from markeLlng LhaL same good wlLhouL hls auLhorlzaLlon. 8y dolng so, he ls able
Lo ellmlnaLe compeLlLors, and Lhereby Lo conLrol Lhe markeL for LhaL producL. Moreover, hls power Lo
demand royalLles from oLhers for Lhe prlvllege of selllng Lhe nonsLaple lLem lLself lmplles LhaL Lhe
paLenLee may conLrol Lhe markeL for Lhe nonsLaple good, oLherwlse, hls rlghL Lo sell llcenses for Lhe
markeLlng of Lhe nonsLaple good would be meanlngless, slnce no one would be wllllng Lo pay hlm for a
superfluous auLhorlzaLlon. kohm & naas' conduct |s not d|ss|m||ar |n e|ther nature or effect from the
conduct that |s thus c|ear|y embraced w|th|n 271(d). It se||s propan||, |t author|zes others to use
propan||, and |t sues contr|butory |nfr|ngers. 1hese are a|| protected act|v|t|es. kohm & naas does not
||cense others to se|| propan||, but noth|ng on the face of the statute requ|res |t to do so. 1o be sure,
Lhe sum effecL of 8ohm & Paas' acLlons ls Lo suppress compeLlLlon ln Lhe markeL for an unpaLenLed
commodlLy. 8uL, as Lhe courL has observed, ln Lhls, lLs conducL ls no dlfferenL from LhaL whlch Lhe
sLaLuLe expressly proLecLs. 1he one aspecL of 8ohm & Paas' behavlor LhaL ls noL expressly covered by
271(d) ls lLs llnkage of Lwo proLecLed acLlvlLles -- sale of propanll and auLhorlzaLlon Lo pracLlce Lhe
paLenLed process -- LogeLher ln a slngle LransacLlon.
lurLhermore, Lhere ls noLhlng ln Lhe leglslaLlve hlsLory Lo supporL Lhe asserLlon LhaL respondenL's
behavlor falls ouLslde Lhe scope of 271(d). 1o Lhe conLrary, respondenL has done noLhlng LhaL would
exLend lLs rlghL of conLrol over unpaLenLed goods beyond Lhe llne LhaL Congress drew. 8espondenL, Lo
be sure, has llcensed use of lLs paLenLed process only ln connecLlon wlLh purchases of propanll. 8uL
propanll ls a nonsLaple producL, and lLs herblcldal properLy ls Lhe hearL of respondenL's lnvenLlon.
8espondenL's meLhod of dolng buslness ls, Lhus, essenLlally Lhe same as Lhe meLhod condemned ln Lhe
!"#$%&' declslons, and Lhe leglslaLlve hlsLory reveals LhaL 271(d) was deslgned Lo reLreaL from !"#$%&'
ln Lhls regard.
C.R.Bard v. Advance Cardiovasuclar System (1990) (Contributory Infringement, catheters)
Doctrines:
To establish the direct infringement, it requires a two step analysis. First is a determination of the
scope of the claim at issue. Second is an examination of the evidence before the court to
ascertain whether use of the device would infringe the claim as interpreted.
To establish the direct infringement, it requires a two step analysis. First is a determination of the
scope of the claim at issue. Second is an examination of the evidence before the court to
ascertain whether use of the device would infringe the claim as interpreted.
Facts:
This is a case of claimed infringement of a method patent for a medical treatment. Advanced
Cardiovascular Systems, Inc. (ACS) was marketing the only perfusion catheter approved by the United
States Food and Drug Administration for use in coronary angioplasty. C.R. Bard, Inc. (Bard) sued ACS
for alleged infringement of U.S. Patent No. 4,581,017 ('017), application for which was filed in 1983 and
which was issued to Harvinder Sahota in 1986. Bard had purchased all rights to the '017 patent as of
December 1986.
The '017 patent relates to a method for using a catheter in coronary angioplasty. To illustrate, the
aorta, the body's largest artery, distributes the blood to smaller arteries throughout the body.
Atherosclerosis may cause these arteries to be progressively narrowed (stenosis) by the formation of
plaque within the arteries resulting in coronary artery disease. This decreases blood flow to the heart
muscle and may cause problems. Bypass surgery allows the grafting of a vein to the affected coronary
artery to bypass the stenosis. Percutaneous transluminal coronary angioplasty (PTCA), an alternative
procedure, involves inserting a deflated balloon dilation catheter through the patient's arteries to reach the
stenosis in the coronary artery. The balloon is inflated to dilate the stenosis and then deflated and
removed to restore blood flow to the heart. A difficulty associated with PTCA is that a prolonged
blockage of blood flow to the heart muscle in the course of the procedure, caused by the inflated balloon,
may itself result in angina or a heart attack. Typically during a PTCA, repeated inflations of the balloon,
each lasting from 60-90 seconds, are performed.
U.S. Patent No. '725, filed in 1982 and issued in 1984, discloses a catheter having a multiple
surgical cuff with an inflatable cuff member, and having a central lumen or channel containing side
window openings in fluid communication with the central lumen. The side openings allow blood to
circulate through the central lumen even while the inflatable cuff is inflated, thus avoiding blockage of
fluid flow. It discloses:
the side openings ... should be located at the level of the aorta to create the highest blood pressure
and to prevent the side openings ... from being closed laterally by an adherent small artery wall.
In 1983, inventor Sahota filed the '017 patent, claiming: (1) device claims for a catheter to
administer an angioplasty treatment and (2) method claims for the manner in which a surgeon would use
the catheter. All claims were rejected by the patent examiner. In particular, claim 4 was rejected, inter
alia, in view of the prior art '725 patent.
Following this rejection, the inventor modified certain claims. These modified claims were also
rejected. Following this rejection, the inventor removed all claims to a catheter, and claimed only
a method of administering an angioplasty. In twice amending claim 4, the inventor argued to the
examiner that "the proximal orifices which admit blood to the main lumen in the blood catheter [are]
`immediately adjacent said balloon'. Claim 4 of the application was ultimately allowed as claim 1 of the
'017 patent, and contained the "immediately adjacent" language.
Meanwhile, the ACS catheter is a balloon-type catheter having side openings in the main lumen
located near the proximal end of the balloon. The ACS catheter's main lumen is simply open past the
distal end of the balloon enabling blood to flow through the catheter while the balloon is inflated.
Bard argues that by selling its catheter for use by surgeons in angioplasty procedures, ACS is a
contributory infringer of Bard's method claim 1 in the '017 patent. Bard argues that the prior art '725
patent teaches the use of the catheter with the inlets (side openings) where the blood enters the tube
placed only in the aorta, whereas the '017 method in suit involves insertion of the catheter into the
coronary artery in such a manner that the openings "immediately adjacent [the] balloon fluidly connect
locations within [the] coronary artery surrounding [the] proximal and distal portions of [the] tube. Bard
argues, a surgeon, inserting the ACS catheter into a coronary artery to a point where an inlet at the
catheter's proximal end draws blood from the artery, infringes the '017 patent.
Issue:
Whether or not ACS is a contributory infringer.
Held/Ratio:
No. Case is remanded to trial court for further proceedings.
Section 271 of Title 35, United States Code, deals with infringement of patents; subsection (c)
specifies what is necessary to be a contributory infringer. For purposes of this case, the statute requires
that ACS sell a catheter for use in practicing the '017 process, which use constitutes a material part of the
invention, knowing that the catheter is especially made or adapted for use in infringing the patent, and
that the catheter is not a staple article or commodity of commerce suitable for substantial non-infringing
use.
Bard seeks to establish the requisite direct infringement by arguing that there is no evidence that
any angioplasty procedures using the ACS catheter would be non-infringing. Testing this assertion
requires a two step analysis. First is a determination of the scope of the claim at issue. Second is an
examination of the evidence before the court to ascertain whether use of the ACS catheter would infringe
the claim as interpreted.
Claim 1 of the '017 patent claims,
[a] method of administering an angioplasty treatment to a patient to produce acceptable blood flow
in a stenotic region of a coronary artery having restricted blood flow, comprising:inserting a tube
having an outer surface enclosing a main lumen terminating in a main axial orifice into said
coronary artery ...* * * * * *
channeling blood flow through the wall of said proximal portion of said main lumen immediately
adjacent said balloon to fluidly connect locations within said coronary artery surrounding said
proximal and distal portions of said tube while said balloon is inflated within said coronary artery
to conduct blood downstream from the portion of said coronary artery occluded by the inflated
balloon.
To fully understand this difference, it is important to note that the ACS catheter has a series of
ten openings in the tube near, and at the proximal end of, the balloon. The first of these openings the
one closest to the balloon is approximately six millimeters (less than ! inch) from the edge of the
proximal end of the balloon. The remainder are located along the main lumen at intervals, the furthest
from the balloon being 6.3 centimeters (approximately 2" inches) away.
It would appear that three possible fact patterns may arise in the course of using the ACS catheter
during a PTCA. The first pattern involves positioning the catheter such that all of its side openings are
located only in the aorta. This is clearly contemplated by the prior art '725 patent cited by the examiner.
In the second of the possible fact patterns, all of the side openings are located within the coronary artery.
This situation appears to have been contemplated by the '017 patent, the method patent at issue. In this
situation, it correctly can be said that blood flowing through the main lumen will "fluidly connect
locations within [the] coronary artery surrounding [the] proximal and distal portions of [the] tube." In the
third fact pattern, some of the side openings are located in the aorta and some are located in the artery.
The fact that ACS has added extra holes further from the balloon does not affect the conclusion
of infringement, as the patent does not require that all holes be "immediately adjacent" the balloon, nor
that the blood flowing through the balloon come solely from the coronary artery.
Aro Mfg. Co., Inc. v. Convertible Top Co. (1964) (Redefined doctrine of repair and reconstruction)

