Roberto Del Rosario vs.

Court of Appeals and Janito Corporation

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

ISSUES:
1. Whether the CA erred in disregarding the findings of fact of the trial court.
2. Whether or not there is a prima facie proof of violation of the right of the petitioner as patentee.
3. Whether or not it was improper for the Court of Appeals to consider questions of fact in a certiorari
proceeding.
4. Whether or not petitioner Del Rosario had established a sufficient fact that he had the exclusive right
over the patented audio equipment and improved audio equipment.
5. Whether or not respondent's models involve substantially the same modes of operation and produce
substantially the same if not identical results when used to the petitioner’s patented audio equipment
and improved audio equipment.

RELEVANT FACTS:
Del Rosario filed a complaint for patent infringement against private respondent Janito Corporation
and alleged that he was a grantee for to patents one for an audio equipment, and other, for improved audio
equipment commonly known as the sing-along system or karaoke. 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 one’s 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. 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.
In 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing
the trademark miyata or miyata karaoke substantially similar to the sing-along system covered by the patents
issued in his favor. He then sought from trial court the issuance of a writ of preliminary injunction to enjoin
private respondent from using, selling and the advertising said product. The the trial court issued a writ of
preliminary injunction which was assailed by the respondent 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.
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.
RULING:
1.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.

Under Sec. 55 of the Patent Law, a utility model shall not be considered new if before the application of 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.

Janito Corporation failed to present before the trial court competent evidence that utility models covered by
the Letters Patents issued to petitioner were not new.

Under Sec. 37 of the Patent Law, the 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.

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 subject matter alleged to infringe is substantially identical with the
patented invention. Janito Corporation failed to present before the trial court a clear, competent and reliable
comparison between its own model and that of Del Rosario’s. The decision of the CA was reversed and set
aside and the order of the trial court granting Del Rosario the writ of injunction is reinstated.

2. YES. Clearly, therefore, both petitioner's and respondent's models involve substantially the same modes
of operation and produce substantially the same if not identical results when used.

In view thereof, the court find that petitioner Del Rosario 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.

Moreover, respondent Juanito Corporation failed to present before the trial court competent evidence that
the utility model covered by the letter patents issued to Del Rosaio were not new. Under Sec. 37 of the Patent
Law, the 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.

3. YES. Petitioner argues that in a certiorari proceeding questions of fact are not generally permitted the
inquiry being limited essentially to whether the tribunal has acted without or in excess of jurisdiction or with
grave abuse of discretion; that respondent court should not have disturbed but respected instead the factual
findings of the trial court; that the movant has a clear legal right to be protected and that there is a violation
of such right by private respondent. Thus, petitioner herein claims, he has satisfied the legal requisites to
justify the order of the trial court directing the issuance of the writ of injunction. On the other hand, in the
absence of a patent to justify the manufacture and sale by private respondent of sing-along systems, it is not
entitled to the injunctive relief granted by respondent appellate court.

4. YES. As may be gleaned herein, the rights of petitioner as a patentee have been sufficiently established,
contrary to the findings and conclusions of respondent Court of Appeals.

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.8

Again, on 14 November 1986 petitioner was granted Letters Patent No. UM-6237 for a term of five (5) years
from the grant of a Utility Model described as —

In an audio equipment consisting of a first cubical casing having an opening at its rear and
upper rear portion and a partition therein forming a rear compartment and a front
compartment serving as a loud speaker baffle, a control panel formed by vertical and
horizontal sections, a transistorized amplifier circuit wired in at least two printed circuit
boards attached at the back of said control panel, a first loud speaker fitted inside said first
compartment of such first casing and connected to the output of said transistorized amplifier
circuit; the improvement wherein said control panel being removably fitted to said first cubical
casing and further comprises a set of tape recorder and tape player mounted on the vertical
section of said control panel and said recorder and player are likewise connected to said
transistorized amplifier circuit; a second cubical casing having an opening at its rear, said
second cubical casing having (being?) provided with a vertical partition therein defining a
rear compartment and a front compartment, said rear compartment being provided with a
door and enclosing therein a set of tape racks and said front compartment serving as loud
speaker baffle, said second cubical casing being adapted to said first cubical casing so that
said first and second casings are secured together in compact and portable form; and a
second loud speaker fitted inside said front compartment of said casing and connected to
the output of said amplifier circuit.9
The terms of both Letters Patents were extended for another five (5) years each, the first beginning 2 June
1988 and the second, 14 November 1991.

Consequently, 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.

5.YES. 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.

It may be noted that respondent corporation failed to present before the trial court a clear, competent
and reliable comparison between its own model and that of petitioner, and disregarded completely
petitioner's utility Model No. 6237 which improved on his first patented model. 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 minus-one or multiplex tapes, or that both are used to play minus-one or standard cassette
tapes for singing or for listening to; (c) both are used to sing with a minus-one 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; (g) 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 speaker's voice or instrumental playing, like the guitar and other instruments; (h) both
are encased in a box-like cabinets; and, (i) both can be used with one or more microphones.

Clearly, therefore, both petitioner's and respondent's models involve substantially the same modes of
operation and produce substantially the same if not identical results when used.