Vargas v. Chua
Vargas v. Chua
11. That, according to the invoices marked The appellants assign the following errors:
Exhibits C and C-2 dated March 13, 1928, and
June 19, 1928, respectively, the defendant FIRST ERROR
Cham Samco & Sons, on the dates mentioned,
had, in the ordinary course of business, bought The trial court erred in declaring that the
of its codefendant Coo Kun & Sons Hardware Vargas plow, Exhibit F (covered by Patent No.
Co., 90 plows of the form, type and design of 1,507,530) is distinct from the old model
Exhibits B, B-1 and B-2 which it has been Vargas plow, Exhibit 2-Chua, covered by the
selling in its store on Sto. Cristo Street, Manila. former Patent No. 1,020,232, which had been
declared null and void by this court.
12. That the same defendant Cham Samco &
Sons, in the ordinary course of business, SECOND ERROR
bought on March 17, 1928, of the store "El
Progreso" owned by Yao Ki & Co., of Iloilo, a The trial court erred in mistaking the
lot of 50 plows, of the form, type and design of improvement on the plow for the plow itself.
Exhibit B-1, as shown by Invoice C-1, and that
it has been selling them in its store on Sto.
THIRD ERROR
Cristo St., Manila.
The trial court erred in rendering judgment in
13. That, on September 19, 1928, the
favor of the plaintiff and against the defendants.
defendant Cham Samco & Sons, sold in its
store on Sto. Cristo St., Manila, the plow Exhibit
B-1, for the sale of which invoice Exhibit D was FOURTH ERROR
issued.
The trial court erred in not dismissing the
14. That, on December 20, 1927, the plaintiff complaint with costs against the plaintiff.
herein, through his attorneys Paredes,
Buencamino & Yulo, sent by registered mail to The evidence shows that Exhibit F is the kind of plows
the herein defendant, Coo Kun & Sons the plaintiff, Angel Vargas, manufactures, for which
Hardware Co., at Iloilo, the original of the letter Patent No. 1,507,530, Exhibit A, was issued in his
Exhibit E, which was received by it on favor. Exhibits B, B-1 and B-2 are samples of the plows
September 28, 1927, according to the receipt which the herein appellants, Coo Pao and Petronila
marked Exhibit E-1 attached hereto. Chua, have been manufacturing since 1918, and
Exhibit 3-Chua represents the plow for which, on March
15. That the plows manufactured by the plaintiff 12, 1912, the appellee obtained a patent from the
in accordance with his patent, Exhibit A, are United States Patent Office, which was declared null
commonly known to the trade in Iloilo, as well and void by the Supreme Court in the case of Vargas
as in other parts of the Philippines, as "Arados vs. F. M. Yap Tico & Co. (40 Phil., 195).
Vargas", and that the plaintiff is the sole
manufacturer of said plows. A sample of these With these facts in view, the principal and perhaps the
plows is presented as Exhibit F. only question we are called upon to decide is whether
the plow, Exhibit F, constitutes a real invention or an
improvement for which a patent may be obtained, or if, and expert examination of the invention by the
on the contrary, it is substantially the same plow United States Patent Office, the question of the
represented by Exhibit 3-Chua the patent for which was validity of the patent is one for judicial
declared null and void in the aforementioned case determination, and since a patent has been
of Vargas vs. F. M. Yaptico & Co., supra. submitted, the exact question is whether the
defendant has assumed the burden of proof as
We have carefully examined all the plows presented as to anyone of his defenses. (See Agawan
exhibits as well as the designs of those covered by the Co. vs. Jordan [1869], 7 Wall., 583;
patent, and we are convinced that no substantial Blanchard vs. Putnam [1869], 8 Wall., 420;
difference exists between the plow, Exhibit F, and the Seymour vs. Osborne [1871], 11 Wall., 516;
plow, Exhibit 3-Chua which was originally patented by Reckendorfer vs. Faber [1876], 92 U. S., 347;
the appellee, Vargas. The only difference noted by us 20 R. C. L., 1112, 1168, 1169.)
is the suppression of the bolt and the three holes on
the metal strap attached to the handle bar. These holes Although we spent some time in arriving at this
and bolt with its nut were suppressed in Exhibit F in point, yet, having reached it, the question in the
which the beam is movable as in the original plow. The case is single and can be brought to a narrow
members of this court, with the plows in view, arrived compass. Under the English Statute of
at the conclusion that not only is there no fundamental Monopolies (21 Jac. Ch., 3), and under the
difference between the two plows but no improvement United States Patent Act of February 21, 1793,
whatever has been made on the latest model, for the later amended to be as herein quoted, it was
same working and movement of the beam existed in always the rule, as stated by Lord Coke,
the original model with the advantage, perhaps, that its Justice Story and other authorities, that to
graduation could be carried through with more certainty entitle a man to a patent, the invention must be
by the use of the bolt which as has already been stated, new to the world. (Pennock and
was adjustable and movable. Sellers vs. Dialogue [1829], 2 Pet., 1.) As said
by the United States Supreme Court, "it has
As to the fact, upon which much emphasis was laid, been repeatedly held by this court that a single
that deeper furrows can be made with the new model, instance of public use of the invention by a
we have seen that the same results can be had with patentee of more than two years before the
the old implement. date of his application for his patent will be fatal
to the validity of the patent when issued."
In view of the foregoing, we are firmly convinced that (Worley vs. Lower Tobacco Co. [1882], 104 U.
the appellee is not entitled to the protection he seeks S., 340; McClurg vs. Kingsland [1843], 1 How.,
for the simple reason that his plow, Exhibit F, does not 202; Consolidated Fruit Jar Co. vs. Wright
constitute an invention in the legal sense, and because, [1877], 94 U. S., 92; Egbert vs. Lippmann
according to the evidence, the same type of plows had [1881], 104 U. S., 333; Coffin vs. Ogden
been manufactured in this country and had been in use [1874], 18 Wall., 120; Manning vs. Cape Ann
in many parts of the Philippine Archipelago, especially Isinglass and Glue Co. [1883], 108 U. S., 462;
in the Province of Iloilo, long before he obtained his last Andrews vs. Hovey [1887], 123 U. S., 267;
patent. Campbell vs. City of New York [1888], 1 L. R.
A., 48.)
In the above mentioned case of Vargas vs. F. M.
Yaptico & Co., we said: We repeat that in view of the evidence presented, and
particularly of the examination we have made of the
plows, we cannot escape the conclusion that the plow
When a patent is sought to be enforced, "the
upon which the appellee's contention is based, does
questions of invention, novelty, or prior use,
not constitute an invention and, consequently, the
and each of them, are open to judicial
privilege invoked by him is untenable and the patent
examination." The burden of proof to
acquired by him should be declared ineffective.
substantiate a charge of infringement is with
the plaintiff. Where, however, the plaintiff
introduces the patent in evidence, if it is the due The judgment appealed from is hereby reversed and
form, it affords a prima facie presumption of its the appellants are absolved from the complaint, with
correctness and validity. The decision of the costs of this instance against the appellee. So ordered.
Commissioner of Patents in granting the patent
is always presumed to be correct. The burden Avanceña, C.J., Street, Villamor, Ostrand, Villa-Real,
then shifts to the defendant to overcome by Abad Santos, Hull, Vickers and Butte, JJ., concur.
competent evidence this legal presumption.
With all due respects, therefore, for the critical