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Gina N. Shishima

Head of Intellectual Property, United States

Gina N. Shishima

Austin

T:+1 512 536 3081

New York

T:+1 512 536 3081

Gina enjoys working with her clients to strategize and provide business solutions related to all aspects of patent law—particularly prosecution, post-grant challenges, litigation and due diligence—in the areas of biotechnology, pharmaceuticals, and medical apparatuses. Her clients include public and private life sciences companies, as well as hospitals and universities. Her significant experience includes patent portfolio management and patent counseling, as well as involvement in inter partes reviews (IPR), reexaminations, interferences, and European oppositions. Other experience includes a wide variety of involvement in patent litigation matters and licensing issues. In addition, Gina has experience in patentability opinions, freedom to operate evaluations, intellectual property due diligence, and competitive technology assessments.

In the course of her patent litigation and prosecution work, Gina has worked on a variety of areas in biotechnology and pharmaceutics such as: therapeutics, diagnostics, and prognostics, nucleic acid and protein therapies, small molecule therapies, immunotherapies, virus-based applications, stem cells, therapeutic formulations and delivery systems, vaccine applications, drug screening and drug development platforms, molecular biology reagents, and pharmacogenomics (personalized medicine) in a wide variety of indications (for example, cancer, bacterial and viral infections, genetic diseases, diabetes, neurological disorders, cardiovascular diseases and conditions, mental health conditions, and infertility). In addition, her litigation, due diligence, and prosecution experience extends into the areas of medical devices and apparatuses (including dental technology, cytometry, radiation phantoms, stents, and microfluidics sensor technology).

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  • Education

    1998 - JD, School of Law at University of California, Berkeley
    1995 - PhD, Molecular Biology, Princeton University
    1989 - AB, Biochemistry, Columbia University

    While attending UC Berkeley School of Law, Gina was a member of the California Law Review and an associate editor for the Berkeley Technology Law Journal. She is a member of the Texas and New York bars and admitted to practice in the Western and Eastern Districts of Texas, the Southern and Eastern Districts of New York, and the Court of Appeals for the Federal Circuit. She is registered to practice before the United States Patent and Trademark Office.

     

  • Representative experience

    Patent Prosecution/Post-Grant

    • Lead counsel on Inter Partes Reviews of patent asserted against client in patent litigation, resulting in successful invalidation of allegedly infringed claims.
    • Lead counsel on managing international patent portfolios and prosecuting patent applications on core technology for biopharmaceutical companies
    • Lead counsel on managing international patent portfolios and prosecuting patent applications in area of biotechnology and medical devices for universities and companies
    • Lead counsel on successful appeals before Board of Patent Appeals and Interferences
    • Lead counsel for re-examined patent covering commercial technology in area of pharmacogenomics
    • Co-counsel in patent interference matter involving cancer gene therapy in which other party conceded priority
    • Contributing counsel for patent owner in defending against opposed European patent
    • Contributing counsel in successfully opposing European patents

    Patent Litigation

    • Advising counsel in multiple district court patent cases defending global medical device companies and ceramic manufacturer for hip implants involving patent whose allegedly infringed claims were invalidated in IPRs
    • Co-counsel in two DNA genotyping cases, involving a patent that was concomitantly subject to reexamination, that settled favorably for client after obtaining a temporary restraining order and preliminary injunction in one case and favorable Markman ruling in other
    • Co-counsel in enforcing patents relating to pharmaceutical compositions
    • Co-counsel in patent litigation matter involving DNA technology
    • Co-counsel representing defendant in patent litigation involving communications services
    • Co-counsel in pre-filing investigation for patent infringement action against generic manufacturer in paragraph IV ANDA certification case
    • Associate on several different patent litigation matters involving transgenic corn, computer hardware, and biotechnology enzyme reagent

