ROMA DRUG v. RTC. G.R. No. 149907.

April 16, 2009

Roma Drug was raided by the NBI and BFAD and seized several important medicines. It appears that
Roma Drug is one of six drug stores which were raided on or around the same time upon the request of
SmithKline which was the duly registered corporation to distribute such medicines. The medicines of
Roma Drug was purchased directly from abroad and not through SmithKline.

During preliminary investigation, Rodriguez challenged the constitutionality of the law on Special Law
on Counterfeit Drugs (SLCD) regarding the distribution of their medicine that were considered
counterfeit although they only bought it directly and not from SmithKline.

ISSUE: Whether the contention of Roma Drug is correct.

RULING:

Yes. Section 7 of Rep. Act No. 9502 unequivocally grants third persons the right to import drugs or
medicines whose patent were registered in the Philippines by the owner of the product. The unqualified
right of private third parties such as petitioner to import or possess “unregistered imported drugs” in
the Philippines is further confirmed by the “Implementing Rules to Republic Act No. 9502” promulgated
on November 4, 2008.

It may be that Rep. Act No. 9502 did not expressly repeal any provision of the SLCD. However, it is clear
that the SLCO’s classification of “unregistered imported drugs” as “counterfeit drugs,” and of
corresponding criminal penalties therefore are irreconcilably in the imposition conflict with Rep. Act No.
9502 since the latter indubitably grants private third persons the unqualified right to import or
otherwise use such drugs. Where a statute of later date, such as Rep. Act No. 9502, clearly reveals an
intention on the part of the legislature to abrogate a prior act on the subject that intention must be
given effect.

Case Digest: Pharmawealth vs. Pfizer (Patent Infringement) vs. Phil.

Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715,
17 November 2010

Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is marketed under
the brand name “Unasyn.” Sometime in January and February 2003, Pfizer discovered that
Pharmawealth submitted bids for the supply of Sulbactam Ampicillin to several hospitals without the
Pfizer’s consent. Pfizer then demanded that the hospitals cease and desist from accepting such bids.
Pfizer also demanded that Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin.
Pharmawealth and the hospitals ignored the demands.
Pfizer then filed a complaint for patent infringement with a prayer for permanent injunction and
forfeiture of the infringing products. A preliminary injunction effective for 90 days was granted by the
IPO’s Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension filed by Pfizer was
denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial.

While the case was pending in the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) a
complaint for infringement and unfair competition, with a prayer for injunction. The RTC issued a
temporary restraining order, and then a preliminary injunction.

Pharmawealth filed a motion to dismiss the case in the CA, on the ground of forum shopping.
Nevertheless, the CA issued a temporary restraining order. Pharmawealth again filed a motion to
dismiss, alleging that the patent, the main basis of the case, had already lapsed, thus making the case
moot, and that the CA had no jurisdiction to review the order of the IPO-BLA because this was granted
to the Director General. The CA denied all the motions. Pharmawealth filed a petition for review on
Certiorari with the Supreme Court.

Held:

a) Can an injunctive relief be issued based on an action of patent infringement when the patent
allegedly infringed has already lapsed?

a) No. The provision of R.A. 165, from which the Pfizer’s patent was based, clearly states that
"[the] patentee shall have the exclusive right to make, use and sell the patented machine, article
or product, and to use the patented process for the purpose of industry or commerce,
throughout the territory of the Philippines for the term of the patent; and such making, using, or
selling by any person without the authorization of the patentee constitutes infringement of the
patent."

Clearly, the patentee’s exclusive rights exist only during the term of the patent. Since the patent
was registered on 16 July 1987, it expired, in accordance with the provisions of R.A. 165, after 17
years, or 16 July 2004. Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to
make, use, and sell the products covered by their patent. The CA was wrong in issuing a
temporary restraining order after the cut-off date.

b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the
Intellectual Property Office?

