Republic of the Philippines

SUPREME COURT
Manila
FIRST DIVISION
G.R. No. L-32160 January 30, 1982
DOMICIANO A. AGUAS, petitioner,
vs.
CONRADO G. DE LEON and COURT OF APPEALS, respondents.

FERNANDEZ, J.:
This is a petition for certiorari to review the decision of the Court of Appeals in CA
G.R. NO. 37824-R entitled "Conrado G. de Leon, plaintiff-appelle vs. Dominciano
Aguas and F.H. Aquino and Sons, defendants-appellants," the dispositive portion
of which reads:
WHEREFORE, with the modification that plintiff-applee's award of
moral damages is hereby redured to P3,000.00, the appealed judgment
is hereby affirmed, in all othe respects, with costs against appellants. 1
On April 14, 1962, Conrado G. de Leon filed in the Court of First Instance of Rizal
at Quezon City a complaint for infringement of patent against Domiciano A. Aguas
and F. H. Aquino and Sons alleging that being the original first and sole inventor of
certain new and useful improvements in the process of making mosaic pre-cast
tiles, he lawfully filed and prosecuted an application for Philippine patent, and
having complied in all respects with the statute and the rules of the Philippine
Patent Office, Patent No. 658 was lawfully granted and issued to him; that said
invention was new, useful, not known or used by others in this country before his
invention thereof, not patented or described in any printed publication anywhere
before his invention thereof, or more than one year prior to his application for
patent thereof, not patented in any foreign country by him or his legal
representatives on application filed more than one year prior to his application in

this country; that plaintiff has the exclusive license to make, use and sell
throughout the Philippines the improvements set forth in said Patent No. 658;
that the invention patented by said Patent No. 658 is of great utility and of great
value to plaintiff and of great benefit to the public who has demanded and
purchased tiles embodying the said invention in very large quantities and in very
rapidly increasing quantities; that he has complied with the Philippine statues
relating to marking patented tiles sold by him; that the public has in general
acknowledged the validity of said Patent No. 658, and has respected plaintiff's
right therein and thereunder; that the defendant Domiciano A. Aguas infringed
Letters of Patent No. 658 by making, using and selling tiles embodying said patent
invention and that defendant F. H. Aquino & Sons is guilty of infringement by
making and furnishing to the defendant Domiciano A. Aguas the engravings,
castings and devices designed and intended of tiles embodying plaintiff;s patented
invention; that he has given direct and personal notice to the defendants of their
said acts of infringement and requested them to desist, but nevertheless, defendants
have refused and neglected to desist and have disregarded such request, and
continue to so infringe causing great and irreparable damage to plaintiff; that if the
aforesaid infringement is permitted to continue, further losses and damages and
irreparable injury will be sustained by the plaintiff; that there is an urgent need for
the immediate issuance of a preliminary injunction; that as a result of the
defendants' wrongful conduct, plaintiff has suffered and the defendants are liable to
pay him, in addition to actual damages and loss of profits which would be
determined upon proper accounting, moral and exemplary or corrective damages in
the sum of P90,000.00; that plaintiff has been compelled to go to court for the
protection and enforcement of his and to engage the service of counsel, thereby
incurring attorney's fees and expenses of litigation in the sum of P5,000.00. 2
On April 14, 1962, an order granting the plaintiff's petition for a Writ of
Preliminary Injunction was issued. 3
On May 23, 1962, the defendant Domiciano A. Aguas filed his answer denying the
allegations of the plaintiff and alleging that: the plaintiff is neither the original first
nor sole inventor of the improvements in the process of making mosaic pre-cast
tiles, the same having been used by several tile-making factories in the Philippines
and abroad years before the alleged invention by de Leon; that Letters Patent No.
658 was unlawfully acquired by making it appear in the application in relation
thereto that the process is new and that the plaintiff is the owner of the process

