Professional Documents
Culture Documents
SECOND DIVISION September-October 1990, Vol. III, No. 5 issue of the Bureau of Patents
Official Gazette.4
[G.R. No. 118708. February 2, 1998]
Sometime in November 1993, private respondent, through its president,
CRESER PRECISION SYSTEMS, INC., petitioner, vs. Mr. Gregory Floro, Jr., discovered that petitioner submitted samples of its
patented aerial fuze to the Armed Forces of the Philippines (AFP) for testing.
COURT OF APPEALS AND FLORO He learned that petitioner was claiming the aforesaid aerial fuze as its own
INTERNATIONAL CORP., respondents. and planning to bid and manufacture the same commercially without license
or authority from private respondent. To protect its right, private respondent
DECISION on December 3, 1993, sent a letter 5 to petitioner advising it fro its existing
patent and its rights thereunder, warning petitioner of a possible court action
MARTINEZ, J.: and/or application for injunction, should it proceed with the scheduled testing
by the military on December 7, 1993.
This petition for review on certiorari assails the decision1. The decision of
the Court of Appeals was penned by Justice Gloria C. Paras and concurred in In response to private respondents demand, petitioner filed on
by Justice Salome A. Montoya and Justice Hector L. Hofilea. December 8, 1993 a complaint6 for injunction and damages arising from the
alleged infringement before the Regional Trial Court of Quezon City, Branch
1 of the Court of Appeals dated November 9, 1994 in C.A.-G.R. SP. No. 88. The complaint alleged, among others: that petitioner is the first, true and
34425 entitled Floro International Corp. vs. Hon. Tirso D.C Cruz and Creser actual inventor of an aerial fuze denominated as Fuze, PDR 77 CB4 which is
Precision System, Inc., the dispositive portion of which reads: developed as early as December 1981 under the Self-Reliance Defense
Posture Program (SRDP) of the AFP; that sometime in 1986, petitioner began
WHEREFORE, THE PETITION IS HEREBY GRANTED. THE
supplying the AFP with the said aerial fuze; that private respondents aerial
COMPLAINT FOR INJUNCTION AND DAMAGES, CIVIL CASE
fuze is identical in every respect to the petitioners fuze; and that the only
NO. 93-1856 BEFORE THE RESPONDENT JUDGE IS HEREBY
difference between the two fuzes are miniscule and merely cosmetic in nature.
ORDERED DISMISSED AND HIS ORDERS THEREIN OF
Petitioner prayed that a temporary restraining order and/or writ of preliminary
DECEMBER 29, 1993 AND MAY 11, 1994 ARE ORDERED SET
injunction be issued enjoining private respondent including any and all
ASIDE.
persons acting on its behalf from manufacturing, marketing and/or profiting
Private respondent is a domestic corporation engaged in the therefrom, and/or from performing any other act in connection therewith or
manufacture, production, distribution and sale of military armaments, tending to prejudice and deprive it of any rights, privileges and benefits to
munitions, airmunitions and other similar materials.2 which it is duly entitled as the first, true and actual inventor of the aerial fuze.
On January 23, 1990, private respondent was granted by the Bureau of On December 10, 1993, the trial court issued a temporary restraining
Patents, Trademarks and Technology Transfer (BPTTT), a Letters Patent No. order. Thereafter, hearings were held on the application of petitioner for the
For resolution before this Court is the Motion for WHEREFORE, premises considered, the Motion for
Reconsideration filed by the defendant and the plaintiffs Opposition Reconsideration is hereby denied for lack of merit.
thereto. The Court finds no sufficient cause to reconsider its order SO ORDERED.
dated December 29, 1993. During the hearing for the issuance of
FIRST DIVISION
A. Musicmate and Asahi. Q. So this is also wrong. Panasonic 1986 is also wrong?
Q. Now do you recall that your lawyer filed with this Honorable A. Panasonic I think.
Court an Urgent Motion to Lift Temporary Restraining Order of Q. So you dont think this is also correct.
this Honorable Court. I am sure you were the one who
provided him with the information about the many other A. The date?
companies selling the sing-along system, is that right? These Q. So you dont think also that this allegation here that they
18 which you enumerated here. manufactured in 1986 is correct?
