Vargas v. Yaptico & Co G.R. No.

14101 September 24, 1919

Malcolm, J:

Facts:
Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office for
his so-called invention of an improved adjustable plow with the use his own native plow. A
certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of
the Executive Bureau, Government of the Philippine Islands. Defendant F. M. Yaptico & Co.
(Ltd.) is a firm engaged in the foundry business in Iloilo City. The firm manufacturers plow
parts. It also produced points, shares, shoes, and heel pieces in a considerable amount adapted to
replace worn-out parts of the plow of Vargas.
Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged
infringement of his U.S. Patent by the defendant F. M Yaptico & Co. and to recover the damages
suffered by reason of this infringement, to which the court issued the preliminary injunction
prayed for.
The defendant denied the allegations and defended that the patent lacked novelty or
invention, that there was no priority of ideas or device in the principle and construction of the
plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had
already been in public use for more than two years before the application of the plaintiff for his
patent.
The trial judge rendered judgment in favor of the defendant, declaring null and without
effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the
plaintiff appealed said judgment.

Issue:
1. Who has the burden of proof that infringement of patent exists?
2. Whether or not the defendant Yaptico & Co did not infringe the patent filed the petitioner
Vargas on the following grounds?
a) That the invention lacks novelty, invention, and discovery
b) That the invention had already been used prior to the application of patent.

Held:
1. The one who infringes the patent has the proof that there is no existence of infringement
of patent.
2. No, the defendant Yaptico & Co did not infringe the patent filed the petitioner Vargas.

Ratio:
1. When a patent is sought to be enforced, "the question of invention, novelty, or prior use, and
each of them, are open to judicial examination." The burden of proof to substantiate a charge
of infringement is with the plaintiff. The registered patent is presumed to be correct and
valid. The decision of the Commissioner of Patents in granting the patent is always presumed
to be correct. The burden then shifts to the defendant to overcome by competent evidence
this legal presumption. In this case, the defendant Yaptico & Co has burden of proof that the
patent filed by petitioner is void.
2. A. The patented plow of petitioner Vargas is not different from the native plow except in the
material, form, weight, and the grade of the result. The differences do not give a new
function or a new result distinct from the function and the result obtained from the native
plow. Its production does not presuppose the exercise of the inventive faculty but merely of
mechanical skill, which does not give a right to a patent of an invention under the provisions
of the Patent Law. The plow of Vargas does not appear to be such a "combination" as
contains a novel assemblage of parts exhibiting a new invention.
B. Under the provisions of the statute, an inventor's creation must not have been in public
use or on sale in the United States (and the Philippine Islands) for more than two years prior
to his application. Several testimonies manifest that the plow of Vargas was in a public use
and it was completely identical with other plows available in the market. Further, it was
proved that the invention was used in public at Iloilo by others than Vargas, the inventor,
more than two years before the application for the patent thus, the patent is invalid.