LOPEZ, M., J.:
In the instant case, respondent burns materials, filters the smoke[,] and applies the filtered smoke to the tuna which is spontaneously cooled to 0° to 5°C when refrigerated. It is of no consequence that the smoke is at ambient temperature when applied to the tuna. It was on these conditions obtaining that the result achieved in the prevention of discoloration are the same.[22]Nonetheless, the BLA gave weight to Lacap's testimony and his narration in detail of a pre-cooling unit during his employment with Phillips.[23] Consequently, the BLA issued a TRO against Phillips on November 24, 2003.[24] Phillips moved to reconsider,[25] but the BLA denied it in a resolution[26] dated January 29, 2004. The BLA made a preliminary finding that Phillips' process and Patent I-31138 achieve the same function and give the same result. The cooling of the filtered smoke to a temperature between 0° and 5°C immediately after the injection of the ambient temperature filtered smoke to the tuna in Phillips' process yields the same result in Steps 3 and 4 of Patent I-31138, thus:
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 or 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 or filtered smoke to a temperature or 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 tuna products for 90 days.[28] Phillips filed a motion for reconsideration,[29] which was denied in a July 30, 2004 Resolution.[30] The presentation of the parties' evidence ensued.
YAMAOKA'S PROCESS/CLAIM | PHILIPS' PROCESS |
1. Burning a smoking material at 250°C to 400°C; 2. Passing the produced smoke through a filter to remove mainly tar therefrom; 3. Cooling the smoke passed through the filter in a cooling unit between 0° and 5°C; and 4. Smoking the tuna meat at extra-low temperatures by exposure to the smoke cooled between 0° and 5°C. | 1. Burning sawdust at 250° to 400°C; 2. Passing the produced smoke through a series of filters to remove tar, odor[,] and other impurities; 3. Storing the filtered smoke in a plastic bladder (canvass); 4. Transporting the plastic bladder to production area where the filtered smoke is transferred through a compressor and injected to the raw tuna meat; and placing of the injected tuna into a refrigeration unit with a temperature setting of -3°C.[42] |
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 tuna meat at extra-low temperatures by exposure to the smoke cooled to between 0°C and 5°C is also not present 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 raw tuna meat; and lastly, the placing of the injected tuna into a refrigeration unit with a temperature setting of -3°C.TPI elevated the case to the CA through a Petition for Review on Certiorari:[47] TPI maintained that Phillips infringed its patent both literally and under the doctrine of equivalents.[48]
Thus, there is no basis for claiming that Phillips' process literally infringed Letters Patent No. 31138. Not all material elements included in the claims of Letters Patent No. 31138 are found in the Phillips' process, which on the other hand, provided steps and elements not found in Yamaoka's letters patent x x x[45]
x x x x
A scrutiny of the claims in Letters Patent No. 31138 and the Appellee's process show differences in their respective function, means, and result. This Office agrees with the Director's observations:Firstly, in the second step of Claim 1 or the filtering step, the objectives or obtaining results of the two processes are quite different. The filtering step in Claim 1 is limited to remove mainly tar. On the other hand, Respondent apparently, would like to obtain a better result rather than just removal of tar. It wants the smoke produced to be odorless and tasteless, and this result can be achieved by removing other impurities in the smoke by further passing the smoke through a series of filters. The Bureau likewise observes Respondent's filtration process employing a multiple filtration system to produce an odorless and tasteless smoke, during the ocular inspection conducted at Respondent's plant in General Santos City on 6 October 2003. It can thus be clearly concluded that the filtering step or the Respondent's process operates in a very different way producing a substantially different result or product of an odorless and tasteless smoke.
x x x x
Secondly, the third step of Claim 1 or the cooling of filtered smoke step in Letters Patent No. I-31138 which is claimed as an independent and indispensable step to deliberately cool down smoke to between 0° and 5°C has no equivalent step in Respondent's process. There are substantially different temperatures employed by the two processes in the cooling of the filtered smoke. The Respondent's process does not require the smoke to be cooled at a specific low temperature in a cooling unit before its application to the tuna meat. As observed, in Respondent's process, the filtered odorless[,] and tasteless smoke is allowed to cool down to ambient temperature in a plastic bladder (canvass) before it is applied to the tuna by injector. On the other hand, the claimed step, cools down the smoke in a cooling unit strictly to a temperature between 0° and 5°C.