A. More than that because x x x A. Wrong. Earlier.
It also stated: In particular, and without in any way limiting the scope of unfair competition,
the following shall be deemed guilty of unfair competition:
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 (a) Any person, who in selling his goods shall give them the general
substance of the thing will be sufficient. "In one sense," said Justice Brown, appearance of goods of another manufacturer or dealer, either as to the
"it may be said that no device can be adjudged an infringement that does not goods themselves or in the wrapping of the packages in which they are
substantially correspond with the patent. But another construction, which contained, or the devices or words thereon, or in any other feature of their
would limit these words to exact mechanism described in the patent, would appearance, which would be likely to influence purchasers that the goods
be so obviously unjust that no court could be expected to adopt it. . . . offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
The law will protect a patentee against imitation of his patent by other forms appearance as shall deceive the public and defraud another of his legitimate
and proportions. If two devices do the same work in substantially the same trade. . . .
way, and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape. 16 xxx xxx xxx
We pronounce petitioner liable for infringement in accordance with Section Considering the foregoing, we find no reversible error in the decision of the
37 of Republic Act No. 165, as amended, providing, inter alia: Court of Appeals affirming with modification the decision of the trial court.
Petitioner is doing business under the firm name and style of SWAN
MANUFACTURING" while private respondent is likewise doing business
Republic of the Philippines under the firm name and style of "SUSANA LUCHAN POWDER PUFF
SUPREME COURT MANUFACTURING."
Manila
It is undisputed that petitioner is a patent holder of powder puff namely:
SECOND DIVISION
1. UM-423 (extended and/or renewed under Extension No. UM-109 for a
G.R. L-45101 November 28, 1986 period of 5 years from October 6, 1971)
ROSARIO C. MAGUAN (formerly ROSARIO C. TAN), petitioner, 2. UM-450 (extended and/or renewed under Extension No. UM110 for a
vs. period of 5 years from January 26, 1972)
THE HONORABLE COURT OF APPEALS and SUSANA LUCHAN,
respondents. 3. UM 1184, for a period of 5years fromApril 5, 1974.(Petition, Rollo, pp. 6-7).
Ambrosio Padilla Law Offices for petitioner. In a letter dated July 10, 1974 (Annex "D", Rollo, p. 86), petitioner informed
private respondent that the powder puffs the latter is manufacturing and
selling to various enterprises particularly those in the cosmetics industry,
resemble Identical or substantially Identical powder puffs of which the former
PARAS, J.:p is a patent holder under Registration Certification Nos. Extension UM-109,
Extension UM-110 and Utility Model No. 1184; petitioner explained such
production and sale constitute infringement of said patents and therefore its
Submitted on December 9, 1977 for Our decision is this petition for review on
immediate discontinuance is demanded, otherwise it will be compelled to
certiorari of the two Resolutions of the Court of Appeals, the first dated July 6,
take judicial action. (Rollo, pp. 7-8).
1976, setting aside its Decision of February 16, 1976 in CA-G.R. No.
SP-04706, titled "SUSANA LUCHAN v. Hon. HONRADO, et al." wherein it
ruled for the dismissal of the petition for lack of merit and at the same time Private respondent replied stating that her products are different and
nullifying the writ of preliminary injunction it had previously issued; and the countered that petitioner's patents are void because the utility models
applied for were not new and patentable and the person to whom the patents
(2) the person to whom the patents were issued was not the true and actual Private respondent questioned the propriety of the trial court's issuance of
author of the utility models applied for, and neither did she derive her rights the Writ of Preliminary Injunction arguing that since there is still a pending
from any true and actual author of these utility models. cancellation proceedings before the Philippine Patent Office concerning
In an Order dated September 11, 1975, the trial court denied private WHEREFORE, finding no merit in the herein petition, the same is hereby
respondent's motion for reconsideration (Annex "N", Rollo, p. 142). dismissed and the preliminary injunction previously issued by this Court is
hereby set aside, with costs.
In challenging these Orders private respondent filed a petition for certiorari
with the respondent court on September 29, 1975 (Annex "D", Rollo, pp. SO ORDERED. (CA Decision, Rollo, p. 189).