when in truth and in fact the process incorporated in the patent application has
been known and used in the Philippines by almost all tile makers long before the
alleged use and registration of patent by plaintiff Conrado G. de Leon;
that the registration of the alleged invention did not confer any right on the plaintiff
because the registration was unlawfully secured and was a result of the gross
misrepresentation on the part of the plaintiff that his alleged invention is a new and
inventive process; that the allegation of the plaintiff that Patent No. 658 is of great
value to plaintiff and of great benefit to the public is a mere conclusion of the
plaintiff, the truth being that a) the invention of plaintiff is neither inventive nor
new, hence, it is not patentable, b) defendant has been granted valid patents
(Patents No. 108, 109, 110 issued on December 21, 1961) on designs for concrete
decorative wall tiles; and c) that he can not be guilty of infringement because his
products are different from those of the plaintiff.4
The trial court rendered a decision dated December 29, 1965, the dispositive
portion of which reads:
WHEREFORE, judgment is hereby rendered in favor of plaintiff and
against the defendants:
1. Declaring plaintiff's patent valid and infringed:
2. Granting a perpetual injunction restraining defendants, their
officers, agents, employees, associates, confederates, and any and all
persons acting under their authority from making and/or using and/or
vending tiles embodying said patented invention or adapted to be used
in combination embodying the same, and from making,
manufacturing, using or selling, engravings, castings and devises
designed and intended for use in apparatus for the making of tiles
embodying plaintiff's patented invention, and from offering or
advertising so to do, and from aiding and abetting or in any way
contributing to the infringement of said patent;
3. Ordering that each and all of the infringing tiles, engravings,
castings and devices, which are in the possession or under the control
of defendants be delivered to plaintiff;

4. Ordering the defendants to jointly and severally pay to the plaintiff

the following sums of money, to wit:
(a) P10,020.99 by way of actual damages;
(b) P50,000.00 by way of moral damages;
(c) P5,000.00 by way of exemplary damages;
(d) P5,000.00 by way of attorney's fees and
(e) costs of suit. 5
The defendant Domiciano Aguas appealed to the Court of Appeals, assigning the
following errors. 6
I
THE TRIAL COURT ERRED IN NOT HOLDING THAT
PLAINTIFF'S PATENT FOR THE 'PROCESS OF MAKING
MOSAIC PRE-CAST TILE' IS INVALID BECAUSE SAID
ALLEGED PROCESS IS NOT AN INVENTION OR DISCOVERY
AS THE SAME HAS ALREADY LONG BEEN USED BY TILE
MANUFACTURERS BOTH ABROAD AND IN THIS COUNTRY.
II
THE TRIAL COURT ERRED IN HOLDING THAT THE PATENT
OF PLAINTIFF IS VALID BECAUSE IT IS AN IMPROVEMENT
OR THE AGE-OLD TILE MAKING SYSTEM.
III
THE TRIAL COURT ERRED IN NOT ORDERING THE
CANCELLATION OF PLAINTIFF-APPELLEE'S LETTERS
PATENT NO. 658, EXHIBIT L, IN ACCORDANCE WITH THE
PERTINENT PROVISIONS OF THE PATENT LAW, REPUBLIC
ACT 165.

IV
THE TRIAL COURT ERRED IN HOLDING THAT DEFENDANT
DOMICIANO A. AGUAS IS GUILTY OF INFRINGEMENT
DESPITE THE FACT THAT PLAINTIFF'S PATENT IS NOT A
VALID ONE.

