Hirofumi TADA　　Partner, Attorney-at-law

OVERVIEW

Hirofumi Tada is a partner at OHNO & PARTNERS, focusing on patent litigation. He has represented clients in approximately 200 patent cases, including cases before the Supreme Court of Japan and three Grand Panel cases before the Intellectual Property High Court. His practice spans a broad range of technologies, with particular experience in pharmaceuticals and biotechnology, as well as electronics, telecommunications, software, and automotive technologies. He is admitted in Japan and California, received his LL.M. from UC Berkeley School of Law, and gained experience in U.S. patent litigation while at Finnegan, Henderson, Farabow, Garrett & Dunner LLP.

EDUCATION ／WORK EXPERIENCE

WORK EXPERIENCE

EDUCATION

REPRESENTATIVE MATTERS

・Dwango v. FC2 (Supreme Court of Japan, 2025): Successfully represented Dwango and argued the case before the Supreme Court in landmark patent litigation concerning the territorial reach of Japanese patent rights over cross-border digital services. The Court ruled in Dwango’s favor, holding that Japanese patent rights can extend to conduct involving servers outside Japan when the conduct, viewed as a whole, is substantially carried out in Japan.
・Tokai Ika Co., Ltd. v. an Unnamed Individual (IP High Court Grand Panel, 2025): Successfully represented Tokai Ika Co., Ltd., the patentee, on appeal before the Grand Panel of the Intellectual Property High Court. The Grand Panel reversed the first-instance judgment, found patent infringement, and awarded damages, while issuing important rulings on the industrial applicability of inventions involving human-derived materials and the scope of the statutory exemption for medicines compounded by physicians.
・Dwango v. FC2 (IP High Court Grand Panel, 2023): Successfully represented Dwango and argued the appeal before the Grand Panel of the Intellectual Property High Court in patent litigation involving a cross-border network system. The Grand Panel reversed the first-instance judgment, found patent infringement, granted an injunction and awarded damages, holding that the creation of a networked system can constitute “production” in Japan even when the server is located outside Japan.
・Amgen Inc. v. Sanofi K.K. (PCSK9 Antibody Case, IP High Court, 2019): Successfully represented Amgen in patent infringement litigation involving Praluent® (alirocumab), an anti-PCSK9 monoclonal antibody. Obtained the first and, to date, only reported final injunction in Japan against a marketed originator biologic, barring the manufacture, sale, importation and offer for sale of Praluent. The IP High Court affirmed the injunction, which became final after the Supreme Court rejected Sanofi’s appeal and resulted in the withdrawal of Praluent from the Japanese market.
・Debiopharm International S.A. v. Towa Pharmaceutical Co., Ltd. (IP High Court Grand Panel, 2017): Represented Debiopharm in a landmark patent infringement appeal concerning the scope of an extended patent right for an oxaliplatin formulation under Japan’s patent term extension (PTE) regime. The Grand Panel established a framework for determining whether a generic pharmaceutical falls within the scope of the patent during the extended term, including as a product substantially identical to the product covered by the relevant regulatory approval.

PUBLICATIONS

◆Life Sciences & Pharma IP Litigation（Chambers）(2023-2026)

◆The Patent Litigation Review 2025:Japan（IAM）(2024)

◆Asia-Pacific Patent Litigation Review（IAM）(2024)

◆Dwango Intellectual Property High Court En Banc Decision on the Territoriality of Japanese Patent (Korea Institute of Intellectual Property)

◆Global Patent Litigation: Japan (IAM) (2022)

◆A comparison of patent regimes: Japan (Asia Business Law Journal) (2022)

◆Secondary Considerations of U.S. Nonobviousness (Chizai Prism) (2022.10)

◆Risk of U.S. Declaratory Judgment (Chizai Prism) (2022.9)

◆Patent Marking (Chizai Prism) (2022.8)

◆Pro-Patent Trend of Infringement Lawsuits in Japan (Chizai Prism) (2022.7)

◆Joint Inventorship & Ownership of U.S. Patent Rights (Chizai Prism) (2022.6)

◆Divided Infringement of U.S. Patents (Chizai Prism) (2022.5)

◆Territorial Scope of U.S. Patent Rights (Chizai Prism) (2022.3)

◆Patent law development in Japan (Asia Business Law Journal) (2021)

◆Updates on trademark law in Japan (Asia Business Law Journal) (2021)

◆Recent Trend of Pharmaceutical Patent Litigation (Legal Mind) (2020)

ACTIVITIES

◆2016-　Research Fellow of Intellectual Property Research Division of 　　
　Daiichi Tokyo Bar Association
◆2016-　Adviser for Intellectual Property Research Group of Japan　　
　Pharmaceutical Industry Legal Affair Association
◆2021-　California Lawyers Association, Intellectual Property Law Section

PRESENTATIONS

◆Presentation in the Lexology Masterclass regarding Japanese patent litigation in "Trends and developments in patent litigation in APAC" (2026)

◆Appearance and comments on the TV program, World Business Satellite (regarding insecticide spray patent litigation, 2025)

◆Appearance and comments on the TV program, World Business Satellite (regarding CDN provider copyright infringement, 2025)

◆Appearance and comments on the TV program, World Business Satellite (regarding AI inventorship in the DABUS case, 2025)

◆"Patentability of antibody inventions in Japan and the United States" (Japan Pharmaceutical Industry Legal Affairs Association, 2023)

◆“Patents & Disputes of Genome Technologies” (JETRO New York, 2022)

◆“Artificial Intelligence & IP: Patent Race, Patent Eligibility, and Other Issues”(Taiwan Patent Attorneys Association, 2022)

◆"Artificial Intelligence & IP: Eligibility, Ownership, and Enforcement" (AIPPI JAPAN, 2022)

LANGUAGES

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