THIRD DIVISION

G.R. No. 97343 September 13, 1993

PASCUAL GODINES, petitioner, vs.
THE HONORABLE COURT OF APPEALS, SPECIAL FOURTH
DIVISION and SV-AGRO ENTERPRISES, INC.,respondents.
Jesus S. Anonat for petitioner.
Arturo M. Alinio for private respondent.
ROMERO, J.:
Through this petition for review in certiorari of a decision of the
Court of Appeals affirming the decision of the trial court,
petitioner Pascual Godines seeks to reverse the adverse
decision of the Court a quo that he was liable for infringement
of patent and unfair competition. The dispositive portion of the
assailed decision is hereby quoted to wit:
WHEREFORE, with the elimination of the award for attorney's
fees, the judgment appealed from is hereby AFFIRMED, with
costs against appellant. 1
The patent involved in this case is Letters Patent No. UM-2236
issued by the Philippine Patent Office to one Magdalena S.
Villaruz on July 15, 1976. It covers a utility model for a hand
tractor or power tiller, the main components of which are the
following: "(1) a vacuumatic house float; (2) a harrow with
adjustable operating handle; (3) a pair of paddy wheels; (4) a
protective water covering for the engine main drive; (5) a
transmission case; (6) an operating handle; (7) an engine
foundation on the top midportion of the vacuumatic housing
float to which the main engine drive is detachedly installed; (8)
a frontal frame extension above the quarter circularly
shaped water covering hold (sic) in place the transmission
case; (9) a V-belt connection to the engine main drive with

transmission gear through the pulley, and (10) an idler pulley

installed on the engine foundation." 2 The patented hand
tractor works in the following manner: "the engine drives the
transmission gear thru the V-belt, a driven pulley and a
transmission shaft. The engine drives the transmission gear by
tensioning of the V-belt which is controlled by the idler pulley.
The V-belt drives the pulley attached to the transmission gear
which in turn drives the shaft where the paddy wheels are
attached. The operator handles the hand tractor through a
handle which is inclined upwardly and supported by a pair of
substanding pipes and reinforced by a U-shaped G.I. pipe at
the V-shaped end." 3
The above mentioned patent was acquired by SV-Agro
Industries Enterprises, Inc., herein private respondent, from
Magdalena Villaruz, its chairman and president, by virtue of a
Deed of Assignment executed by the latter in its favor. On
October 31, 1979, SV-Agro Industries caused the publication
of the patent in Bulletin Today, a newspaper of general
circulation.
In accordance with the patent, private respondent
manufactured and sold the patented power tillers with the
patent imprinted on them. In 1979, SV-Agro Industries
suffered a decline of more than 50% in sales in its Molave,
Zamboanga del Sur branch. Upon investigation, it discovered
that power tillers similar to those patented by private
respondent were being manufactured and sold by petitioner
herein. Consequently, private respondent notified Pascual
Godines about the existing patent and demanded that the
latter stop selling and manufacturing similar power tillers.
Upon petitioner's failure to comply with the demand, SV-Agro
Industries filed before the Regional Trial Court a complaint for
infringement of patent and unfair competition.

After trial, the court held Pascual Godines liable for

infringement of patent and unfair competition. The dispositive
portion of the decision reads as follows:
WHEREFORE, premises considered, JUDGMENT is hereby
rendered in favor of the plaintiff SV-Agro Industries
Enterprises, Inc., and against defendant Pascual Godines:
1. Declaring the writ of preliminary injunction issued by this
Court against defendant as permanent;
2. Ordering defendant Pascual Godines to pay plaintiff the sum
of Fifty Thousand Pesos (P50,000.00) as damages to its
business reputation and goodwill, plus the further sum of
Eighty Thousand Pesos (P80,000.00) for unrealized profits
during the period defendant was manufacturing and selling
copied or imitation floating power tiller;
3. Ordering the defendant to pay the plaintiff, the further sum
of Eight Thousand Pesos (P8,000.00) as reimbursement of
attorney's fees and other expenses of litigation; and to pay the
costs of the suit.
SO ORDERED. 4
The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the
defenses which he raised before the trial and appellate courts,
to wit: that he was not engaged in the manufacture and sale of
the power tillers as he made them only upon the special order
of his customers who gave their own specifications; hence, he
could not be liable for infringement of patent and unfair
competition; and that those made by him were different from
those being manufactured and sold by private respondent.
We find no merit in his arguments. The question of whether
petitioner was manufacturing and selling power tillers is a
question of fact better addressed to the lower courts. In

dismissing the first argument of petitioner herein, the Court of

Appeals quoted the findings of the court, to wit:
It is the contention of defendant that he did not manufacture
or make imitations or copies of plaintiff's turtle power tiller as
what he merely did was to fabricate his floating power tiller
upon specifications and designs of those who ordered them.
However, this contention appears untenable in the light of the
following circumstances: 1) he admits in his Answer that he
has been manufacturing power tillers or hand tractors, selling
and distributing them long before plaintiff started selling its
turtle power tiller in Zamboanga del Sur and Misamis
Occidental, meaning that defendant is principally a
manufacturer of power tillers, not upon specification and
design of buyers, but upon his own specification and design; 2)
it would be unbelievable that defendant would fabricate power
tillers similar to the turtle power tillers of plaintiff upon
specifications of buyers without requiring a job order where the
specification and designs of those ordered are specified. No
document was (sic) ever been presented showing such job
orders, and it is rather unusual for defendant to manufacture
something without the specification and designs, considering
that he is an engineer by profession and proprietor of the
Ozamis Engineering shop. On the other hand, it is also highly
unusual for buyers to order the fabrication of a power tiller or
hand tractor and allow defendant to manufacture them merely
based on their verbal instructions. This is contrary to the
usual business and manufacturing practice. This is not only
time consuming, but costly because it involves a trial and error
method, repeat jobs and material wastage. Defendant judicially
admitted two (2) units of the turtle power tiller sold by him to
Policarpio Berondo. 5
Of general acceptance is the rule imbedded in our
jurisprudence that ". . . the jurisdiction of the Supreme Court
in cases brought to it from the Court of Appeals in a petition
for certiorari under Rule 45 of the Rules of Court is limited to

