SMITH KLINE BECKMAN CO.

V COURT OF APPEALS AND TRYCO PHARMA

GR NO. 126627, AUGUST 14, 2003
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it, for a
term of 17 years, for its invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity
Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. The invention consisted of a new compound named as
Methyl 5 Propylthio-2-Benzimidazole Carbamate, which is utilized as an active ingredient to fight off infections
caused by gastrointestinal parasites and lungworms in various animals such as swine, cattle, goats, horses, sheep
and pet animals.

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere
in the patent is the word Albendazole found. When the language of its claims is clear and distinct, the patentee is
bound thereby and may not claim anything beyond them. Further, there was a separate patent for Albendazole
given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the patented compound and
Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the
same means as the patented compound, even though it performs the same function and achieves the same result.
In other words, the principle or mode of operation must be the same or substantially the same.

Tryco Pharma is a domestic corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling as its own, a veterinary drug called Impregon, which
contains a drug called Albendazole which fights off gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate; both of them are meant to combat worm or parasite infestation in animals.
And that Albendazole is actually patented under Smith Kline in the US. Smith Kline thus invoked the doctrine of
equivalents, which implies that the two substances substantially do the same function in substantially the same
way to achieve the same results, thereby making them truly identical for in spite of the fact that the word
Albendazole does not appear in Tryco Paharmas letters of patent.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that Albendazole is present but even if
it were, the same is unpatentable. It also contends that the application of the doctrine of equivalents would not
alter the outcome of the case since the 2 compounds have different chemical and physical properties. It stresses
the existence of a separate US Patent for Albendazole indicates that Albendazole and Methyl 5 are different and
since it was on account of a divisional application, such compound is just one of several independent inventions
alongside Albendazole under Smith Klines original patent application.
ISSUE: Whether or not there is patent infringement in this case.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency test are met.
The doctrine of equivalents does not apply in the case at bar because it requires that for infringement to take place,
the device should appropriate a prior invention by incorporating its innovative concept and although there are some
modifications and change they perform substantially the same results. Smith Klines evidence failed to adduce that
substantial sameness on both the chemicals they used. While both compounds produce the same effects of
neutralizing parasites in animals, the identity of result does not amount to infringement. The principle or mode of
operation must be the same or substantially the same. Smith Kline has the burden to show that it satisfies the
function-means-and-result-test required by the doctrine of equivalents. Nothing has been substantiated on how
Albendazole can weed the parasites out from animals which is similar to the manner used by the petitioner in using
their own patented chemical compound.
As to the divisional applications by Smith Kline, 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 methyl 5 propylthio-2-benzimidazole 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.