PHIL PHARMAWEALTH, INC. vs. PFIZER, INC. and PFIZER (PHIL.) INC.
G.R. No. 167715
November 17, 2010
Petitioner: Phil Pharmawealth, Inc.
Respondents: Pfizer, Inc. And Pfizer (Phil.) Inc.
Ponente: Peralta, J.
FACTS:
1. Pfizer, Inc. and Pfizer (Phil.), Inc. initiated a patent infringement complaint against Phil Pharmawealth, Inc. before the
Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO). The case revolved around Patent No. 21116,
which was registered under Pfizer and was set to expire on July 16, 2004.
2. The patent protected a method for enhancing the efficacy of beta-lactam antibiotics in mammals, particularly by
combining a beta-lactam antibiotic with a specific compound, sulbactam sodium(hereafter "Sulbactam Ampicillin"),
which worked synergistically with ampicillin sodium.
3. Pfizer marketed this Sulbactam Ampicillin under the brand "Unasyn," which was distributed in the Philippines
exclusively by Zuellig Pharma Corporation.
4. In early 2003, Pfizer discovered that Phil Pharmawealth had submitted bids to supply Sulbactam Ampicillin to various
hospitals without Pfizer’s authorization, violating its intellectual property rights.
5. Pfizer sent cease-and-desist letters to these hospitals and Phil Pharmawealth, demanding the withdrawal of the bids,
but Phil Pharmawealth refused to comply, allegedly acting in bad faith.
6. Pfizer sought a permanent injunction, damages, and the impoundment of infringing products. A temporary restraining
order (TRO) and preliminary injunction were also requested to prevent Phil Pharmawealth from distributing, selling, or
offering the drug.
7. On July 15, 2003, the BLA-IPO issued a 90-day preliminary injunction against Phil Pharmawealth. However, a request
for an extension was denied on October 15, 2003. Pfizer's motion for reconsideration was also rejected on January 23,
2004.
8. Pfizer then filed a certiorari petition before the Court of Appeals (CA), challenging the BLA-IPO rulings and seeking a
reinstatement of the injunction.
9. Simultaneously, Pfizer filed a complaint for infringement and unfair competition with damages before the Regional
Trial Court (RTC) of Makati City, also requesting a TRO and preliminary injunction.
10. On August 24, 2004, the RTC granted a TRO, followed by an April 6, 2005 order issuing a preliminary injunction against
Phil Pharmawealth.
11. Meanwhile, on November 16, 2004, Phil Pharmawealth moved to dismiss the CA case, alleging forum shopping due to
the simultaneous filing of cases before the IPO and RTC.
12. The CA, on January 18, 2005, approved Pfizer’s bond for the TRO and issued an order barring Phil Pharmawealth from
distributing Sulbactam Ampicillin.
13. Phil Pharmawealth again moved for dismissal on February 7, 2005, arguing that Pfizer’s patent had expired, rendering
any injunction moot.
14. On April 11, 2005, the CA denied both dismissal motions, prompting Phil Pharmawealth to elevate the matter to the
Supreme Court.
ISSUES:
1. Whether an injunction can be granted in a patent infringement case when the patent has already expired.
2. Whether the Court of Appeals has jurisdiction to review the decisions of the BLA-IPO’s Director of Legal Affairs.
3. Whether Pfizer engaged in forum shopping by filing two cases seeking the same relief.
HELD
1. No. A patentee’s exclusive rights exist only during the patent’s validity period. Since Pfizer’s patent expired on July 16,
2004, it no longer had the right to monopolize the covered product. The Supreme Court agreed with Phil
Pharmawealth that after this date, Pfizer no longer had a clear legal right requiring protection. Since injunctions are
granted only when there is a clear right and urgent necessity, the issuance of a TRO by the CA was improper. The CA
should have dismissed Pfizer’s petition for certiorari, as the matter became moot with the patent’s expiration.
2. Yes. While the Intellectual Property Code grants appellate jurisdiction over BLA-IPO decisions to the IPO’s Director
General, the case before the CA concerned an interlocutory order denying the extension of an injunction, not a final
decision. Since the law does not specify an appeal process for interlocutory orders from the BLA-IPO, a certiorari
petition before the CA was appropriate. Moreover, the doctrine of primary jurisdiction applies, requiring initial
resolution by specialized agencies like the IPO. However, courts retain the authority to review whether a government
agency committed grave abuse of discretion, which justified the CA’s jurisdiction.
3. Yes. Forum shopping occurs when a party files multiple cases with different tribunals, seeking the same relief. Here,
Pfizer filed nearly identical cases with the IPO and the RTC, both aiming to bar Phil Pharmawealth from distributing
Sulbactam Ampicillin. Despite basing the complaints on different patents, the fundamental issue and the relief sought
were the same. The duplication could lead to contradictory rulings, violating legal principles against forum shopping.
Given the identical parties, relief sought, and overlapping claims, the Supreme Court found Pfizer guilty of forum
shopping.