the review of errors of law, and that said appellate court's

findings of fact are conclusive upon this Court." 6
The fact that petitioner herein manufactured and sold power
tillers without patentee's authority has been established by the
courts despite petitioner's claims to the contrary.
The question now arises: Did petitioner's product infringe upon
the patent of private respondent?
Tests have been established to determine infringement. These
are (a) literal infringement; and (b) the doctrine of
equivalents. 7 In using literal infringement as a test, ". . . resort
must be had, in the first instance, to the words of the claim. If
accused matter clearly falls within the claim, infringement is
made out and that is the end of it." 8 To determine whether the
particular item falls within the literal meaning of the patent
claims, the court must juxtapose the claims of the patent and
the accused product within the overall context of the claims
and specifications, to determine whether there is exact identity
of all material elements. 9
The trial court made the following observation:
Samples of the defendant's floating power tiller have been
produced and inspected by the court and compared with that
of the turtle power tiller of the plaintiff (see Exhibits H to H28). In appearance and form, both the floating power tillers of
the defendant and the turtle power tiller of the plaintiff are
virtually the same. Defendant admitted to the Court that two
(2) of the power inspected on March 12, 1984, were
manufactured and sold by him (see TSN, March 12, 1984, p.
7). The three power tillers were placed alongside with each
other. At the center was the turtle power tiller of plaintiff, and
on both sides thereof were the floating power tillers of
defendant (Exhibits H to H-2). Witness Rodrigo took
photographs of the same power tillers (front, side, top and back

views for purposes of comparison (see Exhibits H-4 to H-28).

Viewed from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle power
tiller of plaintiff in form, configuration, design and appearance.
The parts or components thereof are virtually the same. Both
have the circularly-shaped vacuumatic housing float, a paddy
in front, a protective water covering, a transmission box
housing the transmission gears, a handle which is V-shaped
and inclined upwardly, attached to the side of the vacuumatic
housing float and supported by the upstanding G.I. pipes and
an engine base at the top midportion of the vacuumatic
housing float to which the engine drive may be attached. In
operation, the floating power tiller of the defendant operates
also in similar manner as the turtle power tiller of plaintiff.
This was admitted by the defendant himself in court that they
are operating on the same principles. (TSN, August 19, 1987,
p. 13) 10
Moreover, it is also observed that petitioner also called his
power tiller as a floating power tiller. The patent issued by the
Patent Office referred to a "farm implement but more
particularly to a turtle hand tractor having a vacuumatic
housing float on which the engine drive is held in place, the
operating handle, the harrow housing with its operating handle
and the paddy wheel protective covering." 11 It appears from the
foregoing observation of the trial court that these claims of the
patent and the features of the patented utility model were
copied by petitioner. We are compelled to arrive at no other
conclusion but that there was infringement.
Petitioner's argument that his power tillers were different from
private respondent's is that of a drowning man clutching at
straws.
Recognizing that the logical fallback position of one in the
place of defendant is to aver that his product is different from
the patented one, courts have adopted the doctrine of

equivalents which recognizes that minor modifications in a

patented invention are sufficient to put the item beyond the
scope of literal infringement. 12 Thus, according to this
doctrine, "(a)n infringement also occurs when a device
appropriates a prior invention by incorporating its innovative
concept and, albeit with some modification and change,
performs substantially the same function in substantially the
same way to achieve substantially the same result." 13 The
reason for the doctrine of equivalents is that to permit the
imitation of a patented invention which does not copy any
literal detail would be to convert the protection of the patent
grant into a hollow and useless thing. Such imitation would
leave room for indeed encourage the unscrupulous
copyist to make unimportant and insubstantial changes and
substitutions in the patent which, though adding nothing,
would be enough to take the copied matter outside the claim,
and hence outside the reach of the law. 14
In this case, the trial court observed:
Defendant's witness Eduardo Caete, employed for 11 years as
welder of the Ozamis Engineering, and therefore actually
involved in the making of the floating power tillers of defendant
tried to explain the difference between the floating power tillers
made by the defendant. But a careful examination between the
two power tillers will show that they will operate on the same
fundamental principles. And, according to establish
jurisprudence, in infringement of patent, similarities or
differences are to be determined, not by the names of things,
but in the light of what elements do, and substantial, rather
than technical, identity in the test. More specifically, it is
necessary and sufficient to constitute equivalency that the
same function can be performed in substantially the same way
or manner, or by the same or substantially the same, principle
or mode of operation; but where these tests are satisfied, mere
differences of form or name are immaterial. . . . 15

It also stated:
To establish an infringement, it is not essential to show that
the defendant adopted the device or process in every
particular; Proof of an adoption of the substance of the thing
will be sufficient. "In one sense," said Justice Brown, "it may be
said that no device can be adjudged an infringement that does
not substantially correspond with the patent. But another
construction, which would limit these words to exact
mechanism described in the patent, would be so obviously
unjust that no court could be expected to adopt it. . . .
The law will protect a patentee against imitation of his patent
by other forms and proportions. If two devices do the same
work in substantially the same way, and accomplish
substantially the same result, they are the same, even though
they differ in name, form, or shape. 16
We pronounce petitioner liable for infringement in accordance
with Section 37 of Republic Act No. 165, as amended,
providing, inter alia:
Sec. 37. Right of Patentees. A 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 terms of the patent; and such making,
using, or selling by any person without the authorization of the
Patentee constitutes infringement of the patent. (Emphasis ours)
As far as the issue regarding unfair competition is concerned,
suffice it to say that Republic Act No. 166, as amended,
provides, inter alia:
Sec. 29. Unfair competition, rights and remedies. . . .
xxx xxx xxx

In particular, and without in any way limiting the scope of

unfair competition, the following shall be deemed guilty of
unfair competition:
(a) Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which
would be likely to influence purchasers that the goods offered
are those of a manufacturer or dealer other than the actual
manufacturer or dealer, or who otherwise clothes the goods
with such appearance as shall deceive the public and defraud
another of his legitimate trade. . . .
xxx xxx xxx
Considering the foregoing, we find no reversible error in the
decision of the Court of Appeals affirming with modification
the decision of the trial court.
WHEREFORE, premises considered, the decision of the Court
of Appeals is hereby AFFIRMED and this petition DENIED for
lack of merit.