Doctrines:
The reconstruction of a patented entity, comprised of unpatented elements, is limited to such a
true reconstruction of the entity as to "in fact make a new article," after the entity, viewed as a
whole, has become spent.

Facts:
When a purchaser of a patented product replaces some components of that product (either because they
wore out or became unsatisfactory to the owner) should they have to pay royalties to the patentee? In
other words, is it a permissible repair or an impermissible reconstruction?

This case involves convertible tops found in sports cars and other vehicles. Over time, owners of
convertibles wanted to replace to fabric portion of the top because they became torn or discolored, often
due to bird shit. Rather than buy an entire new top (which would be quite expensive) they just wanted to
replace the fabric part of it. Aro Manufacturing is a corporation which supplies replacement cloth tops
that fit various car models. However, the convertible tops were covered by a patent and because Aro
declined to pay a royalty to the patentee, patent infringement litigation followed.

Issues:
1. W/N the replacement of the fabric on a convertible top constituted repair or reconstruction.

Held/Ratio:
1. REPAIR.

The decisions of this Court require the conclusion that reconstruction of a patented entity,
comprised of unpatented elements, is limited to such a true reconstruction of the entity as
to "in fact make a new article," after the entity, viewed as a whole, has become spent. In
order to call the monopoly, conferred by the patent grant, into play for a second time, it
must, indeed, be a second creation of the patented entity. Mere replacement of individual
unpatented parts, one at a time, whether of the same part repeatedly or different parts
successively, is no more than the lawful right of the owner to repair his property. Measured by
this test, the replacement of the fabric involved in this case must be characterized as permissible
"repair," not "reconstruction."


Autogiro Company of America v. United States (1967)
Doctrines:
The determination of patent infringement is a two step-process First, the meaning of the claims in issue must be
determined by a study of all relevant patent documents. Second, the claims must be read on the accused
structures.
Interpreting the Meaning of the Claims
The claims of the patent provide the concise formal definition of the invention. They are the numbered paragraphs
which particularly point out and distinctly claim the invention. Courts can neither broaden nor narrow the claims to give
the patentee something different than what he has set forth. They only interpret them. However, in doing so, they are not
confined to the language of the claims.
A claim cannot be interpreted without going beyond the claim itself. No matter how clear a claim appears to be,
there are documents that may completely disrupt initial views on its meaning. Claims are best construed in connection
with the other parts of the patent instrument and with the circumstances surrounding the inception of the patent
application.
In deriving the meaning of a claim, the felt meaning of the claim shall be reached after all useful documents are
inspected. In seeking this goal, three parts of the patent are used: 1) specification; 2) drawings; 3) file wrapper.
Specification. Section 112 of the 1952 Patent Act requires the specification to describe the manner and process of
making and using the patent so that any person skilled in the art may utilize it. The specification sets forth the best mode
contemplated by the inventor of carrying out his invention. Claim interpretation must not make use of the best mode terms
inasmuch as the patentee need not guard against infringement by listing every possible infringing device in the
specification.
Drawings. Where a visual representation can flesh out words, drawings may be used in the same manner and with
the same limitations as the specification.
File wrapper. The file wrapper contains the entire record of the proceedings in the Patent Office from the first
application papers to the issued patent. One use of the same is file wrapper estoppel, which is thus illustrated: When the
application is rejected, the applicant will insert limitations and restrictions for the purpose of inducing the Patent Office to
grant his patent. When the patent is issued, the patentee cannot disclaim these alterations and seek an interpretation that
ignores them. File wrapper estoppel serves two functions: the applicants statements not only define terms, but also set the
barriers within which the claims meaning must be kept.
The file wrapper can also be utilized to determine the scope of claims. In file wrapper estoppel, it is not the prior
art that provides the guidelines, but the applicants acquiescence with regard to the prior art.
Reading the Claims on the Accused Structures
If the claims read literally on the accused structures, an initial hurdle in the test for infringement is cleared. The
patentee may bring the defendant within the letter of his claims, but if the latter has changed the principle of the device
that the claims of the patent, literally construed, have ceased to represent his actual invention, he can no longer be
adjudged an infringer.
However, if the claims do not read literally on the accused structures, infringement is not necessarily ruled out.
The doctrine of equivalence provides that a structure infringes, without there being literal overlap, if it performs
substantially the same function in substantially the same way and for substantially the same purpose as the claims set
forth. To permit imitation of a patented invention which does not copy every literal detail would be to convert the
protection of the patent grant into a useless thing. Such would encourage the copyist to make unimportant and
unsubstantial changes in the patent which, though adding nothing, would be enough to take the copied matter outside the
claim.

Some guidelines as regards the range of equivalence are drawn: 1) whether persons reasonably skilled in the art
would have known of the interchangeability of an ingredient not contained in the patent with one that was; 2) pioneer
patents are to be given wider ranges of equivalence than minor improvement patents.
The doctrine of equivalence is subservient to file wrapper estoppel. It may not include within its range anything
that would vitiate limitations expressed before the Patent Office.
Facts:
The Autogiro Company, a Delaware corporation owning all patents involved in this litigation, sues to recover the
reasonable and entire compensation for the Governments unauthorized use of 16 of its patented inventions.
The patents in suit are concerned with rotor structures and control systems on rotary wing aircrafts: the helicopter
and the autogiro/gyroplane. The autogiro has both fixed wings and rotary blades a cross between an airplane and a
helicopter; while a helicopter only has rotary blades.
THE CLAIMS:
Claim 3 is a combination claim, the important element of which states: A sustaining rotor construction having
blades mounted for movement with respect to an axis member and so proportioned that, under the influence of air
currents, the blades have an average autorotational speed at the tip substantially in excess of the maximum flight speed of
which the craft is capable.
Claims 28, 29, 36, 37, 38, and 42 contain an element which defines a non-manual mechanism for regulating the
rotational speed of rotary wing aircraft rotors. Such changes are achieved through the use of movable weights mounted in
each rotor and attached to the collective pitch control system. The 581 specification states that the purpose is to provide
governing means in cooperation with blade incidence control which will tend to maintain constant rotational speed of the
rotor.
Claim 64 states that the rotor blades sectional mass center be at least as far forward as its aerodynamic center. It states:
adjustment of the weight as well as of the sectional and longitudinal location of the center of gravity of the blade may thus
also be obtained.
Claim 59 provides for the placement of weights along the leading edge of the blade near the tip. This helps bring
the mass center of the blade forward of the aerodynamic center to achieve negative pitching moment.
The claims of the 162 patent teach a manual means of obtaining a measure of vertical rise capacity.
The 364 patent provides nonmanual means to accomplish a vertical take-off. When power is connected to the
rotor hub, the blades will lag behind the hub. When the power is stopped, the blades inertial force will swing them in
advance of the hub. These lead-lag tendencies can be translated into actual blade movement if the blade is mounted on a
free axis that permits it to move back and forth without restriction.
The 580 patent teaches cyclic pitch control by tilting the real axis.
Claim 16 teaches cyclic pitch control by tilting the virtual axis.
Issues:
1. W/N Claim 3 is infringed.
2. W/N Claims 28, 29, 36, 37, 38, and 42 are infringed.
5. W/N the claims of the 162 patent are infringed.
6. W/N the 364 patent is infringed.
7. W/N the 580 patent is infringed.

