IPL (Patent) - E
1. Pearl & Dean vs SM (2003) Dont copyright the
designs, patent the product!
Facts:
Pearl & Dean (PD) manufactured advertising display units
referred to as Light Boxes. It had a copyright over the
illuminated display units.
After a failed deal between PD and SM, the latter began
using PDs designs to make its own light boxes.
PD sued SM for trademark and copyright infringment.
Issue: Whether or not PDs action will prosper.
Held: No. PDs copyright over the designs was in the
category of prints, pictorial illustrations, advertising copies,
labels, tags and box wraps. Hence, the copyright cannot
extend the light box.
There can also be no infringment of patent, because
there is no patent to speak of. Perhaps, PD was thinking that
since his designs are procted by copyright, the lightboxes are
protected. Thats not true.
2. Smith Kline Beckman vs CA and Tryco Pharma (2003)
Facts:
Petitioner Smith Kline obtained a patent over an invention
titled Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate.
Meanwhile, respondent Tryco started manufacturing
and selling a drug called Impregon which contained
Albendazole, which is claimed to be effective against
gastrointestinal roundworms, lungworms, tapeworms, and
others.
Smith Kline sued Tryco for patent infringement,
claiming that although its patent made no mention of
Albendazole, the Doctrine of Equivalents applied in the
case.
Issue: Whether or not the Doctrine of Equivalents applies
here.
Held: No. Identity of result does not always amount to
infringement, 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.
3. Manzano vs CA and Madolaria as assignor to New
United Foundry Manufacturing Corp (1997) Gas
Burner
Facts:
Petitioner Angelita Manzano filed an action to cancel the
patent of United Foundry over a gas burner, claiming that it
was her husband who developed it when he was still an
employee of United Foundry.
United Foundry claimed that Angelitas husband may
have helped developed the model, but Melecia Madolaria
made innovations and which translated to the gas burners it
manufactures up to the present time.
The Philippine Patent Office ruled in favor of United
Foundy. It was appealed by the CA. Hence, this petition.
Issue: Whether or not Manzanos appeal will prosper.
Held: No. One important requisite of patentability is
novelty. And, novelty is a factual question addressed to those
possessing the expertise, such as the Philippine Patent
Office.
4. Maguan vs CA and Susana Luchan (1986) Powder
Puff Girls
Facts:
Petitioner, who was doing businees under the firm name of
Swan Manufacturing, sued respondent Susana Luchan
Powderpuff Manufacturing for damages with prayer for
preliminary injunction, claiming that the latter was
manufacturing and selling powderpuffs which was identical
to those manufactured by the former protected by a patent.
Susana argued that the ones she manufacture and sell are
different and countered that Swans patents are void on the
ground of lack of novelty. She added that the powder puffs
involved in this case were already being publicly sold years
before Swan applied for the patent.
The trial court nevertheless granted preliminary
injunction. Susana the trial court couldnt do that since there
was still a pending petition for cancellation against Swans
patent.
Issue: Whether or not in an action for infringment the Court
has jurisdiction to determnine the invalidity of the patents at
issue which invalidity was still pending consideration in the
patent office.
Held: Yes. Under the law, if the Court shall find the patent
or any claim thereof invalid, the Director of Patents shall on
certification of the final judgment issue an order cancelling
the patent or the claims found invalid.
Swan lost in this case in the end. The Supreme Court
upheld the findings of the CA that Swans powder puff was
merely a product of a complicated and impractical versions
of old processes.
5. Frank vs Kosuyama (1933) Spindle since Time
Immemorial
Facts:
The plaintiffs, Frank and Gohn, has a patent issued by the
US on an improvement in hemp stripping machines. On the
basis of such, they filed sued Kosuyama for infrignement.
The plaintiffs were claiming that the spindle constitutes
the essential difference between the machine in question and
other machines. The lower court dismissed the complaint,
ruling that there was no novelty and its patent from US was
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not a patent for a pioneer or primary invention but only for
some new and useful improvement in hemp stripping
machines.
Issue: Whether or not plaintiffs invented something.
Held: No. The hemp stripping machine of the plaintiffs does
not constitute an invention on the ground of lack of novelty,
originality and precedence. There were machines already
making use of the supposed invention long before.
6. Aguas vs De Leon (1982) Mosaic Precast Tiles
Facts:
De Leon has a patent on useful improvements in the process
of making mosaic pre-cast tiles. Later on, Aguas started
manufacturing and selling tiles embodying said patent
invention.
De Leon sued Aguas for patent infringment. The latter
argued that De Leon is not the inventor of the said process.
Issue: Whether or not the alleged invention or discovery of
De Leon is patentable.
Held: Yes. De Leon never claimed to have discovered or
invente dthe old process of tile-making. He only claimed to
have intdouced an improvement of said process. In fact,
Letters Patent No. 658 was issued by the Philippine Patent
Office to the private respondent Conrado G. De Leon, to
protect his rights as the inventor of an alleged new and
useful improvement in the process of making pre-cast tiles.
Indeed, section 7, Republic Act No. 165, as amended
provides: Any invention of a new and useful machine,
manufactured product or substance, process, or an
improvement of the foregoing, shall be patentable.
7. Godines vs CA and SV-Agro Enterprises (1993)
Facts:
SV-Agro has a patent (acquired from Magdalena Villaruz)
covering a hand tractor or power tiller. It later on discovered
that Pascual Godines was manufacturing and selling a tractor
similar to the ones covered by its patent.
SV-Agro sued for patent infringement. Godines argued
that he merely manufactures tractors on the basis of the
special order of his customers, and that those made by him
were different from those being manufactured and sold by
SV-Agro.
Issue: Whether or not Godiness defense is tenable.
Held: No. In ruling for SV-Agro, the Court discussed two
tests to determine infringment: (a) literal infringment and (b)
doctrine of equivalents. Since, Godines made a huge deal
about certain differences between the two products involved
here, the Court applied the doctrine of equivalents.
8. US vs Adams (1966) Wet Battery
Facts:
Bert Adams obtained a patent on a wet battery he developed.
Its a nonrechargeable electrical battery composed of two
electrodesone of magnesium and the other of cuprous
chloried, with a plain or salt water electrolyte. The object of
the invention is to provide constant voltage and current
without the use of acids and without the generation of
dangerous fumes. Another object was to provide a battery
which may be manufactured and distributed in a dry
condition and rendered serviceable by filling the container
with water. Adams did not, however, claim this important
distinguishing factor of his invention.
He brought his invention before the US Army and
Navy, but the National Bureau of Standards felt that Adams
was asking for way too much. Instead, the government
developed its own batteries similar to those developed by
Adams.
Hence, Adams sued for patent infringement. US
challegned the validity of Adams patent on the ground of
lack of novelty as well as obviousness. It argued that wet
batteries comprising a zinc anode and silver chloride cathode
were old in the art; and that the prior art showed that
magnesium could be substituted for zinc and cuprous
chloride for silver chloride.
Issue: Whether or not Adams invention was of novelty.
Held: Yes. The Court noted several errors in the
Government's position. First, the Adam's battery was water-
activated, which set his device apart from the prior art, even
though "water-activated" was not cited in the claims. In fact,
this feature plays the central role in one of the great stories
of patent litigation lore: Adams's attorney arose before the
Supreme Court, took a drink from his glass of water, and
then dropped a tiny Adams battery into the glass. The
inventive battery immediately lit a tiny light that continued
to burn throughout the argument. Some accounts suggest
that the attorney knew he had won the case when the Justices
kept their eyes on the tiny burning light throughout the
remainder of the argument.
Despite the fact that each of the elements of the Adams
battery was well known in the prior art.... [K]nown
disadvantages in old devices which would naturally
discourage the search for new inventions may be taken into
account in determining obviousness.
The Supreme Court's Adams opinion invokes several
secondary considerations in favor of nonobviousness. In
particular, the Court observed that the record disclosed the
skepticism of experts before the invention, the endorsement
of experts after disclosure, and unexpected results. In a case
that featured a great deal of prior art very close to the
invention, these secondary considerations evidently played
an important, perhaps even dispositive, role.
9. Goodyear Tire Rubber Company vs Ray-O-Vac
Company (1944) Leakproff Drycell Battery
Facts:
Anthony had a patent (eventually assigned to Ray-O-Vac)
for a leakproof dry cell for a flash light battery. The old dry
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cell batteries tend leak after some time and damagage the Ching got angry and went all the way to the Supreme
flash light. Court.