x x x x
Lastly, the smoking/curing step [sic] in both processes are different. In the claimed process, the smoke cooled at temperature [sic] between 0° and 5°C is exposed to the tuna. The specification describes that the smoke introduced from the smoking-cooling unit is brought into contact with pieces of fish or meat arranged in the smoking chamber. It would appeal that only the outer surface of the tuna meat is in contact and exposed with [sic] the smoke. In contrast, in Respondent's process, the compressed smoke cooled down at ambient temperature is injected directly to the loin of the tuna meat. Moreover, Claim 2 of the subject patent does not mention of the tuna meat being frozen prior to its smoking or curing. Instead, salt is applied to the raw tuna as a pre-treatment method to improve the smell and taste of the tuna meat (Claim 2 of the patent), whereas, the Respondent's process substantially freezes beforehand the tuna meat through washing and immersion in ice at about 0° to 4.4°C. This pretreatment method is done to keep the tuna fresh.[46]
x x x [I]n Yamaoka's process, the filtered smoke is first cooled to a temperature of about 0° to 5°C and this cooled smoke is then applied to the tuna meat. Thus, it is immediately apparent that in Yamaoka's process, the filtered smoke is pre-cooled to a temperature between 0° to 5°C. This pre-cooling of the filtered smoke at a certain temperature is markedly absent in the respondent's process. Instead, in the respondent's process, the filtered smoke, that [sic] appears to have been not pre-cooled, is injected into the raw tuna meat [,] and the tuna meat is then placed into a refrigeration unit with a temperature setting of - 3°C.[50]TPI sought reconsideration. Among other arguments, TPI insisted that the phrase "to remove mainly tar" covers a filtering step that removes impurities other than tar.[52]
x x x x
Besides, the Court is of the view that the respondent's process contains marked differences from the Yamaoka process that would logically result in having a differential final product. The filtering step in the Yamaoka process claims to "remove mainly tar therefrom". On the other hand, the respondent's filtering in its process aims to "remove tar and odor". The Court does not agree with the petitioner's argument that Claim 1, as worded, covers any amount of filtration "as long as tar is removed." To the Court's mind, the phrase "to remove mainly tar therefrom" should be construed strictly so that a smoking process that filtered out tar as well as some other element, such as odor, would not be covered by the claim. Indeed, it is not hard to logically conclude that, since the respondent's filtering process involves not only the removal of tar from the smoke that is produced from the respondent's process but the removal of odor as well, the kind of smoke produced in the Yamaoka process is different from the smoke produced in the respondent's process as only "mainly tar" is removed from the former. The Court therefore 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 filtering step in the respondent's process is markedly different from that of the Yamaoka process. As the petitioner failed to show evidence in this case that the end product result of the two processes is essentially the same, the Court has no other choice but to conclude that they are different on account of the different processes used in curing the tuna meat. Indeed, as correctly opined by Dr. Acevedo in her report whose expertise as a food scientist has 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)
After taking a second look, the Court is of the view that the aforesaid processes covered by Letter's Patent No. 31138 and that used by the respondent are substantially similar i.e. both processes are similar in the burning of combustible material to produce smoke, filtration of the resulting smoke, cooling of filtered smoke before curing, and curing tuna meat with cold filtered smoke.The CA reconsidered its construction of the phrase "to remove mainly tar." Initially, it equated the word mainly to only, making the objective of the Patent I-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:
True, there are slight differences. However, under the doctrine of equivalents, infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the sale result. (Godines vs. Court of Appeals, 226 SCRA 338 [1993]).[53]
x x x However, after review, the Court is convinced that it erred in its construction of the phrase "to remove mainly tar" when it construed the same as to mean the removal of tar alone and nothing else thereby equating the word "mainly" with "only" which is incorrect. Obviously, the word "mainly" is not equivalent to the word "only." The language employed in Claim 1, i.e., "to remove mainly tar therefrom", is clear that the objective end of the result is to remove impurities mainly tar and this should not be construed to mean that other elements such as odor are not removed in the Yamaoka process as claimed under Claim 1. 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. In effect, the filtration of the resulting smoke being undertaken by the petitioner and the respondent are substantially the same.[54] (Emphasis supplied)
WHEREFORE, in view of the foregoing, the petition is hereby GRANTED 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 REVERSED and SET ASIDE.Phillips filed a motion for reconsideration, which the CA denied in an August 29, 2014 Resolution.[56] Hence, this recourse.
