CASE DIGEST: CARLOS GSELL vs. VALERIANO VELOSO YAP-JUE

FACTS:

            The principal case to which these proceedings are ancillary, was an action to enjoin infringement of a patented process for manufacture of curved handles for canes, parasols, and umbrellas. In that case, plaintiff established his title to a valid patent covering the process in question, and obtained against this defendant a judgment, granting a perpetual injunction restraining its infringement, which judgment was affirmed by this Court on appeal. The order was couched in the  following terms:

“It is ordered that the defendant abstain from manufacturing canes and umbrellas with a curved handle by means of a lamp or blowpipe fed with mineral oil or petroleum, which process was protected by patent no. 19288, issued in favor of Henry Gsell, and by him transferred to Carlos Gsell”.

            Thereafter the defendant continued to manufacture curved cane handles for walking sticks and umbrellas by a process in all respects identical with that used by the plaintiff under his patent, except only that he substituted for a lamp fed with petroleum or mineral oil, a lamp fed with alcohol.

            The trial court found the defendant “not guilty” of contempt as charged; and this court, on appeal, held that “The violation, if there has been any, was not of such a character that it could be made patent by the mere annunciation of the acts performed by the defendant, which are alleged to constitute the said violation. Consequently, the contempt with which the accused is charged has not been fully and satisfactorily proved, and the order appealed from should accordingly be affirmed in so far as it holds that the defendant is not guilty of contempt.

            Substantially, the same question is submitted in these new proceedings as that submitted in the former case.

ISSUE:

            Whether the use of a patented process by a third person, without license or authority therefore, constitutes an infringement when the alleged infringer has substituted in lieu of some unessential part of the patented process a well-known mechanical equivalent.

HELD:

            Counsel for plaintiff invokes the doctrine of “mechanical equivalents” in support of his contention, and indeed that doctrine is applicable to the facts of the case. This doctrine is founded upon sound rules of reason and logic, and unless restrained or modified by law in particular jurisdiction, is of universal application, so that it matters not whether a patent 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.

            The use of a process in all respects identical with a process protected by a valid patent, save only that a well-known mechanical equivalent is substituted in lieu of some particular part of the patented process is an infringement upon the rights of the owner of the patent, which will be enjoined in appropriate proceeding, and the use of such process, after the order enjoining its use has been issued, is a “contempt”, under the provision of section 172 of the Code of Civil Procedure.