Del Rosario v. CA

G.R. No. 115106 (March 15, 1996)

Roberto L. Del Rosario reinstated a preliminary injunction against Janito Corp for patent infringement.

Facts:

Roberto L. del Rosario, the petitioner, filed a complaint for patent infringement against Janito Corporation, the private respondent, on January 18, 1993. Del Rosario claimed to be the patentee of an audio equipment known as the sing-along system or karaoke, covered by two utility model patents: Letters Patent No. UM-5269 issued on June 2, 1983, and Letters Patent No. UM-6237 issued on November 14, 1986. Both patents were effective for five years and had been extended for an additional five years.

Del Rosario described his sing-along system as a compact machine that included an amplifier, tape mechanisms, a tuner, and a microphone mixer, designed to enhance the user's voice. In early 1990, he discovered that Janito Corporation was manufacturing a similar sing-along system branded as "miyata" or "miyata karaoke." Consequently, he sought a writ of preliminary injunction from the Regional Trial Court of Makati to prevent Janito from using, selling, or advertising its karaoke system.

On February 5, 1993, the trial court issued a temporary restraining order against Janito, followed by a writ of preliminary injunction on February 24, 1993, based on the finding that Del Rosario held valid utility model patents and that Janito was infringing upon them.

Janito Corporation challenged the trial court's order by filing a petition for certiorari with the Court of Appeals, which ultimately granted the writ and set aside the trial court's order on November 15, 1993. The appellate court concluded that there was no patent infringement, asserting that the karaoke system was a universal product available in many countries before Del Rosario's patents were issued.

Del Rosario then filed a petition for review, arguing that the Court of Appeals improperly considered factual questions and disregarded the trial court's findings.

Legal Issues:

  1. Did the Court of Appeals err in finding that the trial court committed grave abuse of discretion in issuing the writ of preliminary injunction?
  2. Was there sufficient evidence to establish patent infringement by Janito Corporation?
  3. Did the Court of Appeals improperly consider factual matters in a certiorari proceeding?

Arguments:

Petitioner (Del Rosario):

  • The Court of Appeals should not have reviewed factual issues in a certiorari proceeding, which is limited to jurisdictional questions.
  • The appellate court erred in disregarding the trial court's factual findings and in taking judicial notice of Janito's self-serving claims.
  • Del Rosario asserted that he had a clear legal right to protection under his patents, which were infringed upon by Janito's actions.

Respondent (Janito Corporation):

  • Janito argued that there was no infringement of Del Rosario's patents, claiming that the karaoke system was widely manufactured and marketed before the issuance of the patents.
  • They contended that the differences between their product and Del Rosario's patents were significant enough to avoid infringement.

Court's Decision and Legal Reasoning:

The Supreme Court reversed the decision of the Court of Appeals, reinstating the trial court's order for a writ of preliminary injunction. The Court held that Del Rosario had established prima facie evidence of patent infringement, as both his and Janito's systems operated similarly and produced the same results. The Court emphasized that a patent may be infringed if the essential features of the patented invention are appropriated, regardless of minor differences in design.

The Court also noted that the burden of proof lay with Janito to demonstrate that Del Rosario's patents were not new or valid, which they failed to do. The Court reiterated that the Director of Patents' decision to grant a patent is presumed correct, and the absence of competent evidence from Janito to refute Del Rosario's claims supported the trial court's findings.

Significant Legal Principles Established:

  1. The issuance of a preliminary injunction requires a clear legal right to be protected and a violation of that right by the opposing party.
  2. In patent infringement cases, the essential features of the patented invention must be compared to determine if infringement has occurred, focusing on functionality and results rather than superficial differences.
  3. The presumption of validity of a patent places the burden on the alleged infringer to prove otherwise.