Held/Ratio:
1. No. Claim Interpretation. The term so proportioned is defined in terms of function or result, however, a reading
of the term in light of the patent documents shows that it includes a means of accomplishing its function. The
specification shows that the proportioning is a relationship between rotor blades and a fixed wing. The file
wrapper does not compel a different interpretation.
This interpretation does not ignore the concept of claim differentiation, which states that claims should be
presumed to cover different inventions. This means that an interpretation of a claim should be avoided if it would
make the claim read like another one. Claim differentiation is a guide, not a rigid rule. If a claim will bear only
one interpretation, similarity will have to be tolerated.
Claims 4-7 of the 901 patent refer to a substantially fixed aerofoil. Claims 8-17 refer to a relatively fixed lifting
aerofoil surface. Interpreting Claim 3 to refer to a fixed wing would not render any of these claims redundant.
Claim 3 refers to maximum flight speed; Claims 4-5 refer to translational flight. Also, Claim 3 does not have the
specificity of these claims.
Accused Structures. The Vertol, Hiller, and Bell helicopters do not have a fixed wing. They do not operate in
substantially the same way as the claim requires.
2. No. Plaintiffs contention that there must be centrifugal means plus a resilient means to obtain governing means is
rejected.
Claim interpretation. The file wrapper supports the idea that the resilient means is not necessary in the governing
means. It only acts as an aid to the maintenance of a constant rotational speed.
Accused structures. The weights on the Bell and Hiller helicopters do not perform a rotor speed governing
function. Rotor speed is manually controlled by the pilot.
3. Yes. Claim interpretation. The term sectional has a directional meaning. Its juxtaposition with longitudinal
indicates that it refers to the front-rear or chordwise direction of the blade.
4. No, the bar does not operate in a way substantially similar to the teachings of Claim 59 and with a substantially
similar result.
The Bell and Hiller helicopters have a steel bar on their rotor blades, which is close to the leading edge, but is not
concentrated near the tip of the blade. The bar aids in achieving negative pitching moment, but not in
economically increasing the moment of inertia.
5. No. The autogiro cannot use its rotor to achieve vertical take-offs (since it is autorotatively operated) unless it is
equipped with some additional mechanism such as that taught by the 162 patent. The accused structures, being
helicopters, do not require vertical take-off assistance. Hence, they do not achieve the same or a substantially
similar result.
6. No. The Bell and Hiller helicopters do not have a free axis; their blades are affixed to the rotor hub with no lead-
lag flexibility. These helicopters achieve vertical take-offs by the power directed to their rotors and have no use
for a non-manual take off.
7. No. The Kaman, McCulloch, and Vertol helicopters do not achieve cyclic pitch control by tilting the real axis.
The Bell and Hiller helicopters impose control through various linkages on the rotor blades. A member of the real
axis of these two crafts may tilt when control is achieved. However, this tilting is not by itself cyclic pitch control;
it is a coincidental accompaniment to the imposition of cyclic pitch control. Even though all the accused
structures achieve horizontal movement by cyclic pitch control as the 580 patent teaches, they do not do so in the
same or substantially the same way.
8. No. The cyclic pitch system of Claim 16 is interposed between the flapping pivot and the blade mounting; while
Bells cyclic pitch control pivot is located at a point higher in the rotor hub assembly than either the blade
mounting or the longitudinal axis of the blade.

Claim 16 can be read on a combination of the helicopter cyclic and collective pitch control systems since the latter
control is interposed between the flapping pivot and the blade mounting. A combination of these two systems
seems to infringe; however, these systems do not interact or contribute together to produce the result taught by the
claim. There must be an essential correlation or coordination of the systems which mutually contributes to a
common result.
Smith Kline v. CA (2003)
Doctrines (relevant to the topic heading):
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything
beyond them. And so are the courts bound which may not add to or detract from the claims matters not expressed
or necessarily implied, nor may they enlarge the patent beyond the scope of that which the inventor claimed and
the patent office allowed, even if the patentee may have been entitled to something more than the words it had
chosen would include.
When two or more inventions are claimed in a single application but are of such a nature that a single patent may
not be issued for them. The applicant thus is required to divide, that is, to limit the claims to whichever invention
he may elect, whereas those inventions not elected may be made the subject of separate applications which are
called divisional applications.
Facts:
Smith Kline Beckman Corporation - a US corporation licensed to do business in the Philippines filed as
assignee, before the Philippine Patent Office (now Bureau of Patents, Trademarks and Technology Transfer) an
application for patent over an invention entitled Methods and Compositions for Producing Biphasic Parasiticide
Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. (Serial No. 18989)
Letters Patent for the invention was issued to petitioner for a term of 17 years.
o The letters patent provides in its claims: the patented invention consisted of a new compound (methyl 5
propylthio-2-benzimidazole carbamate) and the methods or compositions utilizing the compound as an
active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals
such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (respondent) is a domestic corporation that manufactures, distributes and sells
veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be
effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle
and goats.
Smith Kline sued Tryco Pharma for infringement of patent and unfair competition before the Caloocan (RTC).
SMITH KLINEs claimed
its patent covers or includes the substance Albendazole such that Tryco Pharma by manufacturing, selling, using,
and causing to be sold and used the drug Impregon without its authorization, infringed various Claims of Letters
Patent
committed unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of
Republic Act No. 166 (The Trademark Law) for advertising and selling as its own the drug Impregon although the
same contained petitioners patented Albendazole
Caloocan RTC issued a TRO against private respondent enjoining it from committing acts of patent infringement
and unfair competition. A writ of preliminary injunction was subsequently issued.
Tryco Pharma averred
Letters Patent does not cover the substance Albendazole for nowhere in it does that word appear; that even if the
patent were to include Albendazole, such substance is unpatentable;

that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its
known ingredient;
there is no proof that it passed off in any way its veterinary products as those of petitioner;
Letters Patent No. 14561 is null and void, the application for the issuance thereof having been filed beyond the
one year period from the filing of an application abroad for the same invention covered thereby, in violation of
Section 15 of RA No. 165 (The Patent Law);
petitioner is not the registered patent holder.
lodged a Counterclaim against petitioner for such amount of actual damages as may be proven; P1,000,000.00 in
moral damages; P300,000.00 in exemplary damages; and P150,000.00 in attorneys fees.
TC: Complaint dismissed. Writ dissolved. Letters Patent null and void.
CA: upheld TC but Letter Patent not void
Smith Kline argues
under the doctrine of equivalents for determining patent infringement, Albendazole, the active ingredient it
alleges was appropriated by private respondent for its drug Impregon, is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or
parasite infestation in animals.
o It cites the unrebutted testimony of its witness Dr. Orinion that the chemical formula in Letters Patent No.
14561 refers to the compound Albendazole.
Two substances substantially do the same function in substantially the same way to achieve the same results,
thereby making them truly identical.
CA should have gone beyond the literal wordings used in Letters Patent No. 14561, beyond merely
applying the literal infringement test, for in spite of the fact that the word Albendazole does not appear in
petitioners letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-
benzimidazole carbamate.
its application with the Philippine Patent Office on account of which it was granted Letters Patent No. 14561 was
merely a divisional application of a prior application in the U. S. which granted a patent for Albendazole.
both methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented Albendazole are dependent on each
other and mutually contribute to produce a single result, thereby making Albendazole as much a part of Letters
Patent No. 14561 as the other substance is.
although methyl 5 propylthio-2-benzimidazole carbamate is not identical with Albendazole, the former is an
improvement or improved version of the latter thereby making both substances still substantially the same.
TRYCO contends
that application of the doctrine of equivalents would not alter the outcome of the case, Albendazole and methyl 5
propylthio-2-benzimidazole carbamate being two different compounds with different chemical and physical properties.
It stresses that the existence of a separate U.S. patent for Albendazole indicates that the same and the compound
in Letters Patent No. 14561 are different from each other;
that since it was on account of a divisional application that the patent for methyl 5 propylthio-2-benzimidazole
carbamate was issued, then, by definition of a divisional application, such a compound is just one of several independent
inventions alongside Albendazole under petitioners original patent application.
Issue:
1. WON there was Patent Infringement by Tryco because Albendazole (the active ingredient in trycos
impregon drug) is included in Smith Klines Letters Patent.

