G.R. No. L-32160. January 30, 1982
DOMICIANO A. AGUAS, PETITIONER, VS. CONRADO G. DE LEON AND COURT OF APPEALS, RESPONDENTS.
FERNANDEZ, J.:
Appeals in CA G.R. No. 37824-R entitled “Conrado G. de Leon,
plaintiff-appellee vs. Domiciano Aguas and F.H. Aquino and Sons,
defendants-appellants,” the dispositive portion of which reads:
“WHEREFORE, with the modification that plaintiff-appellee’s award
of moral damages is hereby reduced to P3,000.00, the appealed judgment
is hereby affirmed, in all other respects, with costs against
appellants.”[1]
On April 14, 1962, Conrado G. de Leon filed in the Court of First
Instance of Rizal at Quezon City a complaint for infringement of patent
against Domiciano A. Aguas and F.H. Aquino and Sons alleging that being
the original first and sole inventor of certain new and useful
improvements in the process of making mosaic pre-cast tiles, he lawfully
filed and prosecuted an application for Philippine patent, and having
complied in all respects with the statute and the rules of the
Philippines Patent Office, Patent No. 658 was lawfully granted and
issued to him; that said invention was new, useful, not known or used by
others in this country before his invention thereof, not patented or
described in any printed publication anywhere before his invention
thereof, or more than one year prior to his application for patent
therefor, not patented in any foreign country by him or his legal
representatives on application filed more than one year prior to his
application in this country; that plaintiff has the exclusive license to
make, use and sell throughout the Philippines the improvements set
forth in said Letters Patent No. 658; that the invention patented by
said Patent No. 658 is of great utility and of great value to plaintiff
and of great benefit to the public who has demanded and purchased tiles
embodying the said invention in very large quantities and in very
rapidly increasing quantities; that he has complied with the Philippine
statutes relating to marking patented tiles sold by him; that the public
has in general acknowledged the validity of said Patent No. 658, and
has respected plaintiff’s right therein and thereunder; that the
defendant Domiciano A. Aguas infringed Letters of Patent No. 658 by
making, using and selling tiles embodying said patented invention and
that defendant F.H. Aquino & Sons is guilty of infringement by
making and furnishing to the defendant Domiciano A. Aguas the
engravings, castings and devices designed and intended for use and
actually used in apparatus for the making of tiles embodying plaintiff’s
patented invention; that he has given direct and personal notice to the
defendants of their said acts of infringement and requested them to
desist, but nevertheless, defendants have refused and neglected to
desist and have disregarded such request, and continue to so infringe
causing great and irreparable damage to plaintiff; that if the aforesaid
infringement is permitted to continue, further losses and damages and
irreparable injury will be sustained by the plaintiff; that there is an
urgent need for the immediate issuance of a preliminary injunction; that
as a result of the defendants’ wrongful conduct, plaintiff has suffered
and the defendants are liable to pay him, in addition to actual damages
and loss of profits which would be determined upon proper accounting,
moral and exemplary or corrective damages in the sum of P90,000.00; that
plaintiff has been compelled to go to court for the protection and
enforcement of his patent rights as against the defendants’ act of
infringement and to engage the services of counsel, thereby incurring
attorney’s fees and expenses of litigation in the sum of P5,000.00.[2]
On April 14, 1962, an order granting the plaintiff’s petition for a Writ of Preliminary Injunction was issued.[3]
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer
denying the allegations of the plaintiff and alleging that: the
plaintiff is neither the original first nor sole inventor of the
improvements in the process of making mosaic pre-cast tiles, the same
having been used by several tile-making factories in the Philippines and
abroad years before the alleged invention by de Leon; that Letters
Patent No. 658 was unlawfully acquired by making it appear in the
application in relation thereto that the process is new and that the
plaintiff is the owner of the process when in truth and in fact the
process incorporated in the patent application has been known and used
in the Philippines by almost all tile makers long before the alleged use
and registration of patent by plaintiff Conrado G. de Leon; that the
registration of the alleged invention did not confer any right on the
plaintiff because the registration was unlawfully secured and was a
result of the gross misrepresentation on the part of the plaintiff that
his alleged invention is a new and inventive process; that the
allegation of the plaintiff that Patent No. 658 is of great value to
plaintiff and of great benefit to the public is a mere conclusion of the
plaintiff, the truth being that a) the invention of plaintiff is
neither inventive nor new, hence, it is not patentable; b) defendant has
been granted valid patents (Patents No. 108, 109, 110 issued on
