Smith Kline Beckman Corporation vs Court of Appeals

[G. R. No. 126627. August 14, 2003]

Ponente: CARPIO-MORALES, J.:
FACTS:
The petitioner 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. On the other
hand, 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 gastro-intestinal roundworms,
lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. Smith Kline is
claiming that Albendazole is covered in their patent because 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 by the US.
Tryco Pharma averred that nowhere in Impregons packaging 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 petitioners letters 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 does 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 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.