Smith Kline Beckman Corp. v. CA & Tryco Pharma Corp
Smith Kline Beckman Corp. v. CA & Tryco Pharma Corp
The letters patent 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.
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Issue
From an examination of the evidence on record, this Court finds nothing
infirm in the appellate courts conclusions with respect to the principal issue of
whether private respondent committed patent infringement to the
prejudice of petitioner.
The burden of proof to substantiate a charge for patent infringement rests
on the plaintiff. In the case at bar, petitioners 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-2benzimidazole carbamate also covers the substance Albendazole.
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The doctrine of equivalents thus requires satisfaction of the functionmeans-and-result test, the patentee having the burden to show that all
three components of such equivalency test are met.
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Deciding factor
As stated early on, petitioners evidence fails to explain how Albendazole
is in every essential detail identical to methyl 5 propylthio-2-benzimidazole
carbamate. Apart from the fact that Albendazole is an anthelmintic agent
like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is
asserted and accordingly substantiated regarding the method or means
by which Albendazole weeds out parasites in animals, thus giving no
information on whether that method is substantially the same as the
manner by which petitioners compound works. The testimony of Dr.
Orinion lends no support to petitioners cause, he not having been presented
or qualified as an expert witness who has the knowledge or expertise on the
matter of chemical compounds.
As for the concept of divisional applications proffered by petitioner, 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 petitioners methyl 5 propylthio-2benzimidazole 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.
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The foregoing discussions notwithstanding, this Court does not sustain the
award of actual damages and attorneys fees in favor of private
respondent. The claimed actual damages ofP330,000.00 representing lost
profits or revenues incurred by private respondent as a result of the issuance
of the injunction against it, computed at the rate of 30% of its
allegedP100,000.00 monthly gross sales for eleven months, were supported
by the testimonies of private respondents President and Executive VicePresident that the average monthly sale of Impregon was P100,000.00 and
that sales plummeted to zero after the issuance of the injunction. While
indemnification for actual or compensatory damages covers not only the loss
suffered (damnum emergens) but also profits which the obligee failed to
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In the same vein, this Court does not sustain the grant by the appellate
court of attorneys fees to private respondent anchored on Article 2208 (2) of
the Civil Code, private respondent having been allegedly forced to litigate as a
result of petitioners suit. Even if a claimant is compelled to litigate with third
persons or to incur expenses to protect its rights, still attorneys fees may not
be awarded where no sufficient showing of bad faith could be reflected in a
partys persistence in a case other than an erroneous conviction of the
righteousness of his cause. There exists no evidence on record indicating
that petitioner was moved by malice in suing private respondent.
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