Philips Sea Foods V Tuna Processors Inc
Philips Sea Foods V Tuna Processors Inc
Philips Sea Foods V Tuna Processors Inc
X------ ------------------X
DECISION
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Decision 2 G.R. No. 214148
Amended Decision4 dated February 28, 2014 and Resolution 5 dated August
29,2014 in CA-G.R. SP No. l 21498, which reversed the Intellectual Property
Office's dismissal of the administrative complaint for patent infringement. 6
For its part, Phillips denied infringing Patent I-31138. It alleged that its
process does not require a cooling unit because the filtered smoke is only
allowed to cool to ambient temperature before it is injected directly into the
tuna meat. 15 Phillips aiso raised the invalidity of Patent 1-31138 as a defense
and argued that the patented process does not involve an inventive step and
all the elements of Claim 1 already formed part of the prior. 16
4 Rollo 1 pp. 58-78. Penned by Associate Justice Romeo F. Barza, with the concurrence Associate Justices
Noel G. Tijarn (retired member of this Court) and Ramon A. Cruz.
Rollo, pp. 81-82. Penned by Associate Justice Romeo F. Barza, with the concurrence of Associate Justices
Noel G. Tijam and Ramon A. Cruz.
6 See ro/lo, pp. 320-·-336.
7
id. at 11 I.
8 id. at 10.
9 id. at 327.
10
!d. at l lO-l l 9.
11 Id at 83 & 127.
1
' id. at 110.
13 Id. at 297; CA ro!io, P- 95.
14
CA roilo, p. 95.
r
15
Rollo, pp. l55-i56; 160--161
I(> /d_ at J 65.
Decision 3 G.R. No. 214148
At this point, this Office believes that the omission of the third step
has not yielded any different result. As seen during the ocular inspection of
respondent's process, filtered smoke at ambient temperature of 24°C
(Exhibit "6-E") after it was applied to tuna was immediately cooled. The
temperature reading of smoke •treated tuna was specifically at 0° to 5°C
(Exhibit "6-F"). The cooling of filtered smoke to a temperature of 0°C to
5°C immediately after injection of ambient temperature filtered smoke to
the tuna yields the same result in Steps 3 and 4. The elements of
respondent's process achieve the same function and gives [sic] the same
result. 27
The BLA also issued a writ of preliminary injunction on April 20, 2004,
directing Phillips to cease and desist from using the patented process on its
17
Id at 125.
18
Id. at 294.
19
CA ro/lo, pp. 130-i 31 & 224-225.
20
Rollo, p. 295.
21
Id. at 303.
" CA rollo, p. 130.
23
Id. at 130.
::M id. at I 04.
" id. at 106-i 17.
26 !d at 117~133.
07
!cf_ at 130.
I
Decision 4 G.R. No. 214148
\
BLA Decision
On October 30, 2006, the BLA dismissed 3 ' Yamaoka's complaint for
patent infringement and held that Phillips' process does not fall within the
scope of Patent 1-31138.32 There is no literal infringement because Phillips'
process does not include every element of Claims 1 and 2 of Patent 1-31138. 33
Likewise, there is no infringement under the doctrine of equivalents because
Phillips' process does not meet the function-means-and-result test. Phillips'
process does not perform substantially the same function or operate in
substantially the same way as Patent I-31138. For this reason, the two
processes cannot achieve substantially the same result. 34
28 id. at 135-136.
29
Id. at 138--152.
30
Rollo, p. 296.
31 !cl. at 294-306.
32 Id at 302.
33
Id. at 303.
·'" Id at 306.
35 Id. at 325.
Jr, CA rn!lo, p. 315-316 .
.11 Rollo, pp. 308-3 l 9.
:rn id at3l2-3l9.
39
Id. at 327.
I
Decision 5 G.R. No. 214148
ODG Decision
The ODG observed that Phillips' process does not require a cooling unit
to cool the produced smoke to between 0° and 5°C, and smoking the tuna meat
by exposing it to the smoke coole'd to between 0° and 5°C. Therefore, Phillips
process does not literally infringe Patent I-31138. 43 The ODG likewise upheld
the BLA's finding that Yamaoka failed to satisfy the f'unction-means-result
test to justify his infringement cl.aim under the doctrine of equivalents, 44 to
wit:
This Office noticed that Phillips' process did not indicate the use of a
cooling unit to cool the produced smoke to between 0°C and 5°C. Also[.]
Yamaoka's claim of smoking the llma meat at extra-low temperatures by
exposure to the smoke cooled to between 0°C and 5°C is also not preseni in
Phillips' process. Conversely. Phillips' process includes the following
which are not present in Yamaoka' s patent claims: first, the passing through
a series of filters to remove tar, odor [_,]and other impurities: second, the
storing of the filtered smoke in a plastic bag at room temperature: third. the
injection of filtered smoke in the t'uw tuna meat; and lastly, the placing of
the injected tuna into a refrigeration unit ;,vith a ten1perature setting of-3°C_
xxxx
xxxx
xxxx
15
Id at 329.
