G.R. No.

L-36650 January 27, 1933

ANGEL VARGAS, Plaintiff-Appellee, vs. PETRONILA CHUA, ET

AL. Defendants-Appellant.

Jose F. Orozco for appellants.

Jose Yulo for appellee.

IMPERIAL, J.:

The defendants Petronila Chua, Coo Pao and Coo Teng Hee, appeal
from the judgment of the Court of First Instance of Manila, the
dispositive part of which reads as follows:

Wherefore judgment is rendered in favor of the plaintiff and against

the defendants, ordering each and every one of them, their agents,
mandatories and attorneys, to henceforth abstain from making,
manufacturing, selling or offering for a sale plows of the type of
those manufactured by the plaintiff, and particularly plows of the
model of Exhibits B, B-1 and B-2, and to render to the plaintiff a
detailed accounting of the profits obtained by them from the
manufacture and sale of said type of plows within thirty (30) days
from the date of the receipt by them of notice of this decision, with
costs against all of the defendants.

Angel Vargas, the plaintiff herein, brought this action to restrain the
appellants and the other defendant entity, Cham Samco & Sons,
their agents and mandatories, from continuing the manufacture and
sale of plows similar to his plow described in his patent No.
1,507,530 issued by the United States Patent Office on
September 2, 1924; and to compel all of said defendants, after
rendering an accounting of the profits obtained by them from the
sale of said plows from September 2, 1924, to pay him damages
equivalent to double the amount of such profits. law library

It appears from the bill of exceptions that Cham Samco & Sons did
not appeal.

In addition to the evidence presented, the parties submitted the

following stipulation of facts:
The parties agree on the following facts: chanrobles virtual law library

1. That the plaintiff, Angel Vargas, is of age and a resident of the

municipality of Iloilo, Iloilo, Philippine Islands.   chanroblesvirtualawlibrary chanrobles virtual law library

2. That the defendant, Petronila Chua, is also of age, and is married

to Coo Pao alias Coo Paoco, and resides in Iloilo.   chanroblesvirtualawlibrary chanrobles virtual law library

3. That the defendant, Coo Teng Hee, is also of age and a resident
of Iloilo, and is the sole owner of the business known as Coo Kun &
Sons Hardware Co. established in Iloilo.   chanroblesvirtualawlibrary chanrobles virtual law library

4. That the defendant, Cham Samco & Sons, is a commercial

partnership duly organized under the laws of the Philippine Islands,
with their principal office in the City of Manila, and that the
defendants Cham Samco, Cham Siong E, Cham Ai Chia and Lee
Cham Say, all of age and residents of the City of Manila, are the
partners of the firm Cham Samco & Sons.   chanroblesvirtualawlibrary chanrobles virtual law library

5. The parties take for granted that the complaint in this case is
amended in the sense that it includes Coo Paoco as party defendant
in his capacity as husband of the defendant, Petronila Chua, with
Attorney Jose F. Orozco also representing him, and that he
renounces his rights to receive summons in this case by reproducing
the answer of his codefendant, Petronila Chua.   chanroblesvirtualawlibrary chanrobles virtual law library

6. That the plaintiff is the registered owner and possessor of United

States Patent No. 1,507,530 on certain plow improvements, issued
by the United States Patent Office on September 2, 1924, a certified
copy of which was registered in the Bureau of Commerce and
industry of the Government of the Philippine Islands on October 17,
1924. A certified copy of said patent is attached to this stipulation of
facts as Exhibit A.  
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7. That the plaintiff is now and has been engaged, since the
issuance of his patent, in the manufacture and sale of plows of the
kind, type and design covered by the aforementioned patent, said
plows being of different sizes and numbered in accordance
therewith from 1 to 5.   chanroblesvirtualawlibrary chanrobles virtual law library
8. That, since the filing of the complaint to date, the defendant,
Petronila Chua, has been manufacturing and selling plows of the
kind, type and design represented by Exhibits B, B-1 and B-2, of
different sizes, designated by Nos. 2, 4 and 5.   chanroblesvirtualawlibrary chanrobles virtual law library

9. That, since the filing of the complaint to date, the defendant, Coo
Teng Hee, doing business in Iloilo under the name of Coo Kun &
Sons Hardware Co., has been obtaining his plows, of the form
and size of Exhibits B, B-1 and B-2, from the defendant
Petronila Chua.   chanroblesvirtualawlibrary chanrobles virtual law library

