Vas-Cath Inc. v. Mahhurkar, 935 F.2d 1555, 19 U.S.P.Q.2d 1111
Shoemart Incorporated (2003)
(Fed Cir. 1991)
Doctrine: Patent is deficient and unenforceable if the inventor
failed to provide a sufficient written description of his invention.
Facts: Vas-Cath (plaintiff) sued Mahurkar (defendant) for
declaratory judgment of non-infringement and invalidity of two
of Mahurkars United States patents, the 329 and 141 patents.
Mahurkar counterclaimed that Vas-Cath infringed the patents.
Mahurkar had filed a United States design patent application
on March 8, 1982 that claimed a design for a catheter, but
later abandoned the application on November 30, 1984.
After the United States design application was filed but
before abandonment, Mahurkar filed a Canadian design
application with the same figures as the U.S. design
application, the Canadian design issuing as a patent on
August 9, 1982. Mahurkar filed utility applications in the
United States for a catheter on October 1, 1984 and January
29, 1986, where these utility applications included the same
figures as the abandoned U.S. design application and the
issued Canadian design patent.
These utility applications also claimed priority to the abandoned
U.S. design application. The patent office noted, during the utility
application prosecution, that these new patent application claims
were fully supported by the disclosure in the abandoned design
application. The utility applications eventually issued as the 329
and 141 patents. At trial, Vas-Cath argued that the design
application did not sufficiently support the utility application so
as to provide the earlier priority date. If the utility patents were
not permitted to rely on the earlier design application filing date,
then the Canadian design patent would become prior art against
the later-filed U.S. utility patents. The district court agreed with
Vas-Cath and held the utility patents anticipated. Mahurkar
appealed.
Issue: WON a design patent application provide a basis of support
for later utility claims sufficient to satisfy the written description
requirement?
Held: Yes. An applicant must point out what he views as his
invention in the claims pursuant to 35 U.S.C. 112, but he must
further make it clear that he was in possession of the invention as
of the filing date. In this manner, 35 U.S.C. 112 includes both a
written description requirement and the requirement that a
patent include at least one claim.
In Evans v. Eaton, the United States Supreme Court held that a
patent is deficient and unenforceable if the inventor failed
to provide a sufficient written description of his invention. In
Rengo, 657 F.2d 535 (1981), the third circuit noted that the
written description requirement prevents an inventor from
broadening his claims further than he is entitled to by forcing him
to fully describe the invention. Drawings alone may be sufficient
to provide support under 35 U.S.C. 112, and the court of appeals
looked to the figures and the claims, and determined that the
claims describe the figures. Mahurkar provided expert testimony
that one of skill in the art would be able, upon reviewing the
original design figures, to understand what they showed.
Reversed and remanded.
260. Pearl & Dean v.
(lightboxes not patented)
Doctrine: The Patent Law has a three-fold purpose: first,
patent law seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the invention
once the patent expires; third, the stringent requirements for
patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public
Facts:
Pearl & Dean (P&D) is engaged in the manufacture of advertising
display units referred to as light boxes. These units utilize
specially printed posters sandwiched between plastic sheets and
illuminated with backlights. It was able to secure a certificate of
copyright registration over these illuminated display units. The
advertising light boxes were marketed under the trademark
Poster Ads. The application for registration of the trademark
was filed with the Bureau of Patents, Trademarks, and
Technology. P&D employed the services of Metro Industrial
Services (MIS) to manufacture its advertising displays.
In 1985, P&D negotiated with defendant Shoemart, Inc. (SMI) for
the lease and installation of the light boxes in SM North Edsa.
However, since SM North Edsa was under construction, SMI
offered as alternative SM Makati and Cubao. During the signing of
the Contract, SMI only returned the Contract with SM Makati.
Manager of petitioner reminded SMI that their agreement
includes SM Cubao. However, SMI did not bother to reply. Instead,
respondent informed petitioner that they are rescinding the
contract for SM Makati due to non-performance.
Two years later, MIS offered to construct light boxes for SMIs
chain of stores. MIS subsequently fabricated 10 light boxes for
SMI. After this contract, SMI engaged the services of EYD
Rainbow Advertising to make the light boxes. These were
delivered in a staggered basis and installed at SM Megamall and
SM City. In 1989, petitioner received reports that exact copy of its
light boxes was installed by SMI. It further discovered that North
Edsa Marketing Inc. (NEMI), sister company of SMI, was set up
primarily to sell advertising space in lighted display units located
in SMIs different branches. Petitioner sent letters to respondents
asking them to cease using the light boxes and demanded the
discontinued use of the trademark Poster Ads. Claiming that
both SMI and NEMI failed to meet its demands, P&D filed a case
for infringement of trademark and copy right, unfair competition,
and damages. SMI maintained that it independently developed its
poster panels using commonly known techniques and available
technology without notice of or reference to P&Ds copyright. In
addition, it said that registration of Poster Ads obtained by
petitioner was only for stationeries such as letterheads,
envelopes, and the like. Poster Ads is a generic term which
cannot be appropriated as trademark, and, as such, registration of
such mark is invalid. It also stressed that P&D is not entitled to
the reliefs sought because the advertising display units contained
no copyright notice as provided for by law.
RTC found SMI and NEMI jointly and severally liable for
infringement of copyright and trademark. CA reversed saying that
it agreed with SMI that what was copyrighted was the technical
drawings only and not the light boxes. Light boxes cannot be
considered as either prints, pictorial illustrations, advertising
copies, labels, tags, or box wraps, to be properly classified as
copyrightable class O work. In addition, CA stressed that the
protective mantle of the Trademark Law extends only to the
goods used by the first user as specified in its certificate of
registration. The registration of the trademark Poster Ads
covers only stationeries such as letterheads, envelopes, and
calling cards and newsletter.
Issue:
W/N the light box should be registered separately and protected
by a patent issued by Intellectual Property Office.
Held/Ratio:
1. Yes. Petitioner never secured a patent for the light boxes. It
therefore acquired no patent rights which could have
protected its invention, if in fact it really was. And because it
had no patent, petitioner could not legally prevent anyone
from manufacturing or commercially using the contraption.
To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a
primordial requirement. No patent, no protection.
In Creser Precision Systems Inc v. CA, it was held that there can be
no infringement of a patent until a patent has been issued, since
whatever right one has to the invention covered by the patent
arises alone from the grant of the patent. A patent gives the
inventor the right to exclude all others. As a patentee, he has the
exclusive right of making, selling, or using the invention. On the
assumption that the petitioners advertising units were
patentable inventions, P&D revealed them fully to the public by
submitting the engineering drawings thereof to the national
library (when it filed for copyright).
The ultimate goal of a patent system is to bring new designs and
technologies into the public through disclosure. Ideas, once
disclosed to the public without protection of a valid patent, are
subject to appropriation without significant restraint. As held in
Bauer & Cie v. ODonnel, The Act secured to the inventor the
exclusive right to make use and vend the thing patented, and
consequently to prevent others from exercising like privileges
without the consent of the patentee. It was passed for the
purpose of encouraging useful invention and promoting new
and useful inventions by the protection and stimulation
given to inventive genius, and was intended to secure to the
public, after the lapse of the exclusive privileges granted the
benefit of such inventions and improvements.
The Patent Law has a three-fold purpose: first, patent law
seeks to foster and reward invention; second, it promotes
disclosures of inventions to stimulate further innovation and
to permit the public to practice the invention once the patent
expires; third, the stringent requirements for patent
protection seek to ensure that ideas in the public domain
remain there for the free use of the public. It is only after an
exhaustive examination by the patent office that a patent is
issued. Therefore, not having gone through the arduous
examination for patents, petitioner cannot exclude others from
the manufacture, sale, or commercial use of the light boxes on the
sole basis of its copyright certificate over the technical drawings.