Respondent, Phillips Seafood Philippines Corporation, and persons acting in [sic] its behalf, are directed to cease and desist from using the patented process, Letters Patent No. I-31138, of petitioner and from selling and offering for sale of the products obtained directly or indirectly from the patented process.
SO ORDERED.[55]
I. Whether the CA's interpretation of the phrase "to remove mainly tar therefrom" in Claim 1 is proper.
II. Whether Phillips' process infringes Patent I-31138.
Section 76. Civil Action for Infringement. - 76.1. The making, using, offering for sale, selling, or importing, a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement.Determining the existence of infringement requires a two-step analysis. First, the court interprets the claims to determine the patent's scope and meaning. Second, the court measures the allegedly-infringing product or process against the standard of the properly interpreted claims.[60]
Section 1(m) "Infringement of Patent" means any violation of any of the rights of patentees and holders of utility model patents and industrial design registrations under Part II or the IP Code and/or the applicable IP Law, including the act of making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process or the use of a patented process without the authorization of the patentee.
When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed, even if the patentee may have been entitled to something more than the words it has chosen would include.[75] (Emphasis supplied)In 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 Models, and Industrial Designs instruct that reference to the description and drawings may be done to ascertain the meaning of the terms in the claims.[76]
A reading of the independent claim (Claim 1) reveals that the patented process has the following steps:
1. A method for curing raw tuna meat by extra-low temperature smoking comprising the steps of burning a smoking material at 250° to 400 °C and passing the produced smoke through a filter to remove mainly tar therefrom: Cooling the smoke passed through the filter in a cooling unit to between 0° and 5°C while retaining ingredients exerting highly preservative and sterilizing effects; and smoking the tuna meat at extra-low temperature by exposure to the smoke cooled to between 0° and 5°C.2. A method for curing raw tuna by extra-low temperature smoking according to claim 1, in which raw tuna is pre-immersed in a saltwater, desalted in cold water, and dewatered before being smoked at said extra-low temperature.[77]
These steps comprise the elements of Claim 1. The inventive step of Patent I-31138 is smoking tuna meat at extra low temperatures between 0° and 5°C. The Court notes that "[c]onventional smoking has been carried out in three temperature zones: low-temperature smoking between 20° and 40°C, medium-temperature smoking between 40° and 80°C, and high-temperature smoking above 80°C."[78] The reason for bringing down the temperature further to between 0° and 5°C is explained in the Patent I-31138's Summary of the Invention, to wit:
(a) Burning of smoking material at 250° to 400°C; (b) Filtering of the produced smoke to remove mainly tar; (c) Cooling of the filtered smoke in a cooling unit to a temperature between 0° and 5°C while retaining ingredients exerting highly preservative and sterilizing effects; and (d) Smoking the tuna meat by exposing it to the filtered smoke cooled to between 0° and 5°C.
x x x When smoking is effected at temperatures between 0° and 5°C using the smoke generated between 250°C and 400°C, maximum sterilizing and decomposition and discoloration preventing effects are obtainable.[79]The IPO and the CA likewise interpreted Claim 1 to include four steps, but their interpretations of the phrase "to remove mainly tar therefrom" differ. For the IPO, Patent I-31138 only requires the use of one filter, such that only tar can be removed from the smoke.[81] 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 removed.[82] Put simply, the CA opined that the word "mainly" should not be equated to "only."
