Gina Shishima
Chief Strategy and Operations Partner, United States
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Gina previously was the US Head of Intellectual Property at the firm, and prior to that, she led the US IP Transactions and Patent Prosecution practice. She has a Ph.D. in molecular biology, and because of her significant technical background, she greatly enjoys working with her clients in the areas of biotechnology, pharmaceuticals, and medical apparatuses to strategize and provide business solutions related to all aspects of patent law—particularly prosecution, post-grant challenges, litigation and due diligence. Her clients include public and private life sciences companies, as well as hospitals and universities. Her expertise 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 therapeutic and diagnostic areas in biotechnology and pharmaceutics such as: nucleic acid and peptide/protein therapies, antibody- and cell-based immunotherapies, vaccines, gene therapy, virus applications, stem cells, biomarker assays, microbiome applications, small molecule treatments, drug formulations and delivery systems, 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, autoimmune diseases, diabetes, neurological disorders, and cardiovascular diseases and conditions). In addition, her litigation, due diligence, and prosecution experience extends into the areas of medical devices and apparatuses.
Gina is a member of the US Management and the Global Executive Committees.
Professional experience
Collapse allJD, School of Law at University of California, Berkeley, 1998
Ph.D, Molecular Biology, Princeton University, 1995
AB, Biochemistry, Columbia University, 1989
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.
- New York State Bar
- Texas State Bar
- US Patent and Trademark Attorney
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
- National Asian Pacific American Bar Association (NAPABA) Daniel K. Inouye Trailblazer Award, 2021
- Lawdragon 500 Leading Lawyers in America, Lawdragon, Inc., 2017 – 2023
- Lawdragon 500 Leading Litigators in America, Lawdragon, Inc., 2022 - 2024
- Texas Trailblazer, Texas Lawyer, 2020
- 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, Best Lawyers, Austin: Biotechnology Law (2012, 2016, 2018); Patent Law (2017); Litigation, Patent (2014)
- Best Lawyers - Biotechnology and Life Sciences Practice, Litigation – Patent and Patent Law, Best Lawyers, 2007-2024
- Best Lawyers - Litigation – Patent, Best Lawyers, 2007 - 2024
- Best Lawyers - Patent Law, Best Lawyers, 2007 - 2024
- Chambers USA, Texas: Intellectual Property, Chambers and Partners, 2014 – 2023
- Legal 500 US, recommended lawyer, Industry focus - Healthcare: Life Sciences, The Legal 500, 2017 – 2019; 2021
- Legal 500 US, recommended lawyer, Patents: litigation (full coverage), The Legal 500, 2020
- Legal 500 US, recommended lawyer, Education, The Legal 500, 2023
- IP Star, United States, Texas, New York, Managing Intellectual Property, 2013 – 2023
- Top 250 Women in IP, Managing Intellectual Property, 2013
- IAM Patent 1000, Texas: prosecution and Texas: transactions, Intellectual Asset Management, 2013 – 2017; 2020 – 2023
- Pathfinder, Travis County Women Lawyers Association, 2012
- New York Metro Super Lawyer, Intellectual Property, Thomson Reuters, 2017 – 2023
- Texas Super Lawyer, Intellectual property, Thomson Reuters, 2012 – 2023
- 500 New Stars, New Worlds, Lawdragon, 2006
- 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
- Panelist, "Amgen v. Sanofi: Setting the Law on Enablement or Raising More Questions?" American Intellectual Property Law Association (AIPLA) Rapid Response Webinar, June 13, 2023
- Panelist, "The Secrets Behind Setting Compensation in Law Firms," National Asian Pacific American Bar Association (NAPABA) Convention, Las Vegas, Nevada, November 3, 2022
- Panelist, "Section 101 Update," Advanced Patent Law Institute, Austin, Texas, October 20, 2022
- Panelist, "Section 101 Update and Practice Tips," Advanced Patent Law Institute, Austin, Texas, November 5, 2021
- Panelist, "Section 101 Update and Practical Guidance: Bio/Pharma and Software/Business Methods," Advanced Patent Law Institute, Austin, Texas, November 5, 2020
- Panelist, "Practicing IP law: different paths, different perspectives," Texas Intellectual Property Law Journal, Austin, Texas, February 21, 2020
- Panelist, "Section 101 Update and Practical Guidance: Bio/Pharma and Software/Business Methods," Advanced Patent Law Institute, Austin, Texas, November 7, 2019
- Panelist, "Powering Change: Asian American Women in Innovation and Creativity," National Asian Pacific American Bar Association (NAPABA), Austin, Texas, November 8, 2019
- Panelist, "The CRISPR Patent Saga: A Knock Down, Drag Out Fight at the USPTO over the Most Important Biotech Discovery of the Century," Austin Intellectual Property Law Association, Austin, Texas, May 23, 2018
- Panelist, "So You Want To Be on Your Large Law Firm's Executive Management Committee," National Asian Pacific American Bar Association (NAPABA) Convention, Washington, DC, November 3, 2017
- Co-speaker with Tom Owens, "The Ever-Evolving Estoppel Effect of PTAB Decisions," Lextalk Webinar, October 10, 2017
- Panelist, "Mastering the 'Ins and Outs' of Selecting and Authenticating the Best Prior Art References," American Conference Institute "Post-Grant PTO Proceedings" conference, New York, New York, May 11, 2017
- Panelist, "All Women Created Equal?: From Tokens to Inclusion in Women's Initiatives,"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
- Panelist, "Reaching the Highest Levels of Law Firm Leadership," National Asian Pacific American Bar Association (NAPABA) Convention, New Orleans, Louisiana, November 7, 2015
- Panelist, "Team Building: Working Together To Implement Sustainable Diversity Practices," American Conference Institute "Women Leaders in Life Sciences Law" conference, Boston, Massachusetts, July 23, 2015
- Panelist, "Mastering the Essentials of New USPTO Post-Grant Proceedings for Effective Use in the Biosimilars Space," American Conference Institute "U.S. Biosimilars" conference, Munich, Germany, April 20, 2015
- Panelist, "Advancing in the Life Sciences Legal Community: Overcoming Implicit Gender Bias and Creating and Sustaining a Robust Network," American Conference Institute "Women Leader in EU Life Sciences Law" conference, Munich, Germany, April 22, 2015
- Panelist, "From Visible Invisibility to Visibly Successful: Women of Color Research and Strategies for the Workplace," National Asian Pacific American Bar Association (NAPABA) Convention, Scottsdale, Arizona, November 7, 2014
- Moderator, "Gender, Race, and the Practice of Law," 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
- Panelist, "Patentable Subject Matter: Life Sciences," Advanced Patent Law Institute, Austin, Texas, November 1, 2013
- Panelist, "Putting Your Hands on Patent Prosecution: An Interactive Workshop," Association of Corporate Counsel Annual Meeting, Los Angeles, California, October 29, 2013
- Advancing Justice | AAJC, Washington D.C., Board of Directors
- Center for Women in Law (CWIL), Executive Committee
- American Intellectual Property Law Association (AIPLA)
- Austin Intellectual Property Law Association (AIPLA)
- Judge Yeakel IP Inn of Court, past member
- 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 and Awards Committee
- Austin Asian American Bar Association (AAABA), past Council Member
- State Bar of Texas, Asian Pacific Interest Section (APIS), past Council Member