I
•
Decision 7 G.R. No. 214148
CA Decision
Acting on the petition, the CA issued a Decision49 dated June 25, 2013,
dismissing TPI's appeal and upholding the ODG's finding that Phillips'
process does not infringe Patent 1-3 ll 38. The CA compared both processes
and found that they differ in the manner of applying the filtered smoke to the
tuna meat. The CA observed:
xxxx
46
Id. at330--331.
47
CA rol!o, pp. l 2-53.
48
Id. at 27 & 38.
49
Rollo, pp. 339--360. Penned by Associate Justice Romeo F. Barza. with the concurrence of Associate
Justices Noel G. 'rijam (retired member of this Court) and Ramon A. Cruz. The dispositive portion of the
Decision reads:
WHEREFORE, the petition is hereby DISMJSSED and the assailed Decision, dated September 12,
2011, of the Office of the Director General of the Intellectual Property Office, in Appeal No. 10-06-03,
is AFPIRMED in toto.
SO ORDERED.
50
Id. at 353-354.
I
Decision 8 G.R. No. 214148
the respondent's filtering process involves not only the removal of tar from
the s1noke that is produced frrnn the respondent's process but the ren1oval
of odor as well, the kind of smoke produced in the Yamaoka process is
different from the smoke produced in the respondenfs process as only
"mainly tar" is removed from the former. The Court ther<ofore agrees that
certain flavor giving elements, such as odor, would remain in the filtered
smoke in the Yamaoka process.
Thus, while both processes employ a filtering step, the fi!te.-ing step
m the respondent's process is markedly different from that of the
Yamaoka process. As the petitioner failed to show evidence ;,., this case
that the end product result of the two prncesses is essentially the same,
the Coul"t has no other choice lmi to con dude that they ,u-e different on
account ofthe different processes used in en ring the tu1u1 meat. Indeed,
as correctiy opined by Dr. Acevedo in her report whose expertise as a food
scientist lrns not been questioned, "since the tuna meat undergoes distinctly
different processing methods of curing, the final food products have
definitely different product characteristics and should be regarded as
such." 51 (Emphasis supplied)
Amended CA Decision
After taking,_ a second look, t!.e Court is of the view that the aforesaid
processes covered by Letter's Patent No. 31138 and that used by the
respondent rure substantially similar i.e. both prncesses are similar in the
burning of combustible mlllterial to produce smoke, m,rntion of t!J.e
resulting smoke, cooling of filtered smoke before curing, and curing
tuna meat with cold filtered smoke.
51
id at 357--359.
5~ See !d. at l 8.
y; Id. at 72.
Decision 9 G.R. No. 214148
the word "'mainly" is not equivalent to the word "'only." The language
employed in Claim I, i.e., "to rem,we mainly tar therefrom", is clear that
the objective end of the resul1 is D remove impurities mainly tar and this
should not be construed to mean that Nh.:r elements such as odor are not
removed in the ·'r• amaoka process as claimed under Claim l. Thus, it is
crystal clear that the objective end result of the filtering process utilized by
both the Yamaoka process and that of the respondent's is the removal of
impurities involving mainly tar. ln effect, the filtration of the resulting
smoke being undertaken by the petitioner and the respondent are
substantially the same. 54 (Emphasis supplied)
'
The CA reconsidered its construction of the phrase "to remove mainly
tar." Initially, it equated the word mainly to only, making th.e objective of
the Patent l-31138's filtration process different from Phillips', i.e., to remove
tar and odor. The CA clarified that the phrase "to remove mainly tar" should
not be construed to mean that only tar is removed, and other elements such as
odor are not removed. For this reason, the parties' respective filtration
processes are substantially the same in that both aim to remove tar and other
impurities. Therefore, Phillips is liable for patent infringement under the
doctrine of equivalents. The dispositive portion of the Decision reads:
SO ORDERED. 55
PARTIES' ARGUMENTS
On the other hand, TPI maintains ,hat Phillips' process infringes Patent
1-31138, literally and under tbe doctrine of equivalents. The invention as a
54
id. at 73--74.
55
Id.at 77.
5
(' !d. at 81--82. Resolution penn;:\d by !~, ssoci2:te) ti.sli{ c rcv\ne,) r:-. Bar:ra, ,vith the concurrence Qf Associate
Justices Noei G. Tijarn (fJ;!.llCT rncrnritr \:f;h~s Cc•urf) and Ranwn A. Cru:-:..
,)
(;
Decision 10 G.R. No. 214148
whole shows that both processes involve the burning of combustible materials
to produce smoke, filtering of the resulting smoke to remove tar, cooling of
filtered smoke to a temperature of about 0°C to 5°C before curing, and curing
of tuna meat with the cold filtered smoke.
