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Smith Kline Beckman Co.

v Court of Appeals and Tryco Pharma

GR No. 126627, August 14, 2003
Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed 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-2Benzimidazole Carbanate. A Letters of Patent was issued to the petitioner for a period of 17
years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal parasites and
lung worms in animals.
The respondent Tryco Pharma manufactures 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 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 petitioners
authorization and committed unfair competition for selling as its own the drug that
substantially functions to achieve the same result. It also 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.
Respondent, however, avers that the Letter of Patents issued to petitioner does not cover
Albendazole in that the word does not appear on it. On appeal, the Court of Appeals, upheld the
trial courts finding that respondent was not liable for any infringement of the patent of petitioner
in light of the latters failure to show that Albendazole is the same as the compound subject of
Letters Patent. Noting petitioners admission of the issuance by the U.S. of a patent for
Albendazole in the name of Smith Kline and French Laboratories which was petitioners former
corporate name, the appellate court considered the U.S. patent as implying that Albendazole is
different from methyl 5 propylthio-2-benzimidazole carbamate.
Issue: Whether or not respondent is guilty of patent infringement.
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. Petitioner argues that under the
doctrine of equivalents for determining patent infringement, Albendazole, the active ingredient it
alleges was appropriated by private respondent for its drug Impregon, 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. However, 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
The petitioners 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 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 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.