E . I . D u p o n t D e N e m o u r s & a m p ; C o. v. D i re c to r
E m m a C . Fra n c i s co,
G . R . N o. 1 7 4 3 7 9 , 3 1 Au g u s t 2 0 1 6
Fa c t s :
E.I. Dupont Nemours and
C o m p a ny ( E . I . D u p o n t N e m o u r s ) i s a n
A m e r i c a n c o r p o ra t i o n o rga n i z e d u n d e r t h e
l aw s o f t h e s t a te o f D e l awa re . T h e ra p h a r m a ,
Inc. alleged that on Januart 4, 2003, it filed
b e fo re t h e Bu re a u o f Fo o d a n d D r u g s i t s o w n
a p p l i c a t i o n fo r a l o s a r t a n p ro d u c t " L i fe z a r : ,
a m e d ic a t i o n fo r hy p e r te n s i o n , wh i c h t h e
B u re a u g ra n te d . I t a rg u e d t h a t i t m a d e a
s e a rc h o f ex i s t i n g p a te n t a p p l i c a t i o n s fo r
s i m i l a r p ro d u c t s b e fo re i t s a p p l i c a t i o n , a n d
t h a t n o ex i s t i n g p a te n t re g i s t ra t i o n wa s
fo u n d s i n c e e . I . D u p o n t N e m o u r s ' a p p l i c a t i o n
fo r i t s l o s a r t a n p ro d u c t was c o ns i d e re d
a b a n d o n e d by t h e Bu re a u o f Pa te n t s ,
Tra d e m a r ks , a n d Te c h n o l o g y Tra n s fe r, M e rc k
i n fo r m e d T h e ra p h a r m a , I n c . t h a t i t wa s
p u r s u i n g a p a te n t o n t h e L o s a r t a n p ro d u c t s
i n t h e P h i l i p p i n e s a n d t h a t i t wo u l d pu r s u e
a ny l e ga l a c t i o n n e c e s s a r y to p ro te c t i t s
p ro d u c t ,
Issue:
W h e t h e r t h e C A e r re d i d e ny i n g p e t i t i o n e r ' s a p p e a l
fo r t h e re v iva l o f i t s p a te n t a p p l i c a t i o n o n t h e
g ro u n d s t h a t
a . p e t i t i o n e r c o m m i t te d i n exc u s a b l e n e gl i g e n c e i n
t h e p ro s e c u t i o n o f i t s p a te n t a p p l i c a t i o n ;
b . T h i rd p a r t y r i gh t s a n d t h e pu b l i c i n te re s t wo u l d
b e p re j u d i c e d by t h e a p p e a l
Held:
Public i n te re s t will be
p re j u d i c e d if, d e s p i te petitioner's
i n exc u s a b l e n e gl i g e n c e , i t s p e t i t i o n fo r
re v iva l i s g ra n te d . Eve n w i t h o u t a p e n d i n g
p a te n t a p p l i c a t i o n a n d t h e a b s e n c e o f a ny
exc e p t i o n to ex te n d t h e p e r i o d fo r re v iva l ,
p e t i t i o n e r wa s a l re a dy t h re a te n i n g to pu r s u e
l e ga l ac t i o n a ga i n s t re s p o n d e n t
T h e ra p h a r m a , I n c . i f i t c o n t i n u e d to d e ve l o p
a n d m a rke t i t s l o s a r t a n p ro d u c t , L i fe z a r.
O n c e p e t i t i o n e r is g ra n te d a p a te n t fo r i t s
l o s a r t a n p ro d u c t s , C o z a a r a n d H y z a a r, t h e
l o s s o f c o m p e t i t i o n i n t h e m a rke t fo r m
L o s a r t a n p ro d u c t s m ay re s u l t i n h i gh e r
p r i c e s . Fo r t h e p ro te c t i o n o f pu b l i c i n te re s t ,
P h i l i p p i n e p a te n t A p p l i c a t i o n N o . 3 5 5 2 6
s h o u l d b e c o n s id e re d a fo r fe i te d p a te n t
application.
261) PARKE DAVIS & CO. v. DOCTORS PHARMACEUTICALS
Topic: Patent Rights (Sec. 71 IPC)
FACTS:
In a decision rendered on November 15, 1963 in Inter Partes Case
No. 181, Parke Davis & Co. was ordered to grant respondent
Doctor's Pharmaceuticals, Inc. a license to manufacture, use and
sell in the Philippines its own products containing petitioner's
chemical called "chloramphenicol.
Under Section 36 of Republic Act 165 (Patent Law), the Director
of Patents is authorized, in case the parties failed to submit a
licensing agreement, to fix the terms and conditions of the
license.
Thus, when Parke did not submit a licensing agreement, the
Director of Patents, in a resolution, issued a license in favor of
respondent company under petitioner's Letters Patent No. 50 for
the patented chemical "chloramphenicol", fixing the terms and
conditions thereof and declaring that the license should take
effect immediately
License provides: that respondent company should pay petitioner
Parke, Davis & Co., a royalty, on all licensed products containing
"chloramphenicol" made and sold amounting to 8% of the net
sales
Petitioner claims as grossly inadequate and proposes that it be
increased to 15%
prevailing rate for compulsory licensing on the net sales
of medicines containing the patented article is 15% and
18% of the selling price
same rate prevailing in two compulsory licenses for
patents on medicine in Great Britain
Respondent: others were 5% and 7%
ISSUE: WON the royalty rate is reasonable- YES
RULING:
- Sec. 71. Rights Conferred by Patent. -
71.1. A patent shall confer on its owner the following exclusive
rights:
(a) Where the subject matter of a patent is a
product, to restrain, prohibit and prevent any unauthorized
person or entity from making, using, offering for sale, selling or
importing that product;
(b) Where the subject matter of a patent is a
process, to restrain, prevent or prohibit any unauthorized person
or entity from using the process, and from manufacturing, dealing
in, using, selling or offering for sale, or importing any product
obtained directly or indirectly from such process.
71.2. Patent owners shall also have the right to assign, or transfer
by succession the patent, and to conclude licensing contracts for
the same.
-There was no grave abuse of discretion DOP made a
compromise on the rate proposed by petitioner and those
prevailing in other countries
-The 8% royalty rate is reasonable considering that Doctor's
Pharmaceutical, Inc. is a small manufacturing venture compared
with Parke, Davis & Company, Inc. which is a subsidiary of the
huge mother firm, Parke, Davis & Company of Michigan, U.S.A
-If Doctor's is making sufficient profit to justify an increase of
royalty later, Parke, Davis & Co., Inc. can easily demand an
increase, considering that the latter has access to the books and
records of the former
-There was no showing that Parke, Davis & Co., Inc. would tend to
suffer business losses by the imposition of the 8 % royalty nor
does it appear that it would cause other effects on the saleability
of the antibiotics and consequently the health of the consuming
public by the imposition of 8 %
-Any award, order or decision of the Patent Office is immediately
executor to hold that said Amended Resolution could not be
made effectively would open the door for interminable litigation,
thus rendering nugatory said compulsory licensing agreement
sanctioned by the Director of Patents, as any implementing
condition imposed therein could be the subject of litigation
Vargas v FM Yaptico
G.R. No. 14101, September 24, 1919
Ponente: Malcolm, J.
DOCTRINE
When a patent is sought to be enforced, "the question of
invention, novelty, or prior use, and each of them, are open to
judicial examination." To entitle a man to a patent, the invention
must be new to the world.
FACTS
Rude wooden implements for tilling the soil have been
in use in the Philippines, possibly not since the Israelites
"went down to sharpen every man his share and his
coulter," but certainly for many years. Iron plows called
"Urquijo" and "Pony" have latterly been the vogue.
Angel Vargas, a farmer acquainted with local conditions
and alive to the commercial possibilities, took it upon
himself to produce, with the native plow as the model,
an improved, adjustable plow.
On July 22, 1910, he made application for a United
States patent to cover his so-called invention.
On March 12, 1912, letters patent were issued by the
United States Patent Office in favor of Vargas.
