10. Smith Kline Beckman Corp. v.

CA 409 SCRA 33 (2003) 


FACTS: Smith Kline Beckman Corporation (petitioner), filed on October 8, 1976, an application
for patent over an invention entitled "Methods and Compositions for Producing Biphasic
Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate."

The letters patent provides in its claims that the patented invention consisted of a new
compound named methyl 5 propylthio-2-benzimidazole carbamate and 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.

Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures,

distributes and sells veterinary products including Impregon, a 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.

Petitioner sued private respondent for infringement of patent and unfair competition. It claimed
that its patent covers or includes the substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and used the drug Impregon without its
authorization. The Trial Court rendered its decision in favor of respondent Tryco which was
affirmed by the Court of Appeals.

ISSUE: Whether the CA erred in not finding that Albendazole, the active ingredient in Tryco’s
“Impregon” drug is included in petitioner’s letters patent no. 14561, and that consequently
Tryco is answerable for patent infringement.

HELD: NO.
From an examination of the evidence on record, this Court finds nothing infirm in the appellate
court’s conclusions with respect to the principal issue of whether private respondent
committed patent infringement to the prejudice of petitioner.

1. Petitioner likewise points out that its application with the Philippine Patent Office on
account of which it was granted Letters Patent No. 14561 was merely a divisional application
of a prior application in the U. S. which granted a patent for Albendazole. Hence, petitioner
concludes that 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,
thereby making Albendazole as much a part of Letters Patent No. 14561 as the other substance
is.

Concept of divisional applications - comes into play when two or more inventions are claimed
in a single application but are of such a nature that a single patent may not be issued for them.
The applicant thus is required "to divide," that is, to limit the claims to whichever invention he
may elect, whereas those inventions not elected may be made the subject of separate
applications which are called "divisional applications”.

When the language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. And so are the courts bound which may not add to or
detract from the claims matters not expressed or necessarily implied, nor may they enlarge the
patent beyond the scope of that which the inventor claimed and the patent office allowed, even
if the patentee may have been entitled to something more than the words it had chosen would
include.

In the case at bar, petitioner’s evidence consists primarily of its Letters Patent No. 14561, and
the testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health
Products Division, by which it sought to show that its patent for the compound methyl 5
propylthio-2-benzimidazole carbamate also covers the substance Albendazole.

It bears stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 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
petitioner’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole
inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the
claims of the patent embraces the same.

2. 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.

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

Yet again, a scrutiny of petitioner’s evidence fails to convince this Court of the substantial
sameness of petitioner’s 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.