Smith Kline Beckman v. Court of Appeals

SMITH KLINE BECKMAN CORPORATION, petitioner, vs.
THE HONORABLE
COURT OF APPEALS and TRYCO PHARMA CORPORATION, respondents.
G. R. No. 126627. August 14, 2003; Carpio-Morales, J.:
FACTS:
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a
patent was issued to it for its invention entitled Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. The invention is a means to fight off gastrointestinal parasites from
various cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product
called Impregon which contains a drug called Albendazole which fights off gastrointestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos,
cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is
substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by
its patent since both of them are meant to combat worm or parasite infestation in
animals. And that Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that
Albendazole is present but even if it were, the same is unpatentable.
Smith Kline thus invoked the doctrine of equivalents, which implies that the two
substances substantially do the same function in substantially the same way to
achieve the same results, thereby making them truly identical for in spite of the fact
that the word Albendazole does not appear in Tryco Paharmas letters of patent, it has
ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole
carbamate.
ISSUE: Whether or not there is patent infringement in this case.
HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent
in the patented invention.
Nowhere in the patent is the word Albendazole found. When the language of its claims
is clear and distinct, the patentee is bound thereby and may not claim anything
beyond them. Further, there was a separate patent for Albendazole given by the US
which implies that Albendazole is indeed separate and distinct from the patented
compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
patented compound and Albendazole. While both compounds have the effect of
neutralizing parasites in animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same way or by substantially
the same means as the patented compound, even though it performs the same
function and achieves the same result. In other words, the principle or mode of
operation must be the same or substantially the same.
The doctrine of equivalents provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its innovative concept and,
although with some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same result. [19] Yet
again, a scrutiny of petitioners evidence fails to convince this Court of the substantial
sameness of petitioners patented compound and Albendazole. While both compounds
have the effect of neutralizing parasites in animals, identity of result does not amount
to infringement of patent unless Albendazole operates in substantially the same way
or by substantially the same means as the patented compound, even though it
performs the same function and achieves the same result.[20] In other
words, the principle or mode of operation must be the same or substantially the
same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.
Petitioners evidence fails to explain how Albendazole is in every essential detail
identical to methyl 5 propylthio-2-benzimidazole carbamate. Apart from the fact that
Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole
carbamate, nothing more is asserted and accordingly substantiated regarding the
method or means by which Albendazole weeds out parasites in animals, thus giving no
information on whether that method is substantially the same as the manner by which
petitioners compound works. The testimony of Dr. Orinion lends no support to
petitioners cause, he not having been presented or qualified as an expert witness who
has the knowledge or expertise on the matter of chemical compounds.
The assailed decision of the Court of Appeals is hereby AFFIRMED with
MODIFICATION.

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SMITH KLINE BECKMAN CORPORATION, petitioner, vs.

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