x x x x
x x x The effects of the smoke decrease if its temperature is lower than the specified range. If the smoke temperature is higher than the specified range, the risk of damaging the freshness of fish or meat increases.[80] (Emphasis supplied)
These portions of the Description of Preferred Embodiments convey that the particles which should be filtered from the smoke produced by burning the smoking materials consist mainly of tar. However, it must be emphasized that the filtration of particles other than tar is not precluded. As explained by the technical expert, Prof. Acevedo, the smoke produced from burning wood and other organic fuels contains water vapor, carbon dioxide, carbon monoxide, methane, tiny particulates of tar, soot, and trace elements, and over 390 microscopic compounds occurring either, or both, in particulates and gaseous vapor phase. The particulate phase includes a high level of undesirable pollutants like tar, soot, ash, and char, and the filtration of these pollutants in the particulate phase is typical in smoking foods.[87] Therefore, in using "mainly" in the phrase "to remove mainly tar therefrom," Yamaoka and his co-patentees only stated the primary purpose of the filtration process and emphasized the importance of removing tar from the smoke.
(a) Lines 19-22 page 12 state that the filtering unit removes mainly tar but retains ingredients exerting highly preservative and sterilizing action. [84] (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 or different numbers of filters 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]
Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. In using literal infringement as a test, "x x x 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 or it." 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.Back then, the Court relied on foreign jurisprudence in applying the doctrine of equivalents to determine patent infringement. But with the effectivity of the IP Code, the extent of patent protection under the claims' literal meaning and its equivalent can now be read in Section 75:
x x x x
...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. 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."[93] (Emphasis supplied; citation omitted)
Section 75. Extent of Protection and Interpretation of Claims. - 75. 1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings.a. Literal Infringement Test
75.2. for the purpose or determining the extent of protection conferred by the patent, due account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents. (Emphasis supplied)
"Samples of the defendant's floating power tiller have been produced and inspected by the court and compared with that of the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court that two (2) of the power tillers inspected on March 12, 1984, were manufactured and sold by him (see TSN. March 12, 1984, p. 7). The three power tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, and on both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographs of the same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H-28). Viewed from any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design[,] and appearance. The parts or components thereof are virtually the same. Both have the circularly-shaped vacuumatic housing float, a pair of paddy in front, a protective water covering, a transmission box housing the transmission gears, a handle which [sic] is V-shaped and inclined upwardly, attached to the side of the vacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the top midportion of the vacuumatic housing float to which the engine drive may be attached. In operation, the floating power tiller of the defendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the defendant himself in court that they are operating on the same principles.[95](Emphasis supplied, citations omitted)After comparing the patent claim and the petitioner's floating power tiller, the Court was convinced that the petitioner is liable for patent infringement thus:
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.[96] (Emphasis supplied, citations omitted)b. Doctrine of Equivalents Test
x x x at the trial of this case testimony was introduced which, in our opinion, leaves no room for doubt, first, that alcohol is an equivalent or substitute, which known as such at the time when the patent was issued, for mineral oil or petroleum, in connection with blast lamps or blowpipes such as that which plaintiff uses in the patented process, and, second, that the use of a blast lamp or blowpipe fed with petroleum or mineral oil, rather than one fed with alcohol, is an unessential part of the patented process the use of which was prohibited by the said judgment.The Court cited United States Federal Courts' decisions to serve as a guide in applying the doctrine of equivalents. Essentially, the US Federal Court cases acknowledge the right of the patentee against a person who employs all the elements of a patent but adopts mere formal alterations or substitutes for one of the elements.
It was clearly proven at the 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 x x x.
x x x x
The plaintiff does not and cannot claim a patent upon the particular lamp used by him. The patent, however, gives him the exclusive right to the use of "la lamparilla o soplete, alimentada de petroleo o esencia mineral" (the small lamp or blowpipe fed 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; and in our opinion both plaintiff and defendant make use of a blast lamp substantially similar, in principle and design, to that referred to in the descriptive statement and the annexed note, for the exclusive use of which in the manufacture of curved handles, plaintiff holds a patent. True, defendant's blast lamp is fed 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 used by the plaintiff. If the original design accompanying the statement had shown a blast lamp made or 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 borrowed the patented process, from the consequences or 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 that unessential changes, which do not affect the principle of the blast lamp used in the patented process, or the mode of application of heat authorized by the patent, are not sufficient to support a contention that the process in one case is in any essential particular different from that used in the other.