On April 24, 1912, a certified copy of the patent was
filed in the Division of Patents, Copyrights, and
Trademarks of the Executive Bureau, Government of the
Philippine Islands. The patent and its registry was also
published in the newspaper, El Tiempo.
Since 1910, Vargas has engaged in the manufacture of
these plows in the city of Iloilo, Philippine Islands. On
the plows there was first stamped the words "Patent
Applied For," later after the patent had been granted,
changed to "Patented Mar. 12, 1912." Ninety per cent of
the plows in use in the Visayas (Iloilo and vicinity) are
said to be Vargas plows.
During this same period, the firm of F. M. Yaptico & Co.
(Ltd.), was engaged in the foundry business in the City
of Iloilo. It openly held itself out as a manufacturer of
plow parts. It has in fact produced points, shares, shoes,
and heel pieces in a considerable amount adapted to
replace worn-out parts of the Vargas plow.
In the early part of 1918, the owner of the patent, and
thus the proper party to institute judicial proceedings,
began action in the Court of First Instance of Iloilo to
enjoin the alleged infringement of U.S. Patent No.
1020232 by the defendant F. M Yaptico & Co. (Ltd.), and
to recover the damages suffered by reason of this
infringement.
o The court issued the preliminary injunction as
prayed for. The defendant, in addition to a
general denial, alleged, as special defenses,
that the patent lacked novelty or invention,
that there was no priority of ideas or device
in the principle and construction of the
plow, and that the plow, whose
manufacture it was sought to have enjoined
by the plaintiff, had already been in public
use for more than two years before the
application of the plaintiff for his patent.
After the taking of evidence, including the presentation
of exhibits, the trial judge, the Honorable Antonio
 Villareal, in a very exhaustive and learned decision,
rendered judgment in favor of the defendant and against
the plaintiff, declaring null and without effect the patent
in question and dismissing the suit with costs against
the plaintiff .
ISSUE
1. WON the patented invention is void for lack of novelty
and invention
2. WON the patents is invalid since the plow had already
been in public use for over two years prior to the
application of the patent
HELD
Act No. 2235 of the Philippine Legislature, enacted on February
10, 1913, in effect makes the United States Patent Laws
applicable in the Philippine Islands. It provides that "owners of
patents, including design patents, which have been issued or may
hereafter be issued, duly registered in the United States Patent
Office under the laws of the United States relating to the grant of
patents, shall receive in the Philippine Islands the protection
accorded them in the United States under said laws." (Sec. 1.)
Turning to the United States Patent Laws, we find the Act of
Congress of March 3, 1897, amendatory of section 4886 of the
United States Revised Statutes, reading as follows:
Any person who has invented or discovered any new and
useful art, machine, manufacture, or composition of
matter, or any new an useful improvements thereof, not
known or used by others in this country, before his
invention or discovery thereof, and not patented or
described in any printed publication in this or any foreign
country, before his invention or discovery thereof, or
more than two years prior to his application, and not in
public use or on sale in this country for more than two
years prior to his application, unless the same is proved to
have been abandoned, may upon payment of the fees
required by law, and other due proceeding had, obtain a
patent therefor. (29 Stat. L., 692, 7 Fed .Stat. Ann. [2d Ed.],
p. 23.)
1. YES. On this point the trial court reached the conclusion
that "the patented plow of the plaintiff, Exhibit D, is not
different from the native plow, Exhibit 2, except in the
material, in the form, in the weight and the grade of the
result, the said differences giving it neither a new
function nor a new result distinct from the function and
the result obtained from the native plow; consequently,
its production does not presuppose the exercise of the
inventive faculty but merely of mechanical skill, which
does not give a right to a patent of an invention under
the provisions of the Patent Law." In thus finding, the
court may have been right, since the Vargas plow does
not appear to be such a "combination" as contains a
novel assemblage of parts exhibiting invention.
2. Yes. Under the provisions of the statute, an inventor's
creation must not have been in public use or on sale in
the United States (and the Philippine Islands) for more
than two years prior to his application. Since it has been
shown that the invention was used in public at Iloilo by
others than Vargas, the inventor, more than two years
before the application for the patent, the patent is
invalid.
Title: Maguan vs. Court of Appeals
G.R. No. L-45101, November 28, 1986
Facts:
Maguan sent a letter to Luchan informing her that the
powder puffs she is manufacturing and selling is
identical or substantially identical to her powder puffs
of which she is a patent holder. She alleged that such
constitutes infringement in violation of her rights as a
patent holder.
As a defense, Luchan averred that:
1. Her products are different from that of
Maguan
2. Maguans patents are void because the utility
models applied for were not patentable
3. the person to whom the patents were issued
was not the true and actual author nor were
her rights derived from such author.
In view thereof, Maguan filed a complaint for damages
with injunction and preliminary injunction.
CFI: granted the issuance of the writ of injunction.
CA: enjoined the CFI from proceeding.
Issue: WON the issuance of a writ of preliminary injunction is
proper. (No)
Held:
In patent cases, writ of preliminary injunction will not
issue for patent infringement unless the validity of the
patent is clear and beyond question. The issuance of
letters patent, standing alone, is not sufficient to
support such drastic relief. The court should determine
first the validity of the patents before the issuance of the
writ.
In this case, there is prima facie showing of invalidity of
Maguan's patents on the ground of lack of novelty.
As a rule, an invention must possess the essential
elements of novelty, originality and precedence. For the
patentee to be entitled to protection, the invention must
be new to the world. Accordingly, a single instance of
public use of the invention by a patentee for more than
two years before the date of his application for his
patent, will be fatal to the validity of the patent when
issued.
The court should have first determined the validity of
the patent. For a writ of injunction to be issued, two
requisites must be proven: the existence of the right to
be protected and the violation of said right.
Dispositive: PREMISES CONSIDERED, the assailed resolutions of
the Court of Appeals are hereby AFFIRMED.
ROBERTO DEL ROSARIO v. CA & JANITO CORPORATION
GR No. 115106 March 15, 1996 Bellosillo
TOPIC: Assessors (Sec. 83, IPC)
FACTS:
Roberto Del Rosario (petitioner) filed a complaint for patent
infringement against Janito Corporation (private respondent)
alleging that he was a patentee of an audio equipment and
improved audio equipment commonly known as the sing-along
system or karaoke under 2 Letters Patent dated 2 June 1983 and
14 Nov. 1986.
The effectivity of both Letters Patents was for 5 years starting 2
June 1988 and 14 Nov. 1991, respectively. Petitioner described
his sing-along system as a handy multipurpose 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.
Around 1990, petitioner learned that PR was manufacturing a
sing-along system bearing the TM miyata or miyata karaoke
substially similar of not identical to the sing-along system
covered by the patents issued in his favor.
Hence, petitioner sought from the trial court the issuance of a
writ of prelim. injunction to enjoin PR, among others, from using,
selling, and advertising the miyata or miyata karaoke brand.
Trial Court: issued a writ of prelim. injunction finding that
petitioner was a holder of a utility model patent for a sing-along
system and that without his approval and consent PR was
admittedly manufacturing and selling its own sing-along system
under the brand name miyata which was substantially similar to
the patented utility model of petitioner.
CA: Set aside TCs order. There was no infringement of the patents
of petitioner by the fact alone that PR had manufactured the
miyata or 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.
ISSUE: WON PR should be enjoined from manufacturing, selling
and advertising the miyata or 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! CAs decision is reversed.
Sec. 55 of RA 165 (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. The same
law provides that 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.
In the present case, there is no dispute that the letters patents
issued to petitioners are for utility models of audio equipment.
Petitioners patent warrants a prima facie presumption of its
correctness and validity and the burden then shifts to respondent
to overcome this presumption by competent evidence. PR failed
to present before the trial court competent evidence that the
utility models covered by the Letters Patents issued to petitioner
were not new. This is evident from the testimony of Janito Cua,
the President of Janito Corp., during hearing of the writ.