THIRD DIVISION
G. R. No. 126627

August 14, 2003

SMITH KLINE BECKMAN CORPORATION, Petitioner,

vs.
THE HONORABLE COURT OF APPEALS and TRYCO
PHARMA CORPORATION, Respondents.
DECISION
CARPIO-MORALES, J.:
Smith Kline Beckman Corporation (petitioner), a corporation
existing by virtue of the laws of the state of Pennsylvania,
United States of America (U.S.) and licensed to do business in
the Philippines, filed on October 8, 1976, as assignee, before
the Philippine Patent Office (now Bureau of Patents,
Trademarks and Technology Transfer) an application for patent
over an invention entitled "Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5
Propylthio-2-Benzimidazole Carbamate." The application bore
Serial No. 18989.
On September 24, 1981, Letters Patent No. 145611 for the
aforesaid invention was issued to petitioner for a term of
seventeen (17) years.
The letters patent provides in its claims2 that the patented
invention consisted of a new compound named methyl 5
propylthio-2-benzimidazole carbamate and the methods or
compositions utilizing the compound as an active ingredient in
fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats,
horses, and even pet animals.

Tryco Pharma Corporation (private respondent) is a domestic

corporation that manufactures, distributes and sells veterinary
products including Impregon, a drug that has Albendazole for
its active ingredient and is claimed to be effective against
gastro-intestinal roundworms, lungworms, tapeworms and
fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent
and unfair competition before the Caloocan City Regional Trial
Court (RTC).3 It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and used
the drug Impregon without its authorization, infringed Claims
2, 3, 4, 7, 8 and 9 of Letters Patent No. 145614 as well as
committed unfair competition under Article 189, paragraph 1
of the Revised Penal Code and Section 29 of Republic Act No.
166 (The Trademark Law) for advertising and selling as its own
the drug Impregon although the same contained petitioners
patented Albendazole.5
On motion of petitioner, Branch 125 of the Caloocan RTC
issued a temporary restraining order against private
respondent enjoining it from committing acts of patent
infringement and unfair competition.6 A writ of preliminary
injunction was subsequently issued.7
Private respondent in its Answer8 averred that Letters Patent
No. 14561 does not cover the substance Albendazole for
nowhere in it does that word appear; that even if the patent
were to include Albendazole, such substance is unpatentable;
that the Bureau of Food and Drugs allowed it to manufacture
and market Impregon with Albendazole as its known
ingredient; that there is no proof that it passed off in any way
its veterinary products as those of petitioner; that Letters
Patent No. 14561 is null and void, the application for the
issuance thereof having been filed beyond the one year period
from the filing of an application abroad for the same invention

covered thereby, in violation of Section 15 of Republic Act No.

165 (The Patent Law); and that petitioner is not the registered
patent holder.
Private respondent lodged a Counterclaim against petitioner for
such amount of actual damages as may be
proven; P1,000,000.00 in moral damages; P300,000.00 in
exemplary damages; and P150,000.00 in attorneys fees.
Finding for private respondent, the trial court rendered a
Decision dated July 23, 1991,9 the dispositive portion of which
reads:
WHEREFORE, in view of the foregoing, plaintiffs complaint
should be, as it is hereby, DISMISSED. The Writ of injunction
issued in connection with the case is hereby ordered
DISSOLVED.
The Letters Patent No. 14561 issued by the then Philippine
Patents Office is hereby declared null and void for being in
violation of Sections 7, 9 and 15 of the Patents Law.
Pursuant to Sec. 46 of the Patents Law, the Director of Bureau
of Patents is hereby directed to cancel Letters Patent No.
14561 issued to the plaintiff and to publish such cancellation
in the Official Gazette.
Defendant Tryco Pharmaceutical Corporation is hereby
awarded P330,000.00 actual damages and P100,000.00
attorneys fees as prayed for in its counterclaim but said
amount awarded to defendant is subject to the lien on correct
payment of filing fees.
SO ORDERED. (Underscoring supplied)
On appeal, the Court of Appeals, by Decision of April 21,
1995,10 upheld the trial courts finding that private respondent
was not liable for any infringement of the patent of petitioner in
light of the latters failure to show that Albendazole is the same

as the compound subject of Letters Patent No. 14561. Noting

petitioners admission of the issuance by the U.S. of a patent
for Albendazole in the name of Smith Kline and French
Laboratories which was petitioners former corporate name, the
appellate court considered the U.S. patent as implying that
Albendazole is different from methyl 5 propylthio-2benzimidazole carbamate. It likewise found that private
respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
The appellate court, however, declared that Letters Patent No.
14561 was not void as it sustained petitioners explanation that
Patent Application Serial No. 18989 which was filed on October
8, 1976 was a divisional application of Patent Application
Serial No. 17280 filed on June 17, 1975 with the Philippine
Patent Office, well within one year from petitioners filing on
June 19, 1974 of its Foreign Application Priority Data No.
480,646 in the U.S. covering the same compound subject of
Patent Application Serial No. 17280.
Applying Section 17 of the Patent Law, the Court of Appeals
thus ruled that Patent Application Serial No. 18989 was
deemed filed on June 17, 1995 or still within one year from the
filing of a patent application abroad in compliance with the
one-year rule under Section 15 of the Patent Law. And it
rejected the submission that the compound in Letters Patent
No. 14561 was not patentable, citing the jurisprudentially
established presumption that the Patent Offices determination
of patentability is correct. Finally, it ruled that petitioner
established itself to be the one and the same assignee of the
patent notwithstanding changes in its corporate name. Thus
the appellate court disposed:
WHEREFORE, the judgment appealed from is AFFIRMED with
the MODIFICATION that the orders for the nullification of
Letters Patent No. 14561 and for its cancellation are deleted
therefrom.

