PATRICK HENRY FRANK AND WILLIAM HENRY GOHN, PLAINTIFFS AND APPELLEES, VS. CONSTANCIO BENITO, DEFENDANT AND APPELLANT.

Plaintiffs allege that they are the owners of a patent covering
hemp-stripping machine No. 1519579 issued to them by the United States Patent
Office on December 16, 1924, and duly registered in the Bureau of Commerce and
Industry of the Philippine Islands under the provisions of Act No. 2235 of the
Philippine Legislature on March 17, 1925. That the important feature of the
machine “is a spindle upon which the hemp to be stripped is wound in the process
of stripping.” That plaintiffs have for some time been manufacturing the machine
under the patent. That the defendant manufactured a hemp-stripping machine in
which, without authority from the plaintiffs, he has embodied and used such
spindles and their method of application and use, and is exhibiting his machine
to the public for the purpose of inducing its purchase. That the use by the
defendant of such spindles and the principle of their application to the
stripping of hemp is in violation of, and in conflict with, plaintiffs’ patent,
together with its conditions and specifications. That the defendant’s machine is
an infringement upon the patent granted the plaintiffs, and plaintiffs pray for
an injunction that the defendant be required to account to plaintiffs for any
profits he may have made by reason of such infringement, and for a temporary
injunction restraining him in the manufacture of other machines of the same kind
or its exhibition, and that upon the final hearing, the injunction be made
permanent

The defendant demurred to the complaint upon the ground that
the facts alleged therein do not constitute a cause of action, that it is
ambiguous and vague, and that it was error to make William Henry Gohn
plaintiff.

After the demurrer was overruled, the defendant filed an answer
in which he denied all of the material allegations of the complaint, except
those which are hereinafter admitted, and as a special defense alleges:

“First. That the defendant has never had at any time nor does
he have any knowledge of any suppose invention of the plaintiffs of whatever
kind of hemp-stripping machine, whether patented or not, which has circulated or
not in the Philippine Islands for the sale thereof or its private
exploitation.

“Second. That not having had any knowledge of any kind of
hemp-stripping machine supposed to have been invented by the plaintiffs, it
never occurred to the defendant to imitate the unknown invention of the
plaintiffs.

“Third. That the hemp-stripping machine of the plaintiffs,
known as ‘La Constancia,’ patent of which is duly registered, has its
characteristics and original invention belonging to the defendant which consist
of two pinions with horizontal grooves which form the tool for extracting
the fibers between a straight knife upon another which is cylindrical and
provided with teeth and on the center of said two pinions there is a flying
wheel with its transmission belt connecting it with the motor.

“As a counterclaim, the defendant alleges:

“First. That he reproduces in this paragraph each and every
allegation contained in the preceding special defense, as though the same were
literally copied here.

“Second. That by the filing of the complaint of the plaintiffs
and the issuance, as a consequence thereof, of a writ of injunction in this
case, unduly obtained by the said plaintiffs through false and fraudulent
representations, the defendant has suffered damages in the sum of five thousand
pesos (P5,000), Philippine currency.

“Wherefore, the defendant prays this court that he be
absolved from the herein complaint, and that the plaintiffs be ordered jointly
and severally to pay the sum of five thousand pesos (P5,000), Philippine
currency, as damages, with legal interest thereon from the filing of this action
until fully paid; with the costs of this case, as well as any other remedy that
may be proper in law and equity.”

The lower court rendered judgment in legal effect granting the
plaintiffs the injunction prayed for in their complaint, and absolving them from
defendant’s counterclaim, and judgment against the defendant for costs.

The defendant’s motion for a new trial was overruled, and on
appeal, he contends that the court erred in holding that the spindles used by
the parties in this case, though different in material and form, have the same
utility and efficiency and that they are the same, and in finding that spindles
used by the defendant are an imitation of those of the plaintiffs, and in
finding that the defendant infringed upon plaintiffs’ patent, and in not
rendering judgment against the plaintiffs, requiring them to pay defendant
P5,000 as damages, and in enjoining the appellant from the manufacture, use and
sale of his hemp-stripping machine.

JOHNS, J.:

It is conceded that on December 16, 1924, the United States
Patent Office issued to the plaintiffs the patent in question No. 1519579, and
that it was duly registered in the Bureau of Commerce and Industry of the
Philippine Islands on March 17, 1925. After such registration the patent lawa,
as they exist in the United States for such patent, are then applied to and are
in force and effect in the Philippine Islands. (Vargas vs. F. M. Yaptico &
Co., 40 Phil., 195.) In the instant case, the original patent is in evidence,
and that decision further holds that:

“The burden of proof to substantiate a charge of infringement
is with the plaintiff. Where, however, the plaintiff introduces the patent in
evidence, if it is in due form, it affords a prima facie presumption of
its correctness and validity. The decision of the Commissioner of Patents in
granting the patent is always presumed to be correct. The burden then shifts to
the defendant to overcome by competent evidence this legal presumption.”