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 PH 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.
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 present case, respondent corporation failed to present
before the trial court a clear, competent and reliable comparison
between its own model and that of petitioner. Notwithstanding
the differences cited by respondent corporation, it did not refute
and disprove the allegations of petitioner before the trial court
that:
(a) both are used by a singer to sing and amplify his voice;
(b) both are used to sing with a minusone or multiplex
tapes, or that both are used to play minusone or
standard cassette tapes for singing or for listening to;
(c) both are used to sing with a minusone tape and
multiplex tape and to record the singing and the
accompaniment;
(d) both are used to sing with live accompaniment and to
record the same;
(e) both are used to enhance the voice of the singer using
echo effect, treble, bass and other controls;
(f) both are equipped with cassette tape decks which are
installed with one being used for playback and the
other, for recording the singer and the accompaniment,
and both may also be used to record a speakers voice or
instrumental playing, like the guitar and other
instruments;
(g) both are encased in a boxlike cabinets; and,
(h) both can be used with one or more microphones.
Clearly therefore, both petitioners and respondents models
involve substantially the same modes of operation and produce
substantially the same if not identical results when used.
CAs decision is reversed. The trial court is directed to
continue with the proceedings on the main action.
272. Markman v. Westview Instruments, Inc., 517 U.S. 370
(1996)
Facts:
Petitioner Markman own US Reissue Patent for his
Inventory Control and Reporting Sytem for Drycleaning
Stores. This patent describes a system that can monitor
and report status of clothing in a drycleaning
establishment. It consists of a keyboard and data
processor to record each transaction including the bar
code readale by optical detectors.
Respondent Westviews softqare also includes a
keyboard and data processor and almost the same
things as the petitioners.
Petitioner then brought an infringement suit against the
Respondents (Westview and Althon) who uses the
respondents software. Westview responded that it did
 not infringed the system because their software merely
record and track inventories of the clothing.
Part of the dispute hinged upon the meaning of the
word "inventory," a term found in Markman's
independent claim 1, which states that Markman's
product can "maintain an inventory total" and "detect
and localize spurious additions to inventory."
The case was tried before a jury and after the jury
compared the patent to Westview's device, it found an
infringement of Markman's independent claim 1 and
dependent claim 10.
The District Court granted Westview's deferred motion
for judgment as a matter of law, one of its reasons being
that the term "inventory" in Markman's patent
encompasses "both cash inventory and the actual
physical inventory of articles of clothing."
Under the trial court's construction of the patent, the
production, sale, or use of a tracking system for dry
cleaners would not infringe Markman's patent unless
the product was capable of tracking articles of clothing
throughout the cleaning process and generating reports
about their status and location. Since Westview's system
cannot do these things, the District Court directed a
verdict on the ground that Westview's device does not
have the "means to maintain an inventory total" and
thus cannot "detect and localize spurious additions to
inventory as well as spurious deletions therefrom, "
Markman appealed, arguing it was error for the District
Court to substitute its construction of the disputed
claim term `inventory' for the construction the jury had
presumably given it. The CA affirmed, holding the
interpretation of claim terms to be the exclusive
province of the court and the 7 th Amendment to be
consistent with that conclusion.
ISSUE: Whether the interpretation of a socalled patent claim, the
portion of the patent document that defines the scope of the
patentee's rights, is a matter of law reserved entirely for the
court, or subject to a 7 th Amendment guarantee that a jury will
determine the meaning of any disputed term of art about which
expert testimony is offered
Held: The construction of a patent, including terms of art
within its claim, is exclusively within the province of the
court (judges)
The 18th Century juries must have acted as definers of
patent ters just to reach the verdicts rendered in patent
case. However, there is no more reason to infer that
juries supplied plenary interprtation of written
instruments in patent litigation than in other cases
implication the meaning of documentary terms. Also,
some other kinds of cases, the judges not the juries,
ordinarily interpret the written documents. This is
confirmed by the fact that as soon as the English reports
did beging to describe the contructioin of patent
documents, they show the judges construing the terms
in Patent laws.
2 elements of a simple patent case: (1) question of law
to be determined gby the court, construing the letter-
patent and the description of the invention and
specification of claim annexed to them, and (2) question
of fact to be submitted to the jury.
Interpretation should not be given to the jury because
there is no proof that the issue of the meaning of the
patent term is a jury issue.
In order to resolve the Bischoff suit implicating the
construction of rival patents, we considered "whether
the court below was bound to compare the two
specifications, and to instruct the jury, as a matter of
law, whether the inventions therein described were, or
were not, identical." (statement of the case). We said it
was not bound to do that, on the ground that investing
the court with so dispositive a role would improperly
eliminate the jury's function in answering the ultimate
question of infringement. On that ultimate issue, expert
testimony had been admitted on "the nature of the
various mechanisms or manufactures described in the
different patents produced, and as to the identity or
diversity between them." Although the jury's
consideration of that expert testimony in resolving the
question of infringement was said to impinge upon the
well established principle "that it is the province of the
court, and not the jury, to construe the meaning of
documentary evidence,"
In Tucker and Bischoff cases it was clearly noted that in
addressing the ultimate issue of mixed fact and law, it
was for the court to "lay down to the jury the law which
should govern them."
Also another contemporary treatise states that; "The
duty of interpreting letters-patent has been committed
to the courts. A patent is a legal instrument, to be
construed, like other legal instruments, according to its
tenor. . . . Where technical terms are used, or where the
qualities of substances or operations mentioned or any
similar data necessary to the comprehension of the
language of the patent are unknown to the judge, the
testimony of witnesses may be received upon these
subjects, and any other means of information be
employed. But in the actual interpretation of the patent
the cour tproceeds upon its own responsibility, as an
arbiter of the law, giving to the patent its true and final
character and force."
Where history and precedent provide no clear answers,
functional considerations also play their part in the
choice between judge and jury to define terms of art. In
Miller vs Fenton case, it was stated that when an issue
"falls somewhere between a pristine legal standard and
a simple historical fact, the fact/law distinction at times
has turned on a determination that, as a matter of the
sound administration of justice, one judicial actor is
better positioned than another to decide the issue in
question." Hence, judges are the better suited to find the
acquired meaning of patent terms.
The construction of written instruments is one of those
things that judges often do and are likely to do better
than jurors unburdened by training in exegesis. Patent
construction in particular "is a special occupation,
requiring, like all others, special training and practice.
The judge, from his training and discipline, is more
likely to give a proper interpretation to such
instruments than a jury; and he is, therefore, more likely
to be right, in performing such a duty, than a jury can be
expected to be."
Such was the understanding nearly a century and a half
ago, and there is no reason to weigh the respective
strengths of judge and jury differently in relation to the
modern claim; quite the contrary, for "the claims of
patents have become highly technical in many respects
as the result of special doctrines relating to the proper
 form and scope of claims that have been developed by
the courts and the Patent Office."
Markman would trump these considerations with his
argument that a jury should decide a question of
meaning peculiar to a trade or profession simply
because the question is a subject of testimony requiring
credibility determinations, which are the jury's forte. It
is true that credibility judgments have to be made about
the experts who testify in patent cases, and in theory
there could be a case in which a simple credibility
judgment would suffice to choose between experts
whose testimony was equally consistent with a patent's
internal logic. But our own experience with document
construction leaves us doubtful that trial courts will run
into many cases like that.
In the main, any credibility determinations will be
subsumed within the necessarily sophisticated analysis
of the whole document, required by the standard
construction rule that a term can be defined only in a
way that comports with the instrument as a whole.
274 GRAVER TANK & MFG. CO. V. LINDE AIR PRODUCTS CO.,
339 U.S. 605 (1950)
Doctrine of Equivalents
FACTS:
Plaintiff obtained an improvement patent on an electric welding
composition or flux with specifications that were basically a
combination of alkaline earth metal silicate and calcium fluoride.
