SMITH KLINE BECKMAN CO.

V COURT OF APPEALS AND TRYCO PHARMA

GR NO. 126627, AUGUST 14, 2003

NOTES FOR RECIT

1. Mark: “Methods and Compositions for Producing Biphasic Parasiticide Activity Using
Methyl 5 Propylthio-2-Benzimidazole Carbamate.” & “Impregon” which contains a drug
called Albendazole
2. Product: Veterinary drugs
3. Ruling:
 Who won the case? Tryco Pharma (respondent)
 Rationale of SC ruling:
- A scrutiny of Smith Kline’s 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.
- The doctrine of equivalents does not apply in the case at bar because it requires
that for infringement to take place, the device should appropriate a prior invention
by incorporating its innovative concept and although there are some modifications
and change, they perform substantially the same results. Smith Kline’s evidence
failed to adduce that substantial sameness on both the chemicals they used. While
both compounds produce the same effects of neutralizing parasites in animals, the
identity of result does not amount to infringement. The principle or mode of
operation must be the same or substantially the same. Smith Kline has the burden
to show that it satisfies the function-means-and-result-test required by the doctrine
of equivalents. Nothing has been substantiated on how Albendazole can weed the
parasites out from animals which is similar to the manner used by the petitioner in
using their own patented chemical compound.

FACTS: Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a

patent was issued to it, for a term of 17 years, for its invention entitled “Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-
Benzimidazole Carbamate.” The invention consisted of a new compound named as Methyl 5
Propylthio-2-Benzimidazole Carbamate, which is utilized as an active ingredient to fight off
infections caused by gastrointestinal parasites and lungworms in various animals such as swine,
cattle, goats, horses, sheep and pet animals.

Tryco Pharma is a domestic corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling as its own, a veterinary drug
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 it is substantially the
same as methyl 5 propylthio-2-benzimidazole carbamate; both of them are meant to combat
worm or parasite infestation in animals. And that Albendazole is actually patented under Smith
Kline in the US. 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 Tryco Paharma’s letters of patent.

Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that Albendazole is
present but even if it were, the same is “unpatentable”. It also contends that the application of the
doctrine of equivalents would not alter the outcome of the case since the 2 compounds have
different chemical and physical properties. It stresses the existence of a separate US Patent for
Albendazole indicates that Albendazole and Methyl 5 are different and since it was on account of
a divisional application, such compound is just one of several independent inventions alongside
Albendazole under Smith Kline’s original patent application.

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 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 Kline’s 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.

The doctrine of equivalents does not apply in the case at bar because it requires that for
infringement to take place, the device should appropriate a prior invention by incorporating its
innovative concept and although there are some modifications and change they perform
substantially the same results. Smith Kline’s evidence failed to adduce that substantial sameness
on both the chemicals they used. While both compounds produce the same effects of neutralizing
parasites in animals, the identity of result does not amount to infringement. The principle or
mode of operation must be the same or substantially the same. Smith Kline has the burden to
show that it satisfies the function-means-and-result-test required by the doctrine of equivalents.
Nothing has been substantiated on how Albendazole can weed the parasites out from animals
which is similar to the manner used by the petitioner in using their own patented chemical
compound.

As to the divisional applications by Smith Kline, it 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. What this only means is that methyl 5
propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions claimed
in the original application divided out, Albendazole being one of those other inventions.
Otherwise, methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of a
divisional application if a single patent could have been issued for it as well as Albendazole.