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SMITH KLINE BECKMAN CORPORATION v. CA

FACTS:

Smith Kline Beckman Corporation, a company based in the United States and licensed to do business in the Philippines, filed an application for patent over an invention entitled "Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate" before the Philippine Patent Office on October 8, 1976. The application was granted and Letters Patent No. 14561 was issued to petitioner on September 24, 1981. The patent claimed a new compound called methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound in fighting infections caused by gastrointestinal parasites and lungworms in animals. Tryco Pharma Corporation, a domestic corporation engaged in the manufacture and sale of veterinary products, including a drug called Impregon, was sued by petitioner for patent infringement and unfair competition. Petitioner claimed that Impregon contained Albendazole, which was covered by petitioner's patent, and that private respondent infringed the claims of the patent. Private respondent argued that the patent did not cover Albendazole and even if it did, Albendazole was not patentable. The trial court dismissed petitioner's complaint and declared the letters patent null and void. The Court of Appeals affirmed the dismissal of the complaint but declared the letters patent valid. Petitioner filed a petition for review on certiorari questioning the Court of Appeals' decision.

ISSUES:

  1. Whether the compound Albendazole is covered by petitioner's patent.

  2. Whether the award of actual damages and attorney's fees in favor of private respondent is valid.

  3. Whether or not Albendazole infringes the petitioner's patent for methyl 5 propylthio-2-benzimidazole carbamate.

  4. Whether or not the concept of divisional applications is applicable in this case.

RULING:

  1. The compound Albendazole is not covered by petitioner's patent. The language of Letters Patent No. 14561 only mentions the compound methyl 5 propylthio-2-benzimidazole carbamte and does not include Albendazole. The court cannot add or detract from the claims of the patent beyond what is explicitly stated.

  2. The award of actual damages and attorney's fees in favor of private respondent is valid. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff, and in this case, the evidence presented by the petitioner was not sufficient to prove infringement. The court also emphasizes that it does not review factual findings unless they are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary to the findings made by the lower court.

  3. Albendazole does not infringe the petitioner's patent for methyl 5 propylthio-2-benzimidazole carbamate. The two compounds do not operate in substantially the same way or by substantially the same means, even if they perform the same function and achieve the same result. The principle or mode of operation must be the same or substantially the same. The petitioner failed to prove that Albendazole satisfies the function-means-and-result test.

  4. The concept of divisional applications is applicable in this case. Petitioner's methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions claimed in the original application divided out, wherein Albendazole is one of those inventions.

PRINCIPLES:

  • The language of the claims in a patent is binding on the patentee, and the courts may not add or detract from them.

  • The mere absence of a word in a patent is not determinative of its non-inclusion in the claims of the patent.

  • The burden of proof to substantiate a charge for patent infringement rests on the plaintiff.

  • To establish patent infringement, the patentee has the burden to show that the allegedly infringing compound operates in substantially the same way or by substantially the same means as the patented compound, even if they perform the same function and achieve the same result.

  • The doctrine of equivalents requires satisfaction of the function-means-and-result test, wherein the patentee must prove that the allegedly infringing compound satisfies all three components of the equivalency test.

  • Divisional applications are filed when two or more inventions are claimed in a single application, but a single patent may not be issued for them. The applicant is required to divide the claims and pursue separate applications for each invention.