Defendant began to produce its own composition that instead
used silicates of manganese, not an alkaline earth metal, for the
silicates of magnesium, which is an alkaline earth metal used by
Plaintiff. Plaintiff charged Defendant with infringement. Plaintiff
had mentioned manganese in its specifications, but it was not
within the specific claims of the patent. Even so, the courts found
there was infringement. Defendant appealed.
ISSUE:
Does the doctrine of equivalents apply to chemical equivalents in
compositions or to mechanical equivalents in devices? YES
HELD:
The doctrine of equivalents is applied to chemical or mechanical
equivalents in compositions or devices the same way it applies to
equivalence in mechanical components. It gives protection to the
patentee against a device, process, or composition which
performs largely the same function as the patented device,
process, or composition in largely the same way to obtain the
same result. In this case, the expert testimony is the basis on
which the courts below found that silicates of manganese, used
by Defendant, were the "equivalent" of the silicates of magnesium
used in Plaintiff"s patented composition under the doctrine of
equivalents. Therefore, the finding of infringement must stand.
The Court, in an opinion written by Justice Robert Jackson, raised
the doctrine of equivalents. It noted that if another party could
use a process exactly the same as one that is patented, but escape
infringement by making some obvious substitution of materials,
it would deprive the patentee of the exclusive control meant to
come with a patent. This would undermine the profitability of the
patent, which would go against the policy of encouraging
inventors to invent by giving the opportunity to profit from the
labor of invention.
The Court also outlined how the doctrine should be used, noting
that "what constitutes equivalency must be determined against
the context of the patent, the prior art, and the particular
circumstances of the case." The Court laid out two possible tests
to determine equivalency. Under the first of these (which has
since come to be known as the "triple identity" test), something is
deemed equivalent if:
1. It performs substantially the same function
2. in substantially the same way
3. to yield substantially the same result.
Under the second test, something is deemed equivalent if there is
only an "insubstantial change" between each of the features of the
accused device or process and the patent claim.
In the case before us, we have two electric welding compositions
or fluxes: the patented composition, Unionmelt Grade 20, and the
accused composition, Lincolnweld 660. The patent under which
Unionmelt is made claims essentially a combination of alkaline
earth metal silicate and calcium fluoride; Unionmelt actually
contains, however, silicates of calcium and magnesium, two
alkaline earth metal silicates. Lincolnweld's composition is
similar to Unionmelt's, except that it substitutes silicates of
calcium and manganesethe latter not an alkaline earth metal
for silicates of calcium and magnesium. In all other respects, the
two compositions are alike. The mechanical methods in which
these compositions are employed are similar. They are identical
in operation and produce the same kind and quality of weld.
The question which thus emerges is whether the substitution of
the manganese which is not an alkaline earth metal for the
magnesium which is, under the circumstances of this case, and in
view of the technology and the prior art, is a change of such
substance as to make the doctrine of equivalents inapplicable; or
conversely, whether under the circumstances the change was so
insubstantial that the trial court's invocation of the doctrine of
equivalents was justified.
The Court gave particular weight to the determination of
"whether persons reasonably skilled in the art would have known
of the interchangeability of an ingredient not contained in the
patent with one that was." Finding that the substitution of
magnesium for manganese was both obvious to anyone working
in the field, and was an insubstantial change, the Court upheld the
finding of patent infringement.
277. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
535 US 722 (2002)
DOCTRINE: The narrowing of an amendment to satisfy any
requirement of the Patent Act may result in estoppels. However,
estoppel does not prevent the patentee from claiming
infringement against any equivalent to the narrowed element.
The patentee bears the burden of proving that the amendment
does not surrender the particular equivalent in question.
FACTS:
Petitioner Festo Corporation owns two patents for an
industrial device.
 When the patent examiner rejected the initial
application for the first patent because of defects in
description, the application was amended to add the
new limitations that the device would contain a pair of
one-way sealing rings and that its outer sleeve would be
made of a magnetizable material.
After Festo began selling its device, respondents
(hereinafter SMC) entered the market with a similar
device that uses one two-way sealing ring and a
nonmagnetizable sleeve.
Festo filed suit, claiming that SMC's device is so similar
that it infringes Festo's patents under the doctrine of
equivalents.
The District Court ruled for Festo, rejecting SMC's
argument that the prosecution history estopped Festo
from saying that SMC's device is equivalent.
Federal Circuit panel initially affirmed, but this Court
granted certiorari, vacated, and remanded in light
of Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,
which had acknowledged that competitors may rely on
the prosecution history to estop the patentee from
recapturing subject matter surrendered by amendment
as a condition of obtaining the patent.
On remand, the en banc Federal Circuit reversed,
holding that prosecution history estoppel applied.
The court ruled that estoppel arises from any
amendment that narrows a claim to comply with the
Patent Act, not only from amendments made to avoid
the prior art, as the District Court had held. The Federal
Circuit also held that, when estoppel applies, it bars any
claim of equivalence for the element that was amended.
ISSUE: WON estoppel can be applied to every amendment made
to satisfy the requirements of the Patent Act and not just to
amendments made to avoid pre emption by an earlier invention
HELD: Yes. Prosecution history estoppel may apply to any claim
amendment made to satisfy the Patent Act's requirements, not
just to amendments made to avoid the prior art, but estoppel
need not bar suit against every equivalent to the amended claim
element.
The scope of a patent is not limited to its literal terms but instead
includes all equivalents to the claims described. Prosecution
history estoppel requires that the claims of a patent be
interpreted in light of the proceedings in the PTO while the
application is being processed. When the patentee narrows a
claim regarding subject matter in response to a denied charge of
patent infringement, the patentee may not argue that the
surrendered territory was made up of unforeseen subject matter
that should be deemed equivalent to the literal claims of the
issued patent. To give up an appeal of rejection and submit an
amended claim is an acknowledgement that the invention as
patented does not reach as far as the original claim. Therefore,
the patentee is giving up certain subject matter as a condition of
receiving a patent. When an amendment is narrowed to satisfy
any requirement of the Patent Act, estoppel may result.
Before a patent can issue, there are statutory requirements that
must be met. When an amendment is made to secure a patent
and the amendment narrows the scope of the patent, estoppel
results. If an amendment only concerns the form of the
application and not the subject matter of the invention, then it
would not narrow the patents scope or raise an estoppel. When
a patents scope is narrowed by a necessary amendment, estoppel
may apply.
Corning Glass Works v. Sumitomo Electric USA, Inc
Facts. Only short distance communications were permitted by
prior fiberoptics, so efforts began to develop long-distance
options. Plaintiff then patented a fiberoptic composite made of a
doped silica core and a fused silica cladding (doping optional)
with the purpose to function specifically as an optical waveguide
over long distances (the "915 patent). Later, Defendant patented
its S-3 fibers, which accomplished the same purpose as the fibers
in the "915 patent. The district court held the S-3 fibers infringed
upon the "915 patent claims and the "915 claims were valid.
Defendant appealed.
Issue. Is an infringing device an accused device if it has the
equivalent to another patent"s claim limitation somewhere in the
device?
Held. (Nies, J.) Yes. An infringing device is an accused device that
has the equivalent to another patent"s claim limitation
somewhere in the device. There is no dispute that the S-3 fibers
perform the same function as Plaintiff"s fibers. The issue is
whether or not the function is performed in "substantially the
same way." In this case, Plaintiff admits its claims do not literally
read on the S-3 fibers but declares the S-3 fibers perform in the
same way as its claimed invention, therefore meeting the Graver
Tank test. The district court found the S-3 fiber substitution of
"fluorine dopant" negatively altered the "index of refraction of
fused silica [ ] in the cladding" and was the same as Plaintiff"s
dopant which positively altered the index of refraction of fused
silica. Defendant argues the "All Elements" rule applies, but the
equivalent limitation does not need to appear in a corresponding
component making each element equivalent, just equivalent
somewhere in an accused device. Plaintiff argues that the
question is whether adding a positive dopant to the core is
equivalent to adding negative dopant to the cladding. This Court
has not developed a rigid test and instead uses the
function/way/result equivalency analysis in line with Graver
Tank. Affirmed.