V
THE TRIAL COURT ERRED IN NOT HOLDING THAT THE
DEFENDANT COULD NEVER BE GUILTY OF INFRINGEMENT
OF PLAINTIFF'S PATENT BECAUSE EVEN IN MATTERS NOT
PATENTED BY THE PLAINTIFF - LIKE THE COMPOSITION
AND PROPORTION OF INGREDIENTS USED AND THE
STRUCTURAL DESIGNS OF THE MOULD AND THE TILE
PRODUCED - THAT OF THE DEFENDANT ARE DIFFERENT.
VI
THE TRIAL COURT ERRED IN NOT DISMISSING THE
COMPLAINT AND IN HOLDING THE DEFENDANT, INSTEAD
OF THE PLAINTIFF, LIABLE FOR DAMAGES, AND
ATTORNEY'S FEES.
On August 5, 1969, the Court of Appeals affirmed the decision of the trial court,
with the modification that plaintiff-appellee's award of moral damages was reduced
to P3,000.00. 7
The petitioner assigns the following errors supposedly committed by the Court of
Appeals:
It is now respectfully submitted that the Court of Appeals committed
the following errors involving questions of law, to wit:
First error. When it did not conclude that the letters patent of the
respondent although entitled on the cover page as a patent for
improvements, was in truth and in fact, on the basis of the body of the

same, a patent for the old and non-patentable process of making

mosaic pre-cast tiles;
Second error. When it did not conclude from the admitted facts of
the case, particularly the contents of the letters patent, Exh. L and the
pieces of physical evidence introduced consisting of samples of the
tiles and catalouges, that the alleged improvements introduced by the
respondent in the manufacture of mosaic pre-cast tiles are not
patentable, the same being not new, useful and inventive.
Third error. As a corollary, when it sentenced the herein petitioner
to pay the damages enumerated in the decision of the lower court
(Record on Appeal, pp. 74-75), as confirmed by it (the Court of
Appeals), but with the modification that the amount of P50,000.00
moral damages was reduced to P3,000.00. 8
The facts, as found by the Court of Appeals, are:
The basic facts borne out by the record are to the effect that on
December 1, 1959 plaintiff-appellee filed a patent application with the
Philippine Patent Office, and on May 5, 1960, said office issued in his
favor Letters Patent No. 658 for a "new and useful improvement in the
process of making mosaic pre-cast tiles" (Exh, "L"); that defendant
F.H. Aquino & Sons engraved the moulds embodying plaintiff's
patented improvement for the manufacture of pre-cast tiles, plaintiff
furnishing said defendant the actual model of the tiles in escayola and
explained to said engraver the plans, specifications and the details of
the engravings as he wanted them to be made, including an
explanation of the lip width, artistic slope of easement and critical
depth of the engraving that plaintiff wanted for his moulds; that
engraver Enrique Aquino knew that the moulds he was engraving for
plaintiff were the latter's very own, which possession the new features
and characteristics covered by plaintiff's parent; that defendant Aguas
personally, as a building contractor, purchased from plaintiff, tiles
shaped out of these moulds at the back of which was imprinted
plaintiff's patent number (Exhs., "A" to "E"); that subsequently,
through a representative, Mr. Leonardo, defendant Aguas requested
Aquino to make engravings of the same type and bearing the

characteristics of plaintiff's moulds; that Mr. Aquino knew that the

moulds he was asked to engrave for defendant Aguas would be used
to produce cement tiles similar to plaintiff's; that the moulds which
F.H. Aquino & Sons eventually engraved for Aguas and for which it
charged Aguas double the rate it charged plaintiff De Leon, contain
the very same characteristic features of plaintiff's mould and that
Aguas used these moulds in the manufacture of his tiles which he
actually put out for sale to the public (Exhs. "1" to "3" and Exhs. "A"
to "E"); that both plaintiff's and defendant Aguas' tiles are sculptured
pre-cast wall tiles intended as a new feature of construction and wag
ornamentation substantially Identical to each other in size, easement,
lip width and critical depth of the deepest depression; and that the
only significant difference between plaintiff's mould and that
engraved by Aquino for Aguas is that, whereas plaintiff's mould turns
out tiles 4 x 4 inches in size, defendant Aguas' mould is made to fit a
4-1/4 x 4-1/4 inch tile. 9
The patent right of the private respondent expired on May 5, 1977. 10 The errors
will be discuss only to determine the right of said private respondent to damages.
The petitioner questioned the validity of the patent of the private respondent,
Conrado G. de Leon, on the ground that the process, subject of said patent, is not
an invention or discovery, or an improvement of the old system of making tiles. It
should be noted that the private respondent does not claim to be the discoverer or
inventor of the old process of tile-making. He only claims to have introduced an
improvement of said process. In fact, Letters Patent No. 658 was issued by the
Philippine Patent Office to the private respondent, Conrado G. de Leon, to protect
his rights as the inventor of "an alleged new and useful improvement in the process
of making mosaic pre-cast tiles." 11 Indeed, Section 7, Republic Act No. 165, as
amended provides: "Any invention of a new and useful machine, manufactured
product or substance, process, or an improvement of the foregoing, shall be
patentable.
The Court of Appeals found that the private respondent has introduced an
improvement in the process of tile-making because:
... we find that plaintiff-appellee has introduced an improvement in the
process of tile-making, which proceeds not merely from mechanical