Counsel for plaintiff invokes the doctrine of "mechanical equivalents" in support of his contention, and indeed that doctrine is strikingly applicable to the facts in this case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in a particular jurisdiction is of universal application, so that it matters not whether a parent be issued by one sovereignty or another, the doctrine may properly be invoked to protect the patentee from colorable invasions of his patent under the guise of a substitution of some part of his invention by some well-known mechanical equivalent x x x[99](Emphasis supplied. citations omitted)
It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same.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:
It may be noted that respondent corporation failed to present before the trial court a clear, competent and reliable comparison between its own model and that of petitioner, and disregarded completely petitioner's Utility Model No. 6237 which improved on his first patented model. Notwithstanding the differences cited by respondent corporation, it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice; (b) both are used to sing with a minus-one or multiplex tapes, or that both are used to play minus-one or standard cassette tapes for singing or for listening to; (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment; (d) both are used to sing with live accompaniment and to record the same; (e) both are used to enhance the voice of the singer using echo effect, treble, bass and other controls; (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other, for recording the singer and the accompaniment, and both may also be used to record a speaker's voice or instrumental playing, like the guitar and other instruments: (h) both are encased in a box-like cabinets; and (i) both can be used with one or more microphones.
Clearly, therefore, both petitioner's and respondent's models involve substantially the same modes of operation and produce substantially the same if not identical results when used.[101] (Emphasis supplied, citations omitted)
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result. Yet again, a scrutiny of petitioner's evidence fails to convince this Court of the substantial sameness of petitioner's patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same.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 accomplishes substantially the same result by using substantially the same means.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met.
As stated early on, petitioner's evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out parasites in animals, thus giving no information on whether that method is substantially the same as the manner by which petitioner's compound works. The testimony of Dr. Orinion lends no support to petitioner's cause, he not having been presented or qualified as an expert witness who has the knowledge or expertise on the matter of chemical compounds.[103] (Emphasis supplied, citations omitted)
x x x. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public notice functions of the statutory claiming requirement. Judge Nies identified one means of avoiding this conflict:In our jurisdiction, the Court 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, elements 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)."[A] distinction can be drawn that it is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed.We concur with this apt reconciliation of our two lines of precedent. Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that elements in its entirety. So long as the doctrine of equivalent does not encroach beyond the limits just described, or beyond related limits to be discussed infra this page and 31-34, 39, n.8, and 39-40, we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.[106] (Emphasis supplied)
x x x x
"Where a claim to an invention is expressed as a combination of elements, as here, 'equivalents' in the sobriquet 'Doctrine of Equivalents' refers to the equivalency of an element or part or the invention with one that is substituted in the accused product or process.
x x x x
"This view that the accused device or process must be more than 'equivalent' overall reconciles the Supreme Court's position on infringement by equivalents with its concurrent statements that 'the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office.' [Citations omitted.] The 'scope' is not enlarged if the courts do not go beyond the substitution of equivalent elements." 62 F. 3d. at 1573-1574[105] (Dissenting opinion) (Emphasis in original).