308 Wilson Sporting Goods Co. v. David & Geoffrey &
Associates, 904 F.2d 677, 1990
Topic: Doctrine of Equivalents
DOCTRINE: Doctrine of Equivalents cannot be applied if it will
encompass a prior art
FACTS
Wilson invented and got a patent on a golf ball with
specific pattern of dimples to make it go father.
Wilson sued Dunlop for infringement for making a
similar golf ball.
Dunlop argued that Wilsons parents said that none of
the dimples could intersect lines of certain geometric
patterns on the ball. Dunlops balls dimples did
intersect those lines, thus it it was not infringing.
Wilson countered that Dunlops golf balls only barely
intersected the lines and it was still infringing. They
cited the Doctrine of Equivalence
Doctrine of Equivalence: a product or process that does
not literally infringe upon the express terms of a parents
may nonetheless be found to infringe if there is an
equivalence between the elements of the accused
product or process and the claimed elements of the
patented invention.
 Dunlop argued that Wilsons limited their claim because
there was already a golf ball, a prior art, made by
Uniroyal that intersected the lines to about the same
level as Dunlops golf did.
Trial Court rule in favor of Wilson
ISSUE
WON the doctrine of equivalents applies to Wilsons golf balls
HELD
NO.
Infringement may be found under the doctrine of
equivalents if an accused product "performs
substantially the same overall function or work, in
substantially the same way, to obtain substantially the
same overall result as the claimed invention."
The doctrine of equivalents, by definition, involves going
beyond any permissible interpretation of the claim
language; i.e., it involves determining whether the
accused product is "equivalent" to what is described by
the claim language.
Even if this test is met, however, there can be no
infringement if the asserted scope of equivalency of
what is literally claimed would encompass the prior art
In this case, the Court found that if Wilson had tried to
claim exactly what Dunlop made, the claim would have
been rejected because of Uniroyals prior art. Therefore,
Wilson cannot claim protection under the Doctrine of
Equivalents
The said doctrine could not be used to claim something
you could not have legally claimed in the original patent.
NOTE: Patents
Wilsons: 168 patent require this basic golf ball having eighty sub-
triangles and six great circles. Particular claims require variations
on the placement of dimples in the triangles, with one common
theme--the dimples must be arranged on the surface of the ball so
that no dimple intersects any great circle. Equivalently stated, the
dimples must be arranged on the surface of the ball so that no
dimple intersects the side of any central triangle. When the
dimples are arranged in this manner, the ball has six axes of
symmetry, compared to prior balls which had only one axis of
symmetry.
Dunlops: Icosahedral balls with six great circles, five of which are
intersected by dimples. The balls contain 432 to 480 dimples, 60
of which intersect great circles in amounts from 4 to 9
thousandths of an inch. In order for a hypothetical claim to cover
Dunlop's balls, its limitations must permit 60 dimples to intersect
the great circles by at least 9 thousandths of an inch.
Uniroyals (Prior Art): An icosahedral ball having six great circles
with 30 or more dimples intersecting the great circles by about
12-15 thousandths of an inch.
280. AL-SITE CORP. and MAGNIVISION, INC. v VSI
INTERNATIONAL INC. and MYRON ORLINSKY
Facts:
Plaintiff sold non-prescription eyeglasses and obtained
a patent for an eyeglass rack that allows consumers to
try glasses on and then return the glasses to the rack
without removing their display hangers.
The hanger has an extension that encircles the nose
bridge of the glasses.
Defendant, a competitor, began using a similar rack
without this type of fastening for the glasses.
Plaintiff sued Defendant for infringement anyway. A
district court jury found literal infringement on one
claim and infringement under the doctrine of
equivalents on other claims. However, on the scope of
the patent claims and doctrine of equivalents, both
parties disagreed with the courts instructions.
Issue: WON even though a product may avoid literal infringement
when it performs an identical function to a patented invention, it
may infringe under the doctrine of equivalents
Held: Yes. Even though a product may avoid literal infringement
when it performs an identical function to a patented invention, it
may infringe under the doctrine of equivalents. The test to
determine equivalence is whether there are substantial
differences between the structure in the accused product and
those written in the specification.
Equivalents narrow the application of broad literal claims,
meaning a functional claim element is restricted to ways that are
equivalent to the actual ways shown in the specification.
Therefore, it informs the claim meaning for an analysis of literal
infringement.
However, if there is equivalence between the elements of the
accused product and the claimed elements of a patented
invention, the doctrine of equivalents allows enforcement of
claim terms beyond their literal reach.
Although they have different purposes and administrations,
under the doctrine of equivalents, a finding of a lack of literal
infringement for lack of equivalent structure could come before a
finding of equivalence. So, if an accused product or process
performs the identical function and yet avoids literal
infringement for lack of a structural equivalent, it may avoid
infringing the same element under the doctrine. In this case, the
jury did not find substantial structural differences in the function
of Defendants eyeglass rack which is identical to the function
claimed in Plaintiffs patent. This finding is adequate to support
the inference that the jury found infringement even under the
most restricted reading of the claims. Therefore, any mistake in
the trial courts determination of the scope of the claim did not
affect the final decision.
Westinghouse v. Boyden
May 09, 1898
Reverse Doctrine of Equivalents
DOCTRINE
The reverse doctrine of equivalents is a legal doctrine of United
States patent law, according to which a device that appears to
literally infringe a patent claim, by including elements or
limitations that correspond to each element or limitation of the
patent claim, nonetheless does not infringe the patent,
because the accused device operates on a different principle.
That is, "it performs the same or a similar function in a
substantially different way."
FACTS
1. Patent was issued to Westinghouse for a fluid-pressure
automatic brake mechanism, the object of which is said in the
specification "to enable the application of brake shoes to car
wheels by fluid pressure, to be effected with greater rapidity and
effectiveness than heretofore, more particularly in trains of
considerable length, as well as to economize compressed air in
the operation of braking, by utilizing in the brake cylinders the
greater portion of the volume of air which in former practice was
directly discharged into the atmosphere."
3. Westinghouse sue Boyden for allegedly infringing their patent
on the following grounds:
1. In a brake mechanism, the combination of
a main air-pipe, an auxiliary reservoir, a
brake cylinder, a triple valve, and an
auxiliary valve device, actuated by the piston
of the triple valve, and independent of the
main valve thereof, for admitting air in the
application of the brake directly from the
main air pipe to the brake cylinder,
substantially as set forth."
"2. In a brake mechanism, the combination
of a main air pipe, an auxiliary reservoir, a
brake cylinder, and a triple valve having a
piston whose preliminary traverse admits
air from the auxiliary reservoir to the brake
cylinder, and which by a further traverse
admits air directly from the main air pipe to
the brake cylinder, substantially as set
forth."
"3. The combination, in a triple-valve device,
of a case or chest, a piston fixed upon a
stem, and working in a chamber therein, a
valve moving with the piston stem, and
governing ports and passages in the case
leading to connections with an auxiliary
reservoir and a brake cylinder, and to the
atmosphere, respectively, and an auxiliary
valve actuated by the piston stem, and
controlling communication between
passages leading to connections with a main
air pipe and with the brake cylinder,
respectively, substantially as set forth."
2. Boyden Brake Company was manufacturing a Fluid pressure
break, but denied that the same was an infringement upon
complainants' patent, and they claim that Westing House is the
first the obtain a petent over such brakes.
ISSUE: WON Boyden infringed the Patent of Westinghouse. - NO
HELD
1. Even if it be conceded that the Boyden device corresponds with
the letter of the Westinghouse claims, that does not settle
conclusively the question of infringement. We have repeatedly
held that a charge of infringement is sometimes made out, though
the letter of the claims be avoided. The converse is equally true.
