G.R. No. 126627 - Smith Kline Beckman Corp. vs. Court of Appeals

Smith Kline Beckman Corporation (petitioner), a Pennsylvania corporation licensed in the Philippines, filed on October 8, 1976 Patent Application Serial No. 18989 (divisional of Serial No. 17280 of June 17, 1975) for “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.”
On September 24, 1981, Letters Patent No. 14561 was granted for a 17-year term, claiming (among others) the compound methyl 5 propylthio-2-benzimidazole carbamate and related anthelmintic compositions and methods for treating gastrointestinal parasites and lungworms in various animals.

Tryco Pharma Corporation (respondent) manufactured and sold Impregon, whose active ingredient is Albendazole. Petitioner sued Tryco for patent infringement of Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 and for unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166. The RTC issued a temporary restraining order and a preliminary injunction.
Tryco answered that:

Albendazole is neither named nor covered by Letters Patent No. 14561;
Albendazole is unpatentable;
BFAD authorized its product;
No passing off or misrepresentation occurred;
Letters Patent No. 14561 is void under the one-year rule (Section 15, R.A. 165) for late filing; and
Petitioner is not registered as patentee. Tryco counterclaimed for actual, moral, exemplary damages and attorney’s fees.

RTC Decision (July 23, 1991): dismissed petitioner’s complaint, dissolved injunction, declared Letters Patent No. 14561 null and void under Sections 7, 9 and 15 of the Patent Law, ordered cancellation, and awarded Tryco P330,000 actual damages and P100,000 attorney’s fees.
Court of Appeals Decision (April 21, 1995): affirmed no infringement (Albendazole ≠ patented compound), held patent valid as divisional within one-year rule, upheld assignee status, deleted nullification orders, and denied damages issues on merits.
Petitioner’s motion for reconsideration was denied; it filed a petition for review on certiorari before the Supreme Court, assigning errors on (a) infringement under the doctrine of equivalents and (b) the award of damages and attorney’s fees.

Whether Tryco’s use of Albendazole in Impregon infringes Letters Patent No. 14561, either literally or under the doctrine of equivalents.
Whether the Court of Appeals correctly awarded Tryco actual damages and attorney’s fees.