Anthony sued Goodyear for infringement. Goodyear
contended that the means Anthony adopted was obvious.
Issue: Whether or not Anthonys means were obvious.
Held: Maybe so, but this is not enough to negative invention.
The Court considered that for many years prior to Anthonys
invention, no one was able to cure the defects of old dry cell
batteries. But once the method was discovered, it
commended itself to the public as evidenced by marked
commercial success. These factors were entitled to weight in
determining whether the improvement amounted to
invention and should, in a close case, tip the scales in favor
of patentability.
10. Diamond vs Diehr (1981) The Patent Examiner
Hates Math
Facts:
Diehr developed a process for curing synthetic rubber, which
happened to include the use of a mathematical forumla. He
filed a patent application, but Diamond, the patent examiner,
denied the application on the ground that it involved a
mathematical formula and hence not patentable under the
law.
Issues: (1) Whether or not Chings model was a proper
subject of copy right. (2) Whether or not Chings copyright
entitled him to the issuance of a search warrant.
Held:
First Issue No.
We agree with the contention of the petitioner (citing Section
171.10 of R.A. No. 8293), that the authors intellectual
creation, regardless of whether it is a creation with utilitarian
functions or incorporated in a useful article produced on an
industrial scale, is protected by copyright law. However, the
law refers to a work of applied art which is an artistic
creation. It bears stressing that there is no copyright
protection for works of applied art or industrial design which
have aesthetic or artistic features that cannot be identified
separately from the utilitarian aspects of the article.
Functional components of useful articles, no matter how
artistically designed, have generally been denied copyright
protection unless they are separable from the useful article.
In this case, the petitioners models are not works of applied
art, nor artistic works. They are utility models, useful
articles, albeit with no artistic design or value.
Second Issue No.