The patentee may bring the defendant within the letter of his
claims, but if the latter has so far changed the principle of the
device that the claims of the patent, literally construed, have
ceased to represent his actual invention, he is as little subject to
be adjudged an infringer as one who has violated the letter of a
statute has to be convicted, when he has done nothing in conflict
with its spirit and intent. "An infringement," says Mr. Justice Grier
in Burr v. Duryee, 1 Wall. 531, 572, "involves substantial identity,
whether that identity be described by the terms, 'same principle,'
same 'modus operandi,' or any other. . . . The argument used to
show infringement assumes that every combination of devices in
a machine which is used to produce the same effect, is necessarily
an equivalent for any other combination used for the same
purpose. This is a flagrant abuse of the term 'equivalent.'
2. see Doctrine.
282 Roche Products v. Bolar Pharmaceutical 733 F.2d 858
(1984)
FACTS:
Bolar was a generic drug manufacturer. Roche was a
brand-name pharmaceutical company which made and
sold Dalmane. Flurazepam hydrochloride, the active
ingredient of which, was protected by patent.
Before patent expiration, Bolar used the patented
chemical in experiments to determine if its generic
product was bioequivalent to Dalmane in order to
obtain FDA approval for its generic version of Dalmane.
o They obtained 5 kilograms of flurazepam
hydrochloride from a foreign manufacturer, to
form into dosage form capsules, to obtain
stability data, dissolution rates, bioequivalency
studies, and blood serum studies needed for a
New Drug Application to the Food and Drug
Administration (FDA).
Bolar argued that its use of the patented product was
not infringement under the experimental use exception
to the patent law.
The New York district court denied Roches motion for a
permanent injunction and held that Bolars use of the
flurazepam hydrochloride did not infringe on Roches
patent because Bolars use of the compound was de
minimis and for experimental purposes. Roche
appealed.
ISSUE: Whether Bolars defense is valid?
HELD: NO. It is well-established, in particular, that the use of a
patented invention, without either manufacture or sale, is
actionable. Thus, the patentee does not need to have any evidence
of damage or lost sales to bring an infringement action.
The Court of Appeals for the Federal Circuit rejected
Bolars contention holding that the experimental use
exception did not apply because Bolar intended to sell its
generic product in competition with Roches Dalmane
 after patent expiration and, therefore, Bolars
experiments had a business purpose.
Bolar may intend to perform "experiments," but
unlicensed experiments conducted with a view to the
adaption of the patented invention to the
experimentor's business is a violation of the rights of
the patentee to exclude others from using his patented
invention.
Bolar also argued that public policy in favor of availability of
generic drugs immediately following patent expiration justified
the experimental use of the patented chemical because denying
such use would extend Roches monopoly beyond the date of
patent expiration.
The court rejected this argument, stating that such
policy decisions should be made by Congress. Likewise,
the court decided that apparent policy conflicts between
statutes such as the Food and Drug Act and the Patent
Act should be decided by Congress and not the courts.
Thus, decision of the district court holding the '053 patent not
infringed is reversed. The case is remanded
CASE 284: BARRY JOHN PRICE, JOHN WATSON CLITHERON
and JOHN BRADSHAW, Assignors to ALLEN & HANBURYS,
LTD., vs. UNITED LABORATORIES
G.R. No. 82542
DATE: 29 September 1988
PONENTE: Grio-Aquino, J.
TOPIC: Patent
DOCTRINE: The patented invention in this case relates to
medicine and is necessary for public health as it can be used as
component in the manufacture of anti-ulcer medicine. The
Director of Patents did not err in granting a compulsory license
over the entire patented invention for there is no law requiring
that the license be limited to a specific embodiment of the
invention, or, to a particular claim.
FACTS:
Petitioners are the owners-assignees of Philippine
Patent which was granted to them for a pharmaceutical
compound known as Aminoalkyl Furan derivatives.
On October 1, 1982, Respondent-Unilab filed in the
Philippine Patent Office a petition for the issuance of a
compulsory license to use the patented compound in its
own brands of medicines and pharmaceuticals and to
sell, distribute, or dispose of such medicines in the
country.
The invention in this case relates to new aminoalkyl
derivatives, which have histamine H2 blocking activity,
having the general formula (I) and physiologically
acceptable salts, N- oxides and hydrates thereof. The
compound ranitidine hydrochloride named in Claim 45
is also covered by General Claim I and several other sub-
generic claims.
According to Unilab, the compulsory license should be
granted because the patent relates to medicine and that
it has had long experience in the business of
manufacturing and selling pharmaceutical products,
possesses the capability to use the subject compound in
the manufacture of a useful product or of making
dosage formulations containing the said compound.
The Philippine Patent Office granted the petition of
Unilab for compulsory licensing subject to (10) terms
and conditions, one, which is relevant to case is Unilab
shall pay the Petitioners a royalty on all license products
containing the patented substance made and sold by the
Unilab in the amount equivalent to 2.5% of the net sales
in Philippine currency.
The Court of Appeals dismissed the Petitioners Appeal.
Hence, this appeal to the Supreme Court objecting that:
o The CA erred when it upheld the Directors
unilateral determination of the terms and
conditions of the compulsory license, without
affording the parties an opportunity to
negotiate the terms and conditions freely and
by themselves;
o That the respondent possesses the legally
required capability to make use of the
petitioners patented compound in the
manufacture of a useful product; and
o In considering evidence that Unilabs
capability to use the compound was acquired
after, not before, filing its petition for
compulsory licensing.
ISSUE: WON the granted Compulsory License was proper.
HELD/RATIO:
Yes. Petition Denied.
The Directors finding that Unilab has the capability to
use the patented compound in the manufacture of an
anti-ulcer pharmaceutical preparation is a factual
finding which is supported by substantial evidence,
hence, the CA did not commit a reversible error in
affirming it.
Of indubitable relevance to this point is the evidence
that Unilab has been engaged in the business of
manufacturing drugs and pharmaceutical products for
the past 30 years, that it is the leading drug
manufacturer in the country, that it has the necessary
equipment and technological expertise for the
development of solid dosage forms or for tablet,
capsule, and liquid preparations, and that it maintains
standards and procedures to ensure the quality of its
products.
Even if it were true, as alleged by the patentee (although
it is denied by Unilab), that its capability to use the
patented compound was only acquired after the petition
for compulsory licensing had been filed, the important
thing is that such capability was proven to exist during
the hearing of the petition.
Moreover, what Unilab has with the compulsory license
is the bare right to use the patented chemical compound
in the manufacture of a special product, without any
technical assistance from the Petitioners.
Lastly, In any event, since the petitioner will be paid
royalties on the sales of any products the licensee may
manufacture using any or all of the patented
compounds, the petitioner cannot complain of a
deprivation of property rights without just
compensation.
 On the issue that Directors unilateral
determination of the terms and conditions of the
compulsory license, without affording the parties an
opportunity to negotiate the terms and conditions
freely and by themselves.
The terms and conditions of the compulsory license
were fixed by the Director of Patents after a hearing and
careful consideration of the evidence of the parties and
in default of an agreement between them as to the
terms of the license.
Smith Kline Beckman Corporation vs Court of Appeals
Facts: Petitioner Smith Kline Beckman Corporation (SKBC) was
granted by the Philippine Patent Office Letters Patent No. 14561
over an invented compound entitled Methods and Compositions
for Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate. Such compound is
claimed to be an active ingredient in fighting various parasites in
certain types of domestic and livestock animals. Respondent
Tryco Pharma (Tryco) sells veterinary products including a drug
Impregon which contains Albendazole as an active ingredient
which fights against parasites in animals. Petitioner SKBC then
filed an action against respondent Tryco for patent infringement
claiming that Albendazole is covered in their patent because it is
substantially the same as methyl 5 propylthio-2-benzimidazole
carbamate covered by its patent since both are meant to combat
worm or parasite infestation in animals. And that Albendazole is
patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does
it mention that Albendazole is present but even if it were, the
same is unpatentable. Smith Kline thus invoked the doctrine of
equivalents, which implies that the two substances substantially
do the same function in substantially the same way to achieve the
same results, thereby making them truly identical for although
the word Albendazole does not appear in Tryco Paharmas letters
of patent, it has ably shown by evidence its sameness with methyl
5 propylthio-2-benzimidazole carbamate. The Trial Court
rendered its decision in favor of respondent Tryco which was
affirmed by the Court of Appeals.
