Case Digest on KENNETH ROY SAVAGE VS. JUDGE TAYPIN G.R. NO.

134217 (2000)
Search warrants

Facts: P sought nullification of a search warrant issued by respondent court on the ground that the respondent court has no jurisdiction over the offense since it was not delegated as a special court for Intellectual Property Rights (IPR) and that the application for search warrant should have been dismissed since it was not accompanied by a certification of non-forum shopping. Issue: Whether the search warrant should be nullified on the said grounds. Held: No. The authority to issue search warrants is inherent in all courts. Administrative Order No. 113-95 merely specified which court could try and decide cases involving violations of IPR. It did not, and could not, vest exclusive jurisdiction with regard to all matters (including the issuance of search warrants and other judicial processes) in any one court. Jurisdiction is conferred upon courts by substantive law; in this case, BP Blg. 129, and not by procedural rule.
Godines v. Ca The patent involved in this case is Letters Patent No. UM-2236 issued by the Philippine Patent Office to one Magdalena S. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller

The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, from Magdalena Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. On October 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of general circulation. In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patent imprinted on them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboanga del Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent were being manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about the existing patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner's failure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringement of patent and unfair competition.
Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the trial and appellate courts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he made them only upon the special order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition;

and that those made by him were different from those being manufactured and sold by private respondent.

The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been established by the courts despite petitioner's claims to the contrary. The question now arises: Did petitioner's product infringe upon the patent of private respondent? Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it." 8 To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements. 9 Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued by the Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the harrow housing with its operating handle and the paddy wheel protective covering." 11 It appears from the foregoing observation of the trial court that these claims of the patent and the features of the patented utility model were copied by petitioner. We are compelled to arrive at no other conclusion but that there was infringement. Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutching at straws. Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result." 13 The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such imitation would leave room for indeed encourage the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law. 14

Smithklein Beckman vs CA (Aug 14, 2003) Facts: Petitioner in this case filed an application for a patent of a drug used to kill parasites in animals. Tyco Pharma opposed the application for patent contending that the product of the petitioner proposed to be patented is substantially the same as their product. The only difference is the use of one ingredient. Tyco then contended that there is infringement of patent due to violation of doctrine of equivalents. Issue: Is there infringement? Held: The SC in defining the Doctrine of Equivalents stated that infringement also takes place when a particular devise appropriates a prior invention by incorporating its innovative concept and although with some modification and changes performs substantially the same function in substantially the same way to achieve substantially the same result. The SC held that this doctrine does not apply in the instant case because Tyco Pharma failed to substantiate its claim that the two products works the same way in fighting parasites in animals. Therefore, there was no infringement.

The Supreme Court recently issued a writ of prohibition stopping the prosecution of an importer of unregistered drugs for violation of sec. 4 in relation to secs. 3 and 5 of RA 8204, the Special Law on Counterfeit Drugs (SLCD). The Court also made permanent the temporary restraining order it had previously issued. The Court found that RA 9502, the Universally Accessible Cheaper and Quality Medicines Act of 2008, amending sec. 72 of the Intellectual Property Code, clearly grants third persons the right to import drugs or medicines whose patent were registered in the Philippines by the owner of the product. Petitioner Romeo Rodriguez has been charged with violation of sec. 4 of the SLCD prohibiting the sale of counterfeit drugs, which under sec. 3(b) (3) thereof includes an unregistered drug product.

[I]t is clear that SLCDs classification of unregistered imported drugs as counterfeit drugs and of corresponding criminal penalties therefore are irreconcilably in conflict with Rep. Act No. 9502 since the latter indubitably grants private third persons the right to import or otherwise use such drugs. Where a statute of later date, such as Rep. Act No. 9502, clearly reveals an intention on the part of the legislature to abrogate a prior act on the subject that intention must be given effect, declared the Court. The Court also described the SLCD as a heartless, soulless legislative piece for equating the importers of unregistered drugs with malevolents who would alter or counterfeit pharmaceutical drugs for reasons of profit at the expense of public safety. It noted that the SLCD would make criminals of doctors from abroad on medical missions of such humanitarian organizations such as the International Red Cross, the International Red Crescent, and Medicin Sans Frontieres. It is laudable that with the passage of Rep Act No. 9502, the State has reversed course and allowed for a sensible and compassionate approach with respect to the importation of pharmaceutical drugs urgently necessary for the peoples constitutionally recognized right to health, observed the Court. Petitioner owns Roma Drug in San Matias, Guagua, Pampanga. The drug store was raided pursuant to a search warrant issued upon the complaint of SmithKline Beecham Research Limited (SmithKline, now Glaxo SmithKline, herein private respondent), a duly registered corporation which is the local distributor of pharmaceutical products manufactured by its parent London-based corporation. The seized medicines, which were manufactured by SmithKline, were imported directly from abroad and not purchased through the local SmithKline, the authorized Philippine distributor and thus were classified as counterfeit under the SLCD. There was no claim though that the subject seized drugs were adulterated or mislabeled. (GR No. 149907, Roma Drug v. RTC of Guagua, Pampanga, April 16, 2009) Roma Drug, owned by Rodriguez, was raided by the NBI upon request of Smithkline a pharmaceutical company (now Glaxo Smithkline). RD is apparently one of 6 pharmacies who are directly importing 5 medicines produced by Smithknline from abroad. RD is not purchasing those medicines via local Smithkline the authorized distributor of Smithkline in the Philippines. Smithkline Phil avers that because the medicines were not purchased from a Philippine registered counterpart of Smithkline then the products imported by RD are considered as counterfeit or unregistered imported drug product - as defined by RA 8203 Special Law on Counterfeit Drugs. Notwithstanding RDs motion for reconsideration, the provincial prosecutor recommended that Rodriguez be tried. Rodriguez assails the constitutionality of SLCD averring, among other things, that it has violated his right to equal protection as it banned him access from such medicines. ISSUE: Whether or not SLCD violates equal protection. HELD: The SC ruled in favor of RD. The SC denounced SLCD for it violated equal protection. It does not allow private 3rd parties to import such medicines abroad even in cases of life and death nor does it allow the importation by 3rd parties in cases wherein the stocks of such medicine would run out. It discriminates at the expense of Filipinos who cannot travel abroad to

purchase such medicines yet need them badly. Nevertheless, the flawed intention of Congress had been abrogated by the passage of RA 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008 and its IRR. This law does not expressly repeal SLCD but it emphasized that any medicine introduced into the Philippines by its patent holder be accessible to anyone. It provides that the right to import drugs and medicines shall be available to any government agency OR ANY PRIVATE 3rd PARTY. The SC noted that this law provided and recognized the constitutionally-guaranteed right of the public to health.