December 21, 1961) on designs for concrete decorative wall tiles; and c)
that he can not be guilty of infringement because his products are
different from those of the plaintiff.[4]
The trial court rendered a decision dated December 29, 1965, the dispositve portion of which reads:
“WHEREFORE, judgment is hereby rendered in favor of plaintiff and against the defendants:
“1. Declaring plaintiff’s patent valid and infringed;
“2. Granting a perpetual injunction restraining defendants, their
officers, agents, employees, associates, confederates, and any and all
persons acting under their authority from making and/or using and/or
vending tiles embodying said patented invention or adapted to be used in
combination embodying the same, and from making, manufacturing, using
or selling, engravings, castings and devises designed and intended for
use in apparatus for the making of tiles embodying plaintiff’s patented
invention, and from offering or advertising so to do, and from aiding
and abetting or in any way contributing to the infringement of said
patent;“3. Ordering that each and all of the infringing tiles,
engravings, castings and devices, which are in the possession or under
the control of defendants be delivered to plaintiff;“4. Ordering the defendants to jointly and severally pay to the plaintiff the following sums of money, to wit;
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney’s fees and
(e) costs of suit.”[5]
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the following errors.[6]
“I
“THE TRIAL COURT ERRED IN NOT HOLDING THAT PLAINTIFF’S PATENT FOR
THE ‘PROCESS OF MAKING MOSAIC PRE-CAST TILE’ IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY AS THE SAME HAS ALREADY
LONG BEEN USED BY TILE MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.“II
“THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT OF PLAINTIFF IS
VALID BECAUSE IT IS AN IMPROVEMENT OR THE AGE-OLD TILE MAKING SYSTEM.“III
“THE TRIAL COURT ERRED IN NOT ORDERING THE CANCELLATION OF
PLAINTIFF-APPELLEE’S LETTERS PATENT NO. 658, EXHIBIT L, IN ACCORDANCE
WITH THE PERTINENT PROVISIONS OF THE PATENT LAW, REPUBLIC ACT 165.“IV
“THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT DOMICIANO A.
AGUAS IS GUILTY OF INFRINGEMENT DESPITE THE FACT THAT PLAINTIFF’S PATENT
IS NOT A VALID ONE.“V
“THE TRIAL COURT ERRED IN NOT HOLDING THAT THE DEFENDANT COULD
NEVER BE GUILTY OF INFRINGEMENT OF PLAINTIFF’S PATENT BECAUSE EVEN IN
MATTERS NOT PATENTED BY THE PLAINTIFF-LIKE THE COMPOSITION AND
PROPORTION OF INGREDIENTS USED AND THE STRUCTURAL DESIGNS OF THE MOULD
AND THE TILE PRODUCED THAT OF THE DEFENDANT ARE DIFFERENT.“VI
“THE TRIAL COURT ERRED IN NOT DISMISSING THE COMPLAINT AND IN
HOLDING THE DEFENDANT, INSTEAD OF THE PLAINTIFF, LIABLE FOR DAMAGES, AND
ATTORNEY’S FEES.”
On August 5, 1969, the Court of Appeals affirmed the decision of the
trial court, with the modification that plaintiff-appellee’s award of
moral damages was reduced to P3,000.00.[7]
The petitioner assigns the following errors supposedly committed by the Court of Appeals:
“It is now respectfully submitted that the Court of Appeals committed the following errors involving questions of law, to wit:
“First error. – When it did not conclude that the letters patent
of the respondent although entitled on the cover page as a patent for
improvements, was in truth and in fact, on the basis of the body of the
same, a patent for the old and non-patentable process of making mosaic
pre-cast tiles;“Second error. – When it did not conclude from the admitted facts
of the case, particularly the contents of the letters patent, Exh. L,
and the pieces of physical evidence introduced consisting of samples of
the tiles and catalogues, that the alleged improvements introduced by
the respondent in the manufacture of mosaic pre-cast tiles are not
patentable, the same being not new, useful and inventive.“Third error. – As a corollary, when it sentenced the herein
petitioner to pay the damages enumerated in the decision of the lower
court (Record on Appeal, pp. 74-75), as confirmed by it (the Court of
Appeals), but with the modification that the amount of P50,000.00 moral
damages was reduced to P3,000.”[8]
The facts, as found by the Court of Appeals, are:
“The basic facts borne out by the record are to the effect that on
December 1, 1959, plaintiff-appellee filed a patent application with
the Philippine Patent Office, and on May 5, 1960, said office issued in
his favor Letters Patent No. 658 for a ‘new and useful improvement in
the process of making mosaic pre-cast tiles’ (Exh. “L”); that defendant
F.H. Aquino & Sons engraved the moulds embodying plaintiff’s
patented improvement for the manufacture of pre-cast tiles, plaintiff
furnishing said defendant the actual model of the said tiles in escayola
and explained to said engraver the plans, specifications and the
details of the engravings as he wanted them to be made, including an
explanation of the lip width, artistic slope of easement and critical
depth of the engraving that plaintiff wanted for his moulds; that
engraver Enrique Aquino knew that the moulds he was engraving for
plaintiff were the latter’s very own, which possessed the new features
and characteristics covered by plaintiff’s patent; that defendant Aguas
