PATRICK HENRY FRANK AND WILLIAM HENRY GOHN, PLAINTIFFS AND APPELLANTS, VS. G. KOSUYAMA, DEFENDANT AND APPELLEE.

Patent No. 1519579 (Exhibit 117) on improvement in hemp stripping
machines, issued by the United States Patent Office on December 16,
1924, and registered in the Bureau of Commerce and Industry of the
Philippine Islands on March 17, 1925, was the origin of this action
brought by the plaintiffs herein who prayed that judgment be rendered
against the defendant, ordering him thereby to refrain immediately from
the manufacture and sale of machines similar to the one covered by the
patent; to render an accounting of the profits realized from the
manufacture and sale of the machines in question; that in case of
refusal or failure to render such accounting, the defendant be ordered
to pay the plaintiffs the sum of P60 as profit on each machine
manufactured or sold by him; that upon approval of the required bond,
said defendant be restrained from continuing the manufacture and sale
of the same kind of machines; that after the trial the preliminary
injunction issued therein be declared permanent; and, lastly, that the
said defendant be sentenced to pay the costs and whatever damages the
plaintiffs might be able to prove therein. The action therefore was
based upon alleged infringement by the defendant of the rights and
privileges acquired by the plaintiffs over the aforesaid patent through
the manufacture and sale by the former of machines similar to that
covered by the aforesaid patent.

The plaintiffs appealed
from the judgment rendered by the trial court dismissing their
complaint, with costs, as well as the defendant’s counterclaim of
P10,000. The defendant did not appeal.

In their amended
complaint, the plaintiffs alleged that their hemp stripping machines,
for which they obtained a patent, have the following characteristics:
“A stripping head, a horizontal table, a stripping knife supported upon
such table, a tapering spindle, a rest holder adjustably secured on the
table portion, a lever and means of compelling the knife to close upon
the table, a pallet or rest in the bottom of the table, a resilient
cushion under such pallet or rest.” In spite of the fact that they
filed an amended complaint from which the “spindle” or conical drum,
which was the only characteristic feature of the machine mentioned in
the original complaint, was eliminated, the plaintiffs insisted that
the said part constitutes the essential difference between the machine
in question and other machines and that it was the principal
consideration upon which their patent was issued. The said plaintiffs
sustained their contention on this point even in their printed brief
and memorandum filed in this appeal.

During the trial, both parties presented voluminous evidence from which the trial court arrived at the following conclusions:

“In
constructing their machine the plaintiffs did nothing but improve, to a
certain degree, those that were already in vogue and in actual use in
hemp producing provinces. It cannot be said that they have invented the
‘spindle’ inasmuch as this was already known since the year 1909 or
1910. Neither can it be said that they have invented the stripping
knife and the contrivance which controls the movement and pressure
thereof on the ground that stripping knives together with their control
sets were already in actual use in the different stripping machines
long before their machine appeared. Neither can it be said that they
invented the flywheel because that part or piece thereof, so essential
in every machine from time immemorial, was already known and actually
employed in hemp stripping machines such as those of Riesgo (Exhibit
4-A), Crumb (Exhibit 1-A), Icsiar (Exhibit A-Suzara), Browne (Exhibit
28-A), McFie, etc., all of which were in use for the benefit of hemp
long before the appearance of the plaintiffs’ machines in the market.
Much less can it be said that they invented the pedal to raise the
knife in order to allow the hemp to be stripped to pass under it, on
the ground that the use of such contrivance has, likewise, been known
since the invention of the most primitive of hemp stripping machines.

