SMITH KLINE BECKMAN V CA GR 126627

SMITH KLINE BECKMAN CORPORATION v. COURT OF APPEALS, et al.
409
SCRA 33 (2003)
Petitioner was granted by the Philippine Patent Office Letters Patent No. 14561 over an
invented compound entitled “Methods and Compositions for Producing Biphasic Parasiticide
Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” Such compound is
claimed to be an active ingredient in fighting various parasites in certain types of domestic
and livestock animals. Respondent Tryco Pharma (Tryco) sells veterinary products including
a drug Impregon which contains Albendazole as an active ingredient which fights against
parasites in animals. Petitioner SKBC then filed an action against respondent Tryco for patent
infringement claiming that the patent granted to them includes said Albendazole. In their
defense respondent Tryco alleges that Letters Patent No. 14561 granted to petitioner SKBC
does not include Albendazole for nowhere is such word found in the patent. The Trial Court
rendered its decision in favor of respondent Tryco which was affirmed by the Court
of Appeals.
ISSUES:
Whether or not the Court of Appeals erred in not finding that Albendazole is included in
petitioners Letter Pattent No. 14561
HELD:
From an examination of the evidence on record, the Court finds nothing infirm in the
appellate court’s conclusions with respect to the principal issue of whether Tycho Pharma
committed patent infringement to the prejudice of SKBC. The burden of proof to substantiate
a charge for patent infringement rests on the plaintiff. 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. From a reading of the 9 claims of Letters
Patent No. 14561 in relation to the other portions thereof, no mention is made of the
compound Albendazole.
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. 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 SKBC’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 SKBC’s patent in spite of its omission therefrom or that the
meaning of the claims of the patent embraces the same. While SKBC concedes that the mere
literal wordings of its patent cannot establish Tyco Pharma’s infringement, it urges the Court
to apply the doctrine of equivalents.
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 SKBC’s evidence
fails to convince the Court of the substantial sameness of SKBC’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. 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..

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SMITH KLINE BECKMAN CORPORATION v. COURT OF APPEALS, et al.

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