personally, as a building contractor, purchased from plaintiff, tiles
shaped out of these moulds at the back of which was imprinted
plaintiff’s patent number (Exhs. “A” to “E”); that subsequently, through
a representative, Mr. Leonardo, defendant Aguas requested Aquino to
make engravings of the same type and bearing the characteristics of
plaintiff’s moulds; that Mr. Aquino knew that the moulds he was asked to
engrave for defendant Aguas would be used to produce cement tiles
similar to plaintiff’s; that the moulds which F.H. Aquino & Sons
eventually engraved for Aguas and for which it charged Aguas double the
rate it charged plaintiff De Leon, contain the very same characteristic
features of plaintiff’s mould and that Aguas used these moulds in the
manufacture of his tiles which he actually put out for sale to the
public (Exhs. “1” to “3” and Exhs. “A” to “E”); that both plaintiff’s
and defendant Aguas’ tiles are sculptured pre-cast wall tiles intended
as a new feature of construction and wall ornamentation substantially
identical to each other in size, easement, lip width and critical depth
of the deepest depression; and that the only significant difference
between plaintiff’s mould and that engraved by Aquino for Aguas is that,
whereas plaintiff’s mould turns out tiles 4 x 4 inches in size,
defendant Aguas’ mould is made to 4-1/4 x 4-1/4 inch tile.”[9]
The patent right of the private respondent expired on May 5, 1977.[10] The errors will be discussed only to determine the right of said private respondent to damages.
The petitioner questioned the validity of the patent of the private
respondent, Conrado G. de Leon, on the ground that the process, subject
of said patent, is not an invention or discovery, or an improvement of
the old system of making tiles. It should be noted that the private
respondent does not claim to be the discoverer or inventor of the old
process of tile-making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658 was issued
by the Philippine Patent Office to the private respondent, Conrado G.
de Leon, to protect his rights as the inventor of “an alleged new and
useful improvement in the process of making mosaic pre-cast tiles.”[11]
Indeed, Section 7, Republic Act No. 165, as amended, provides: “Any
invention of a new and useful machine, manufactured product or
substance, process, or an improvement of the foregoing, shall be
patentable.”
The Court of Appeals found that the private respondent has introduced an improvement in the process of tile-making because:
“x x x we find that plaintiff-appellee has introduced an
improvement in the process of tile-making, which proceeds not merely
from mechanical skill, said improvement consisting among other things,
in the new critical depth, lip width, easement and field of designs of
the new tiles. The improved lip width of appellee’s tiles ensures the
durability of the finished product preventing the flaking off of the
edges. The easement caused by the inclination of the protrusions of the
patented moulds is for the purpose of facilitating the removal of the
newly processed tile from the female die. Evidently, appellee’s
improvement consists in the solution to the old critical problem by
making the protrusions on his moulds attain an optimum height, so that
the engraving thereon would be deep enough to produce tiles for
sculptured and decorative purposes, strong enough, notwithstanding the
deep engravings, to be utilized for walling purposes. The optimum
thickness of appellee’s new tiles of only 1/8 of an inch at the deepest
easement (Exhs. “D” and “D-1”) is a most critical feature, suggestive of
discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its intended
purpose.“While it is true that the matter of easement, lip width, depth,
protrusions and depressions are known to some sculptors, still, to be
able to produce a new and useful wall tile, by using them all together,
amounts to an invention. More so, if the totality of all these features
are viewed in combination with the ideal composition of cement, sodium
silicate and screened fine sand.“By using his improved process, plaintiff has succeeded in
producing a new product – a concrete sculptured tile which could be
utilized for walling and decorative purposes. No proof was adduced to
show that any tile of the same kind had been produced by others before
appellee. Moreover, it appears that appellee has been deriving
considerable profit from his manufacture and sale of such tiles. This
commercial success is evidence of patentability (Walker on Patents,
Deller’s Edition, Vol. I, p. 237).”[12]
The validity of the patent issued by the Philippines Patent Office in
favor of the private respondent and the question over the inventiveness,
novelty and usefulness of the improved process therein specified and
described are matters which are better determined by the Philippines
Patent Office. The technical staff of the Philippines Patent Office,
composed of experts in their field, have, by the issuance of the patent
in question, accepted the thinness of the private respondent’s new tiles
as a discovery. There is a presumption that the Philippines Patent
Office has correctly determined the patentability of the improvement by
the private respondent of the process in question.