SO ORDERED.
Petitioners motion for reconsideration of the Court of Appeals
decision having been denied11 the present petition for review on
certiorari12 was filed, assigning as errors the following:
I. THE COURT OF APPEALS GRAVELY ERRED IN NOT
FINDING THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN
TRYCOS "IMPREGON" DRUG, IS INCLUDED IN PETITIONERS
LETTERS PATENT NO. 14561, AND THAT CONSEQUENTLY
TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING
TO PRIVATE RESPONDENT TRYCO PHARMA CORPORATION
P330,000.00 ACTUAL DAMAGES AND P100,000.00
ATTORNEYS FEES.
Petitioner argues that under the doctrine of equivalents for
determining patent infringement, Albendazole, the active
ingredient it alleges was appropriated by private respondent for
its drug Impregon, is substantially the same as methyl 5
propylthio-2-benzimidazole carbamate covered by its patent
since both of them are meant to combat worm or parasite
infestation in animals. It cites the "unrebutted" testimony of its
witness Dr. Godofredo C. Orinion (Dr. Orinion) that the
chemical formula in Letters Patent No. 14561 refers to the
compound Albendazole. Petitioner adds that the two
substances substantially do the same function in substantially
the same way to achieve the same results, thereby making
them truly identical. Petitioner thus submits that the appellate
court should have gone beyond the literal wordings used in
Letters Patent No. 14561, beyond merely applying the literal
infringement test, for in spite of the fact that the word
Albendazole does not appear in petitioners letters patent, it
has ably shown by evidence its sameness with methyl 5
propylthio-2-benzimidazole carbamate.

Petitioner likewise points out that its application with the

Philippine Patent Office on account of which it was granted
Letters Patent No. 14561 was merely a divisional application of
a prior application in the U. S. which granted a patent for
Albendazole. Hence, petitioner concludes that both methyl 5
propylthio-2-benzimidazole carbamate and the U.S.-patented
Albendazole are dependent on each other and mutually
contribute to produce a single result, thereby making
Albendazole as much a part of Letters Patent No. 14561 as the
other substance is.
Petitioner concedes in its Sur-Rejoinder that although methyl
5 propylthio-2-benzimidazole carbamate is not identical with
Albendazole, the former is an improvement or improved version
of the latter thereby making both substances still substantially
the same.
13

With respect to the award of actual damages in favor of private

respondent in the amount of P330,000.00 representing lost
profits, petitioner assails the same as highly speculative and
conjectural, hence, without basis. It assails too the award
of P100,000.00 in attorneys fees as not falling under any of the
instances enumerated by law where recovery of attorneys fees
is allowed.
In its Comment,14 private respondent contends that application
of the doctrine of equivalents would not alter the outcome of
the case, Albendazole and methyl 5 propylthio-2-benzimidazole
carbamate being two different compounds with different
chemical and physical properties. It stresses that the existence
of a separate U.S. patent for Albendazole indicates that the
same and the compound in Letters Patent No. 14561 are
different from each other; and that since it was on account of a
divisional application that the patent for methyl 5 propylthio-2benzimidazole carbamate was issued, then, by definition of a
divisional application, such a compound is just one of several

independent inventions alongside Albendazole under

petitioners original patent application.
As has repeatedly been held, only questions of law may be
raised in a petition for review on certiorari before this Court.
Unless the factual findings of the appellate court are mistaken,
absurd, speculative, conjectural, conflicting, tainted with grave
abuse of discretion, or contrary to the findings culled by the
court of origin,15 this Court does not review them.
From an examination of the evidence on record, this Court
finds nothing infirm in the appellate courts conclusions with
respect to the principal issue of whether private respondent
committed patent infringement to the prejudice of petitioner.
The burden of proof to substantiate a charge for patent
infringement rests on the plaintiff.16 In the case at bar,
petitioners 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. All that the claims disclose are: the
covered invention, that is, the compound methyl 5 propylthio2-benzimidazole carbamate; the compounds being
anthelmintic but nontoxic for animals or its ability to destroy
parasites without harming the host animals; and the patented
methods, compositions or preparations involving the
compound to maximize its efficacy against certain kinds of
parasites infecting specified animals.
When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything beyond
them.17 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.18
It bears stressing that the mere absence of the word
Albendazole in Letters Patent No. 14561 is not determinative of
Albendazoles 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 petitioners 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 petitioners
patent in spite of its omission therefrom or that the meaning of
the claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its
patent cannot establish private respondents infringement, it
urges this 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.19 Yet again, a scrutiny of petitioners evidence
fails to convince this Court of the substantial sameness of
petitioners 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.20 In other words, the principle or
mode of operation must be the same or substantially the
same.21

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.22
As stated early on, petitioners evidence fails to explain how
Albendazole is in every essential detail identical to methyl 5
propylthio-2-benzimidazole carbamate. Apart from the fact that
Albendazole is an anthelmintic agent like methyl 5 propylthio2-benzimidazole carbamate, nothing more is asserted and
accordingly substantiated regarding the method or means by
which Albendazole weeds out parasites in animals, thus giving
no information on whether that method is substantially the
same as the manner by which petitioners compound works.
The testimony of Dr. Orinion lends no support to petitioners
cause, he not having been presented or qualified as an expert
witness who has the knowledge or expertise on the matter of
chemical compounds.
As for the concept of divisional applications proffered by
petitioner, 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.23 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."24 What this only means is that
petitioners 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-2benzimidazole 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.
The foregoing discussions notwithstanding, this Court does not
sustain the award of actual damages and attorneys fees in

favor of private respondent. The claimed actual damages

of P330,000.00 representing lost profits or revenues incurred
by private respondent as a result of the issuance of the
injunction against it, computed at the rate of 30% of its
alleged P100,000.00 monthly gross sales for eleven months,
were supported by the testimonies of private respondents
President25 and Executive Vice-President that the average
monthly sale of Impregon was P100,000.00 and that sales
plummeted to zero after the issuance of the injunction.26 While
indemnification for actual or compensatory damages covers not
only the loss suffered (damnum emergens) but also profits
which the obligee failed to obtain (lucrum cessans or ganacias
frustradas), it is necessary to prove the actual amount of
damages with a reasonable degree of certainty based on
competent proof and on the best evidence obtainable by the
injured party.27 The testimonies of private respondents officers
are not the competent proof or best evidence obtainable to
establish its right to actual or compensatory damages for such
damages also require presentation of documentary evidence to
substantiate a claim therefor.28
In the same vein, this Court does not sustain the grant by the
appellate court of attorneys fees to private respondent
anchored on Article 2208 (2) of the Civil Code, private
respondent having been allegedly forced to litigate as a result of
petitioners suit. Even if a claimant is compelled to litigate with
third persons or to incur expenses to protect its rights, still
attorneys fees may not be awarded where no sufficient showing
of bad faith could be reflected in a partys persistence in a case
other than an erroneous conviction of the righteousness of his
cause.29 There exists no evidence on record indicating that
petitioner was moved by malice in suing private respondent.
This Court, however, grants private respondent temperate or
moderate damages in the amount of P20,000.00 which it finds
reasonable under the circumstances, it having suffered some

pecuniary loss the amount of which cannot, from the nature of

the case, be established with certainty.30
WHEREFORE, the assailed decision of the Court of Appeals is
hereby AFFIRMED with MODIFICATION. The award of actual
or compensatory damages and attorneys fees to private
respondent, Tryco Pharma Corporation, is DELETED; instead,
it is hereby awarded the amount of P20,000.00 as temperate or
moderate damages.
SO ORDERED.