That is to say, the patent, which in the instant case is in due
form, having been introduced in evidence, “affords a prima facie
presumption of its correctness and validity.” Hence, the only question presented
is whether or not there was an infringement of plaintiffs’ patent rights by the
defendant. It is not claimed that the defendant has a patent. Hence, this is not
a case of a conflict between two different patents. In the recent case of Temco
Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United
States on January 3, 1928, Advance Sheet No. 5, p. 192, the syllabus says:

“An improver cannot appropriate the basic patent of another,
and if he does so without license he is an infringer, and may be sued as
such.”

And on page 195 of the opinion, it is said:

“It is well established that an improver cannot appropriate the
basic patent of another and that the improver without a license is an infringer
and may be sued as such.”

Citing a number of Federal decisions.

The plans and specifications upon which the patent was issued
recite:

“Our invention relates to hemp stripping machines and it
consists in the combinations, constructions and arrangements herein described
and claimed.

“An object of our invention is to provide a machine affording
facilities whereby the operation of stripping hemp leaves may be accomplished
mechanically, thereby obviating the strain incident to the performance of hemp
stripping operations manually.”

And on page 3 of the application for patent, it is said:

“Obviously, our invention is susceptible of embodiment in forms
other than that illustrated herein and we therefore consider as our own all
modifications of the form of device herein disclosed which fairly fall within
the spirit and scope of our invention as claimed.

“We claim:

“1. In a hemp stripping machine, a stripping head having a
supporting portion on which the hemp leaves may rest and having also an upright
bracket portion, a lever of angular formation pivotally attached substantially
at the juncture of the arms thereof to the bracket portion of the stripping
head, whereby one arm of the lever overlies the supporting portion of the
stripping head, a blade carried by said one arm of the lever for cooperating
with said supporting portion, means connected with the other arm of the lever
and actuating the latter to continuously urge the blade toward said supporting
portion of the stripping head, and a rotatable spindle positioned adjacent to
said stripping head, said spindle being adapted to be engaged by hemp leaves
extending across said supporting portion of the stripping head underneath said
blade and being operable to draw said hemp leaves in the direction of their
length between said supporting portion of the stripping head and said blade.

“2. In a hemp stripping machine, a stripping head having a
horizontal table portion, a rest supported upon said table portion, a stripping
knife supported upon the table for movement into and out of position to
cooperate with the rest to strip hemp leaves drawn between the knife and the
rest, and power driven means adapted to be engaged with said hemp leaves and to
pull the latter between the knife and rest, said power driven means including a
rotating spindle, said spindle being free at one end and tapering regularly
toward its free end.

“3. In a hemp stripping machine, a stripping head having a
horizontal table portion and an upright bracket portion, a rest holder
adjustably secured on the table portion, a rest resiliency supported by the
holder, a knife carrying lever of angular formation and being pivotally attached
substantially at the juncture of the arms thereof to the bracket portion of the
stripping head, whereby one arm of the lever overlies the rest, a blade
adjustably supported on said one arm, for cooperating with said rest and gravity
means connected with the other arm of the lever and actuating the latter to
continuously urge the blade toward the rest.”

The spindle upon which the patent was obtained, together with
the spindle upon which the defendant relies are exhibits in the record and were
before the court at the time this case was argued. The spindle of the plaintiffs
was made of wood, conical in shape and with a smooth surface. That of the
defendant was somewhat similar in shape, but was made of metal with a rough
surface, and the defendant claims that his spindle was more effective and would
do better work than that of the plaintiffs. Be that as it may, the plaintiffs
have a patent for their machine, and the defendant does not have a patent, and
the basic principle of plaintiffs’ patent is the spindle upon which they rely,
together with its specified manner and mode of operation, and in the final
analysis, it must be conceded that the basic principle of the spindle upon which
the defendant relies is founded upon the basic principle of the spindle for
which the plaintiffs have a patent. Assuming, without deciding, that the
defendant’s spindle is an improvement upon and is a better spindle than that of
the plaintiffs, yet, under the authority above cited, the defendant had no legal
right to appropriate the basic principle upon which the plaintiffs obtained
their patent. The plaintiffs having obtained their patent, which was duly
registered in the Philippine islands, the defendant cannot infringe upon its
basic principle.

The defendant contends that the basic principle of the spindle
was a very old one in mechanics, and that there was nothing new or novel in the
application of it by the plaintiffs. Be that as it may, the plaintiffs applied
for and obtained their patent with its specifications which are attached to, and
made a part of, the patent, and the proof is conclusive that the defendant is
infringing upon the basic principle of the spindle as it is defined and
specified in plaintiffs’ patent.

The judgment of the lower court is affirmed, with costs. So
ordered.

Johnson, Malcolm, Villamor, Ostrand, Romualdez, and
Villa-Real, JJ., concur.