Anent this matter, the Court of Appeals said:
“Appellant has not adduced evidence sufficient to overcome the
above established legal presumption of validity or to warrant reversal
of the findings of the lower court relative to the validity of the
patent in question. In fact, as we have already pointed out, the clear
preponderance of evidence bolsters said presumption of validity of
appellee’s patent. There is no indication in the records of this case –
and this Court is unaware of any fact, which would tend to show that
concrete wall tiles similar to those produced by appellee had ever been
made by others before he started manufacturing the same. In fact,
during the trial, appellant was challenged by appellee to present a tile
of the same kind as those produced by the latter, from any earlier
source but, despite the fact that appellant had every chance to do so,
he could not present any. There is, therefore, no concrete proof that
the improved process of tile-making described in appellee’s patent was
used by, or known to, others previous to his discovery thereof.”[13]
The contention of the petitioner Aguas that the letters-patent of de
Leon was actually a patent for the old and non-patentable process of
making mosaic pre-cast tiles is devoid of merit. De Leon never claimed
to have invented the process of tile-making. The Claims and
Specifications of Patent No. 658 show that although some of the steps or
parts of the old process of tile-making were described therein, there
were novel and inventive features mentioned in the process. Some of the
novel features of the private respondent’s improvements are the
following: critical depth, with corresponding easement and lip width to
such degree as leaves the tile as thin as 1/8 of an inch at its
thinnest portion, ideal composition of cement and fine river sand, among
other ingredients that makes possible the production of tough and
durable wall tiles, though thin and light; the engraving of deep designs
in such a way as to make the tiles decorative, artistic and suitable
for wall ornamentation, and the fact that the tiles can be mass produced
in commercial quantities and can be conveniently stockpiled, handled
and packed without any intolerable incidence of breakages.[14]
The petitioner also contends that the improvement of respondent is not
patentable because it is not new, useful and inventive. This contention
is without merit.
The records disclose that de Leon’s process is an improvement of the old
process of tile making. The tiles produced from de Leon’s process are
suitable for construction and ornamentation, which previously had not
been achieved by tiles made out of the old process of tile making. De
Leon’s invention has therefore brought about a new and useful kind of
tile. The old type of tiles were usually intended for floors although
there is nothing to prevent one from using them for walling purposes.
These tiles are neither artistic nor ornamental. They are heavy and
massive.
The respondent’s improvement is indeed inventive and goes beyond the
exercise of mechanical skill. He has introduced a new kind of tile for a
new purpose. He has improved the old method of making tiles and
pre-cast articles which were not satisfactory because of an intolerable
number of breakages, especially if deep engravings are made on the tile.
He has overcome the problem of producing decorative tiles with deep
engraving, but with sufficient durability.[15]
Durability inspite of the thinness and lightness of the tile, is
assured, provided that a certain critical depth is maintained in
relation to the dimensions of the tile.[16]
The petitioner also claims that changing the design from embossed to
engraved tiles is neither new nor inventive because the Machuca Tile
Factory and the Pomona Tile Manufacturing Company have been
manufacturing decorative wall tiles that are embossed as well as
engraved;[17] that these tiles have also depth, lip width, easement and field of designs;[18] and that the private respondent had copied some designs of Pomona.[19]
The Machuca tiles are different from that of the private respondent.
The designs are embossed and not engraved as claimed by the petitioner.
There may be depressions but these depressions are too shallow to be
considered engraved. Besides, the Machuca tiles are heavy and massive.
There is no similarity between the Pomona Tiles and de Leon’s tiles. The Pomona tiles are made of ceramics.[20]
The process involved in making cement tiles is different from ceramic
tiles. Cement tiles are made with the use of water, while in ceramics
fire is used. As regards the allegation of the petitioner that the
private respondent copied some designs of Pomona, suffice it to say that
what is in issue here is the process involved in tile-making and not
the design.