10. Without prejudice to the plaintiff's right to ask the defendants to

render an accounting in case the court deem it proper, the parties
agree that the defendant Coo Teng Hee, doing business under the
name of Coo Kun & Sons Hardware Co., has been selling to his
customers in his store on J. Ma. Basa Street in Iloilo, plows of the
kind, type and design represented by Exhibits B, B-1 and B-2,
having bought said plows from his codefendant, Petronila Chua, who
manufactures them in her factory on Iznart Street, Iloilo.   chanroblesvirtualawlibrary chanrobles virtual law library

11. That, according to the invoices marked Exhibits C and C-2 dated
March 13, 1928, and June 19, 1928, respectively, the defendant
Cham Samco & Sons, on the dates mentioned, had, in the ordinary
course of business, bought of its codefendant Coo Kun & Sons
Hardware Co., 90 plows of the form, type and design of Exhibits B,
B-1 and B-2 which it has been selling in its store on Sto. Cristo
Street, Manila.   chanroblesvirtualawlibrary chanrobles virtual law library

12. That the same defendant Cham Samco & Sons, in the ordinary
course of business, bought on March 17, 1928, of the store "El
Progreso" owned by Yao Ki & Co., of Iloilo, a lot of 50 plows, of the
form, type and design of Exhibit B-1, as shown by Invoice C-1, and
that it has been selling them in its store on Sto. Cristo St.,
Manila.  
chanroblesvirtualawlibrary chanrobles virtual law library

13. That, on September 19, 1928, the 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 issued.   chanroblesvirtualawlibrary chanrobles virtual law library
14. That, on December 20, 1927, the plaintiff herein, through his
attorneys Paredes, Buencamino & Yulo, sent by registered mail to
the herein defendant, Coo Kun & Sons Hardware Co., at Iloilo, the
original of the letter Exhibit E, which was received by it on
September 28, 1927, according to the receipt marked Exhibit E-1
attached hereto.  
chanroblesvirtualawlibrary chanrobles virtual law library

15. That the plows manufactured by the plaintiff in accordance with

his patent, Exhibit A, are commonly known to the trade in Iloilo, as
well as in other parts of the Philippines, as "Arados Vargas", and
that the plaintiff is the sole manufacturer of said plows. A sample of
these plows is presented as Exhibit F.   chanroblesvirtualawlibrary chanrobles virtual law library

16. That the document, Exhibit 1-Chua, is a certified copy of the

amended complaint, the decision of the Court of First Instance of
Iloilo and that of the Supreme Court (R. G. No. 14101) in civil case
No. 3044 of Iloilo, entitled "Angel Vargas", plaintiff, vs. F. M. Yaptico
& Co., Ltd., defendant", and that Exhibit 2-Chua et al. is a certified
copy of Patent No. 1,020,232, to which the aforementioned
complaint and decision refer, issued in favor of Angel Vargas by the
United States Patent Office on March 12, 1912, and that Exhibit 3-
Chua et al., represents the plow manufactured by Angel Vargas in
accordance with his Patent marked Exhibit 2-Chua et al.

The appellants assign the following errors:

FIRST ERROR

The trial court erred in declaring that the Vargas plow,

Exhibit F (covered by Patent No. 1,507,530) is distinct from
the old model Vargas plow, Exhibit 2-Chua, covered by the
former Patent No. 1,020,232, which had been declared null
and void by this court.

SECOND ERROR

The trial court erred in mistaking the improvement on the plow for
the plow itself.

THIRD ERROR
The trial court erred in rendering judgment in favor of the plaintiff
and against the defendants.

FOURTH ERROR

The trial court erred in not dismissing the complaint with costs
against the plaintiff.