Issue: Whether or not application should be granted. That the works of the petitioner may be the proper subject of
a patent does not entitle him to the issuance of a search
Held: Yes. Patentable claims do not become invalid because warrant for violation of copyright laws. Copyright and patent
they include mathematical formulas. It is now commonplace rights are completely distinct and separate from one another,
that an application of a law of nature or mathematical and the protection afforded by one cannot be used
formula to a known structure or process may deserve patent interchangeably to cover items or works that exclusively
protection. In deciding whether Plaintiff"s claim process is pertain to the others.
eligible for patent protection under 101, the claims must be
considered as a whole. Plaintiff"s claims are nothing more
than a process for molding rubber products, not an attempt
to patent a mathematical formula. Plaintiff"s claims, which
contain a mathematical formula, transform an article to a
different state, which is performing a function which the
patent laws were designed to protect.

In other words, Diehr was not trying to patent a math

forumla, the math formula was merely a process incidental
to the process for curing synthetic rubber.

11. Ching vs Salinas (2005)

Facts:

Ching has a copyright for a utility model, described as Leaf

Spring Eye Busing for Automobile made up of plastic. NBI
investigation revealed that Salinas was manufacturing and
selling the models covered by the copyright. The trial court
issued search warrants. Salinas filed a motion to quash the
warrants on the ground that Salinas model was not a proper
subject of copyright as it was neither artistic nor literary. The
trial court granted Salinas motion and ruled that the Chings
work covered by copyright pertained to solutions to
technical problems and not literary/artistic as required by
Art. 172 of the Intellectual Property Code.

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