    Patent Due Diligence

    • Lead counsel for global life sciences/pharmaceutical company in due diligence matters involving biotechnology or chemical compounds 
    • Lead counsel for Fortune 500 company and life science subsidiaries in due diligence matters relating to acquisition of companies in the areas of medical apparatuses or medical tests
    • Lead counsel for international life sciences company doing due diligence related to licensing technology in medical apparatus and biotechnology areas
    • Counsel for due diligence matter in connection with a multibillion dollar acquisition of a biotechnology company
    • Co-counsel for large company in due diligence relating to settlement of patent infringement lawsuit
  • Admissions
    • New York State Bar License
    • Texas State Bar License
    • US Patent & Trademark Attorney
  • Rankings and recognitions
    • 500 Leading Lawyers in America, Lawdragon, 2017
    • Judge David Wellington Chew Award, Asian Pacific Interest Section (APIS) of the State Bar of Texas 22nd Annual APIS Conference, April 7, 2017 
    • Lawyer of the Year, Austin: Patent Law, Best Lawyers, 2017
    • Lawyer of the Year, Austin: Biotechnology Law, Best Lawyers, 2012, 2016, 2018
    • Lawyer of the Year, Austin: Litigation - Patent, Best Lawyers, 2014 
    • The Best Lawyers in America, Best Lawyers, 2007 - 2018
    • Chambers USA, Texas: Intellectual Property, Chambers & Partners, 2014 - 2017
    • Legal 500 US, recommended lawyer, Healthcare: Life Sciences, The Legal 500, 2017
    • IP Star, United States, Texas, New York, Managing Intellectual Property, 2013 - 2017
    • Top 250 Women in IP, Managing Intellectual Property, 2013
    • IAM Patent 1000, Texas: prosecution and Texas: transactions, Intellectual Asset Management, 2013 - 2017
    • Pathfinder, Travis County Women Lawyers Association, 2012 
    • New York Metro Super Lawyer, intellectual property, Thomson Reuters, 2017
    • Texas Super Lawyer, intellectual property, Thomson Reuters, 2012 - 2017
    • 500 New Stars, New Worlds, Lawdragon, 2006
  • Publications
    • Author, "We Can't Do It Without You," Diversity & The Bar, July/August 2016
    • Author, CH. 10, "Recent Developments in Inter Partes Review Proceedings," 29th Annual Advanced Intellectual Property Law Course, State Bar of Texas, Feb. 2016
    • Co-author, "The Effects of New Patent Office Procedures on District Court Strategy," Texas Lawyer, May 20, 2015
    • Roundtable Participant, "Strategic equality," Managing Partner, February 2015
    • "A Targeted Approach to Adding Women Partners," The National Law Journal, December 8, 2014
    • Co-author with Mark Garrett, Sheila Kadura and Thomas Orsak, "US Supreme Court rules isolated DNA is not patent eligible," Norton Rose Fulbright Legal Update, June 18, 2013
    • Co-author with Mark Garrett, Sheila Kadura and Demian Barbas, "U.S. Supreme Court holds that isolated DNA molecules are not patent-eligible, but many cDNA molecules are," Norton Rose Fulbright IP Monitor, June 2013
  • Speaking engagements
    • "Mastering the "Ins and Outs" of Selecting and Authenticating the Best Prior Art References," panelist, American Conference Institute "Post-Grant PTO Proceedings" conference, New York, New York, May 11, 2017 
    • "All Women Created Equal?: From Tokens to Inclusion in Women's Initiatives," panelist, 2017 Women's Power Summit on Law and Leadership, Austin, Texas, April 26, 2017 
    • "Recent Developments in IPR Proceedings," TexasBarCLE "Advanced Intellectual Property Law" course, San Antonio, Texas, February 18, 2016
    • "Reaching the Highest Levels of Law Firm Leadership," panelist, National Asian Pacific American Bar Association (NAPABA) Convention, New Orleans, Louisiana, November 7, 2015
    • "Team Building: Working Together To Implement Sustainable Diversity Practices," panelist, American Conference Institute "Women Leaders in Life Sciences Law" conference, Boston, Massachusetts, July 23, 2015
    • "Mastering the Essentials of New USPTO Post-Grant Proceedings for Effective Use in the Biosimilars Space," panelist, American Conference Institute "U.S. Biosimilars" conference, Munich, Germany, April 20, 2015
    • "Advancing in the Life Sciences Legal Community: Overcoming Implicit Gender Bias and Creating and Sustaining a Robust Network," panelist,  American Conference Institute "Women Leader in EU Life Sciences Law" conference, Munich, Germany, April 22, 2015
    • "From Visible Invisibility to Visibly Successful:  Women of Color Research and Strategies for the Workplace," panelist, National Asian Pacific American Bar Association (NAPABA) Convention, Scottsdale, Arizona, November 7, 2014
    • "Gender, Race, and the Practice of Law," moderator, Texas Minority Counsel Program (TMCP), Austin, Texas, September 4, 2014
    • "Inter Partes Review: A Deeper Dive Into the Good, the Bad and the Unexpected," Norton Rose Fulbright Webinar, April 30, 2014
    • "Patentable Subject Matter: Life Sciences," panelist, Advanced Patent Law Institute, Austin, Texas, November 1, 2013
    • "Putting Your Hands on Patent Prosecution: An Interactive Workshop," panelist, Association of Corporate Counsel Annual Meeting, Los Angeles, California, October 29, 2013
  • Memberships and activities
    • American Intellectual Property Law Association (AIPLA)
    • Austin Intellectual Property Law Association (AIPLA)
    • Judge Yeakel IP Inn of Court
    • National Asian Pacific American Bar Association (NAPABA) Board of Governors, Southwest Regional Governor (2011-2013); Women's Leadership Network Co-Chair (2013-2016); co-chair of Partner Network subcommittee
    • Austin Asian American Bar Association (AAABA), past Council Member
    • State Bar of Texas, Asian Pacific Interest Section (APIS), current Council Member
    • Asian American Bar Association of New York (AABANY)
    • Asian Americans Advancing Justice (AAJC), Board of Directors