Held/Ratio:
1. CA Decision affirmed. Tryco was not liable for any infringement of the patent of Smith Kline since Smith Kline
failed to show that Albendazole is the same as the compound subject of Letters Patent No. 14561.
From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no
mention is made of the compound Albendazole.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything
beyond them. And so are the courts bound which may not add to or detract from the claims matters not expressed
or necessarily implied, nor may they enlarge the patent beyond the scope of that which the inventor claimed and
the patent office allowed, even if the patentee may have been entitled to something more than the words it had
chosen would include.
Mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazoles non-
inclusion in the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name
different from that covered in petitioners letters patent, the language of Letter Patent No. 14561 fails to yield
anything at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole
inheres in petitioners patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish private respondents
infringement, it urges this Court to apply the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior
invention by incorporating its innovative concept and, although with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the same result.
Yet again, a scrutiny of petitioners evidence fails to convince this Court of the substantial sameness of petitioners
patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals,
identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same
way or by substantially the same means as the patented compound, even though it performs the same function and
achieves the same result. In other words, the principle or mode of operation must be the same or substantially
the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee
having the burden to show that all three components of such equivalency test are met.
As stated early on, petitioners evidence fails to explain how Albendazole is in every essential detail identical to
methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is an anthelmintic agent
like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly substantiated
regarding the method or means by which Albendazole weeds out parasites in animals, thus giving no information
on whether that method is substantially the same as the manner by which petitioners compound works. The
testimony of Dr. Orinion lends no support to petitioners cause, he not having been presented or qualified as an
expert witness who has the knowledge or expertise on the matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, it comes into play when two or more
inventions are claimed in a single application but are of such a nature that a single patent may not be issued for
them. The applicant thus is required to divide, that is, to limit the claims to whichever invention he may elect,
whereas those inventions not elected may be made the subject of separate applications which are called divisional
applications.
What this only means is that petitioners methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct
from the other inventions claimed in the original application divided out, Albendazole being one of those other
inventions. Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of a
divisional application if a single patent could have been issued for it as well as Albendazole.
Re: damages (not really that important)

Court does not sustain the award of actual damages and attorneys fees in favor of Tryco. The claimed actual
damages of P330,000.00 representing lost profits or revenues incurred by private respondent as a result of the
issuance of the injunction against it, computed at the rate of 30% of its alleged P100,000.00 monthly gross sales
for 11 months.
Court does not sustain the grant of attorneys fees to Tryco having been allegedly forced to litigate as a result of
petitioners suit. Even if a claimant is compelled to litigate with third persons or to incur expenses to protect its
rights, still attorneys fees may not be awarded where no sufficient showing of bad faith could be reflected in a
partys persistence in a case other than an erroneous conviction of the righteousness of his cause. There exists no
evidence on record indicating that petitioner was moved by malice in suing private respondent.
Court grants Tryco temperate or moderate damages in the amount of P20,000.00 which it finds reasonable under
the circumstances, it having suffered some pecuniary loss the amount of which cannot, be established with
certainty.
!"#$#% '%( )*#+*$,

-$./%0 lalnLlff broughL an acLlon ln Lhe lower courL agalnsL Lhe defendanLs for lnfrlngemenL of Lhe excluslve
rlghL Lo make, use, and sell an lmprovemenL ln cars for Lhe LransporLaLlon of coal granLed Lo hlm by leLLer
paLenL. 1he lower courL ruled ln favor of Lhe defendanLs.
1he leLLers paLenL were duly lssued and Lhelr valldlLy was noL quesLloned, buL Lhe defendanLs
denled LhaL Lhey had lnfrlnged upon Lhe excluslve rlghL of Lhe plalnLlff.
ln order Lo deLermlne whaL ls Lhe Lhlng paLenLed, lL ls necessary Lo lnqulre Lhe followlng:
1. WhaL ls Lhe sLrucLure or devlce, descrlbed by Lhe paLenLee, as embodylng hls lnvenLlon.
2. WhaL mode of operaLlon ls lnLroduced and employed by Lhls sLrucLure or devlce.
3. WhaL resulL ls aLLalned by means of Lhls mode of operaLlon.
4. uoes Lhe speclflcaLlon of clalm cover Lhe descrlbed mode of operaLlon by whlch Lhe resulL ls
aLLalned.
1he sLrucLure, descrlbed by Lhe paLenL, ls Lhe body of a burden rallroad car, made of sheeL lron, Lhe
upper parL belng cyllndrlcal, and Lhe lower parL ln Lhe form of a frusLum of a cone, Lhe under edge of whlch
has a flange secured upon lL, Lo whlch flange a movable boLLom ls aLLached.
1o undersLand Lhe mode of operaLlon employed by means of Lhls form of Lhe car body, by reason of Lhe
clrcular form of Lhe car body, Lhe pressure of Lhe load ouLwards was equal ln every dlrecLlon and Lhus Lhe
load supporLed lLself ln a greaL degree. LhaL by maklng Lhe lower parL conlcal, Lhls prlnclple of acLlon
operaLed LhroughouL Lhe car, wlLh Lhe excepLlon of Lhe small space Lo whlch Lhe movable boLLom was
aLLached, LhaL, belng conlcal, Lhe lower parL of Lhe car could be carrled down below Lhe Lruck, beLween Lhe
wheels, Lhus lowerlng Lhe cenLer of gravlLy of Lhe load,
lL Lhus appears LhaL, by means of Lhls change of form, Lhe paLenLee has lnLroduced a mode of
operaLlon noL before employed ln burden cars, LhaL ls Lo say, nearly equal pressure ln all dlrecLlons by Lhe
enLlre load, save LhaL small parL whlch resLs on Lhe movable boLLom, Lhe effecLs of whlch are LhaL Lhe load,
ln a greaL degree, supporLs lLself, and Lhe Lenslle sLrengLh of Lhe lron ls used, whlle aL Lhe same Llme, by
reason of Lhe same form, Lhe cenLer of gravlLy of Lhe load ls depressed, and lLs dlscharge faclllLaLed.
1he pracLlcal resulL aLLalned by Lhls mode of operaLlon ls correcLly descrlbed by Lhe paLenLee. 1he
speclflcaLlon sLaLes:
"1he LransporLaLlon of coal, and all oLher heavy arLlcles ln lumps, has been aLLended wlLh greaL
ln[ury Lo Lhe cars, requlrlng Lhe bodles Lo be consLrucLed wlLh greaL sLrengLh Lo reslsL Lhe ouLward pressure
on Lhe sldes, as well as Lhe verLlcal pressure on Lhe boLLom, due noL only Lo Lhe welghL of Lhe mass, buL Lhe
moblllLy of Lhe lumps among each oLher Lendlng Lo 'pack,' as lL ls Lechnlcally Lermed. Lxperlence has shown
LhaL cars, on Lhe old mode of consLrucLlon, cannoL be made Lo carry a load greaLer Lhan lLs own welghL,
buL, by my lmprovemenL, l am enabled Lo make cars of greaLer durablllLy Lhan Lhose hereLofore made,
whlch wlll LransporL double Lhelr own welghL of coal,"
uefendanLs had made cars slmllar Lo Lhe plalnLlff's, excepL LhaL Lhe form was ocLagonal lnsLead of
clrcular. 1here was evldence Lendlng Lo prove LhaL Lhe ocLagonal car was subsLanLlally Lhe same as Lhe
clrcular. 1he dlsLrlcL courL ruled LhaL Lhere was no lnfrlngemenL because defendanLs' car was enLlrely
recLlllnear. 1he subsLance of Lhls rullng was LhaL Lhe clalm was llmlLed Lo Lhe parLlcular geomeLrlcal form
menLloned ln Lhe speclflcaLlon, and as Lhe defendanLs had noL made cars ln LhaL parLlcular form, Lhere
could be no lnfrlngemenL, even lf Lhe cars made by Lhe defendanLs aLLalned Lhe same resulL by employlng
whaL was ln facL Lhe same mode of operaLlon as LhaL descrlbed by Lhe paLenLee.
1%%2*0 WCn Lhe speclflcaLlon of clalm cover Lhls mode of operaLlon by whlch Lhls resulL ls effecLed. - ?LS
Clalm of Lhe plalnLlff:
"WhaL l clalm as my lnvenLlon, and deslre Lo secure by leLLers paLenL, ls maklng Lhe body of a car for Lhe
LransporLaLlon of coal &c., ln Lhe form of a frusLum of a cone, subsLanLlally as hereln descrlbed, whereby
Lhe force exerLed by Lhe welghL of Lhe load presses equally ln all dlrecLlons, and does noL Lend Lo change
Lhe form Lhereof, so LhaL every parL reslsLs lLs equal proporLlon, and by whlch, also, Lhe lower parL ls so
reduced as Lo pass down wlLhln Lhe Lruck frame and beLween Lhe axles, Lo lower Lhe cenLer of gravlLy of
Lhe load wlLhouL dlmlnlshlng Lhe capaclLy of Lhe car as descrlbed."
"l also clalm exLendlng Lhe body of Lhe car below Lhe connecLlng pleces of Lhe Lruck frame, and Lhe llne of
drafL, by passlng Lhe connecLlng bars of Lhe Lruck frame, and Lhe drafL bar, Lhrough Lhe body of Lhe car,
subsLanLlally as descrlbed."