In view of the foregoing, this Court finds that Patent No. 658 was
legally issued, the process and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the
petitioner Domiciano A. Aguas did infringe de Leon’s patent. There is
no showing that this case falls under one of the exceptions when this
Court may overrule the findings of fact of the Court of Appeals. The
only issue then to be resolved is the amount of damages that should be
paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages
awarded by the lower court with the modification that the respondent is
only entitled to P3,000.00 moral damages.[21]
The lower court awarded the following damages:[22]
a) P10,020,99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attorney’s fees and
e) Costs of suit
because:
“An examination of the books of defendant Aguas made before a
Commissioner reveals that during the period that Aguas was manufacturing
and selling tiles similar to plaintiff’s, he made a gross income of
P3,340.33, which can be safely be considered the amount by which he
enriched himself when he infringed plaintiff’s patent. Under Sec. 42 of
the Patent Law any patentee whose rights have been infringed is
entitled to damages which, according to the circumstances of the case
may be in a sum above the amount found as actual damages sustained
provided the award does not exceed three times the amount of such actual
damages. Considering the wantonness of the infringement committed by
the defendants who knew all the time about the existence of plaintiff’s
patent, the Court feels there is reason to grant plaintiff maximum
damages in the sum of P10,020.99. And in order to discourage patent
infringements and to give more teeth to the provisions of the patent law
thus promoting a stronger public policy committed to afford greater
incentives and protection to inventors, the Court hereby awards
plaintiff exemplary damages in the sum of P5,000.00 to be paid jointly
and severally by defendants. Considering the status of plaintiff as a
reputable businessman, and owner of the likewise reputed House of
Pre-Cast, he is entitled to an award of moral damages in the sum of
P50,000.00.”[23]
In reducing the amount of moral damages the Court of Appeals said:
“As regards the question of moral damages it has been shown that
as a result of the unlawful acts of infringement committed by
defendants, plaintiff was understandably very sad; he worried and became
nervous and lost concentration on his work in connection with his tile
business (pp. 28, 30, t.s.n., Feb. 28, 1964). In addition, plaintiff’s
character and reputation have been unnecessarily put in question because
defendants, by their acts of infringement have created a doubt or
suspicion in the public mind concerning the truth and honesty of
plaintiff’s advertisements and public announcements of his valid patent.
Necessarily, said acts of defendants have caused plaintiff
considerable mental suffering, considering especially, the fact that he
staked everything on his pre-cast tile business (p. 36, t.s.n., Id.).
The wantonness and evident bad faith characterizing defendants’
prejudicial acts against plaintiff justify the assessment of moral
damages in plaintiff’s favor, though we do not believe the amount of
P50,000.00 awarded by the lower court is warranted by the circumstances.
We feel that said amount should be reduced to P3,000.00 by way of
compensating appellee for his moral suffering ‘Willful injury to
property may be a legal ground for awarding moral damages if the court
should find that, under the circumstances such damages are justly due’
(Art. 2219 NCC).”
There is no reason to reduce the amount of damages and attorney’s fees
awarded by the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R appealed from is hereby affirmed, without pronouncement as to costs.
SO ORDERED.
Makasiar, Guerrero, Melencio-Herrera, and Plana, JJ., concur.
Teehankee, (Chairman), J., no part.
[1]
Rollo, p. 68. The decision of the Court of Appeals was written by
Justice Jose M. Mendoza and concurred in by Justice Antonio G. Lucero
and Justice Jesus Y. Perez.
[2] Record on appeal, pp. 1-6, Rollo, p. 131.
[3] Ibid., pp. 9-10.
[4] Ibid., pp. 18-27.
[5] Ibid., pp. 46-75.
[6] Brief for the
Defendant-Appellant, pp. 1-2, Rollo, p. 132. The other defendant F.H.
Aquino & Sons did not appeal from the decision of December 29, 1965.
[7] Rollo, p. 68.
[8] Petition, p. 4, Rollo, p. 12.
[9] Rollo, pp. 44-46.
[10] Rollo, p. 217.
[11] Exhibit “L”.
[12] Rollo, pp. 50-51.
[13] Rollo, p. 54.
[14] Respondent’s Brief, pp. 89-90, Rollo, p. 210.
[15] TSN, Sept. 13, pp. 69-71.
[16] Ibid.
[17] TSN, July 17, 1964, pp. 410, 446. See Exhibit 11, 11-A, to 11-E; 14 to 14-E, 15.
[18] Petitioner’s Brief, p. 39, Rollo, p. 147.
[19] Exhibits 14-A, 14-B, 14-C, 14-D, 14-E, 15, 15-A, 15-C, TSN, July 31, 1964; pp. 19-28.
[20] TSN, July 31, 1964, p. 24.
[21] Rollo, p. 68.
[22] Amended Record on Appeal, pp. 74-75, Rollo, p. 131.
[23] Ibid., pp. 72-73.