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    Smith Kline vs. CA

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    Gia Remo
    Smith Kline Beckman Corporation sued Tryco Pharma Corporation for patent infringement, claiming that Tryco's drug Impregon, which contains Albendazole, infringes on Smith Kline's patent for a compound called methyl 5 propylthio-2-benzimidazole carbamate. The Court of Appeals ruled in favor of Tryco, finding that Smith Kline failed to prove that Albendazole is the same as the patented compound. The Supreme Court affirmed, holding that Smith Kline did not meet its burden of proving that Albendazole operates in substantially the same way and achieves substantially the same result as the patented compound, as required by the doctrine of equivalents.

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    Smith Kline vs. CA

    Uploaded by

    Gia Remo
    130 views3 pages
    Smith Kline Beckman Corporation sued Tryco Pharma Corporation for patent infringement, claiming that Tryco's drug Impregon, which contains Albendazole, infringes on Smith Kline's patent for a compound called methyl 5 propylthio-2-benzimidazole carbamate. The Court of Appeals ruled in favor of Tryco, finding that Smith Kline failed to prove that Albendazole is the same as the patented compound. The Supreme Court affirmed, holding that Smith Kline did not meet its burden of proving that Albendazole operates in substantially the same way and achieves substantially the same result as the patented compound, as required by the doctrine of equivalents.

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    Smith Kline Beckman Corporation sued Tryco Pharma Corporation for patent infringement, claiming that Tryco's drug Impregon, which contains Albendazole, infringes on Smith Kline's patent for a compound called methyl 5 propylthio-2-benzimidazole carbamate. The Court of Appeals ruled in favor of Tryco, finding that Smith Kline failed to prove that Albendazole is the same as the patented compound. The Supreme Court affirmed, holding that Smith Kline did not meet its burden of proving that Albendazole operates in substantially the same way and achieves substantially the same result as the patented compound, as required by the doctrine of equivalents.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    130 views3 pages

    Smith Kline vs. CA

    Uploaded by

    Gia Remo
    Smith Kline Beckman Corporation sued Tryco Pharma Corporation for patent infringement, claiming that Tryco's drug Impregon, which contains Albendazole, infringes on Smith Kline's patent for a compound called methyl 5 propylthio-2-benzimidazole carbamate. The Court of Appeals ruled in favor of Tryco, finding that Smith Kline failed to prove that Albendazole is the same as the patented compound. The Supreme Court affirmed, holding that Smith Kline did not meet its burden of proving that Albendazole operates in substantially the same way and achieves substantially the same result as the patented compound, as required by the doctrine of equivalents.

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    © All Rights Reserved
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    of 3

    CASE # 01 (by: G.

    Remo)
    SMITH KLINE BECKMAN CORPORATION, vs. THE HONORABLE COURT OF
    APPEALS and TRYCO PHARMA CORPORATION
    G. R. No. 126627. August 14, 2003
    CARPIO-MORALES, J:
    DOCTRINE: 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.
    Yet again, a scrutiny of petitioners evidence fails to convince this Court of the
    substantial sameness of petitioners 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-andresult test, the patentee having the burden to show that all three components of such
    equivalency test are met
    FACTS:
    Smith Kline Beckman Corporation (petitioner foreign corporation registered in
    Pennsylvania) 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 invention was issued to petitioner for a
    term of seventeen (17) years. It 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.

    Smith Kline sued Tryco for infringement of patent and unfair competition claiming that
    its patent covers or includes the substance Albendazole such that Tryco by
    manufacturing, selling, using, and causing to be sold and used the drug Impregon
    without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No.
    14561 as well as committed unfair competition under Article 189, paragraph 1 of
    the Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark
    Law) for advertising and selling as its own the drug Impregon although the
    same contained petitioners patented Albendazole.
    The trial court rendered judgment in favor of Tryco. This decision was affirmed by the
    Court of Appeals ruling that Tryco is not liable for any infringement of the patent of
    Smith Kline for failure to show that Albendazole is the same as Methyl 5 propylthio-2benzimidazole carbamate
    Smith Kline submitted the following arguments:
    First it argues that under the doctrine of equivalents Albendazole is
    substantially the same as Methyl 5 propylthio-2-benzimidazole carbamate
    since both of them are meant to combat worm or parasite infestation in
    animals. It cites the unrebutted testimony of its witness Dr. Godofredo C.
    Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561
    refers to the compound Albendazole.
    Second, the two substances substantially do the same function in
    substantially the same way to achieve the same results, thereby making
    them truly identical.
    Third its application with the Philippine Patent Office 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-2benzimidazole 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.
    Tryco, on the other hand argued that the existence of a separate U.S. patent for
    Albendazole indicates that the same and the compound in Letters Patent No. 14561
    are different from each other; and that since it was on account of a divisional
    application that the patent for methyl 5 propylthio-2-benzimidazole carbamate was
    issued, then, by definition of a divisional application, such a compound is just one of
    several independent inventions alongside Albendazole under petitioners original
    patent application.
    ISSUE: Applying the doctrine of equivalents, is Albendazole considered to be
    included in Smith Klines Letters Patent No. 14561 such that the sale by Tryco of
    Impregon (a drug that has Albendazole) made it liable for patent infringement?

    HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the
    patented invention. Nowhere in the patent is 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-meansand-result test, the patentee having the burden to show that all three
    components of such equivalency test are met.

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