148-171) reiterating among other things the invalidity of petitioner's patents
and prayed that the trial court be restrained from enforcing or continuing to ln said decision respondent court stated that in disposing of the petition it
enforce the following: tackled only the issue of whether the court a quo acted with grave abuse of
discretion in issuing the challenged orders. It made clear the question of
(1) Order dated September 18, 1974, granting the preliminary injunction; whether the patents have been infringed or not was not determined
considering the court a quo has yet to decide the case on the merits (Ibid., p.
(2) Writ of preliminary injunction dated September 18, 1974; and 186).
(3) Order dated September 11, 1974 denying petitioner's motion petition for Feeling aggrieved, private respondent moved to reconsider the
reconsideration. afore-mentioned Decision based on the following grounds:
On October 15, 1975, the Writ of Preliminary Injunction was issued by the I
respondent Court of Appeals as follows:
THAT THIS HONORABLE COURT ERRED IN NOT APPRECIATING THE
NOW, THEREFORE, you, respondents, and/or any person/persons acting EXISTENCE OF A FAIR QUESTION OF INVALIDITY OF PRIVATE
on your stead, are hereby ENJOINED to RESTRAIN from enforcing or RESPONDENT'S PATENTS.
continuing to enforce, the proceedings complained of in the petition to wit: 1)
Order dated September 18, 1974, granting the preliminary injunction; 2) Writ II
of Preliminary Injunction dated September 18, 1974; and Order dated
September 11, 1975, denying petitioner's motion for reconsideration, all THAT THIS HONORABLE COURT ERRED IN NOT REJECTING THE
issued in connection with Civil Case No. 19908, UNTIL FURTHER ORDERS THEORY OF RESPONDENT JUDGE THAT HE HAS NO JURISDICTION
FROM THIS COURT. (Annex "P", Rollo, p. 1.73) TO INVALIDATE THE PATENTS UPON GROUND OF LACK OF NOVELTY
Thus, on July 6, 1976, respondent court made a complete turnabout from its (1) Whether or not in an action for infringement the Court a quo had
original decision and promulgated a Resolution, the dispositive portion of jurisdiction to determine the invalidity of the patents at issue which invalidity
which reads: was still pending consideration in the patent office.
WHEREFORE, our decision is hereby set aside. The writ of certiorari is (2) Whether or not the Court a quo committed grave abuse of discretion in
ordered issued. Accordingly, the challenged orders, Exhibit H and H-1 and the issuance of a writ of preliminary injunction.
the order denying the motion for reconsideration (Annex "K", Petition), are
hereby set aside. The writ of preliminary injunction previously ordered by this (3) Whether or not certiorari is the proper remedy.
Court and ordered lifted by the Decision now being set aside is hereby
reinstated and made permanent. Without pronouncement as to costs. The first issue has been laid to rest in a number of cases where the Court
ruled that "When a patent is sought to be enforced, the questions of invention,
SO ORDERED. (CA Resolution, Rollo, p. 226). novelty or prior use, and each of them, are open to judicial examination."
The burden of proof to substantiate a charge of infringement is with the The law provides:
plaintiff. But where the plaintiff introduces the patent in evidence, and the
same is in due form, there is created a prima facie presumption of its SEC. 9. Invention not considered new or patentable. An invention shall
correctness and validity. The decision of the Commissioner (now Director) of not be considered new or capable of being patented if it was known or used
Patent in granting the patent is presumed to be correct. The burden of going by others in the Philippines before the invention thereof by the inventor
forward with the evidence (burden of evidence) then shifts to the defendant named in an application for patent for the invention; or if it was patented or
to overcome by competent evidence this legal presumption. described in any printed publication in the Philippines or any foreign country
more than one year before the application for a patent therefor; or if it had
been in public use or on sale in the Philippines for more than one year before
Relative thereto "the judge whose order is under attack is merely a nominal
party; wherefore, a judge in his official capacity should not be made to
appear as a party seeking reversal of a decision that is unfavorable to the
action taken by him." (Hon. Alcasid v. Samson, 102 Phil. 735-736; Tarona v.
Sayo, 67 SCRA 508, 524; Lim Se v. Argel, 70 SCRA 378).
SO ORDERED.