claims of this Patent are directed to "a method of increasing the

effectiveness of a beta-lactam antibiotic in a mammalian
subject, which comprises co-administering to said subject a
beta-lactam antibiotic effectiveness increasing amount of a
compound of the formula IA." The scope of the claims of the
Patent extends to a combination of penicillin such as ampicillin
sodium and beta-lactam antibiotic like sulbactam sodium.

SECOND DIVISION
G.R. No. 167715

November 17, 2010

PHIL PHARMAWEALTH, INC., Petitioner,

vs.
PFIZER, INC. and PFIZER (PHIL.) INC., Respondents.
DECISION
PERALTA, J.:
Before the Court is a petition for review on certiorari seeking to
annul and set aside the Resolutions dated January 18,
20051 and April 11, 20052 by the Court of Appeals (CA) in CAG.R. SP No. 82734.
The instant case arose from a Complaint3 for patent
infringement filed against petitioner Phil Pharmawealth, Inc. by
respondent companies, Pfizer, Inc. and Pfizer (Phil.), Inc., with
the Bureau of Legal Affairs of the Intellectual Property Office
(BLA-IPO). The Complaint alleged as follows:
xxxx
6. Pfizer is the registered owner of Philippine Letters Patent No.
21116 (the "Patent") which was issued by this Honorable Office
on July 16, 1987. The patent is valid until July 16, 2004. The

7. Patent No. 21116 thus covers ampicillin sodium/sulbactam

sodium (hereafter "Sulbactam Ampicillin"). Ampicillin sodium
is a specific example of the broad beta-lactam antibiotic
disclosed and claimed in the Patent. It is the compound which
efficacy is being enhanced by co-administering the same with
sulbactam sodium. Sulbactam sodium, on the other hand, is a
specific compound of the formula IA disclosed and claimed in
the Patent.
8. Pfizer is marketing Sulbactam Ampicillin under the brand
name "Unasyn." Pfizer's "Unasyn" products, which come in oral
and IV formulas, are covered by Certificates of Product
Registration ("CPR") issued by the Bureau of Food and Drugs
("BFAD") under the name of complainants. The sole and
exclusive distributor of "Unasyn" products in the Philippines is
Zuellig Pharma Corporation, pursuant to a Distribution
Services Agreement it executed with Pfizer Phils. on January
23, 2001.
9. Sometime in January and February 2003, complainants
came to know that respondent [herein petitioner] submitted
bids for the supply of Sulbactam Ampicillin to several hospitals
without the consent of complainants and in violation of the
complainants' intellectual property rights. x x x
xxxx
10. Complainants thus wrote the above hospitals and
demanded that the latter immediately cease and desist from
accepting bids for the supply [of] Sulbactam Ampicillin or

awarding the same to entities other than complainants.

Complainants, in the same letters sent through undersigned
counsel, also demanded that respondent immediately withdraw
its bids to supply Sulbactam Ampicillin.

Resolutions of the BLA-IPO. Respondents also prayed for the

issuance of a preliminary mandatory injunction for the
reinstatement and extension of the writ of preliminary
injunction issued by the BLA-IPO.

11. In gross and evident bad faith, respondent and the

hospitals named in paragraph 9 hereof, willfully ignored
complainants' just, plain and valid demands, refused to comply
therewith and continued to infringe the Patent, all to the
damage and prejudice of complainants. As registered owner of
the Patent, Pfizer is entitled to protection under Section 76 of
the IP Code.

While the case was pending before the CA, respondents filed a
Complaint9 with the Regional Trial Court (RTC) of Makati City
for infringement and unfair competition with damages against
herein petitioner. In said case, respondents prayed for the
issuance of a temporary restraining order and preliminary
injunction to prevent herein petitioner from importing,
distributing, selling or offering for sale sulbactam ampicillin
products to any entity in the Philippines. Respondents asked
the trial court that, after trial, judgment be rendered awarding
damages in their favor and making the injunction permanent.

x x x x4
Respondents prayed for permanent injunction, damages and
the forfeiture and impounding of the alleged infringing
products. They also asked for the issuance of a temporary
restraining order and a preliminary injunction that would
prevent herein petitioner, its agents, representatives and
assigns, from importing, distributing, selling or offering the
subject product for sale to any entity in the Philippines.
In an Order5 dated July 15, 2003 the BLA-IPO issued a
preliminary injunction which was effective for ninety days from
petitioner's receipt of the said Order.
Prior to the expiration of the ninety-day period, respondents
filed a Motion for Extension of Writ of Preliminary
Injunction6 which, however, was denied by the BLA-IPO in an
Order7 dated October 15, 2003.
Respondents filed a Motion for Reconsideration but the same
was also denied by the BLA-IPO in a Resolution8dated January
23, 2004.
Respondents then filed a special civil action for certiorari with
the CA assailing the October 15, 2003 and January 23, 2004

On August 24, 2004, the RTC of Makati City issued an

Order10 directing the issuance of a temporary restraining order
conditioned upon respondents' filing of a bond.
In a subsequent Order11 dated April 6, 2005, the same RTC
directed the issuance of a writ of preliminary injunction
"prohibiting and restraining [petitioner], its agents,
representatives and assigns from importing, distributing or
selling Sulbactam Ampicillin products to any entity in the
Philippines."
Meanwhile, on November 16, 2004, petitioner filed a Motion to
Dismiss12 the petition filed with the CA on the ground of forum
shopping, contending that the case filed with the RTC has the
same objective as the petition filed with the CA, which is to
obtain an injunction prohibiting petitioner from importing,
distributing and selling Sulbactam Ampicillin products.
On January 18, 2005, the CA issued its questioned
Resolution13 approving the bond posted by respondents
pursuant to the Resolution issued by the appellate court on
March 23, 2004 which directed the issuance of a temporary

restraining order conditioned upon the filing of a bond. On

even date, the CA issued a temporary restraining order 14 which
prohibited petitioner "from importing, distributing, selling or
offering for sale Sulbactam Ampicillin products to any hospital
or to any other entity in the Philippines, or from infringing
Pfizer Inc.'s Philippine Patent No. 21116 and impounding all
the sales invoices and other documents evidencing sales by
[petitioner] of Sulbactam Ampicillin products."

