(The case of Phillips Seafood Philippines Corporation vs. Tuna Processors, Inc., G.R. No. 214148, February 6, 2023)
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AT A GLANCE:
The importance of patents as a tool for national development and economic advancement cannot be overemphasized. They ensure the flow of knowledge and information by encouraging inventors to disclose their discoveries to the public. In exchange, inventors are given market exclusivity or the right to exclude others from making, using, offering for sale, selling, or importing a patented product or product obtained from a patented process. However, like any other intellectual property right, the exercise of this right is not without limitations. The extent of protection granted to patent holders is limited to the claims of their patent.
Doctrine:
The burden of proving patent infringement rests on the plaintiff. But for process patents, the IP Code creates a presumption that an identical product was obtained from the patented process if (a) the product is new or (b) there is a substantial likelihood that the identical product was made by the process, and the patentee was unable, despite reasonable efforts, to determine the process actually used. Therefore, the burden of proving that the process to obtain the identical product is different from the patented process rests on the defendant.
Facts of the Case:
Phillips, a local seafood processing company, is accused by Tuna Processors, Inc. (TPI), a foreign corporation, of infringing on a patent for a method of curing fish and meat. TPI is the successor-in-interest of Kanemitsu Yamaoka (Yamaoka).
Yamaoka stated in his Complaint that he is one of the patentees of Philippine Patent No. I-3113811 entitled “Method for Curing Fish and Meat by Extra Low Temperature Smoking” (Patent I-31138)12
The patent, held by Yamaoka, covers a process involving exposing tuna meat to cooled smoke for preservation. Yamaoka alleges that Phillips hired a former employee of a company using the patented process to build smoke machines for them, enabling Phillips to use the patented method. Phillips denies infringement, claiming their process differs as it doesn’t use a cooling unit. They also argue the patent is invalid due to lack of inventive step.
Issuance of TRO and WPI
Following a summary hearing on the application for a Temporary Restraining Order (TRO) and/or Preliminary Injunction (PI), Yamaoka presented his first witness, Lacap, who testified about Phillips’ process, including the existence of a cooling unit. However, a subsequent ocular inspection by the Intellectual Property Office’s Bureau of Legal Affairs (BLA) did not find evidence of this cooling unit. Despite this, the BLA gave weight to Lacap’s testimony and issued a TRO against Phillips. Phillips’ motion for reconsideration was denied, with the BLA finding that Phillips’ process achieved the same function and result as the patented method. A writ of preliminary injunction was later issued, requiring Phillips to stop using the patented process on its tuna products for 90 days.
BLA Decision
The BLA dismissed Yamaoka’s complaint for patent infringement on October 30, 2006, stating that Phillips’ process does not align with the specifications of Patent I-31138. It concluded there was no literal infringement as Phillips’ process lacked key elements outlined in the patent. Furthermore, it determined there was no infringement under the doctrine of equivalents since Phillips’ process did not meet the function-means-and-result criteria, failing to perform substantially the same function or operate in a similar manner as the patented method. Therefore, the BLA found that the two processes could not achieve substantially the same result.
Appeal with ODG
Yamaoka appealed to the Office of the Director General (ODG), asserting that Phillips’ process directly aligned with the claims of his patent and that the combination of steps in his patent claims was equivalent to Phillips’ process. However, instead of forming a panel of experts, the ODG sought the expertise of Professor Teresita P. Acevedo from the University of the Philippines. In her report, Prof. Acevedo concluded that there were significant differences between Phillips’ process and Patent I-31138 in terms of the curing process for the meat, including variations in filtration process, smoke temperature, and introduction method. Consequently, she determined that the end products of the two processes were distinct. Despite Yamaoka’s death, TPI was substituted in the proceedings.
ODG Decision
On September 12, 2011, the ODG dismissed Yamaoka’s appeal. The ODG found no cogent reason to reverse and set aside the BLA’s Decision dismissing Yamaoka’s complaint for patent infringement. The ODG summarized the parties’ processes as follows:
|
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. |
TPI elevated the case to the CA through a Petition for Review on Certiorari. TPI maintained that Phillips infringed its patent both literally and under the doctrine of equivalents.
Issue:
Whether or not Phillips Seafood Philippines Corporation (Phillips) is responsible for violating Philippine Patent No. I-31138.
Ruling of the Court:
Phillips Seafood Philippines Corporation is not responsible for violating Philippine Patent No. I-31138.
The burden of proving patent infringement rests on the plaintiff. But for process patents, the IP Code creates a presumption that an identical product was obtained from the patented process if (a) the product is new or (b) there is a substantial likelihood that the identical product was made by the process, and the patentee was unable, despite reasonable efforts, to determine the process actually used. Therefore, the burden of proving that the process to obtain the identical product is different from the patented process rests on the defendant. Such is not the case here.
For one, smoked tuna fish is not a new product. For another, there is no substantial likelihood that Phillips’ smoked tuna fish was made using the patented process because the use of filtered smoke cooled to between 0° and 5°C is not the only way to produce smoked tuna fish. Conventional smoking can be done in three temperature zones not covered by Patent I-31138. Ergo, the burden of proof rests on TPI and its predecessors-in-interest.
Finally, an examination of Phillips’ process vis-á-vis Patent I-31138’s elements would show that the all elements test was not satisfied. The equivalents of all the elements in Patent I-31138 are not present in Phillips process. As mentioned, the four elements are: (a) burning of the 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 of tuna meat by exposing it to the filtered smoke cooled to between 0° and 5°C. Unquestionably, the first two steps in Phillips’ process and the two elements in Claim 1 or Patent I-31138 are identical. As regards the last two elements, TPI’s evidence is insufficient to establish that the eventual cooling of the ambient temperature filtered smoke retained the ingredients which exert the same highly preservative and sterilizing effects. Similarly, there is no evidence proving that the ambient temperature filtered smoke cures the tuna meat in the same way as when the tuna meat is exposed to a filtered smoke already cooled to between 0° and 5°C. Thus, the last two elements of Patent I-31138 are not equivalent to the simultaneous cooling of the ambient temperature filtered smoke and tuna meat.
In all, TPI and its predecessors-in-interest failed to discharge their burden of proving that Phillips appropriated the innovative concept of Patent I-31138. The evidence on record is insufficient to establish that Phillips’ process cures the tuna meat in substantially the same way as Patent I-31138.
Source:
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