ISSUES
RULING
0
Decision 'i
'. G.R. No. 214148
Law. including the act o( 1naKi.x1g. i.;_;.~ng, oftCring l<x sale., selling, or
importing a patented prod,.1ct :'n a prod,_;ct obtained directly or indirectly
fron1 a patented process, or ·fri_e ·:Jsc (if a patented process without the
authorization of the patentee.
I.
Claims interpretation
The two basic kinds of claims are process and product claims. Claim of
an activity or process covers all kinds of activities where the use of some
material product is implied to carry out the process. In contrast, a product
claim may include substances, compositions, objects, articles, apparatus,
machines, or systems of co-opei;ating apparatus. 67 As to form, claims may
6
° Cognex Corp. v. Elei::1ro Scientific !ndustr;es. 214 F. Supp. 2d 110 (D. Mass. 2022) and Nilsen v.
J\,fofnro!a, Inc., 80 F. Supp. 2d 921 (N.D. i!I.2000); citing Markman v. ?Ves!vieH' Instruments, Inc., 5 l 7
U.S. 370 (!996).
61 INTELU.'.CTli:\i. PROPERTY Coor-::, sec. 53
62
INT!~L!.E(''Jl.1.-\L PROP!c'RTY CODI.'., sec . .J~
63
Badcgrozmd Reading !\,lateriul on 1he. intr:!!1~crul!l f>,-·operty Sys/em l?fthe PhWppines; World !ntc1lcctual
Property Organi:z:ation, Ou.:::.hct 1993, p. 55. Accessed from
https:/ /www. wi po. int/ edocs/p11bdocs/f::n/ 1.-v; PO ..'P: 1b__ 61? 6__ph. pdf.
64
Revised lrnp!ementi.ng rules and Reguiatie:-i;:.; :e'er Patents, Utility fviod,0\s. :J.r>..cl Industrial Designs. Rule
4 I 3(a)
65
J,Yarner-.Jenkinson Co.. , Inc. v. Hilton /)avi8 Ch-3,ni;:ul Co., 520 U.S. 17 (1997) and lntellectua! Property
Code, Sections 36 & 7'5-.
ti(, Sec lNTL-'.LJY(TUAI, PKOPJ:Rrl' CODE, se,: . .':6 & 7:J: i<.:::·'Jised Implementing ruies and Regulations for
Patents, Utility Models, and Industrial f.)f-.~i~~r:.s. ~<..1!-: '1 i S(a):
Rule 4 l 5. C!aim.s -
'
(a) The patent app_licatior; rnust condnde "1..-i;.h ri claim, particularly pointing out and distinctly claiming
the parl, improvement, or cor.1bim,.:fr;q ,1t1Jic)i. ·th~ 8.pplk:ant regards ,;1~ his invention.
67
20 I 7 /1:!amwifor P atem E....-amin~'./1 it;:c; Pra<:2.:/;;n-, Rule ,t l 5(h ).
(
Decision 12 G.R. No. 214148
ln sum, the language of the claims limits the scope of protection granted
by the patent. The patentees, in enforcing their rights, and the courts in
interpreting the claims, cannot go beyond what is stated in the claims,
especially when the language is clear and distinct. If not, the IP Code and the
Revised Implementing Rules and Regulations (IRR) for Patents, Utility
68 See Revised hnp!ernenting rules and Regulations for Patents, Utility Models, and Industrial Designs.
Rules 415(b) 2-nd 416:
Rule 415. Claims-·
(b) The application may contain one ( 1) or more independent claims in the same category (product,
process, apparatus, or use), where it is not appropriate, having regard to the subject matter of the
application, to cover this subject matter by a single clairn which shali define the matter for which the
protection is sought. Ec'.ch claim shall be clear, concise, and supported by the description.
Rule 416. Form and Contenls of the Claims.~ The claim shall define the matter for which the protection
is sought in terms of technical features ofthe invention.
69 1017 J\1anua!_for I'a!ent Enimination Procedure, Ruic 41 S(b)(c).
70 See Revised Implementing rules and Regulations for Patents, Utility Models, and Industrial Designs. Rule
415(c):
Rule 415. Claims--
xxxx
(c) One ( l) or more claims may be presented in dependent form, referring back and flirther limiting
another c!airn(s) in the same application for. An dependent claim ·which refers to more than one
other claim (multiple dependent ciaim) shaH refer to such other claims in the alternative only. A
multiple dependent claim shall not serve as a basis for any other multiple dependent claim.
71 1017 1Hanualfor Patent Examination f>roc~dure, Rule 41 S(c).
71 Teledvne McCormick_Selph v. United Sta/<.:S, 558 F.2d 1000, 1004 (Fed. Cir_ 1977); In re Schutte, 244
F.2d ·323, 44 CCPA 922 ( 1957) cited in Drcs.1v/nduslries, Inc. v. Uni/eel Stales, 432 F.2d 787, 193 Ct.
