Case Digest (G.R. No. 194872)
Facts:
The case revolves around Sahar International Trading, Inc. (hereinafter "Sahar") as the petitioner against respondents Warner Lambert Co., LLC (hereinafter "Warner Lambert") and Pfizer, Inc. (Philippines) (hereinafter "Pfizer"). The events leading to this legal dispute began when Warner Lambert, a foreign corporation, became the registered owner of three Philippine patents pertaining to Atorvastatin and its calcium variant. Specifically, the patents include: (1) Letters Patent No. 26330 for Atorvastatin, valid until April 29, 2009; (2) LP No. 29149 for Atorvastatin Calcium, valid until September 26, 2012; and (3) LP No. 1-1996-53719 for Atorvastatin Calcium in crystalline form, valid until October 23, 2019. Warner Lambert and its global affiliates marketed these drugs under the brand name Lipitor.
Respondent Pfizer holds an exclusive license from Warner Lambert to import, market, and distribute the patented products in the Philippines. Consequently
Case Digest (G.R. No. 194872)
Facts:
- Parties Involved
- Petitioner: Sahar International Trading, Inc. ("Sahar").
- Respondents:
- Warner Lambert Co., LLC – the registered owner of three Philippine patents related to Atorvastatin and Atorvastatin Calcium.
- Pfizer, Inc. (Philippines) – exclusive licensee of Warner Lambert for the importation, marketing, distribution, and sale of the patent-protected pharmaceutical products.
- Patent Ownership and Drug Profile
- Warner Lambert holds three key patents:
- LP No. 26330 for Atorvastatin (valid until April 29, 2009).
- LP No. 29149 for Atorvastatin Calcium (valid until September 26, 2012).
- LP No. 1-1996-53719 for Atorvastatin Calcium in crystalline form (valid until October 23, 2019).
- Atorvastatin is described as a cholesterol-lowering agent that reduces LDL (bad cholesterol), total cholesterol, triglycerides, and apolipoprotein B, while increasing HDL (good cholesterol) to diminish risks of heart attacks, strokes, and peripheral vascular diseases.
- Warner Lambert markets these drugs under the brand name Lipitor, and Pfizer leverages this patent protection in the Philippines.
- Marketing, Approval, and the Disputed Product
- Pfizer obtained various Certificates of Product Registration (CPRs) from the Bureau of Food and Drugs (now FDA) to lawfully distribute products covered by the subject patents.
- In 2005, Pfizer discovered that Sahar had also applied for and secured an FDA CPR for a drug marketed under the brand name Atopitar.
- Sahar’s Atopitar, manufactured by Geofman Pharmaceuticals of Pakistan, was distributed in several Philippine regions (including Bicol, Zamboanga, Cebu, Ilocos Norte, and Tarlac).
- Allegations and Initial Legal Proceedings
- Pfizer sent multiple cease and desist letters to Sahar, asserting that the sale and distribution of Atopitar infringed Warner Lambert’s patents.
- Sahar argued that the patent on Atorvastatin Calcium had expired in Pakistan and thus was free for marketing in the Philippines.
- Respondents subsequently filed a Complaint for Patent Infringement, Damages, and Injunction in the Regional Trial Court (RTC) of Makati City (Civil Case No. 08-424).
- The RTC issued Orders (dated August 5, 2008, and September 25, 2008) denying the issuance of a writ of preliminary injunction against Sahar, reasoning that doing so would prematurely resolve the principal dispute.
- Court of Appeals (CA) Involvement and Subsequent Proceedings
- The Court of Appeals reversed the RTC’s Orders in its Decision dated April 22, 2010, and issued a writ of preliminary injunction directing the RTC to enjoin Sahar from selling, distributing, or otherwise infringing via Atopitar.
- Sahar’s motion for reconsideration before the CA was denied in a Resolution dated December 21, 2010.
- Meanwhile, the RTC subsequently dismissed Civil Case No. 08-424 on the ground of lack of cause of action, a decision later reversed by the CA in a Decision dated November 5, 2013.
- In the November 5, 2013 decision, the CA held Sahar liable for patent infringement and ordered:
- Payment of temperate damages, exemplary damages, and attorney’s fees.
- The permanence of the writ of preliminary injunction.
- The seizure, condemnation, and forfeiture of Atopitar and related materials.
- Emergence of the Present Controversy
- The petition for review challenges the propriety of the CA’s issuance of the writ of preliminary injunction during the pendency of Civil Case No. 08-424.
- However, subsequent developments—specifically, the CA’s November 5, 2013 decision conclusively resolving the patent infringement issues and confirming the injunction—raise questions about whether the issue remains justiciable.
Issues:
- Primary Issue
- Whether the Court of Appeals was correct in issuing a writ of preliminary injunction enjoining Sahar, its agents, representatives, and assigns from dealing in Atopitar during the pendency of Civil Case No. 08-424.
- Subsidiary Issue
- Whether the petition is moot and academic, given that the later CA decision (dated November 5, 2013) in a related case not only resolved the patent infringement controversy but also made the preliminary injunction permanent, thereby negating any practical relief sought in the present petition.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)