!"#$%&' Lower courL declslon ls reversed. uefendanLs lnfrlnged plalnLlff's paLenL.
lL ls Lhls new mode of operaLlon whlch glves lL Lhe characLer of an lnvenLlon, and enLlLles Lhe
lnvenLor Lo a paLenL, and Lhls new mode of operaLlon ls, ln vlew of Lhe paLenL law, Lhe Lhlng
enLlLled Lo proLecLlon. 1he paLenLee may, and should, so frame hls speclflcaLlon of clalm as Lo cover
Lhls new mode of operaLlon whlch he has lnvenLed, and Lhe only quesLlon ln Lhls case ls wheLher he
has done so, or wheLher he has resLrlcLed hls clalm Lo one parLlcular geomeLrlcal form.
1here belng evldence ln Lhe case Lendlng Lo show LhaL oLher forms do ln facL embody Lhe plalnLlff's
mode of operaLlon, and, by means of lL, produce Lhe same new and useful resulL, Lhe quesLlon ls
wheLher Lhe paLenLee has llmlLed hls clalm Lo one ouL of Lhe several forms whlch Lhus embody hls
lnvenLlon.
lL ls generally Lrue, when a paLenLee descrlbes a machlne and Lhen clalms lL as descrlbed, LhaL he ls
undersLood Lo lnLend Lo clalm, and does by law acLually cover, noL only Lhe preclse forms he has
descrlbed, buL all oLher forms whlch embody hls lnvenLlon, lL belng a famlllar rule LhaL Lo copy Lhe
prlnclple or more of operaLlon descrlbed ls an lnfrlngemenL, alLhough such copy should be LoLally
unllke Lhe orlglnal ln form or proporLlons.
aLenLable lmprovemenLs ln machlnery are almosL always made by changlng someone or more
forms of one or more parLs, and Lhereby lnLroduclng some mechanlcal prlnclple or mode of acLlon
noL prevlously exlsLlng ln Lhe machlne, and so securlng a new or lmproved resulL. And, ln Lhe
numerous cases ln whlch lL has been held, LhaL Lo copy Lhe paLenLee's mode of operaLlon was an
lnfrlngemenL, Lhe lnfrlnger had goL forms and proporLlons noL descrlbed, and noL ln Lerms clalmed.
lf lL were noL so, no quesLlon of lnfrlngemenL could arlse. lf Lhe machlne complalned of were a
copy, ln form, of Lhe machlne descrlbed ln Lhe speclflcaLlon, of course lL would be aL once seen Lo
be an lnfrlngemenL.
1he properLy of lnvenLors would be valueless lf lL were enough for Lhe defendanL Lo say, "your
lmprovemenL conslsLed ln a change of form, you descrlbe and clalm buL one form, l have noL Laken
LhaL, and so have noL lnfrlnged."
1he reason why such a paLenL covers only one geomeLrlcal form, ls noL LhaL Lhe paLenLee has
descrlbed and clalmed LhaL form only, lL ls because LhaL form only ls capable of embodylng hls
lnvenLlon, and consequenLly, lf Lhe form ls noL copled, Lhe lnvenLlon ls noL used.
Where form and subsLance are lnseparable, lL ls enough Lo look aL Lhe form only. Where Lhey are
separable, where Lhe whole subsLance of Lhe lnvenLlon may be copled ln a dlfferenL form, lL ls Lhe
duLy of courLs and [urles Lo look Lhrough Lhe form for Lhe subsLance of Lhe lnvenLlon -- for LhaL
whlch enLlLled Lhe lnvenLor Lo hls paLenL, and whlch Lhe paLenL was deslgned Lo secure, where LhaL
ls found, Lhere ls an lnfrlngemenL, and lL ls noL a defense, LhaL lL ls embodled ln a form noL
descrlbed, and ln Lerms clalmed by Lhe paLenLee.
aLenLees someLlmes add Lo Lhelr clalms an express declaraLlon, Lo Lhe effecL LhaL Lhe clalm
exLends Lo Lhe Lhlng paLenLed, however lLs form or proporLlons may be varled. 8uL Lhls ls
unnecessary.
o 1he law so lnLerpreLs Lhe clalm wlLhouL Lhe addlLlon of Lhese words. 1he excluslve rlghL Lo
Lhe Lhlng paLenLed ls noL secured, lf Lhe publlc are aL llberLy Lo make subsLanLlal coples of
lL, varylng lLs form or proporLlons. And Lherefore Lhe paLenLee, havlng descrlbed hls
lnvenLlon, and shown lLs prlnclples, and clalmed lL ln LhaL form whlch mosL perfecLly
embodles lL, ls, ln conLemplaLlon of law, deemed Lo clalm every form ln whlch hls lnvenLlon
may be copled, unless he manlfesLs an lnLenLlon Lo dlsclalm some of Lhose forms.
lL ls noL necessary LhaL Lhe defendanL's cars should employ Lhe plalnLlff's lnvenLlon Lo as good
advanLage as he employed lL, or LhaL Lhe resulL should be preclsely Lhe same ln degree. lL musL be
Lhe same ln klnd, and effecLed by Lhe employmenL of hls mode of operaLlon ln subsLance.