Cl. 140 (Fed. Cir. 1970), Mallinckrodt. Inc. v. Mas/Inn Corp., 292 f. Supp. 2d i201 (C.D. Cal. 2003).
7:l S'ee Afallinckrodt, Inc. v. Afosimo Corp_.. 292 F. Supp. 2d 1201 (C.D. Cal. 2003); Wahpelon Canvas
Company, Inc. v. FrrJnfir.:r, Inc., 870f".2(l 15£16 (Fed. Circ. 1989). (footnote 10);
7 •1 456 Phil. 213 (2003) (Per J. Carpio, Third Divi:>ion:J.
75 Id. at 223.
Decision 13 G.R. No. 214148
Models, and Industrial Designs in~truct that reference to the description and
drawings may be done to ascertain the meaning of the terms in the claims. 76
Patent l-31138
7<, See !NTELLECTUAr. PROPERTY Com.:, sec. 75. E-rtent qf Proteclion and !nterpretarion (f Claims. - 75.1.
The extent of protec.tian conferred by a p"i:ltent <,Jial! be determined by the c!aims, which are to be
interpreted in the light of the descriplion ~,nd dr:tvi,ings.
xxxx
and the Revised lrnp!ernenting rules and R'.:'.~Ubtions for Pal.ems, Utility Models, and lndustria! Designs.
Rule4l5(d):
Rule 415. C!airns -
xxxx
(d) The claims must conform to the inv1;11tion as set forth in the description and the terms and phrases
used in the claims must find clear supµo11" or antecedent basis in the said description so that the
meaning of the terms may be ascertainable by reference to the description. Claims shall not. except
where absolutely necessary, rely in respect of the technical features oftlle invention, on reference
to the description or drawings. ln partlculcr. they shall not rely on references such as, "As described
in part xxx of the descripiion" or '"As illustrated in figure xxx of the drawings."
77 Rollo, p. i 06.
j
Decision 14 G.R.No.
214148
(d) Smoking the tuna meat by exposing it to the filtered smoke cooled
to between 0° and S°C.
xxxx
The IPO and the CA likewise interpreted Claim l to include four steps,
but their interpretations of the phrase "to remove mainly tar therefrom" differ.
For the IPO, Patent I-31 l 38 only requires the use of one filter, such that only
tar can be removed from the smoke. 111 .Meanwhile, the CA found that the
phrase "to remove mainly tar therefrom" means that the objective and result
of the filtering step is to remove impurities, but mainly tar. The phrase should
not be construed to mean that other elements, such as odor, are not rernoved. 82
Put simply, the CA opined that the word "mainly" should not be equated to
"only."
'We agree with the CA's interpretation of the phrase "to remove mainly
tar therefrom."
7
:c- Id at 90.
7 ') !d at 91.
80
Id at 93-94.
1
" Id. at 304 & 329.
82
Id. at 74.
83
Cabral v. Adolfo, 794 Phil. i 6 l, 172(2016) [Per .L Reyes, Third Division]; ciling Jose v. Novida, 738 Phil.
99, 120 (2014) [Per J. De! CastiUo, Second DivisionL citing Sugar l<eRulatory Administ.ration v. Tormon,
et al., 700 Phi!. l 65, 178 (20 ! 2) [Per J. Pera!ta, En Bone].
j
Decision 15 G.R.No.
214148
to remove tar components and other impurities in the smoke by using various
types of filters. Whet.'1er the Com;t interprets "mainly" in its ordinary meaning
or in light of its use in the patent specification, it means for the most part,
primarily, or mostly. The use of "mainly" reveals the main objective of
removing tar without limiting the subject of removal to only tar. Thus, the
phrase "to remove mainly tar therefrom" can be equated to "remove mostly
tar."
Interpreting "to remove mainly tar therefrom" to mean that only tar is
removed in the filtering step of Patent I-3113 8 renders "mainly" useless,
limits the scope of Claim l, and contradicts the Description of Preferred
Embodiments. A scrutiny of the patent documents shows that Patent I-31 I 38
covers the use of multiple filters to remove tar and other smoke components:
(a) Lines 19-22 page 12 state that the filtering unit removes mainly tar
but retains ingredients exerting highly preservative and sterilizing
_,_. 84
acuon.
(b)Lines 14-20 page 13 provide that the kind of the filters "optimum for
each individual fish or meat to be processed must be found by
experience. Choice and changing of filters can be effected easily. For
example, suitable number of different kinds of filters <ff different
numbers of fiHers of the same kind may be selected and changed
easily ." 85
(c) Lines 20-23 page 8 state that "various types of filters catching
relatively larger particles consisting mainly of tar can be used singly
or by combining filters of different mesh sizes." 86
84
Rollo., p. 96.
" Id at 97.