“On
the other hand, although the plaintiffs alleged in their original
complaint that ‘the principal and important feature of said machine is
a spindle upon which the hemp to be stripped is wound in the process of
stripping,’ nevertheless, in their amended complaint of March 3, 1928,
which was filed after a portion of the evidence therein had already
been submitted and it was known that the use of the spindle was nothing
new, they still made the allegations appearing in paragraph 3 of their
said amended complaint and reproduced on pages 2, 3, 4 and 5 hereof,
copying the same from the application which they filed with the United
States Patent Office, under which they obtained their patent in
question. The aforesaid application clearly shows that what they
applied for was not a patent for a ‘pioneer or primary invention’ but
only for some ‘new and useful improvement in hemp stripping machines.’ “

We have carefully reviewed the evidence presented and have had the
opportunity of ascertaining the truth of the conclusions above stated.
We agree with the trial court that, strictly speaking, the hemp
stripping machine of the plaintiffs does not constitute an invention on
the ground that it lacks the elements of novelty, originality and
precedence (48 C. J., sec. 101, p. 97, and sec. 102, p. 98). In fact,
before the plaintiffs herein obtained their patent, they themselves had
already publicly used the same kind of machine for some months, at
least, and, various other machines, having in general, the same
characteristics and important parts as that of the said plaintiffs,
were known in the Province of Davao. Machines known as Molo, Riesgo,
Crumb, Icsiar, Browne and McFie were already known in that locality and
used by the owners-of hemp plantations before the machine of the
plaintiffs came into existence. It may also be noted that Adrian de
Icsiar applied for a patent on an invention which resulted in the
rejection by the United States Patent Office of the plaintiffs’
original application for a patent on the so-called “spindle” or conical
drum which was then in actual use in the Dringman and Icsiar hemp
stripping machines.

Notwithstanding the foregoing facts, the
trial court did not decree the annulment of the plaintiffs’ patent and
the herein defendant-appellee insists that the patent in question
should be declared null and void. We are of the opinion that it would
be improper and untimely to render a similar judgment, in view of the
nature of the action brought by the plaintiffs and in the absence of a
cross-complaint to that effect. For the purposes of this appeal,
suffice it to hold that the defendant is not civilly liable for alleged
infringement of the patent in question.

In the light of
sound logic, the plaintiffs cannot insist that the “spindle” was a
patented invention an the ground that said part of the machine was
voluntarily omitted by them from their application, as evidenced by the
photographic copy thereof (Exhibit 41) wherein it likewise appears that
the patent on Improved Hemp Stripping Machines was issued minus the
“spindle” in question. Were we to stress to this part of the machine,
we would be giving the patent obtained by the plaintiffs a wider range
than it actually has, which is contrary to the principles of
interpretation in matters relating to patents.

In support of their claim the plaintiffs invoke the doctrine laid down by this court in the case of Frank and Gohn vs.
Benito (51 Phil., 712), wherein it was held that the therein defendant
really infringed upon the patent of the therein plaintiffs. It may be
noted that the plaintiffs in the former and those in the latter case
are the same and that the patent then involved is the very same one
upon which the present action of the plaintiffs is based. The
above-cited case, however, cannot be invoked as a precedent to justify
a judgment in favor of the plaintiffs-appellants on the ground that the
facts in one case are entirely different from those in the other. In
the former case the defendant did not set up the same special defenses
as those alleged by the herein defendant in his answer and the
plaintiffs therein confined themselves to presenting the patent, or
rather a copy thereof, wherein the “spindle” was mentioned, and this
court took for granted their claim that it was one of the essential
characteristics thereof which was imitated or copied by the then
defendant. Thus it came to pass that the “spindle” in question was
insistently mentioned in the decision rendered on appeal as the
essential part of the plaintiffs’ machine allegedly imitated by the
then defendant. In the case under consideration, it is obvious that the
“spindle” is not an integral part of the machine patented by the
plaintiffs on the ground that it was eliminated from their patent
inasmuch as it was expressly excluded in their application, as
evidenced by the aforesaid Exhibit 41.

Wherefore,
reiterating that the defendant cannot be held civilly liable for
alleged infringement of the patent upon which the present action is
based on the ground that there is no essential part of the machine
manufactured and sold by him, which was unknown to the public in the
Province of Davao at the time the plaintiffs applied for and obtained
their patent for improved hemp stripping machines, the judgment
appealed from is hereby affirmed, with the costs against the
plaintiffs-appellants. So ordered.

Avanceña, C. J., Malcolm, Villa-Real, and Hull, JJ., concur.