skill, said improvement consisting among other things, in the new

critical depth, lip width, easement and field of designs of the new
tiles. The improved lip width of appellee's tiles ensures the durability
of the finished product preventing the flaking off of the edges. The
easement caused by the inclination of the protrusions of the patented
moulds is for the purpose of facilitating the removal of the newly
processed tile from the female die. Evidently, appellee's improvement
consists in the solution to the old critical problem by making the
protrusions on his moulds attain an optimum height, so that the
engraving thereon would be deep enough to produce tiles for
sculptured and decorative purposes, strong optimum thickness of
appellee's new tiles of only 1/8 of an inch at the deepest easement
(Exhs. "D" and "D-1") is a most critical feature, suggestive of
discovery and inventiveness, especially considering that, despite said
thinness, the freshly formed tile remains strong enough for its
intended purpose.
While it is true that the matter of easement, lip width, depth,
protrusions and depressions are known to some sculptors, still, to be
able to produce a new and useful wall tile, by using them all together,
amounts to an invention. More so, if the totality of all these features
are viewed in combination with the Ideal composition of cement,
sodium silicate and screened fine sand.
By using his improved process, plaintiff has succeeded in producing a
new product - a concrete sculptured tile which could be utilized for
walling and decorative purposes. No proof was adduced to show that
any tile of the same kind had been produced by others before appellee.
Moreover, it appears that appellee has been deriving considerable
profit from his manufacture and sale of such tiles. This commercial
success is evidence of patentability (Walker on Patents, Dellers
Edition, Vol. I, p. 237). 12
The validily of the patent issued by the Philippines Patent Office in favor of the
private respondent and the question over the inventiveness, novelty and usefulness
of the improved process therein specified and described are matters which are
better determined by the Philippines Patent Office. The technical staff of the
Philippines Patent Office, composed of experts in their field, have, by the issuance

of the patent in question, accepted the thinness of the private respondent's new tiles
as a discovery. There is a presumption that the Philippines Patent Office has
correctly determined the patentability of the improvement by the private
respondent of the process in question.
Anent this matter, the Court of Appeals said:
Appellant has not adduced evidence sufficient to overcome the above
established legal presumption of validity or to warrant reversal of the
findings of the lower court relative to the validity of the patent in
question. In fact, as we have already pointed out, the clear
preponderance of evidence bolsters said presumption of validity of
appellee's patent. There is no indication in the records of this case and
this Court is unaware of any fact, which would tend to show that
concrete wall tiles similar to those produced by appellee had ever
been made by others before he started manufacturing the same.

In fact, during the trial, appellant was challenged by appellee to

present a tile of the same kind as those produced by the latter, from
any earlier source but, despite the fact that appellant had every chance
to do so, he could not present any. There is, therefore, no concrete
proof that the improved process of tile-making described in appellee's
patent was used by, or known to, others previous to his discovery
thereof. 13
The contention of the petitioner Aguas that the letters patent of de Leon was
actually a patent for the old and non-patentable process of making mosaic pre-cast
tiles is devoid of merit. De Leon never claimed to have invented the process of tilemaking. The Claims and Specifications of Patent No. 658 show that although some
of the steps or parts of the old process of tile making were described therein, there
were novel and inventive features mentioned in the process. Some of the novel
features of the private respondent's improvements are the following: critical depth,
with corresponding easement and lip width to such degree as leaves the tile as thin
as 1/8 of an inch at its thinnest portion, Ideal composition of cement and fine river
sand, among other ingredients that makes possible the production of tough and
durable wall tiles, though thin and light; the engraving of deep designs in such a

