1 Smith Kline Beckman Corp vs. CA AUTHOR: Dadivas, Ma. Louise B.

G. R. No. 126627/August 14, 2003 NOTES: Important facts are in bold

TOPIC: Patent
PONENTE: Carpio Morales, J.
CASE LAW/ DOCTRINE:
1. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond
them.
2. 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.
Emergency Recit:
Smith Kline filed (as assignee) before the Philippine Patent Office an application for patent over an invention entitled Methods and Compositions
for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. : Letters Patent No. 14561 for the aforesaid
invention was issued. Trycon manufactures, distributes and sells veterinary products including Impregon (drug that has Albendazole for its active
ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle
and goats). Smith Kline sued Trycon for infringement of patent and unfair competition. The Court held that The 9 claims of Letters Patent No.
14561 does not mention the compound Albendazole. When the language of its claims is clear and distinct, the patentee is bound thereby and
may not claim anything beyond them. Also, the doctrine of equivalents is also not applicable because Smith Kline fails to convince the Court of
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.
FACTS:
1. Smith Kline Beckman Corporation (Smith Kline)
 existing by virtue of the laws of the state of Pennsylvania
 licensed to do business in the Philippines
2. 10/08/1976: filed (as assignee) before the Philippine Patent Office an application for patent over an invention entitled
Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. (Serial No. 18989)
3. 08/24/1981: Letters Patent No. 14561 for the aforesaid invention was issued to Smith Kline for a term of 17years. Claims
in Letters Patent:
 the patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole carbamate
 the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by
gastrointestinal parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet
animals.
4. Tryco Pharma Corporation (Tryco)
 domestic corporation
 manufactures, distributes and sells veterinary products including Impregon (drug that has Albendazole for its
active ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms
and fluke infestation in carabaos, cattle and goats)
5. Smith Kline sued Tryco for infringement of patent and unfair competition (its patent covers or includes the substance
Albendazole)
6. RTC: issued a temporary restraining order against Tryco
7. Tryco’s defense:
 Letters Patent No. 14561 does not cover the substance Albendazole for (the word does not appear)
 Albendazole is unpatentable
 Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its known
ingredient
 no proof that it passed off in any way its veterinary products as those of Smith Kline
 Letters Patent No. 14561 is null and void; the application for the issuance having been filed beyond 1 year period
from the filing of an application abroad for the same invention covered (violation of Section 15 of Republic Act
No. 165 (The Patent Law)
 Smith Kline is not the registered patent holder. (They also filed a Counterclaim)
8. RTC: In favor of Tryco
9. CA: Upheld RTC;
 Letters Patent No. 14561 was not void because the Patent Application Serial No. 18989 which was filed
10/08/1976 was a divisional application of Patent Application Serial No. 17280 filed on 06/17/1975 with the
Philippine Patent Office. It is deemed filed. (Note: First time na nagappear itong fact na to, swear!)
  It is well within one year from petitioners filing on 06/19/1974 of its Foreign Application Priority Data No. 480,646
in the U.S. covering the same compound subject of Patent Application Serial No. 17280.
10. Smith Kline’s Arguments:
 Doctrine of equivalents: Albendazole 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. (It cited the testimony of Dr. Orinion, general manager in the Philippines for its Animal Health Products
Division)
 Letters Patent No. 14561 was merely a divisional application of a prior application in the U. S. which granted a
patent for Albendazole. Both methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented Albendazole
are dependent on each other and mutually contribute to produce a single result.
 Although methyl 5 propylthio-2-benzimidazole carbamate is not identical with Albendazole, the former is an
improvement or improved version of the latter thereby making both substances still substantially the same.
ISSUE(S): Is there an infringement of patent?
HELD: NO NO NO WAY!
RATIO:
 The 9 claims of Letters Patent No. 14561 does not mention the compound Albendazole. When the language of its claims
is clear and distinct, the patentee is bound thereby and may not claim anything beyond them.
 The mere absence of the word Albendazole is not determinative of Albendazole’s non-inclusion in the claims of the
patent. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in Smith
Kline’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole.
 No extrinsic evidence had been adduced to prove that Albendazole inheres in the patent in spite of its omission therefrom
or that the meaning of the claims of the patent embraces the same.
As to the argument of Doctrine of Equivalents:
 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.
 In this case, Smith Kline fails to convince the Court of 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 (Function-means-and-result test)
 In this case, 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 Smith Kline’s compound works.