G.R. No. 27793 , March 15, 1928
PATRICK HENRY FRANK and WILLIAM HENRY GOHN, plaintiffs-appellees, vs. CONSTANCIO BENITO, defendant-appellant.

FACTS

Plaintiffs-appellees, Patrick Henry Frank and William Henry Gohn, are the owners of U.S. Patent No. 1519579 for a hemp-stripping machine, which was duly registered in the Philippines under Act No. 2235 . The patent’s important feature is a specific rotatable spindle used to draw hemp leaves through the machine for stripping. They alleged that defendant-appellant Constancio Benito manufactured and exhibited a hemp-stripping machine that embodied and used spindles (and their method of application) which infringed upon their patented invention. The plaintiffs sought an injunction and an accounting of profits.

The defendant demurred, arguing the complaint failed to state a cause of action, but his demurrer was overruled. In his answer, he denied knowledge of the plaintiffs’ invention and claimed his machine was his own original invention with different characteristics. He also filed a counterclaim for damages due to an allegedly wrongfully obtained preliminary injunction.

The trial court ruled in favor of the plaintiffs, granting a permanent injunction and absolving the plaintiffs from the counterclaim. The defendant appealed.

ISSUE

Did the defendant’s hemp-stripping machine, which used a spindle, infringe upon the plaintiffs’ patented invention for a hemp-stripping machine?

RULING

YES, the defendant infringed the plaintiffs’ patent. The Supreme Court affirmed the trial court’s judgment.

The Court held that the plaintiffs’ U.S. patent, duly registered in the Philippines, enjoyed a prima facie presumption of correctness and validity. The burden then shifted to the defendant to overcome this presumption, which he failed to do. The core of the invention, as described in the patent’s claims, was the specific combination of elements including a “rotatable spindle” used to draw the hemp leaves.

The Court examined the spindles used by both parties. While the defendant’s spindle was made of metal with a rough surface (arguably an improvement over the plaintiffs’ wooden, smooth spindle), it operated on the same basic principle embodied in the plaintiffs’ patent. Citing U.S. jurisprudence (*Temco Electric Motor Co. vs. Apco Mfg. Co.*), the Court ruled that an improver cannot appropriate the basic patent of another; doing so without a license constitutes infringement. The defendant’s argument that the spindle’s principle was old and not novel was immaterial, as the plaintiffs had secured a patent for their specific application and combination. Therefore, the defendant’s use of the spindle principle infringed upon the plaintiffs’ valid patent rights. The injunction was properly granted, and the counterclaim for damages was correctly dismissed.