86
hi. al 92.
s7 Id at313-314.
r
Decision 16 G.R. No. 214148
u.
In patent infringement, the evidence required before the IPO is
substantial evidence or that amount of relevant evidence that a reasonable
mind might accept as adequate to justify a conclusion. 88 The burden of proving
patent infringement rests on the plail)tiff. 89 But for process patents, the IP
Code creates a presumption that an identical product was obtained from the
patented process if (a) the product is new or (b) there is a substantial likelihood
that the identical product was made by the process, and the patentee was
unable, despite reasonable efforts, to determine the process actually used.
Therefore, the burden of provin~ that the process to obtain the identical
product is different from the patented process rests on the defendant. 90 Such
is not the case here. For one, smoked tuna fish is not a new product. For
another, there is no substantial likelihood that Phillips' smoked tuna fish was
made using the patented process because the use of filtered smoke cooled to
between 0° and 5°C is not the only way to produce smoked tuna fish. As
previously discussed, conventional smoking can be done in three temperature
zones 91 not covered by Patent I-3113 8. Ergo, the burden of proof rests on TPI
and its predecessors-in-interest.
Tests of Infringement
xxxx
~8 Rules on Evidence, Rule 113, Section 6. Suhstantial ei,idence. - In cases filed before administrative or
quasi-judicial bodies, a fact may be deemed established if it is supported by substantial evidence, or that
amount of relevant evidence which a reasonable mind might accept as adequate to justify a conclusion;
Rules & Regulations on Administrative Comp/aintsf(.>r Violation qlLcrvvs Involving lnt.ellec/lra/ Proper!_v
Righ.!s, Rule 10, Section 1. Evidence required. - Substantial evidence shall be sufficient to support a
decision or order. A fact may be deemed establi:i;hcd if it is suppmied by sub~tantial evidence. It means
such relevant evidence which a reasonabk: mind might accept as adequate to _justify a conclusion. The
Bureau shall a!!ow the presentation or submission of forensic evidence which may be admitted and given
weight.
80 Vargas v. PJ,f_ Yaptic-o Co. Ltd., 40 Phil. i95, 199--'200 (1919) fPer J. Malcolm, En Banc'j.
')(l !NTEUXTTU/\L PROPERTY CoDJ:, sec. 78.
'' 1 Rollo, p. 90.
92
297 Phil. 375 (1993) [Perj. Romero. Thfrd Division]
Decision 17 G.R. No. 214148
Under the literal infringement test, courts consider the elements of the
invention as expressed in the claim(s). If the allegedly-infringing product or
process falls within the literal meaning of the claim(s), there is patent
infringement. 94
After comparing the patent claim and the petitioner's floating power
tilier, the Court was convinced that the petitioner is liable for patent
infringement thus:
lt appears from the foregoing observation of the trial court that these
claims of the patent and the features of the patented utility mode! were
copied by petitioner. We are compelled to arrive at !JW other conclusion
but that there was i11frh1gement.'i6 (Emphasis supplied, citations omitted)
Under the doctrine of equivalents test, the courts consider whether the
elements in the allegedly-infringing product or process are equivalent to the
elements expressed in the patent's claim(s). There is patent infringement if the
allegedly-infringing product or process appropriates the innovative concept of
the patent, and despite the modifications introduced in the infringing product
or process, it still performs substantially the same functions, in the same way,
to produce the same result. 97
xx x at the trial of this case teslimllny was introduced which, in our opinion,
leaves no room for doubt, first. tlrnt akolwl is ,rn equivalent or substitn,tc,
which known as such at the lime when the patent was issued, for
96 Id. at 381.
v; idc!t381-381.
I
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0
Decision 19 G.R. No. 214148
lt was clearly proven at il1e trial. that kerosene and alcohol blast
lamps are agencies for producing and applying heat, well known
throughout the world long, prior to 1906, the date of the issue of the
patent xx x.
xxxx
The plaintiff does nol and cannot claim a patent upon the particular
lamp used by him. The patent, however. gives him the exclusive right to the
nse of "la lamparilla o sopiete, alimentada de petroleo o esencia mineral''
(the small lamp or blowpipe fod with petroleum or mineral oil) in
manufacturing curved handles for umbrellas and canes, to which reference
is made in the above-cited descriptive statement and annexed note. 'The
small lamp or blowpipe" mentioned in the descriptive statement and
annexed note which accompanied the application for the patent, evidently
referred to the design of a blast lamp which was attached thereto; am:!
in mu opinion both plaintiff and defendant make use of a blast !amp
substautiai!y similar, in principle and design, to that referred to in the
descriptive statement and th·~ annexed note, for the exclusive use of
whid, ln the manufacture of curved handles, plaintiff holds a patent.