way as to make the tiles decorative, artistic and suitable for wall ornamentation,
and the fact that the tiles can be mass produced in commercial quantities and can
be conveniently stock-piled, handled and packed without any intolerable incidence
of breakages. 14
The petitioner also contends that the improvement of respondent is not patentable
because it is not new, useful and inventive. This contention is without merit.
The records disclose that de Leon's process is an improvement of the old process of
tile making. The tiles produced from de Leon's process are suitable for construction
and ornamentation, which previously had not been achieved by tiles made out of
the old process of tile making. De Leon's invention has therefore brought about a
new and useful kind of tile. The old type of tiles were usually intended for floors
although there is nothing to prevent one from using them for walling purposes.
These tiles are neither artistic nor ornamental. They are heavy and massive.
The respondent's improvement is indeed inventive and goes beyond the exercise of
mechanical skill. He has introduced a new kind of tile for a new purpose. He has
improved the old method of making tiles and pre-cast articles which were not
satisfactory because of an intolerable number of breakages, especially if deep
engravings are made on the tile. He has overcome the problem of producing
decorative tiles with deep engraving, but with sufficient durability. 15
Durability inspite of the thinness and lightness of the tile, is assured, provided that
a certain critical depth is maintained in relation to the dimensions of the tile. 16
The petitioner also claims that changing the design from embossed to engraved
tiles is neither new nor inventive because the Machuca Tile Factory and the
Pomona Tile Manufacturing Company have been manufacturing decorative wall
tiles that are embossed as well as engraved; 17 that these tiles have also depth, lip
width, easement and field of designs; 18 and that the private respondent had copied
some designs of Pomona. 19
The Machuca tiles are different from that of the private respondent. The designs
are embossed and not engraved as claimed by the petitioner. There may be
depressions but these depressions are too shallow to be considered engraved.
Besides, the Machuca tiles are heavy and massive.

There is no similarity between the Pomona Tiles and de Leon's tiles. The Pomona
tiles are made of ceramics. 20The process involved in making cement tiles is
different from ceramic tiles. Cement tiles are made with the use of water, while in
ceramics fire is used. As regards the allegation of the petitioner that the private
respondent copied some designs of Pomona, suffice it to say that what is in issue
here is the process involved in tile making and not the design.
In view of the foregoing, this Court finds that Patent No. 658 was legally issued,
the process and/or improvement being patentable.
Both the trial court and the Court of Appeals found as a fact that the petitioner
Domiciano A. Aguas did infringe de Leon's patent. There is no showing that this
case falls under one of the exceptions when this Court may overrule the findings of
fact of the Court of Appeals. The only issue then to be resolved is the amount of
damages that should be paid by Aguas.
In its decision the Court of Appeals affirmed the amount of damages awarded by
the lower court with the modification that the respondent is only entitled to
P3,000.00 moral damages. 21
The lower court awarded the following damages: 22
a) P10,020.99 by way of actual damages;
b) P50,000.00 by way of moral damages;
c) P5,000.00 by way of exemplary damages;
d) P5,000.00 by way of attomey's fees and
e) Costs of suit
because:
An examination of the books of defendant Aguas made before a
Commissioner reveals that during the period that Aguas was
manufacturing and selling tiles similar to plaintiff's, he made a gross
income of P3,340.33, which can be safely be considered the amount
by which he enriched himself when he infringed plaintiff's patent.

