PASCUAL GODINES vs.

THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH DIVISION and SV-

AGRO ENTERPRISES, INC.
GR No. 97343, September 13, 1993

Facts:

On July 15, 1976, Magdalena S. Villaruz obtained a patent on a utility model for a hand tractor or power tiller,
the main components, among others, are the following: "(1) a vacuumatic house float; (2) a protective water
covering for the engine main drive; and (3) an engine foundation on the top midportion of the vacuumatic
housing float to which the main engine drive is detachedly installed."
This was acquired by SV-Agro Industries Enterprises, Inc., through assignment from Magdalena Villaruz, its
chairman and president. On October 31, 1979, SV-Agro Industries caused the publication of the patent in
Bulletin Today, a newspaper of general circulation.

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 by private respondent
were being manufactured and sold by petitioner. Notification of demand to stop was then made but petitioner
failed to comply, thus, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of
patent and unfair competition. The court held petitioner liable for both acts. The decision was affirmed by the
appellate court. Hence, this petition.

Issue:

Whether or not there was indeed infringement by petitioner who claims that he merely performs his clients’
orders for such specifications similar to private respondent.

Ruling:

Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not
engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his
customers who gave their own specifications and added that those made by him were different from those
being manufactured and sold by private respondent.

This contention appears untenable. He admits in his Answer that he has been manufacturing power tillers or
hand tractors, selling and distributing them long before respondent started selling its turtle power tiller,
meaning that petitioner is principally a manufacturer of power tillers, not upon specification and design of
buyers, but upon his own specification and design. It would also be unbelievable that petitioner would
fabricate power tillers similar to the turtle power tillers of respondent upon specifications of buyers without
requiring a job order where the specification and designs of those ordered are specified. No document was
ever been presented showing such job orders. On the other hand, it is also highly unusual for buyers to order
the fabrication of a power tiller or hand tractor and allow petitioner to manufacture them merely based on
their verbal instructions. This is not only contrary to the usual business and manufacturing practice but also
time consuming and costly because it involves a trial and error method, repeat jobs and material wastage.

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." To determine whether the particular item falls within the literal meaning of the patent claims,
the court must juxtapose the claims of the patent and the accused product within the overall context of the
claims and specifications, to determine whether there is exact identity of all material elements.

Samples of the petitioner's floating power tiller have been produced and inspected by the court and
compared with that of the turtle power tiller of the defendant. In appearance and form, both the floating
power tillers of the petitioner and the turtle power tiller of the respondent are virtually the same. Viewed
from any perspective or angle, the power tiller of the petitioner is identical and similar to that of the turtle
power tiller of respondent in form, configuration, design and appearance. The parts or components thereof
are virtually the same. In operation, the floating power tiller operates also in similar manner.

Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent
issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor
having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the harrow
housing with its operating handle and the paddy wheel protective covering."

Recognizing that the logical fallback position of one in the place of petitioner is to aver that his product is
different from the patented one, courts have adopted the doctrine of equivalents which recognizes that
minor modifications in a patented invention are sufficient to put the item beyond the scope of literal
infringement. Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a
prior invention by incorporating its innovative concept and, albeit with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same
result." The reason 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. Such imitation would leave room for — indeed encourage — the unscrupulous copyist to make
unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would
be enough to take the copied matter outside the claim, and hence outside the reach of the law.

WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED and this
petition DENIED for lack of merit.