True, defendant's blast lamp is foci with alcohol, and its shape varies in
unimportant details, for the purpose of accommodating the principle, by
which the flame is secured, to the different physical and chemical
composition of the fuel used therein; but the principle on which it works,
its mode of application, and its general design distinguish it in no
essential particular from that usecl by the plaintiff. If the original design
accompanying the statement had shown a blast lamp made of brass or delf,
he would be a reckless advocate who would claim that the patent might
lawfully be evaded by the use of a lamp made of iron or tin; or if the original
design had shown a blast lamp 6 inches high, with a nozzle 4 inches long it
would hardly be seriously contended that the use of a lamp 8 inches high
with a nozzle 3 inches long would protect the ingenious individual, who in
all other respects bon-owed the patented process, from the consequences of
an action for damages for infringement. But in the light of the evidence of
record in this case, the reasoning upon which these hypothetical claims
should be rejected applies with equal force to the contentions of the
defendant, the ground for the rejection of the claims in each case being the
same, and resting on the fact thfrt unessential changes, which do not affect
the principle of the blast lamp used in the patented process, or the mode
of application of heat authorize,;! by the patent, are not sufficient to
support a contention thar the p~ocess in one case is in ,my essential
particula,. different from that used in the other.
Later, in the case of Del Rosario v. CA, 100 (Del Rosario) the Court again
appiied the doctrine of equivalents. This time, the patents cover audio
equipment and improved audio equipment commonly known as the sing-
along system or karaoke. The Cow;t stressed the importance of the similarities
of the functions, means, and results between the two audio equipment in this
wise:
<J<) Id.
100 325 Phil. 424 ( l 996) [Per J. Be!losi!to, First DivisionJ.
101
Id at 441--442.
Decision 21 G.R. No. 214148
In Smith Kline v. CA, 102 the Court similarly applied the functions-
means-and-result test or triple identity test to determine the existence of patent
infringement involving methods and compositions for producing biphasic
parasiticide activity using methyl 5 Propylthio-2-Benzimadole Carbamate.
The Court ruled that there is no patent infringement because the patentee
failed to prove that the allegedly-infringing compound operates in
substantially the same way or by substantially the same means as the patented
compound, thus:
Gsell, Del Rosario, and Smith Kline demonstrated how the Court
determined patent infringement under the doctrine of equivalents. Gsell
employed the insubstantial difference test on a patented process. Under the
insubstantial difference test, there is patent infringement when the infringer
appropriates the patent but adopts insubstantial changes. The change is
insubstantial if a person skilled in the art is aware that the change is a mere
substitute for the replaced element. Meanwhile, Del Rosario and Smith Kline,
respectively used the triple identity test in a product and process patent.
Under the triple identity test, there is patent infringement if the allegedly-
infringing device or process performs substantially the same function and
102
456 Phil. 213 (2003) [Per J. Carpio-Morales, Third Division].
w:; Id at 224-225.
Decision 22 G.R. No. 214148
xxxx
xxxx
3 l-34. 39, n.8. and 39-40, ;;,c ;in, confident that the doctrine will not
vitiate the central -Ji.mctions of ll1c patent -claims themselves. 106 (Emphasis
supplied)
ln our jurisdiction, the Cour~ has not yet applied the all elements test,
but Section 75.2 of the IP Code states that in determining the extent of
protection conferred by a patent:elernents in the allegedly-infringing device
or process which are equivalent to the elements expressed in the claims should
also be considered. Accordingly, the doctrine of equivalents must be applied
to the individual elements-not to the invention as a whole. This is to avert
the possibility of expanding the parent scope beyond the elements of its
claim(s).
Phillips' Process
Records reveal that the first step in Phillips' process is the burning of
sawdust at 250° to 400°C. Second is the filtration step, where the resulting
smoke passes through a series of filters to remove tar, odor, and other
impurities. Third is the cooling of the filtered smoke to ambient temperature
in a piastic bladder. Then, the bladder is transported to the production area
where the filtered smoke is transferred 1hrough a compressor and applied to
the frozen tuna meat through an injector. 107 Hereafter, the records are
conflicting.
Yamaoka and Lacap claimed that the "[t]he smoked fish products are
then chilled for about twenty-four (24) hours at a temperature ranging from -
2 degree to l degree Celsius at daytime and from -3 degree to 0 degree Celsius
at nighttime." 108 Iv1eanwhile, Phillips initially admitted in its answer that it
simultaneously cools the smoke and tuna meat to 4°C or S''C for 48 hours, viz.:
19. xxxx In the next step, the filtered smoke is injected into smali
pl.astic bags each of which contains a piece of tuna. The bags arc then
11laced in a refrigerator having a maximum temperature of 4°C.
Cooling is performed for 48 hours, after which the now cold-smoked,
frozen tuna is va..culim package.
xxxx
101; Id
7
rn Rolio, pp. 160,293, &. 329.
IOS CA rollo, pp. 95 & 215.