Issue: Whether the Court of Appeals erred in not finding that
Albendazole is included in petitioners Letter Patent No. 14561
Held: From an examination of the evidence on record, the Court
finds nothing infirm in the appellate courts conclusions with
respect to the principal issue of whether Tycho Pharma
committed patent infringement to the prejudice of SKBC. The
burden of proof to substantiate a charge for patent infringement
rests on the plaintiff. In the case at bar, petitioners evidence
consists primarily of its Letters Patent No. 14561, and the
testimony of Dr. Orinion, its general manager in the Philippines
for its Animal Health Products Division, by which it sought to
show that its patent for the compound methyl 5 propylthio-2-
benzimidazole carbamate also covers the substance Albendazole.
From a reading of the 9 claims of Letters Patent No. 14561 in
relation to the other portions thereof, no mention is made of the
compound Albendazole.
When the language of its claims is clear and distinct, the patentee
is bound thereby and may not claim anything beyond them. And
so are the courts bound which may not add to or detract from the
claims matters not expressed or necessarily implied, nor may
they enlarge the patent beyond the scope of that which the
inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the
words it had chosen would include. It bears stressing that the
mere absence of the word Albendazole in Letters Patent No.
14561 is not determinative of Albendazoles non-inclusion in the
claims of the patent. While Albendazole is admittedly a chemical
compound that exists by a name different from that covered in
SKBCs letters patent, the language of Letter Patent No. 14561
fails to yield anything at all regarding Albendazole. And no
extrinsic evidence had been adduced to prove that Albendazole
inheres in SKBCs patent despite its omission therefrom or that
the meaning of the claims of the patent embraces the same. While
SKBC concedes that the mere literal wordings of its patent cannot
establish Tyco Pharmas infringement, it urges the Court to apply
the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also
takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some
modification and change, performs substantially the same
function in substantially the same way to achieve substantially
the same result. Yet again, a scrutiny of SKBCs evidence fails to
convince the Court of the substantial sameness of SKBCs
patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of
result does not amount to infringement of patent 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.
In other words, the principle or mode of operation must be the
same or substantially the same. The doctrine of equivalents thus
requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of
such equivalency test are met.
286 SMITH KLINE v. CA
GR No. 121267 | Oct. 23, 2001 | J. Kapunan
FACTS:
In August 1989, Danlex Research Laboratories petitioned before
Bureau of Patents, Trademarks and Technology Transfer (BPTTT)
that it may be granted a compulsory license for the use and
manufacture of the pharmaceutical product Cimetidine.
Cimetidine is useful as an antihistamine and in the treatment of
ulcers. Cimetidine is originally patented to Smith Kline and French
Laboratories, Ltd. in 1978, and the said patent is still in force at
the time of application by Danlex Research.
The BPTTT granted the application of Danlex Research together
with a provision that Danlex Research should be paying 2.5% of
the net wholesale price as royalty payment to Smith Kline. This
was affirmed by the Court of Appeals.
Smith Kline assailed the grant as it argued, among others, that the
same is an invalid exercise of police power because there is no
overwhelming public necessity for such grant considering that
Smith Kline is able to provide an adequate supply of it to satisfy
the needs of the Philippine market; that a provision in the
Philippine Patent Laws is violative of the Paris Convention to
which the Philippines is a signatory.
To explain the second contention, Smith Kline states that the
Paris Convention only allows compulsory licensing if the original
licensee (patent holder) has failed to work on the patent; that
therefore, the provision in the Philippine Patent Laws which adds
other grounds for the granting of compulsory license i.e.
monopoly, is invalid and contrary to the Paris Convention.
ISSUE: Whether or not Smith Kline is correct.
HELD: No. The granting is a valid exercise of police
power. Cimetidine is medicinal in nature, and therefore necessary
for the promotion of public health and safety.
On the second contention, Section A(2) of Article 5 [of the Paris
Convention] unequivocally and explicitly respects the right of
member countries to adopt legislative measures to provide for
the grant of compulsory licenses to prevent abuses which might
result from the exercise of the exclusive rights conferred by the
patent. An example provided of possible abuses is failure to
work; however, as such, is merely supplied by way of an example,
it is plain that the treaty does not preclude the inclusion of other
forms of categories of abuses. The legislative intent in the grant of
a compulsory license was not only to afford others an
opportunity to provide the public with the quantity of the
patented product, but also to prevent the growth of
monopolies. Certainly, the growth of monopolies was among the
abuses which Section A, Article 5 of the Convention foresaw, and
which our Congress likewise wished to prevent in enacting.
ALBANA V. DIRECTOR OF PATENTS
1953
93 PHIL 113
DOCTRINE:
Under the provisions of the Patent Law, the Director of Patents
has no power and authority to require a determination or finding
by a court of competent jurisdiction as to whether there is a
meeting of the minds between the contracting parties to perform
the obligations of the contract.
FACTS:
1. Pending examination of the patent application of
Tapinio and Feliciano, Meliton Alban a filed a motion to
intervene claiming that the applicant-inventors had
"sold and assigned to him the right to contract or deal
the sale of their invention called Fel-Tap Meter Guard
and Detector through the Corporation that they were
then organizing under his direction and to fix and
decide on the purchase price of it.
2. Albaa prayed that
(1) Tapinio be compelled to sign their contract, which
was already signed by Feliciano
(2) have such contract acknowledged before a notary
public
(3) have it recorded in the Patent Office and Register of
Deeds, and
(4) patent be issued in his name and in the name of the
inventors
3. The motion to intervene was denied on the ground that
the Director of Patents has no jurisdiction on the
question submitted to him.
4. Alban a filed an amended motion to intervene, now
claiming "that he is the assignee of the inventors of the
undivided part interests in the invention..." The
amended motion was still denied on the ground that the
assignment made to the movant is not one of exclusive
right to make, use and sell the electrical contrivance for
which patent is applied for; that it is just an authority to
act as the selling agent for the inventors and to receive
compensation; and that not being entitled to have his
name included as one of the patentees, the movant has
no right to intervene.
ISSUE: WON DIRECTOR OF PATENT HAS JURISDICTION/
AUTHORITY TO ACT ON ALBAA'S MOTION. NO.
HELD/RATIO:
What Alban a attempted to secure by his motion to intervene is
beyond the jurisdiction and authority of the Director of Patents to
grant. Despite the amendment to the first motion, still it remains
that the alleged assignment is not of the invention but it is an
agreement whereby he is to act as selling agent for the inventors
of the patent and of the invention while receiving compensation
therefor.
This is clearly supported by the clauses found in their contract.
Assignments of patents and inventions be recorded in books and
records kept for the purpose in the Patent Office if presented in
due form; but Alban a does not ask for the registration of the
alleged agreement between him and the inventors, and because it
is not in due form it cannot be recorded. Under the provisions of
the Patent Law, the Director of Patents has no power and
authority to compel the applicant-inventors to do what Alban a is
asking them to perform.
What he asked the Director of Patents to do for him is essentially
a judicial function which would require the determination or
finding by a court of competent jurisdiction as to whether there
was a meeting of the minds of the contracting parties before it
could compel the applicant-inventors to perform what he prays
the court to order them to do.
Aside from want of authority and power, the Director of Patents
lacks the means to make such determination and finding which
would be necessary before he could act on the appellant's motion.