Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. 126627, August 14, 2003

Facts:

Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate.” A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2-Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal parasites and lung worms in animals. The respondent Tryco Pharma manufactures, distributes and sells veterinary product, one of which is the Impregon, a drug having Albendazole as its active ingredient effective against gastrointestinal worms in animals. Petitioner now sues the respondent for patent infringement and unfair competition before the RTC as it claims that their patent includes the substance Albendazole used by the respondent and they sold and used the drug Impregon without the petitioner’s authorization and committed unfair competition for selling as its own the drug that substantially functions to achieve the same result. Petitioner further contends that under the doctrine of equivalents in determining patent infringement, the active substance Albendazole used by the respondent is substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by its patent with the same use of combating worm infestations in animals. It prodded the court to go beyond the literal words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not appear on it. Even if the patent were to include Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner has no proof that they passed their veterinary products as that of the petitioner.



Issue:

Whether or not respondent is guilty of patent infringement?

Ruling: 

The Supreme Court held that it did not. When the language of the claim is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. The language of the Letter of Patents issued to the petitioner failed to yield anything that it includes Albendazole. The doctrine of equivalents does not apply in the case at bar because it requires that for infringement to take place, the device should appropriate a prior invention by incorporating its innovative concept and although there are some modifications and change they perform substantially the same results. The petitioner’s evidence failed to adduce that substantial sameness on both the chemicals they used. While both compounds produce the same effects of neutralizing parasites in animals, the identity of result does not amount to infringement. The petitioner has the burden to show that it satisfies the function-means-and-result-test required by the doctrine of equivalents. Nothing has been substantiated on how Albendazole can weed the parasites out from animals which is similar to the manner used by the petitioner in using their own patented chemical compound.