The evidence shows that Exhibit F is the kind of plows the plaintiff,
Angel Vargas, manufactures, for which Patent No. 1,507,530,
Exhibit A, was issued in his favor. Exhibits B, B-1 and B-2 are
samples of the plows which the herein appellants, Coo Pao and
Petronila Chua, have been manufacturing since 1918, and Exhibit 3-
Chua represents the plow for which, on March 12, 1912, the
appellee obtained a patent from the United States Patent Office,
which was declared null and void by the Supreme Court in the case
of Vargas vs. F. M. Yap Tico & Co.  (40 Phil., 195).   chanroblesvirtualawlibrary chanrobles virtual law library

With these facts in view, the principal and perhaps the 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, on the contrary, it is
substantially the same plow represented by Exhibit 3-Chua
the patent for which was declared null and void in the
aforementioned case of Vargas vs. F. M. Yaptico & Co.,
supra.  chanrobles virtual law library

We have carefully examined all the plows presented as exhibits as

well as the designs of those covered by the patent, and we are
convinced that no substantial difference exists between the plow,
Exhibit F, and the plow, Exhibit 3-Chua which was originally
patented by the appellee, Vargas. The only difference noted by us is
the suppression of the bolt and the three holes on the metal
strap attached to the handle bar. These holes and bolt with its
nut were suppressed in Exhibit F in which the beam is movable as in
the original plow. The members of this court, with the plows in view,
arrived at the conclusion that not only is there no fundamental
difference between the two plows but no improvement
whatever has been made on the latest model, for the same
working and movement of the beam existed in the original model
with the advantage, perhaps, that its graduation could be carried
through with more certainty by the use of the bolt which as has
already been stated, was adjustable and movable.   chanroblesvirtualawlibrary chanrobles virtual law library

As to the fact, upon which much emphasis was laid, that deeper
furrows can be made with the new model, we have seen that the
same results can be had with the old implement.   chanroblesvirtualawlibrary chanrobles virtual law library

In view of the foregoing, we are firmly convinced that the

appellee is not entitled to the protection he seeks for the
simple reason that his plow, Exhibit F, does not constitute an
invention in the legal sense, and because, according to the
evidence, the same type of plows had been manufactured in
this country and had been in use in many parts of the
Philippine Archipelago, especially in the Province of Iloilo,
long before he obtained his last patent.   chanroblesvirtualawlibrary chanrobles virtual law library

In the above mentioned case of Vargas vs. F. M. Yaptico & Co.,  we

said:

When a patent is sought to be enforced, "the questions of invention,

novelty, or prior use, and each of them, are open to judicial
examination." 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 the 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. With all
due respects, therefore, for the critical and expert examination of
the invention by the United States Patent Office, the question of the
validity of the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether the
defendant has assumed the burden of proof as to anyone of his
defenses. (See Agawan Co. vs. Jordan [1869], 7 Wall., 583;
Blanchard vs. Putnam [1869], 8 Wall., 420; Seymour vs. Osborne
[1871], 11 Wall., 516; Reckendorfer vs. Faber [1876], 92 U. S.,
347; 20 R. C. L., 1112, 1168, 1169.) chanrobles virtual law library
Although we spent some time in arriving at this point, yet, having
reached it, the question in the case is single and can be brought to
a narrow compass. Under the English Statute of Monopolies (21 Jac.
Ch., 3), and under the United States Patent Act of February 21,
1793, later amended to be as herein quoted, it was always the rule,
as stated by Lord Coke, Justice Story and other authorities, that to
entitle a man to a patent, the invention must be new to the
world. (Pennock and Sellers vs. Dialogue [1829], 2 Pet., 1.) As said
by the United States Supreme Court, "it has been repeatedly
held by this court that a single instance of public use of the
invention  by a patentee of more than two years before the
date of his application for his patent will be fatal to the
validity of the patent  when issued." (Worley vs. Lower Tobacco
Co. [1882], 104 U. S., 340; McClurg vs. Kingsland [1843], 1 How.,
202; Consolidated Fruit Jar Co. vs. Wright [1877], 94 U. S., 92;
Egbert vs. Lippmann [1881], 104 U. S., 333; Coffin vs. Ogden
[1874], 18 Wall., 120; Manning vs. Cape Ann Isinglass and Glue Co.
[1883], 108 U. S., 462; Andrews vs. Hovey [1887], 123 U. S., 267;
Campbell vs. City of New York [1888], 1 L. R. A., 48.)

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 upon which the appellee's contention is
based, does not constitute an invention and, consequently, the
privilege invoked by him is untenable and the patent acquired by
him should be declared ineffective.  
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The judgment appealed from is hereby reversed and the appellants

are absolved from the complaint, with costs of this instance against
the appellee. So ordered.

Avance�a, C.J., Street, Villamor, Ostrand, Villa-Real, Abad Santos,

Hull, Vickers and Butte,  JJ., concur.