In the first issue raised, petitioner argues that respondents'

exclusive right to monopolize the subject matter of the patent
exists only within the term of the patent. Petitioner claims that
since respondents' patent expired on July 16, 2004, the latter
no longer possess any right of monopoly and, as such, there is
no more basis for the issuance of a restraining order or
injunction against petitioner insofar as the disputed patent is
concerned.

On February 7, 2005, petitioner again filed a Motion to

Dismiss15 the case for being moot and academic, contending
that respondents' patent had already lapsed. In the same
manner, petitioner also moved for the reconsideration of the
temporary restraining order issued by the CA on the same
basis that the patent right sought to be protected has been
extinguished due to the lapse of the patent license and on the
ground that the CA has no jurisdiction to review the order of
the BLA-IPO as said jurisdiction is vested by law in the Office
of the Director General of the IPO.

The Court agrees.

On April 11, 2005, the CA rendered its presently assailed

Resolution denying the Motion to Dismiss, dated November 16,
2004, and the motion for reconsideration, as well as Motion to
Dismiss, both dated February 7, 2005.
Hence, the present petition raising the following issues:
a) Can an injunctive relief be issued based on an action of
patent infringement when the patent allegedly infringed has
already lapsed?
b) What tribunal has jurisdiction to review the decisions of the
Director of Legal Affairs of the Intellectual Property Office?
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?16

Section 37 of Republic Act No. (RA) 165,17 which was the

governing law at the time of the issuance of respondents'
patent, provides:
Section 37. Rights of patentees. A 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.18
It is clear from the above-quoted provision of law that the
exclusive right of a patentee to make, use and sell a patented
product, article or process exists only during the term of the
patent. In the instant case, Philippine Letters Patent No.
21116, which was the basis of respondents in filing their
complaint with the BLA-IPO, was issued on July 16, 1987.
This fact was admitted by respondents themselves in their
complaint. They also admitted that the validity of the said
patent is until July 16, 2004, which is in conformity with
Section 21 of RA 165, providing that the term of a patent shall
be seventeen (17) years from the date of issuance thereof.
Section 4, Rule 129 of the Rules of Court provides that an
admission, verbal or written, made by a party in the course of
the proceedings in the same case, does not require proof and

that the admission may be contradicted only by showing that it

was made through palpable mistake or that no such admission
was made. In the present case, there is no dispute as to
respondents' admission that the term of their patent expired
on July 16, 2004. Neither is there evidence to show that their
admission was made through palpable mistake. Hence,
contrary to the pronouncement of the CA, there is no longer
any need to present evidence on the issue of expiration of
respondents' patent.
On the basis of the foregoing, the Court agrees with petitioner
that after July 16, 2004, respondents no longer possess the
exclusive right to make, use and sell the articles or products
covered by Philippine Letters Patent No. 21116.
Section 3, Rule 58, of the Rules of Court lays down the
requirements for the issuance of a writ of preliminary
injunction, viz:
(a) That the applicant is entitled to the relief demanded, and
the whole or part of such relief consists in restraining the
commission or continuance of the acts complained of, or in
requiring the performance of an act or acts, either for a limited
period or perpetually;
(b) That the commission, continuance or non-performance of
the act or acts complained of during the litigation would
probably work injustice to the applicant; or
(c) That a party, court, or agency or a person is doing,
threatening, or attempting to do, or is procuring or suffering to
be done, some act or acts probably in violation of the rights of
the applicant respecting the subject of the action or
proceeding, and tending to render the judgment ineffectual.

In this connection, pertinent portions of Section 5, Rule 58 of

the same Rules provide that if the matter is of extreme urgency
and the applicant will suffer grave injustice and irreparable
injury, a temporary restraining order may be issued ex parte.
From the foregoing, it can be inferred that two requisites must
exist to warrant the issuance of an injunctive relief, namely: (1)
the existence of a clear and unmistakable right that must be
protected; and (2) an urgent and paramount necessity for the
writ to prevent serious damage.19
In the instant case, it is clear that when the CA issued its
January 18, 2005 Resolution approving the bond filed by
respondents, the latter no longer had a right that must be
protected, considering that Philippine Letters Patent No. 21116
which was issued to them already expired on July 16, 2004.
Hence, the issuance by the CA of a temporary restraining order
in favor of the respondents is not proper.
In fact, the CA should have granted petitioner's motion to
dismiss the petition for certiorari filed before it as the only
issue raised therein is the propriety of extending the writ of
preliminary injunction issued by the BLA-IPO. Since the patent
which was the basis for issuing the injunction, was no longer
valid, any issue as to the propriety of extending the life of the
injunction was already rendered moot and academic.
As to the second issue raised, the Court, is not persuaded by
petitioner's argument that, pursuant to the doctrine of primary
jurisdiction, the Director General of the IPO and not the CA
has jurisdiction to review the questioned Orders of the Director
of the BLA-IPO.
It is true that under Section 7(b) of RA 8293, otherwise known
as the Intellectual Property Code of the Philippines, which is
the presently prevailing law, the Director General of the IPO
exercises exclusive appellate jurisdiction over all decisions
rendered by the Director of the BLA-IPO. However, what is

