Philippine Pharmawealth Inc. v.
Pfizer
G.R. No. 167715 | November 17, 2010 | PERALTA, J.
SUMMARY: Pfizer held patent for Sulbactam Ampicillin and discovered that
Pharmawealth was bidding and supplying the said drug to several hospitals. Pfizer
eventually filed a complaint for patent infringement with the IPO, which later was
raised to the CA. While pending in the CA, Pfizer filed with RTC Makati, a complaint
for infringement and unfair competition. Pharmawealth filed MTD on the ground of
Forum Shopping but the CA nevertheless issued the TRO and denied all motions.
The SC ruled that [DOCTRINE]
DOCTRINE: Forum Shopping is defined as the institution of 2 or more actions or
proceedings grounded on the same cause on the supposition that one or the other
court would make a favorable disposition. It does not matter that the patents upon
which the complaints were based are different. The fact remains that in both
complaints the rights violated and the acts violative of such rights are identical. The
filing of two actions with the same objective, as in this instance, constitutes forum
shopping
FACTS:
 Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is
marketed under the brand name “Unasyn.”
 Sometime in January and February 2003, Pfizer discovered that Pharmawealth
submitted bids for the supply of Sulbactam Ampicillin to several hospitals without
the Pfizer’s consent.
o Pfizer then demanded that the hospitals cease and desist from accepting
such bids.  Demanded that Pharmawealth immediately withdraw its bids to
supply Sulbactam Ampicillin.
o Pharmawealth and the hospitals ignored the demands.
 Pfizer then filed a complaint for patent infringement with a prayer for permanent
injunction and forfeiture of the infringing products.
o A preliminary injunction effective for 90 days was granted by the IPO’s
Bureau of Legal Affairs (IPO-BLA).
o Upon expiration, a motion for extension filed by Pfizer was denied. Pfizer
filed a Special Civil Action for Certiorari in the CA assailing the denial.
 While the case was pending in the CA, Pfizer filed with the RTC Makati a
complaint for infringement and unfair competition, with a prayer for
injunction. The RTC issued a TRO, and then a preliminary injunction.
 Pharmawealth filed a motion to dismiss the case in the CA, on the ground of
forum shopping. Nevertheless, the CA issued a temporary restraining order.
o Pharmawealth again filed a motion to dismiss, alleging that the patent, the
main basis of the case, had already lapsed, thus making the case moot, and
that the CA had no jurisdiction to review the order of the IPO-BLA because
this was granted to the Director General.
o The CA denied all the motions. Pharmawealth filed a petition for review on
Certiorari with the SC.
ISSUE & RULING:
a. [MAIN] W/N there is forum shopping when a party files two actions with two
seemingly different causes of action and yet pray for the same relief? –
YES.
 Forum shopping is defined as the act of a party against whom an adverse
judgment has been rendered in one forum, of seeking another (and possibly
favorable) opinion in another forum (other than by appeal or the special civil
action of certiorari), or the institution of 2 or more actions or proceedings
grounded on the same cause on the supposition that one or the other court
would make a favorable disposition.
 The Elements of Forum Shopping are:
(a) identity of parties, or at least such parties that represent the same
interests in both actions;
(b) identity of rights asserted and reliefs prayed for, the reliefs being
founded on the same facts;
(c) identity of the two preceding particulars, such that any judgment
rendered in the other action will, regardless of which party is successful,
amount to res judicata in the action under consideration. This instance
meets these elements.
 The parties are clearly identical. In both the complaints in the BLA-IPO and
RTC, the rights allegedly violated and the acts allegedly violative of such
rights are identical, regardless of whether the patents on which the
complaints were based are different.
 It does not matter that the patents upon which the complaints were
based are different. The fact remains that in both complaints the rights
violated and the acts violative of such rights are identical.
o The filing of two actions with the same objective, as in this instance,
constitutes forum shopping.
 Danville Maritime v. COA: One can see that although the relief prayed for in
the two (2) actions are ostensibly different, the ultimate objective in both
actions is the same, that is, the approval of the sale of vessel in favor of
petitioner, and to overturn the letter directive of the COA.
 Pfizer’s ultimate objective which it seek to achieve in their separate
complaints filed with the RTC and the IPO, is to ask for damages for
the alleged violation of their right to exclusively sell Sulbactam
Ampicillin products and to permanently prevent or prohibit petitioner
from selling said products to any entity. 
 Owing to the substantial identity of parties, reliefs and issues in the IPO and
RTC cases, a decision in one case will necessarily amount to res judicata in
the other action.
b. W/N CA has jurisdiction to review the decisions of the Director of Legal Affairs of
the IPO?  YES.
 According to IP Code, the Director General of the IPO exercises exclusive
jurisdiction over decisions of the IPO-BLA. T
  The question in the CA concerns an interlocutory order, and not a decision.
Since the IP Code and the Rules and Regulations are bereft of any remedy
regarding interlocutory orders of the IPO-BLA, the only remedy available to
Pfizer is to apply the Rules and Regulations suppletorily.
 Under the Rules, a petition for certiorari to the CA is the proper remedy. This
is consistent with the Rules of Court. Thus, the CA had jurisdiction.

NOTE: Extra Issues:

c. Can an injunctive relief be issued based on an action of patent infringement

when the patent allegedly infringed has already lapsed? – NO.
 The provision of R.A. 165, from which the Pfizer’s patent was based, clearly
states that:
o "[the] patentee shall have the exclusive right to make, use and sell the
patented machine, article or product, and to use the patented process
for the purpose of industry or commerce, throughout the territory of the
Philippines for the term of the patent; and such making, using, or selling
by any person without the authorization of the patentee constitutes
infringement of the patent."
 Clearly, the patentee’s exclusive rights exist only during the term of the
patent. Since the patent was registered on 16 July 1987, it expired, in
accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004.
 Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to
make, use, and sell the products covered by their patent.
o The CA was wrong in issuing a temporary restraining order after the cut-
off date.