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Delaware Chief Judge Connolly Credits Ivan Hofmann’s Commercial Success Testimony in a Pharmaceutical Patent Case


Gleason IP was retained by multiple defendants in a patent infringement matter related to Taiho Pharmaceutical Co., Ltd. and Taiho Oncology, Inc.’s Lonsurf® (trifluridine and tipiracil) tablets.  Lonsurf® tablets are a prescription medicine for stomach cancer (sometimes referred to as gastric cancer).

Ivan Hofmann of Gleason IP testified at trial on behalf of the defendants on various issues regarding the purported commercial success of Lonsurf® as a potential objective indicator of nonobviousness of the asserted claim of the patent-in-suit.  In his Opinion, Chief Judge Connolly credited Mr. Hofmann’s testimony, finding that “Lonsurf®’s financial success is not very probative because Taiho’s other patents barred others from commercially testing the features taught in [the asserted claim of the patent-in-suit].”

Judge Connolly indicated that Mr. Hofmann “credibly testified” that another patent created “some economic disincentives for others to pursue a [trifluridine]/tipiracil oral chemotherapy treatment.”  Furthermore, Judge Connolly credited Mr. Hofmann’s testimony that “Taiho’s commercial success evidence also offers limited probative value because Lonsurf® was granted five-year New Chemical Entity exclusivity that did not expire until 2020.”

Judge Connolly also noted that the record did not demonstrate that the marketplace performance of Lonsurf® could be apportioned to the asserted method of treatment claim.  Judge Connolly indicated that his findings were “bolstered” by Mr. Hofmann’s testimony.

Ultimately, Judge Connolly found that the evidence of commercial success put forth by Taiho was entitled to little weight.