Under Sec. 42 of the Patent Law any patentee whose rights have been
infringed is entitled to damages which, according to the circumstances
of the case may be in a sum above the amount found as actual
damages sustained provided the award does not exceed three times the
amount of such actual damages. Considering the wantonness of the
infringement committed by the defendants who knew all the time
about the existence of plaintiff's patent, the Court feels there is reason
to grant plaintiff maximum damages in the sum of P10,020.99. And in
order to discourage patent infringements and to give more teeth to the
provisions of the patent law thus promoting a stronger public policy
committed to afford greater incentives and protection to inventors, the
Court hereby awards plaintiff exemplary damages in the sum of
P5,000.00 to be paid jointly and severally by defendants. Considering
the status of plaintiff as a reputable businessman, and owner of the
likewise reputed House of Pre-Cast, he is entitled to an award of
moral damages in the sum of P50,000.00. 23
In reducing the amount of moral damages the Court of Appeals said:
As regards the question of moral damages it has been shown that as a
result of the unlawful acts of infringment committed by defendants,
plaintiff was unstandably very sad; he worried and became nervous
and lost concentration on his work in connection with his tile business
(pp. 28, 30, t.s.n., Feb. 28, 1964). In addition, plaintiff's character and
reputation have been unnecessarily put in question because
defendants, by their acts of infringement have created a doubt or
suspicion in the public mind concerning the truth and honesty of
plaintiff's advertisements and public announcements of his valid
patent. Necessarily, said acts of defendants have caused plaintiff
considerable mental suffering, considering especially, the fact that he
staked everything on his pre-cast tile business (p. 36, t.s.n., Id.) The
wantonness and evident bad faith characterizing defendants'
prejudicial acts against plaintiff justify the assessment of moral
damages in plaintiff's favor, though we do not believe the amount of
P50,000.00 awarded by the lower court is warranted by the
circumstances. We feel that said amount should be reduced to
P3,000.00 by way of compensating appellee for his moral suffering.

"Willful injury to property may be a legal ground for awarding moral

damages if the court should find that, under the circumstances such
damages are justly due" (Art. 2219 NCC).
There is no reason to reduce the amount of damages and attorneys fees awarded by
the trial court as modified by the Court of Appeals.
WHEREFORE, the decision of the Court of Appeals in CA G.R. No. 37824-R
appealed from is hereby affirmed, without pronouncement as to costs.
SO ORDERED.

CASE DIGEST: Aguas vs. De Leon

111 SCRA 238 (1982)

FACTS:

This is a petition for certiorari to review the decision of the Court of

Appeals.

On April 14, 1962, respondent Conrado de Leon filed in the CFI of Rizal at
Quezon City a complaint for infringement of patent against petitioner Domiciano
Aguas and F.H. Aquino and Sons alleging among others that being the original first
and sole inventor of certain new and useful improvements in the process of making
mosaic pre-cast tiles, and thereafter lawfully acquired from the Philippine Patent
Office, Patent No. 658, the latter infringed the same by making, using and selling
tiles embodying said patent invention. A writ of Preliminary Injuction was
subsequently issued.

Petitioner Aguas, in his answer, denied the allegations and instead averred
inter alia that respondent De Leon is neither the original first nor sole inventor of
the improvements in the process of making mosaic pre-cast tiles, the same having
been used by several tile-making factories both here and abroad years before the
alleged invention by De Leon; hence, it is not patentable.

The trial court and the Court of Appeals, upon appeal rendered judgment in
favor of respondent de Leon. Thus, this petition.

ISSUE:

Whether or not the alleged invention or discovery of respondent is

patentable.

HELD:

Yes. x x x It should be noted that the private respondent does not claim to
be the discoverer or inventor of the old process of tile-making. He only claims to

have introduced an improvement of said process. In fact, Letters Patent No. 658
was issued by the Philippine Patent Office to the private respondent Conrado G. De
Leon, to protect his rights as the inventor of an alleged new and useful
improvement in the process of making pre-cast tiles. Indeed, section 7, Republic
Act No. 165, as amended provides: Any invention of a new and useful machine,
manufactured product or substance, process, or an improvement of the foregoing,
shall be patentable.