being questioned before the CA is not a decision, but an

interlocutory order of the BLA-IPO denying respondents'
motion to extend the life of the preliminary injunction issued in
their favor.
RA 8293 is silent with respect to any remedy available to
litigants who intend to question an interlocutory order issued
by the BLA-IPO. Moreover, Section 1(c), Rule 14 of the Rules
and Regulations on Administrative Complaints for Violation of
Laws Involving Intellectual Property Rights simply provides that
interlocutory orders shall not be appealable. The said Rules
and Regulations do not prescribe a procedure within the
administrative machinery to be followed in assailing orders
issued by the BLA-IPO pending final resolution of a case filed
with them. Hence, in the absence of such a remedy, the
provisions of the Rules of Court shall apply in a suppletory
manner, as provided under Section 3, Rule 1 of the same Rules
and Regulations. Hence, in the present case, respondents
correctly resorted to the filing of a special civil action for
certiorari with the CA to question the assailed Orders of the
BLA-IPO, as they cannot appeal therefrom and they have no
other plain, speedy and adequate remedy in the ordinary
course of law. This is consistent with Sections 120 and 4,21 Rule
65 of the Rules of Court, as amended.
In the first place, respondents' act of filing their complaint
originally with the BLA-IPO is already in consonance with the
doctrine of primary jurisdiction.
This Court has held that:
[i]n cases involving specialized disputes, the practice has been
to refer the same to an administrative agency of special
competence in observance of the doctrine of primary
jurisdiction. The Court has ratiocinated that it cannot or will
not determine a controversy involving a question which is
within the jurisdiction of the administrative tribunal prior to
the resolution of that question by the administrative tribunal,

where the question demands the exercise of sound

administrative discretion requiring the special knowledge,
experience and services of the administrative tribunal to
determine technical and intricate matters of fact, and a
uniformity of ruling is essential to comply with the premises of
the regulatory statute administered. The objective of the
doctrine of primary jurisdiction is to guide a court in
determining whether it should refrain from exercising its
jurisdiction until after an administrative agency has
determined some question or some aspect of some question
arising in the proceeding before the court. It applies where the
claim is originally cognizable in the courts and comes into play
whenever enforcement of the claim requires the resolution of
issues which, under a regulatory scheme, has been placed
within the special competence of an administrative body; in
such case, the judicial process is suspended pending referral of
such issues to the administrative body for its view.22
Based on the foregoing, the Court finds that respondents'
initial filing of their complaint with the BLA-IPO, instead of the
regular courts, is in keeping with the doctrine of primary
jurisdiction owing to the fact that the determination of the
basic issue of whether petitioner violated respondents' patent
rights requires the exercise by the IPO of sound administrative
discretion which is based on the agency's special competence,
knowledge and experience.
However, the propriety of extending the life of the writ of
preliminary injunction issued by the BLA-IPO in the exercise of
its quasi-judicial power is no longer a matter that falls within
the jurisdiction of the said administrative agency, particularly
that of its Director General. The resolution of this issue which
was raised before the CA does not demand the exercise by the
IPO of sound administrative discretion requiring special
knowledge, experience and services in determining technical
and intricate matters of fact. It is settled that one of the
exceptions to the doctrine of primary jurisdiction is where the

question involved is purely legal and will ultimately have to be

decided by the courts of justice.23 This is the case with respect
to the issue raised in the petition filed with the CA.
Moreover, as discussed earlier, RA 8293 and its implementing
rules and regulations do not provide for a procedural remedy to
question interlocutory orders issued by the BLA-IPO. In this
regard, it bears to reiterate that the judicial power of the
courts, as provided for under the Constitution, includes the
authority of the courts to determine in an appropriate action
the validity of the acts of the political departments.24 Judicial
power also includes the duty of the courts of justice to settle
actual controversies involving rights which are legally
demandable and enforceable, and to determine whether or not
there has been a grave abuse of discretion amounting to lack
or excess of jurisdiction on the part of any branch or
instrumentality of the Government.25Hence, the CA, and not
the IPO Director General, has jurisdiction to determine
whether the BLA-IPO committed grave abuse of discretion in
denying respondents' motion to extend the effectivity of the
writ of preliminary injunction which the said office earlier
issued.
Lastly, petitioner avers that respondents are guilty of forum
shopping for having filed separate actions before the IPO and
the RTC praying for the same relief.
The Court agrees.
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.26

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.27
There is no question as to the identity of parties in the
complaints filed with the IPO and the RTC.
Respondents argue that they cannot be held guilty of forum
shopping because their complaints are based on different
causes of action as shown by the fact that the said complaints
are founded on violations of different patents.
The Court is not persuaded.
Section 2, Rule 2 of the Rules of Court defines a cause of
action as the act or omission by which a party violates a right
of another. In the instant case, respondents' cause of action in
their complaint filed with the IPO is the alleged act of petitioner
in importing, distributing, selling or offering for sale Sulbactam
Ampicillin products, acts that are supposedly violative of
respondents' right to the exclusive sale of the said products
which are covered by the latter's patent. However, a careful
reading of the complaint filed with the RTC of Makati City
would show that respondents have the same cause of action as
in their complaint filed with the IPO. They claim that they have
the exclusive right to make, use and sell Sulbactam Ampicillin
products and that petitioner violated this right. Thus, it does
not matter that the patents upon which the complaints were
based are different. The fact remains that in both complaints
the rights violated and the acts violative of such rights are
identical.

In fact, respondents seek substantially the same reliefs in their

separate complaints with the IPO and the RTC for the purpose
of accomplishing the same objective.
It is settled by this Court in several cases that the filing by a
party of two apparently different actions but with the same
objective constitutes forum shopping.28 The Court discussed
this species of forum shopping as follows:
Very simply stated, the original complaint in the court a quo
which gave rise to the instant petition was filed by the buyer
(herein private respondent and his predecessors-in-interest)
against the seller (herein petitioners) to enforce the alleged
perfected sale of real estate. On the other hand, the complaint
in the Second Case seeks to declare such purported sale
involving the same real property "as unenforceable as against
the Bank," which is the petitioner herein. In other words, in the
Second Case, the majority stockholders, in representation of
the Bank, are seeking to accomplish what the Bank itself failed
to do in the original case in the trial court. In brief, the
objective or the relief being sought, though worded differently,
is the same, namely, to enable the petitioner Bank to escape
from the obligation to sell the property to respondent.29
In Danville Maritime, Inc. v. Commission on Audit,30 the Court
ruled as follows:
In the attempt to make the two actions appear to be different,
petitioner impleaded different respondents therein PNOC in
the case before the lower court and the COA in the case before
this Court and sought what seems to be different reliefs.
Petitioner asks this Court to set aside the questioned letterdirective of the COA dated October 10, 1988 and to direct said
body to approve the Memorandum of Agreement entered into
by and between the PNOC and petitioner, while in the
complaint before the lower court petitioner seeks to enjoin the
PNOC from conducting a rebidding and from selling to other
parties the vessel "T/T Andres Bonifacio," and for an extension