Graver Tank & Manufacturing Company v. Linde Air Products Company (1950)
Facts:
The case began with a brief summation of jurisprudence relating to the Doctrine of Equivalents:
A patentee may invoke doctrine of equivalents to proceed against producer of a device if it performs
substantially the same function in substantially the same way to obtain same result as patentee's device.
The theory on which the doctrine of equivalents is founded is that if two devices do the same work in
substantially the same way, and accomplish the same result, they are the same, even though they differ in name,
form, or shape.
The doctrine of equivalents operates not only in favor of patentee of a pioneer or primary invention, but also for
patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful
results.
The doctrine may also be used AGAINST a patentee: Where a device is so far changed in principle from a
patented article that it performs the same or similar function in a substantially different way, but nevertheless falls
within literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat patentee's
action for infringement.
The case involves two electric welding compositions (fluxes.)
Linde owns the patent to the Unionmelt Grade 20 composition. Lincoln and the two Graver companies made use
of the Lincolnweld 660 composition.
Unionmelt uses silicates of calcium and magnesium. Lincolnweld uses silicates of calcium and manganese. Linde
brought an action for infringement.
Issue:
1. Were the differences between manganese and magnesium really insubstantial enough to justify the application of
the Doctrine of Equivalents?
Held/Ratio:
1. The trial court judge was able to hear testimony of several experts; chemists, and metallurgists. Recognized texts
on chemistry were presented, as well as two prior patents. The trial judge was also able to visit laboratories and
observe actual demonstrations as well as motion pictures relating to the subject. A finding of equivalence is a
determination of fact. The trial courts decision should generally not be disturbed unless clearly erroneous.
2. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We
conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we
adhere to our prior decision on this aspect of the case.
Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (1997) (dyes, pH levels and reason for
amendments)
Doctrines:
Application of the Doctrine of Equivalents involves determining whether a particular accused
product or process infringes upon the patent claim, where the claim takes the form of X and its
equivalents
The determination of equivalence should be applied as an objective inquiry on an element-by-
element basis.
There is need to reconcile the Doctrine of Equivalents with previous court rulings which have
held that a patent may not be enlarged beyond the scope of its claims: the Doctrine of
Equivalents is applied to each of the individual elements of the claim, rather than to the
accused product or process as a whole.
Where the PTO has limited the scope of an amended claim for a clear reason, then the patentee
may not use the Doctrine of Equivalents to enlarge the scope of the claim. Where the PTO
has not provided for a clear reason for the limits of an amended claim, the patentee has the
burden of supplying a reason that comports with its interpretation of the claim.
Prosecution History Estoppel bars application of the Doctrine of Equivalents to elements added
by amendments during prosecution. However, where the reason for the change was not related
to avoiding prior art, the change may introduce a new element, and infringement by
equivalents of that element is not necessarily precluded.
Intent plays no role in the application of the Doctrine of Equivalents.
The proper time for evaluating equivalency and the knowledge of interchangeability of elements
is at the time of infringement.
Facts:
Petitioner Warner-Jenkinson and respondent Hilton Davis are both manufacturers of dyes. Dyes
have impurities which must be removed.
Respondent Hilton Davis already holds a patent (Patent 746), issued in 1985, for an improved
purification process involving ultrafiltration. The original application encompasses all pH levels.
However, during prosecution, the application was limited to only pH levels 6.0 to 9.0. It was later shown
that the pH level of 9.0 was added to avoid an overlap with a prior patent (the Booth patent) which
covered ultrafiltration for pH levels above 9.0. There was no reason given why the lower limit of pH
level 6.0 was added.
In 1986, Petitioner Warner-Jenkinson developed an ultrafiltration process at pH 5.0. When
Respondent Hilton Davis discovered this, it sued Petitioner Warner-Jenkinson for patent infringement.
Hilton conceded that there was no literal infringement, and relied solely on the Doctrine of Equivalents in
its suit.
Petitioner Warner-Jenkinsons primary argument is that the Doctrine of Equivalents, as set out in
the Graver Tank case, is inconsistent with several aspects of the Patent Act. In particular, petitioner
argues that the Doctrine of Equivalents is inconsistent with the requirement that a patentee specifically
claim the invention covered by the patent and also inconsistent with the primacy of the Patent and
Trademark Office in setting the scope of a patent through the patent prosecution process.
Petitioner further presents various arguments that would in effect result to a more restricted
Doctrine of Equivalents. These arguments are as follows:
(1) that Graver Tank never sought to supercede the doctrines of prosecution history estoppel and
file wrapper estoppels as limits to nonliteral infringement
According to petitioner, the surrender of subject matter during patent prosecution, regardless of
reason, prohibits recapturing or reusing any part of that subject matter which was surrendered,
even if it is equivalent to such subject matter
(2) that a judicial exploration of the equities of a case must first be conducted before allowing
application of the Doctrine of Equivalents.
According to petitioner, the benefits of the Doctrine refers to prevention of copying and piracy
and thus seeks to limit the application of the Doctrine wherein copying and piracy is sought to be
prevented
(3) To minimize conflict with the notice function of patent claims, the Doctrine of Equivalents
should be limited to equivalents disclosed within the patent itself, or known at the time the patent
was issued, and should not extend to after-arising equivalents.
Issues:
1. W/N the Doctrine of Equivalents conflicts with the definitional and public-claiming functions of
the statutory claiming requirement.
2. W/N surrendering subject matter during patent prosecution totally, regardless of the reason for
surrender, totally bars the application of the doctrine of equivalents.
3. W/N the equities or justness of the application of the Doctrine of Equivalents should be limited
to the realization of certain benefits only
4. W/N the Doctrine should be limited to equivalents known at the time the patent was issued
5. W/N a particular linguistic framework to determine equivalence should be applied
Held/Ratio: the CA did not consider all the requirements for Prosecution History Estoppel and the
meaning of each element in a claim: therefore the case was remanded for further proceedings consistent
with the opinion as held by the Court.
1. No.
The Doctrine of Equivalents would only be in conflict with the statutory claiming requirement
when it is applied broadly.
Each element contained in a patent claim is material in defining the scope of the patented
invention. Therefore, the Doctrine of Equivalents must be applied to individual elements of the
claim and not to the invention as a whole. It is important to ensure that the doctrine is not
allowed a broad application so as to effectively eliminate that element in its entirety.
The determination of equivalence should be applied objectively, on an element-by-element basis.
2. NO. Petitioner reaches too far in arguing that the reason for an amendment during patent
prosecution is irrelevant to any subsequent estoppel. In previous cases before the Supreme Court,
the Court probed the reasoning behind the Patent Offices insistence upon a change. In each
instance, a change was demanded because the claim was not patentable typically because, as
originally written, it was encompassed within prior art.
It is undisputed that the upper limit of pH 9.0 was added to distinguish the Hilton patent from the
Booth patent, the reason for adding the lower limit of pH 6.0 was unclear.
Where the reason for the change was not related to avoiding prior art, the change may introduce
a new element, on which infringement by equivalents of that element may apply. (In other
words, if change was related to avoiding prior art, the new element may only be infringed
literally. If the change was NOT related to avoiding prior art, the new element may be infringed
even by its equivalents).
However, where the record does not reveal the reason for including the limit of pH 6.0, such
absence of reason does not automatically avoid the application of the estoppel, which then means
that the Doctrine of Equivalents may still apply. (Remember that when Prosecution History
Estoppel applies, the Doctrine of Equivalents cannot apply to amendments made. Therefore, if
the Prosecution History Estoppel does not apply, then the Doctrine of Equivalents may apply to
those amendments).
Whether or not the estoppel applies depends on the reason for the amendments. The problem in
this case was that there was no reason mentioned for including the lower limit of pH 6.0.
Respondent Hilton has not given a reason. The case was therefore remanded to the Federal
Circuit to determine whether reasons were offered or not and whether further opportunity to
establish such reasons would be proper.
Prosecution History Estoppel continues to be available as a defense to infringement. But if the
patent holder demonstrates that an amendment required during prosecution had a purpose
UNRELATED to patentability, the court must consider the purpose in determining whether
estoppel is disallowed (thus the Doctrine of Equivalents will apply).
Where the patent holder is unable to establish such a purpose, a court should presume that the
purpose behind the required amendment is such that Prosecution History Estoppel would apply
(thus the Doctrine of Equivalents will not apply).
3. NO. The essential predicate of the Doctrine is the notion of identity between a patented invention
and its equivalent. There is no basis for treating an infringing equivalent any differently from a
device that infringes the express terms of the patent. Therefore, application of the Doctrine is like
determining literal infringement and should also not require proof of intent. Intent plays no role
in the application of the Doctrine of Equivalents.
4. NO. The proper time for evaluating equivalency and the knowledge of interchangeability of
elements is at the time of infringement. Equivalents need not be known nor be actually disclosed
in the patent in order for such equivalents to infringe upon the patent.
5. Depends on the circumstances of the case.
The triple identity test focuses on the function of a particular element in a claim, the way that
element serves that function and the result obtained by that element. The Insubstantial
Difference test on the other hand is used to determine whether the difference between the
element of the claim and the element of the accused product or process are so insubstantial so as
to be considered equivalents of each other.
Both tests are actually less important than determining whether the accused product or process
contain elements identical or equivalent to each claimed element of patented invention. The
different frameworks may be applied to different sets of circumstances but there must be a focus
on individual elements and there must be special vigilance against allowing the concept of
equivalence to eliminate completely any such elements.

Other notes:
the Known Interchangeability Test whether a person skilled in the art would have known of the
interchangeability between two elements; the known interchangeability of the of substitutes for an
element of a patent bears upon whether the accused device is substantially the same as the patented
invention.

Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki [SMC] (2002) (Memory Aid - maximum of 5
words only)
Doctrines:
DOCTRINE OF EQUIVALENTS: A patent protects its holder against efforts of copyists to
evade liability for infringement by making only insubstantial changes to a patented invention. At
the same time, we appreciated that by extending protection beyond the literal terms in a patent
the doctrine of equivalents can create substantial uncertainty about where the patent monopoly
ends.
PROSECTUTION HISTORY ESTOPPEL/FILE WRAPPER ESTOPPEL: To reduce the
uncertainty, it is acknowledged that competitors may rely on the prosecution history, the public
record of the patent proceedings. In some cases the Patent and Trademark Office (PTO) may
have rejected an earlier version of the patent application on the ground that a claim does not meet
a statutory requirement for patentability. When the patentee responds to the rejection by
narrowing his claims, this prosecution history estops him from later arguing that the subject
matter covered by the original, broader claim was nothing more than an equivalent. Competitors
may rely on the estoppel to ensure that their own devices will not be found to infringe by
equivalence.

Facts:
Petitioner Festo Corporation owns two patents for an improved magnetic rodless cylinder, a
piston-driven device that relies on magnets to move objects in a conveying system. The device has many
industrial uses and has been employed in machinery as diverse as sewing equipment and the Thunder
Mountain ride at Disney World.
Festos first patent application on the magnetic rodless cylinder (Stoll Patent) was first rejected
because the exact method of application was unclear. So it was amended to meet these objections and
references to prior art were added. The second application (Carroll Patent) was also amended during the
proceedings, adding further prior art references. Both amended patents added a new limitationthat the
inventions contain a pair of sealing rings, each having a lip on one side, which would prevent
impurities from getting on the piston assembly. The amended Stoll Patent added the further
limitation that the outer shell of the device, the sleeve, be made of a magnetizable material.
After Festo began selling its rodless cylinder, respondents (SMC) entered the market with a
device similar, but not identical, to the ones disclosed by Festos patents. SMCs cylinder, rather than
using two one-way sealing rings, employs a single sealing ring with a two-way lip. Furthermore,
SMCs sleeve is made of a nonmagnetizable alloy. SMCs device does not fall within the literal claims
of either patent, but petitioner contends that it is so similar that it infringes under the doctrine of
equivalents.
SMC contends that such amendments bar Festo from asserting that it infringed on their patent (a
complete bar against any claim of equivalence for the element that was amended). Festo in defense
claims that such amendments were not made in order to avoid a prior art, but to comply with the Patent
act, as such should not be a bar for the application of the doctrine of equivalents (this is in line with the
doctrine in Werner-Jenkinson that held that there should be a flexible bar rule that allows for a
determination of the existence of estoppel on a case to case basis).
The CA bounced back and forth in its decision, first applying the flexible bar rule and then
reversing itself and applying the complete bar rule. There were a bunch of dissenting opinions in both
cases. Eventually, SMC and the complete bar won, hence this petition.

Issues:
1. W/N there should be a complete bar against the use of doctrine of equivalents when the
prosecution history shows that amendments to the patent claim were made?

Held/Ratio:
1. NO, only when the patentee is unable to explain the reason for amendment, estoppel not only
applies but also bar[s] the application of the doctrine of equivalents as to that element.
These words do not mandate a complete bar; they are limited to the circumstance where no
explanation is established. Just as Warner-Jenkinson held that the patentee bears the burden of
proving that an amendment was not made for a reason that would give rise to estoppel, we hold
here that the patentee should bear the burden of showing that the amendment does not surrender
the particular equivalent in question.

The language in the patent claims may not capture every nuance of the invention or describe with
complete precision the range of its novelty. If patents were always interpreted by their literal
terms, their value would be greatly diminished. Unimportant and insubstantial substitutes for
certain elements could defeat the patent, and its value to inventors could be destroyed by simple
acts of copying. For this reason, the clearest rule of patent interpretation, literalism, may
conserve judicial resources but is not necessarily the most efficient rule. The scope of a patent is
not limited to its literal terms but instead embraces all equivalents to the claims described.

The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were
not captured in drafting the original patent claim but which could be created through trivial
changes. It is true that the doctrine of equivalents renders the scope of patents less certain. It may
be difficult to determine what is, or is not, an equivalent to a particular element of an invention.

Prosecution history estoppel requires that the claims of a patent be interpreted in light of the
proceedings in the PTO during the application process. Estoppel is a rule of patent construction
that ensures that claims are interpreted by reference to those that have been cancelled or
rejected. What the applicant amends is deemed material, to distinguish and describe his
invention.

Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its
underlying purpose. Where the original application once embraced the purported equivalent but
the patentee narrowed his claims to obtain the patent or to protect its validity, the patentee cannot
assert that he lacked the words to describe the subject matter in question. The doctrine of
equivalents is premised on languages inability to capture the essence of innovation, but a
prior application describing the precise element at issue undercuts that premise. In that
instance the prosecution history has established that the inventor turned his attention to the
subject matter in question, knew the words for both the broader and narrower claim, and
affirmatively chose the latter.

In Warner-Jenkinson we recognized that prosecution history estoppel does not arise in every
instance when a patent application is amended. Our prior cases have consistently applied
prosecution history estoppel only where claims have been amended for a limited set of reasons,
such as to avoid the prior art, or otherwise to address a specific concernsuch as obviousness
that arguably would have rendered the claimed subject matter unpatentable. Estoppel arises
when an amendment is made to secure the patent and the amendment narrows the patents scope.

Petitioner contends that amendments made to comply with 112 concern the form of the
application and not the subject matter of the invention. The PTO might require the applicant to
clarify an ambiguous term, to improve the translation of a foreign word, or to rewrite a
dependent claim as an independent one. In these cases, petitioner argues, the applicant has no
intention of surrendering subject matter and should not be estopped from challenging equivalent
devices.

Though prosecution history estoppel can bar challenges to a wide range of equivalents, its reach
requires an examination of the subject matter surrendered by the narrowing amendment. The
complete bar avoids this inquiry by establishing a per se rule; but that approach is inconsistent
with the purpose of applying the estoppel in the first placeto hold the inventor to the
representations made during the application process and to the inferences that may reasonably be
drawn from the amendment. By amending the application, the inventor is deemed to concede that
the patent does not extend as far as the original claim. It does not follow, however, that the
amended claim becomes so perfect in its description that no one could devise an equivalent.

The case was remanded to for further proceedings. As the amendments were made for a reason
relating to patentability, the question is not whether estoppel applies but what territory the
amendments surrendered. While estoppel does not effect a complete bar, the question remains
whether petitioner can demonstrate that the narrowing amendments did not surrender the
particular equivalents at issue.


Gsell v. Yap Jue (1909)
Facts:
The plaintiff, Henry Gsell, was able to establish his title to a valid patent covering the manufacture of curved
handles for canes, parasols, and umbrellas. Thus, the court granted a perpetual injunction restraining defendant from
manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or
petroleum, since that process was already covered by the patent.
The patent of Gsell is 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."
Process:
After the canes have been cut for cane or umbrella handles, the outsides are thoroughly cleaned. This operation
having been performed, they are then trimmed and the interior cleaned by means of a gimlet of about 15 centimeters in
length operated by a wheel, by means of which the knots inside are broken. There is then introduced to a depth of about
15 centimeters a piece of very clean bamboo, which completely fills the hole made by the gimlet, thereby giving to the
cane the necessary strength to resist the heat of the lamp or blowpipe without breaking or cracking.
Despite the court order, defendant still proceeded to manufacture curved cane handled for walking sticks and
umbrellas by a process identical to that covered by the patent, except that he substituted for a lamp fed with petroleum
or mineral oil, lamp fed with alcohol. So Gsell instituted contempt proceedings against defendant for disobeying the
order of the court. The trial court ruled that the act was not contrary to the precise terms of the prohibition since the
defendant used an alcohol-burning lamp instead of a coal or mineral oil-burning lamp. It was held that defendant was not
guilty of contempt since Gsell failed to prove the facts.
But the defendant still continued to use the patented process with the substitution of the mineral-oil burning lamp
for a lamp fed by alcohol.
Issue:
1. W/N there was infringement of Gsells patent when the defendant substituted alcohol for petroleum or mineral oil
Held/Ratio:
1. YES. Gsell has established the existence of two facts: (1) That the use of the lamp fed with petroleum or mineral
oil was an unessential part of the patented process the use of which by the defendant was prohibited by the said
judgment; and (2) that alcohol is an equivalent and proper substitute, well known as such, for mineral oil or
petroleum in connection with the said process.
It was clearly proven at the trial, that kerosene and alcohol blast lamps are agencies for producing and applying
heat, well known throughout the world long prior to 1906, the date of the issue of the patent; that it is and for
many years has been known that one may for all ordinary purposes be used in the place of the other.
It is true that defendant's blast lamp is fed with alcohol, and its shape varies in unimportant details, for the purpose
of accommodating the principle, by which the flame is secured, to the different physical and chemical
composition of the fuel used therein; but the principle on which it works, its mode of application, and its
general design distinguish it in no essential particular from that used by the plaintiff.
The doctrine of mechanical equivalents was also invoked by Gsell and the Court ruled that it is applicable in
this case. The doctrine may properly be invoked to protect the patentee from colorable invasions of his
patent under the guise of substitution of some part of his invention by some well known mechanical
equivalent.
As quoted by the Court from a U.S. case: the inventor of an ordinary machine is, by his letters patent, protected
against all mere formal alterations and against the substitution of mere mechanical equivalents. Why should not
the inventor of a new combination receive the same protection? If he can not, then will his patent not be worth the
parchment on which it is written.