19. xxxx In the next step, the filtered smoke is injected into small plastic bags each of which contains a piece of tuna. The bags are then placed 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 vacuum package.The ODG also noted this in its decision, which reads:
x x x x
21. xxxx During the second stage, the smoke at ambient temperature is injected into plastic bags containing the tune. The plastic bags are then placed in refrigerator where the smoke and tuna are simultaneously cooled to a maximum temperature of 5°C.[109] (Emphasis supplied)
In its "ANSWER", dated 27 May 2003, Phillips denied the allegations by Yamaoka and averred the following:During the ocular inspection, the BLA observed that before exposing tuna meat to the ambient temperature filtered smoke, Phillips keeps the temperature of the tuna meat at 0° to 5°C. Prof. Acevedo reported that keeping the meat at a low temperature is a mandatory requirement to prevent histamine formation beyond the level approved by regulatory agencies.[111] After exposing the meat to the ambient temperature filtered smoke, the temperature of the treated tuna meat remained at 5°C:
x x x x
3. Its process cools tar-filtered smoke before exposing it to tuna, but not to the super low temperature required by the claims of the patent as its process cools smoke into two stages: During the first stage, the smoke is cooled to ambient (room) temperature when it is placed in a rubber bladder, and during the second stage, the smoke at ambient temperature is injected into plastic bags containing the tuna, and the plastic bags are then placed in refrigerator where the smoke and tuna are simultaneously cooled to a maximum temperature of 5°C.[110] (Emphasis supplied)
At this point, this Office believes that the omission of the third step [cooling of the filtered smoke in a cooling unit] 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° 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 the same result.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:
x x x x
In the instant case, respondent burns materials, filters the smoke and applies the filtered smoke to the tuna which is spontaneously cooled to 0° to 5°C when refrigerated. x x x[112]
x x x.The transcript of stenographic notes taken during the ocular inspection reveals:
(Back to the smoked section)
x x x
(Mr. Garay put the thermometer in the meat to show the temperature) It was 5. According to the application of Yamaoka patent yung smoke nila is -5. Ang sa atin between 22-30. Ang sa chilling natin is 0 to -2.
Atty. Montejo: Ito treated na with smoke. It was 5° (pointing to the temperature of the tuna meat which was already cured).[113]
To reconcile the inconsistencies in Phillips' claims, the Court 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.
a. BLA Decision: "At this stage, this Bureau observed that the temperature reading on the tuna meat was 5°C. The meat injected with filtered smoke was then stored in a refrigeration unit with a temperature setting of -3°C."[114] "4. Plastic bladder is then transported to the production area where filtered smoke is transferred through a compressor and is applied to raw tuna meat through an injector. (Temperature of smoke is allegedly around 22°C, while temperature of the meat is around 0° to 5°C); 5. Tuna injected with filtered smoke at ambient temperature is stored in a refrigeration unit with a temperature setting of -3°C. (TSN October 6, 2003)"[115] b. Teresita P. Acevedo's Report: "Storage of injected tuna sealed in plastic bags containing CO gas by placing in chiller set at -3°C for 48 hours."[116] c. ODG Decision: "x x x the injection of filtered smoke in the raw tuna meat; and lastly, the placing of the injected tuna into a refrigeration unit with a temperature setting of -3°C."[117]
(a) Burning of sawdust at 250° to 400 °C;Phillips' process does not fall within
(b) Filtering of the produced smoke to remove tar, odor, and other impurities;
(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.
(e) Cooling of tuna meat injected with ambient temperature filtered smoke to 4°C or 5°C before the ocular inspection and -3°C during the ocular inspection.
PATENT I-31138 | PHILIP'S PROCESS | ||||||||||||||||||||||||||||||||||||
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PATENT I-31138 | PETITIONER'S PROCESS |
Step 1: Burning of smoking material at 250° to 400°C. | Step 1: Burning of sawdust at 250° to 400°C. |
Step 2: Filtering of the produced smoke to remove mainly tar. | Step 2: Filtering of the produced smoke to remove tar, odor, and other impurities. |
Step 3: Cooling of the filtered smoke in a cooling unit to a temperature between 0° and 5°C while retaining ingredients exerting highly preservative and sterilizing effects. | Step 3: Cooling of the filtered smoke at an ambient temperature. |
Step 4: Smoking of tuna meat by exposing it to the filtered smoke cooled to between 0° and 5°C. | Step 4: Exposing the frozen tuna meat to the filtered smoke by smoking and injection of the filtered smoke directly into the tuna meat. |
Step 5: Cooling of the tuna meat injected with ambient temperature filtered smoke to 4°C to 5°C before the ocular inspection or -3°C during the ocular inspection. |