109
Rollo, J:'-P- !60-161.
y
Decision 24 G.R. No. 214148
xxxx
At this point, this Office believes that the omission of the third step
[cooling ofthe filtered smoke in a cooling unit] has not yielded any different
result. As seen during the ocular inspection of respondent's process,
filtered smoke alt ambient temperature of 24°C (Exhibit "6-E") after it
was applied to ti.ma was immediately cooled. The temperatul"e reading
of smoke treated tuna was specificaliy at 0" to 5°C {Exhibit "6-F"). The
cooling of filtered smoke to a temperature of 0° to 5°C immediately after
injection of ambient temperature filtered smoke to tlle tuna yields the same
resuit in Steps 3 and 4. The elements of respondent's process achieve the
smne function and gives the san1.e result.
xxxx
In the instant case, respondent burns materials, filters the smoke and
applies the filtered smoke to the ti.ma which ns spontaneously cooled to
0° to 5°C wrum refrigerated.xx x 112
XXX
110
!d. at 32:'.
111
CArol!o,p . .341.
112 Id. at ! ~\0. BLA i?csofutiim /Yo. 2U(j ..!-C3
Decision 25 G.R. No. 214148
yung smoke nila i::; -5. Ang Sh Dti:1 Lv.:'(Vy\.;en 22-30. Ang sa chilling natin is
0 to -2.
Thereafter, the filtered smoke and tuna meat are placed in a refrigerator
with a -3°C setting. The BLA Decision, Prof. Acevedo's report, and ODG
Decision provide:
a. ELA Decision: "At this stage, this Bureau observed that the
te:mperatm:e reading on the tirna meat was 5°C. The meat
injected with filtered r,moke was then stored in a refrigeration
unit with a temperature setting of -3°C."; 14
c. ODG Decision: "x xx the injection of filtered smoke in the raw tuna
meat; and lastly, the placing of the injected hma into a
refrigeration unit with a temperature setting of -3°C." 117
'
To reconcile the inconsistencies in Phillips' claims, the Couit is
constrained to conclude that before the ocular inspection, Phillips cools the
smoke and tuna meat in a refrigerator with a maximum temperature of 4°C or
5°C for 48 hours, but during the ocular inspection, the temperature setting was
reduced to -3°C.
(b) Filtering of the produ:.,ed ~n,oke to ;·emove tar, odor, and other
1rnpunues;
113
Id at !60---161. BLA Neso/ution.l\'o 2004-li
114
Rollo, p. 298.
r 15 !cl. at 302.
116
/d.atJ10-3lJ:C,\ro//o,r•µ.314-JJ5. '
17
) Id m 329.
Decision 26 G.R. No. 214148
'
(c) Cooling of the filtered smoke at an ambient temperature; and
( d) Exposing the frozen tuna meat to the filtered smoke by smoking and
injection of the filtered smoke directly into the tuna meat.
I 18
Id. at435-437.
1 ilJ
Id at 297.
1:w CA roi!o, p. 188.
l~l
Id at 190_
122
!d. at ]04_
Decision 27 G.R. No. 214148
In the circumstances, the Comi cannot agree with TPI that the existence
of the pre-cooling unit that cools the, filtered smoke to between 0° and 5°C was
established in this case. The Court now proceeds to determine tl-i.e existence
of patent infringement.
(b) Filtering of the produced smoke to (b) Filtering of the produced smoke to
re111ove 111ainly tar; remove tar. odor, and other impurities;
(c) Cooling of the filtered smoke m, a (c) Cooling of the filtered smoke at an
cooling unit to a temperature ambient temperature; and
between 0° and S°C while retaining
ingredients exerting highly
presen,,itive and sterilizing effects;
~d '
(d) Smoking of tuna meat by exposing it (d) Exposing the frozen tima meat to the
to the filtered smoke cooled to filtered smoke by smoking and
between 0° and 5"C. injection of the filtered smoke directly
into the tuna meat.
The first two steps in Phillips' process can be read in Patent 1-31 l 38's
Claim 1. However, subsequent steps in Phillips' process differ from the last
two steps in Patent I-31138. The elements of cooling the filtered smoke to 0°
and 5°C in a cooling unit before applying it io the tuna meat are absent. Verily,
Phillips' process does not fall within the literal meaning of Patent I-31138's
Claim 1. The CA correctly ruled that there is no literal infringement.
The issue for the Court's resoktion is ·whether the simultaneous cooling
of the filtered smoke and tuna meat in Phillips' process is equivalent to Patent
J-3 .l l 38's pre-cooling of the filtered smoke in a cooling unit.
Decision 28 G.R. No. 214148
The Court rules in the negative. TPI failed to establish that the
simultaneous cooling of the filtered smoke and tuna meat will cure tuna meat
in substantially the same way as the pre-cooled filtered smoke. The eventual
cooling of the filtered smoke in Phillips' process does not ipso.facto indicate
similarities in the effect of the smoke on tuna meat.