No one infringes a patent for a combination who does not employ all of the ingredients of the combination; but if
he employs all the ingredients, or adopts mere formal alterations, or substitutes, for one ingredient another which
was well known at the date of the patent as a proper substitute for the one withdrawn, and which performs
substantially the same function as the one withdrawn, he does infringe.
An alteration in a patented combination which merely substitutes another old ingredient for one of the ingredients
in the patented combination, is an infringement of the patent, if the substitute performs the same function and was
well known at the date of the patent as a proper substitute for the omitted ingredient.

Godines v. Court of Appeals (1993)
Doctrine:
according to the doctrine of equivalents, (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.
Facts:
Villaruz had a patent. It covers a utility model for a hand tractor or power tiller.
10

The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent. On
October 31, 1979, SV-Agro Industries caused the publication of the patent in a newspaper of general circulation.
In accordance with the patent, SV-Argo manufactured and sold the patented power tillers. In 1979, SV-Agro
Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it
discovered that power tillers similar to those patented were being manufactured and sold by Godines (petitioner).
Consequently, SV-Argo notified Godines about the existing patent and demanded that the latter stop selling and
manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before
the RTC a complaint for infringement of patent and unfair competition.
Godines defense was that the hand tractors that he made by him were different.
SV- Argo won in the RTC and CA
Issue:
1. W/N there was infringement?
Held/Ratio:
1. Yes, Tests have been established to determine infringement. These are (a) literal infringement; and (b) the
doctrine of equivalents. In using literal infringement as a test, ". . . 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."
Samples of the Godines floating power tiller have been produced and inspected by the trial court and compared
with that of the turtle power tiller of SV-Argo. In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same.
11

Also according to the doctrine of equivalents, (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. The reason

10. Components: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels; (4) a
protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an engine foundation on
the top midportion of the vacuumatic housing float to which the main engine drive is detachedly installed; (8) a frontal frame
extension above the quarter circularly shaped water covering hold (sic) in place the transmission case; (9) a V-belt connection
to the engine main drive with transmission gear through the pulley, and (10) an idler pulley installed on the engine foundation." 2
Who it works: "the engine drives the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives
the transmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt drives the pulley attached to
the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator handles the hand tractor
through a handle which is inclined upwardly and supported by a pair of substanding pipes and reinforced by a U-shaped G.I. pipe
at the V-shaped end."
11. Both have the circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a transmission box
housing the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of the vacuumatic housing
float and supported by the upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to
which the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in similar manner as
the turtle power tiller of plaintiff.

for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any
literal detail would be to convert the protection of the patent grant into a hollow and useless thing.
In this case, the trial court observed that, between the two power tillers operate on the same fundamental
principles. And it is sufficient to constitute equivalency that the same function can be performed in substantially
the same way or manner, or by the same or substantially the same, principle or mode of operation; but where
these tests are satisfied, mere differences of form or name are immaterial.
Also to establish an infringement, it is not essential to show that the defendant adopted the device or process in
every particular; Proof of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice
Brown, "it may be said that no device can be adjudged an infringement that does not substantially correspond with
the patent. But another construction, which would limit these words to exact mechanism described in the patent,
would be so obviously unjust that no court could be expected to adopt it.
EXTRA INFO: The court refused Godines defense that he only made hand tractors based on the specifications of the
customer (ala contractor), because as observed by the RTC Godines own answer admitted manufacturing the hand
tractors, plus it highly unlikely that Godines built hand tractors based on the customers verbal instruction only, without
written instructions. Also SV-Argos hand tractor were called turtle power tiller while Godines was floating power tiller.
Also the case is really short.

Del Rosario v. Court of Appeals (1996)
Doctrines:
Any new model of implements or tools of any industrial product even if not possessed of the quality of invention
but which is of practical utility is entitled to a patent for utility model.
Where a party introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its
correctness and validitythe decision of the Director of Patents in granting the patent is always presumed to be
correct, and the burden then shifts to the other party to overcome this presumption by competent evidence.
A utility model shall not be considered new if before the application for a patent it has been publicly known or
publicly used in this country or has been described in a printed publication or publications circulated within the
country, or if it is substantially similar to any other utility model so known, used or described within the country.
A patentee shall have the exclusive right to make, use and sell the patented machine, article or product for the
purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent, and such
making, using or selling by any person without authorization of the patentee constitutes infringement of his
patent.
In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result
by identical or substantially identical means and the principle or mode of operation must be substantially the
same.
Facts:
On 18 January 1993, Roberto del Rosario (Petitioner), holder of two Letters Patent dated 1983 and 1986 for audio
equipment commonly known as the sing-along system or karaoke, filed a complaint for patent infringement against Janito
Corporation (Respondent). Respondent allegedly manufactured and sold sing-along systems bearing the trademark
miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents.
Petitioner sought the issuance of a writ of preliminary injunction, which the trial court granted. However, the
Court of Appeals reversed, saying there was no infringement of the patents, reasoning that the karaoke system was a
universal product manufactured, advertised, and marketed in most countries of the world long before the Petitioners
patents were issued. Hence, Petitioner went to the SC.
Issue:
1. Is the petitioner entitled to the writ of preliminary injunction?
Held/Ratio:
1. YES. There are only two requisites to be satisfied for an injunction to issue, namely, the existence of a right to be
protected, and that the facts against which the injunction is to be directed are violative of said right.
In this case, Petitioner is shown to be a holder of Letters Patents for utility models. In the issuance of patents, the
Director of Patents determines whether the patent is new and whether the machine or device is the proper subject
of patent. In passing on an application, the Director decides not only questions of law but also questions of fact,
i.e. whether there has been a prior public use or sale of the article sought to be patented. Where the Letters Patent
are introduced in evidence and are in due form, it affords a prima facie presumption of its correctness and validity.
The decision of the Director is presumed correct, and the burden shifts to the respondent to overcome such
presumption.
Under the [then] Patent Law, a utility model shall not be considered new if before the application for a patent, it
has been publicly known or publicly used in this country or has been described in a printed publication or
publications circulated within the country, or if it is substantially similar to any other utility model so known,
used, or described within the country. Respondent failed to present evidence to show that the utility models
covered by Petitioners patents were not new. The witness stated in court that there were a lot of sing-along
systems sold prior to the patents, but his testimony was destroyed on cross examination upon showing that the

alleged dates when they were supposedly sold publicly were all inaccurate or fabricated, and no other evidence
was presented to back up such claims.
The rights of the Petitioner have been sufficiently established. Petitioner as patentee shall have the exclusive right
to make, use, and sell the patented machine, article, or product for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent, and such making, using, or selling by any
person without authorization of the patentee constitutes patent infringement. Petitioner likewise established that
Respondent was manufacturing a similar sing-along system which infringed Petitioners patented models.
While Respondent tried to show the differences between its miyata equipment and petitioners products,
Respondent merely focused on the differences with the first patent, ignoring the second, which was an
improvement of the first. It was shown that Respondents equipment involved substantially the same modes or
operation and produce substantially the same if not identical results when used. Respondent likewise did not
present a comparison of his own and Petitioners equipment to refute such finding.
Thus, the issuance of a writ of preliminary injunction is justified.

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koche roducts, Inc. v.

8o|ar harmaceut|ca|s (1984) (ualmane Lhe Sleeplng lll)

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