Roberto Del Rosario vs Court of Appeals

255 SCRA 152 – Mecantile Law – Intellectual Property Law – Law on Patents –
Infringement – Karaoke Machine
Roberto Del Rosario was granted a patent for his innovation called the “Minus One”
karaoke. The patent was issued in June 1988 for five years and was renewed in November
1991 for another five years as there were improvement introduced to his “minus one”
karaoke. In 1993, while the patent was still effective, Del Rosario sued Janito Corporation, a
Japanese company owned by Janito Cua, for allegedly infringing upon the patent of Del
Rosario. Del Rosario alleged that Janito was manufacturing a sing-along system under the
brand “miyata karaoke” which is substantially, if not identical, the same to his “minus one”
karaoke. The lower court ruled in favor of Del Rosario but the Court of Appeals ruled that
there was no infringement because the karaoke system was a universal product
manufactured, advertised, and marketed all over the world long before Del Rosario was
issued his patents.
ISSUE: Whether or not the Court of Appeals erred in its ruling.
HELD: Yes. The Patent Law expressly acknowledges that 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. Here, there is no dispute that the letters
patent issued to Del Rosario are for utility models of audio equipment. It is elementary that a
patent may be infringed where the essential or substantial features of the patented invention
are taken or appropriated, or the device, machine or other subject matter alleged to infringe
is substantially identical with the patented invention. 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. In the case at bar, miyata karaoke was proven to have substantial if not identical
functionality as that of the minus one karaoke which was covered by the second patent issued
to Del Rosario. Further, Janito failed to present competent evidence that will show that Del
Rosario’s innovation is not new.