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over
decisions of the IPO-BLA. The question in the CA concerns an interlocutory order, and not a
decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding
interlocutory orders of the IPO-BLA, the only remedy available to Pfizer is to apply the Rules and
Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper
remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.
 c) Is there forum shopping when a party files two actions with two seemingly different causes of
action and yet pray for the same relief?

b) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment has
been rendered in one forum, of seeking another (and possibly favorable) opinion in another
forum (other than by appeal or the special civil action of certiorari), or the institution of two (2)
or more actions or proceedings grounded on the same cause on the supposition that one or the
other court would make a favorable disposition.

The elements of forum shopping are: (a) identity of parties, or at least such parties that
represent the same interests in both actions; (b) identity of rights asserted and reliefs prayed
for, the reliefs being founded on the same facts; (c) identity of the two preceding particulars,
such that any judgment rendered in the other action will, regardless of which party is successful,
amount to res judicata in the action under consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights
allegedly violated and the acts allegedly violative of such rights are identical, regardless of
whether the patents on which the complaints were based are different. In both cases, the
ultimate objective of Pfizer was to ask for damages and to permanently prevent Pharmawealth
from selling the contested products. Relevantly, the Supreme Court has decided that the filing of
two actions with the same objective, as in this instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a
decision in one case will necessarily amount to res judicata in the other action.

SMITH KLINE BECKMAN CORPORATION v. COURT OF APPEALS, et al. 409 SCRA

33 (2003)

When the language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them.

Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent Office
Letters Patent No. 14561 over an invented compound entitled “Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate.” Such compound is claimed to be an active ingredient in fighting various parasites in
certain types of domestic and livestock animals. Respondent Tryco Pharma (Tryco) sells veterinary
products including a drug Impregon which contains Albendazole as an active ingredient which
fights against parasites in animals. Petitioner SKBC then filed an action against respondent Tryco
for patent infringement claiming that the patent granted to them includes said Albendazole. In their
defense respondent Tryco alleges that Letters Patent No. 14561 granted to petitioner SKBC does
not include Albendazole for nowhere is such word found in the patent. The Trial Court rendered
its decision in favor of respondent Tryco which was affirmed by the Court of Appeals.
ISSUES:

Whether or not the Court of Appeals erred in not finding that Albendazole is included in petitioners
Letter Pattent No. 14561

HELD:

From an examination of the evidence on record, the Court finds nothing infirm in the appellate
court’s conclusions with respect to the principal issue of whether Tycho Pharma committed patent
infringement to the prejudice of SKBC. The burden of proof to substantiate a charge for patent
infringement rests on the plaintiff. In the case at bar, petitioner’s evidence consists primarily of its
Letters Patent No. 14561, and the testimony of Dr. Orinion, its general manager in the Philippines
for its Animal Health Products Division, by which it sought to show that its patent for the
compound methyl 5 propylthio-2- benzimidazole carbamate also covers the substance
Albendazole. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound Albendazole.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. And so are the courts bound which may not add to or detract from
the claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond
the scope of that which the inventor claimed and the patent office allowed, even if the patentee
may have been entitled to something more than the words it had chosen would include. It bears
stressing that the mere absence of the word Albendazole in Letters Patent No. 14561 is not
determinative of Albendazole’s non-inclusion in the claims of the patent. While Albendazole is
admittedly a chemical compound that exists by a name different from that covered in SKBC’s
letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding
Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in
SKBC’s patent in spite of its omission therefrom or that the meaning of the claims of the patent
embraces the same. While SKBC concedes that the mere literal wordings of its patent cannot
establish Tyco Pharma’s infringement, it urges the Court to apply the doctrine of equivalents.

The doctrine of equivalents provides that an infringement also takes place when a device
appropriates a prior invention by incorporating its innovative concept and, although with some
modification and change, performs substantially the same function in substantially the same way
to achieve substantially the same result. Yet again, a scrutiny of SKBC’s evidence fails to convince
the Court of the substantial sameness of SKBC’s 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. 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.