ROBERTO L. DEL ROSARIO vs.

 COURT OF APPEALS AND JANITO

CORPORATION
G.R. No. 115106 March 15, 1996

FACTS:
On 18 January 1993 petitioner filed a complaint for patent infringement against private
respondent Janito Corporation. Roberto L. del Rosario alleged that he was a patentee of an audio
equipment and improved audio equipment commonly known as the sing-along system
or karaoke under Letters Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No.
UM-6237 dated 14 November 1986 issued by the Director of Patents. The effectivity of both
Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June
1988 and 14 November 1991, respectively. He described his sing-along system as a handy multi-
purpose compact machine which incorporates an amplifier speaker, one or two tape mechanisms,
optional tuner or radio and microphone mixer with features to enhance ones voice, such as the
echo or reverb to stimulate an opera hall or a studio sound, with the whole system enclosed in
one cabinet casing.
In the early part of 1990 petitioner learned that private respondent was manufacturing a
sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not
identical to the sing-along system covered by the patents issued in his favor. Thus he sought
from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent,
its officers and everybody elsewhere acting on its behalf, from using, selling and advertising
the miyata or miyata karaoke  brand, the injunction to be made permanent after trial, and praying
for damages, attorneys fees and costs of suit.
On 5 February 1993 the trial court temporarily restrained private respondent from
manufacturing, using and/or selling and advertising the miyata sing-along system or any sing-
along system substantially identical to the sing-along system patented by petitioner until further
orders.
On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on
the basis of its finding that petitioner was a holder of a utility model patent for a sing-along
system and that without his approval and consent private respondent was admittedly
manufacturing and selling its own sing-along system under the brand name miyata which was
substantially similar to the patented utility model[3] of petitioner.
Private respondent assailed the order of 24 February 1993 directing the issuance of the writ
by way of a petition for certiorari with prayer for the issuance of a writ of preliminary injunction
and a temporary restraining order before respondent Court of Appeals.
On 15 November 1993 respondent appellate court granted the writ and set aside the
questioned order of the trial court. It expressed the view that there was no infringement of the
patents of petitioner by the fact alone that private respondent had manufactured the miyata
karaoke or audio system, and that the karaoke system was a universal product manufactured,
advertised and marketed in most countries of the world long before the patents were issued to
petitioner. The motion to reconsider the grant of the writ was denied; hence, the instant petition
for review.

ISSUE:
Whether or not respondent Court of Appeals erred in finding the trial court to have
committed grave abuse of discretion in enjoining private respondent from manufacturing, selling
and advertising the miyata karaoke brand sing-along system for being substantially similar if not
identical to the audio equipment covered by letters patent issued to petitioner.

HELD:
Yes, the CA erred.
Sec. 55 of R.A. 165 as amended, known as The Patent Law, provides:

Sec. 55. Design patents and patents for utility models.  - (a) Any new, original, and ornamental
design for an article of manufacture and (b) new model or implements or tools or of any
Industrial product or of part of the same, which does not possess the quality of invention but
which is of practical utility by reason of its form, configuration, construction or composition,
may be protected by the author thereof, the former by a patent for a design and the latter by a
patent for a utility model, in the same manner and subject to the same provisions and
requirements as relate to patents for inventions insofar as they are applicable, except as otherwise
herein provide x x x

Admittedly, petitioner is a holder of Letters Patent No. UM-5629 dated 2 June 1985 issued
for a term of five (5)  years from the grant of a Utility Model herein described:

The construction of an audio equipment comprising a substantially cubical casing having a

window at its rear and upper corner fitted with a slightly inclined control panel, said cubical
(casing) having a vertical partition wall therein defining a rear compartment and a front
compartment, and said front compartment serving as a speaker baffle; a transistorized amplifier
circuit having an echo section and writhed in at least the printed circuit boards placed inside
said rear compartment of said casing and attached to said vertical partition wall, said
transistorized amplifier circuit capable of being operated from outside, through various controls
mounted on said control panel of such casing; a loud speaker fitted inside said front
compartment of said casing and connected to the output of the main audio amplifier section of
said transistorized amplifier circuit and a tape player mounted on the top wall of said casing
and said tape player being connected in conventional manner to said transistorized amplifier
circuit.

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 petitioner are for utility models of audio equipment. In issuing, reissuing or withholding
patents and extensions thereof, 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 petitioner introduces the
patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and
validity. The decision of the Director of Patents in granting the patent is always presumed to be
correct, and the burden then shifts to respondent to overcome this presumption by competent
evidence.
Under Sec. 37 of The Patent law, petitioner as 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. Under Sec. 55 of The 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 corporation, however, failed to present before the trial court
competent evidence that the utility models covered by the Letters Patents issued to petitioner
were not new.
Petitioner established before the trial court that respondent Janito Corporation was
manufacturing a similar sing-along system bearing the trademark miyata which infringed his
patented models. 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. Both petitioners and respondents models involve substantially
the same modes of operation and produce substantially the same if not identical results when
used. Hence, petitioner had established before the trial court prima facie proof of violation of his
rights as patentee to justify the issuance of a writ of preliminary injunction in his favor during the
pendency of the main suit for damages resulting from the alleged infringement.