In her repo1i, Prof. Aceved.o explained that the smoke used in curing
meat is composed of carbon dioxide (CO2), carbon monoxide (CO), nitrogen
dioxide (NO2), nitrogen monoxide (NO), and monoaromatic phenols. These
compounds all have preservative effects on meat. Particularly, CO, N02 , and
NO prevent the decomposition of meat, while phenols serve as bacterial
inhibitors. 126 The curing of meat products takes place when a complex chemical
reaction occurs between the tuna meat and the filtered smoke, pa1iicularly, the
myoglobin of the meat (red pigment of the muscle which is similar to the red
pigment of blood), hemoglobin of the blood, and the oxides of the CO, NO2 ,
and NO gases. 127 Simply put, the curing of meat occurs when the compounds
in the filtered smoke bind with the myoglobin and hemoglobin in the tuna
meat, forming a complex molecule, e.g., carboxy-myoglobin, oxymyoglobin,
wh.ich produces the stable freshness organoleptic characteristics and red color
of cured meat. The rate of this chemical reaction depends on the concentration
of the gases or the myoglobi.n and hemoglobin in the meat and the reaction
temperature. Therefrxe, the higher the temperature of the reaction, the faster
the rate of reaction. rm
1t can be inferred from the report of Prof. Acevedo that the temperature
of the filtered smoke plays an important role in the rate of the chemical reaction
between the compounds in the smoke and the proteins (myoglobin and
hemoglobin) in the tuna meat. All things being equal, the rate of the chemical
reaction and the time required to cure the tuna meat .in Phillips' process is faster
than in Patenl !-31138. This "xplains why Phillips' smoking process
-nnrr.ecuately
,. • eno..::.' upon ih '
:,._.c e:-:po~ure o·..f tne' t·una rneac. 10 , tne t ' •
a1no1ent •
teinnerature filteted. srnokc. ()1: the ot'ber .r~_anci_ the srnok_i_ng process in Patent
• , <,. ,
thin, bite-sized slices and a"iout 24 hours when it 1s cut into iarger slices,
approximately 3cm Chicle
To recall, the principle bt:hind Paknt I-31138 is the use of filtered smoke
cooled to between 0° and 5°C in smokmg tuna meat because, within that
temperature range, the .smoke has maxirriuni sterilizing effects. At the same
time, the decomposition and discoloration-preventing effects are obtainable.
Following this principie and Prof Acevedo's repo1i means that tuna meat is
exposed to the 'ambient room temperature filtered sn~oke, it reacts to filtered
smoke that does not have the same sterilizing and preservative effects as that
of the pre-cooled. smoked. lt is ihcumbent upon TPJ to prove that ihese
maximum effects would eventually be reached by the ambient temperature
filtered smoke once cooled to between 0° and 5°C even if the chemical reaction
already took place or the ambient temperature filtered smoke reached its
maximum eftects before the curing process starts. TPl miserably failed in this
regard.
Absent any evidence that the ambient temperature filtered smoke cools
down to between 0° and S°C before the chemical reaction takes place, and it
retains the ingredients which exert the same highly preservative and sterilizing
effects, the Court is constrained to rule that the simultaneous cooling of the
smoke and the meat is not equivalent to Patent l-31 J38's pre-cooling of the
filtered smoke.
processes or devices, the decidin;} ,_,aJtf1orities shouid bear in mind that the
changes introduced in the pa.tc-.nted f'J\)(:S::S$ or de\··ice have to be substantial to
remove the alleg,edly-i afringi.·,.y- fff,Cc'S,0 er device from the scope of patent
J
Decision 30 G.R. No. 214148
protection. To illustrate, the number of filters used and the manner of exposing
the tuna meat to the filtered smoke may have changed the resulting product in
this case, but Patent I-J 1138 does not claim the specific number of filters or
the manner of exposing the tuna meat to the filtered smoke. As a result, these
changes are still within the scope of Patent l-3113 8.
SOORDER.E.Do
Decision G.R. No. 214148
WE CONCUR:
,, ,·,.,.-?,
,,,, l ,. , .,.-,. .
~~~~, &tY~~ -
__,,.,,,,,, MAR~w~LEONEN --~
Senior Associate Justice
Chairperson
i~~!,~/ . --·
Af\lIYfQ. LAZARO-JAVIER JHOSEffiOPEZ
As,1·ociate Justice Associate Justice
ATTESTATION
1 attest that the conclusions in the above Decision had been reached in
consultation before the case was assigned to the writer of the opinion of the
Court's Division. ' _\,4/'},,/'J
, ...-~,,:;:~/;:;::;;,,;~/<"-
,,.,.,-7~ +~----7
..--,,. MAR'\l~ JVL V. F. LEONEN -.....____ ___ __
Sen for Associate Justice:
C'hairperson
CERTIFICATION