of time for it to comply with the paragraph 1 of the

memorandum of agreement and damages. One can see that
although the relief prayed for in the two (2) actions are
ostensibly different, the ultimate objective in both actions is
the same, that is, the approval of the sale of vessel in favor of
petitioner, and to overturn the letter directive of the COA of
October 10, 1988 disapproving the sale.31
In the instant case, the prayer of respondents in their
complaint filed with the IPO is as follows:
A. Immediately upon the filing of this action, issue an ex parte
order (a) temporarily restraining respondent, its agents,
representatives and assigns from importing, distributing,
selling or offering for sale Sulbactam Ampicillin products to the
hospitals named in paragraph 9 of this Complaint or to any
other entity in the Philippines, or from otherwise infringing
Pfizer Inc.'s Philippine Patent No. 21116; and (b) impounding
all the sales invoices and other documents evidencing sales by
respondent of Sulbactam Ampicillin products.
B. After hearing, issue a writ of preliminary injunction
enjoining respondent, its agents, representatives and assigns
from importing, distributing, selling or offering for sale
Sulbactam Ampicillin products to the hospitals named in
paragraph 9 of the Complaint or to any other entity in the
Philippines, or from otherwise infringing Pfizer Inc.'s Philippine
Patent No. 21116; and
C. After trial, render judgment:
(i) declaring that respondent has infringed Pfizer Inc.'s
Philippine Patent No. 21116 and that respondent has no right
whatsoever over complainant's patent;
(ii) ordering respondent to pay complainants the following
amounts:

(a) at least P1,000,000.00 as actual damages;

(b) P700,000.00 as attorney's fees and litigation expenses;
(d) P1,000,000.00 as exemplary damages; and
(d) costs of this suit.
(iii) ordering the condemnation, seizure or forfeiture of
respondent's infringing goods or products, wherever they may
be found, including the materials and implements used in the
commission of infringement, to be disposed of in such manner
as may be deemed appropriate by this Honorable Office; and
(iv) making the injunction permanent.32
In an almost identical manner, respondents prayed for the
following in their complaint filed with the RTC:
(a) Immediately upon the filing of this action, issue an ex parte
order:

infringing sulbactam ampicillin products to various

government hospitals or to any other entity in the Philippines,
or from otherwise infringing Patent No. 26810;
(2) impounding all the sales invoices and other documents
evidencing sales by Pharmawealth of sulbactam ampicillin
products; and
(3) disposing of the infringing goods outside the channels of
commerce.
(c) After trial, render judgment:
(1) finding Pharmawealth to have infringed Patent No. 26810
and declaring Pharmawealth to have no right whatsoever over
plaintiff's patent;
(2) ordering Pharmawealth to pay plaintiffs the following
amounts:
(i) at least P3,000,000.00 as actual damages;

(1) temporarily restraining Pharmawealth, its agents,

representatives and assigns from importing, distributing,
selling or offering for sale infringing sulbactam ampicillin
products to various government and private hospitals or to any
other entity in the Philippines, or from otherwise infringing
Pfizer Inc.'s Philippine Patent No. 26810.

(ii) P500,000.00 as attorney's fees and P1,000,000.00 as

litigation expenses;

(2) impounding all the sales invoices and other documents

evidencing sales by pharmawealth of sulbactam ampicillin
products; and
(3) disposing of the infringing goods outside the channels of
commerce.

(3) ordering the condemnation, seizure or forfeiture of

Pharmawealth's infringing goods or products, wherever they
may be found, including the materials and implements used in
the commission of infringement, to be disposed of in such
manner as may be deemed appropriate by this Honorable
Court; and

(b) After hearing, issue a writ of preliminary injunction:

(4) making the injunction permanent.33

(1) enjoining Pharmawealth, its agents, representatives and

assigns from importing, distributing, selling or offering for sale

It is clear from the foregoing that the ultimate objective which

respondents seek to achieve in their separate complaints filed

(iii) P3,000,000.00 as exemplary damages; and

(iv) costs of this suit.

with the RTC and the IPO, is to ask for damages for the alleged
violation of their right to exclusively sell Sulbactam Ampicillin
products and to permanently prevent or prohibit petitioner
from selling said products to any entity. 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.
It bears to reiterate that what is truly important to consider in
determining whether forum shopping exists or not is the
vexation caused the courts and parties-litigant by a party who
asks different courts and/or administrative agencies to rule on
the same or related causes and/or to grant the same or
substantially the same reliefs, in the process creating the
possibility of conflicting decisions being rendered by the
different fora upon the same issue.341avvphi1
Thus, the Court agrees with petitioner that respondents are
indeed guilty of forum shopping.
Jurisprudence holds that if the forum shopping is not
considered willful and deliberate, the subsequent case shall be
dismissed without prejudice, on the ground of either litis
pendentia or res judicata.35 However, if the forum shopping is
willful and deliberate, both (or all, if there are more than two)

actions shall be dismissed with prejudice.36 In the present

case, the Court finds that respondents did not deliberately
violate the rule on non-forum shopping. Respondents may not
be totally blamed for erroneously believing that they can file
separate actions simply on the basis of different patents.
Moreover, in the suit filed with the RTC of Makati City,
respondents were candid enough to inform the trial court of
the pendency of the complaint filed with the BLA-IPO as well
as the petition for certiorari filed with the CA. On these bases,
only Civil Case No. 04-754 should be dismissed on the ground
of litis pendentia.
WHEREFORE, the petition is PARTLY GRANTED. The assailed
Resolutions of the Court of Appeals, dated January 18, 2005
and April 11, 2005, in CA-G.R. No. 82734,
are REVERSED and SET ASIDE. The petition for certiorari
filed with the Court of Appeals is DISMISSED for being moot
and academic.
Civil Case No. 04-754, filed with the Regional Trial Court of
Makati City, Branch 138, is likewise DISMISSED on the
ground of litis pendentia.
SO ORDERED.