Case Digest (G.R. No. 126627)
Facts:
The case caption is Smith Kline Beckman Corporation v. The Honorable Court of Appeals and Tryco Pharma Corporation, G.R. No. 126627, August 14, 2003, Third Division, Carpio Morales, J., writing for the Court. Petitioner Smith Kline Beckman Corporation (a Pennsylvania corporation licensed in the Philippines) filed, as assignee, on October 8, 1976 Patent Application Serial No. 18989 for an invention described in Letters Patent No. 14561 (issued September 24, 1981) claiming the compound “methyl 5 propylthio-2-benzimidazole carbamate” and related methods and compositions for treating parasitic infections in animals. Respondent Tryco Pharma Corporation is a domestic manufacturer of veterinary products that marketed “Impregon,” a preparation containing Albendazole as active ingredient.Petitioner sued Tryco in the Regional Trial Court (Branch 125, Caloocan City) for patent infringement and unfair competition, alleging that Albendazole is covered by Letters Patent No. 14561 and that Tryco’s manufacture and sale of Impregon infringed Claims 2, 3, 4, 7, 8 and 9 of the patent. The trial court granted petitioner a temporary restraining order and writ of preliminary injunction, but after trial found for Tryco, declared Letters Patent No. 14561 null and void for violation of Sections 7, 9 and 15 of the Patent Law, dissolved the injunction, and awarded Tryco damages and attorney’s fees.
On appeal, the Court of Appeals (Decision April 21, 1995) affirmed the trial court insofar as it found no infringement by Tryco, concluding petitioner failed to prove that Albendazole is the same as the compound in Letters Patent No. 14561; it relied in part on petitioner’s admission of a separate U.S. patent for Albendazole and treated the Philippine application as a divisional application. The CA, however, modified the trial court’s nullification of the patent, holding the patent valid because Patent Application Serial No. 18989 was a divisional application and, under Section 17 of the Patent Law, was deemed filed within the one-year period required by Section 15. The CA also rejected the unfair competition claim and sustained petitioner’s identity as assignee.
Petitioner’s motion for reconsideration at the CA was denied, and it brought this Rule 45 petition for review on certiorari to the Supreme ...(Subscriber-Only)
Issues:
- Did the Court of Appeals err in holding that Tryco did not infringe Letters Patent No. 14561 (i.e., whether Albendazole is covered by petitioner’s patent or, alternatively, whether the doctrine of equivalents applies)?
- Did the Court of Appeals err in awarding actual damages of P330,000.00 and attorney’s fees ...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)