Gina Shishima
Chief Strategy and Operations Partner, United States
Norton Rose Fulbright US LLP
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Biography
Gina is the US Chief Strategy and Operations Partner, having previously been the US Head of Intellectual Property and the US Head of the IP Transactions and Patent Prosecution practice. She has a PhD in molecular biology that is critical when working with her clients in the areas of biotechnology, pharmaceuticals and medical apparatuses. Gina provides practical and strategic 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 areas of focus include patent portfolio management and patent counseling, as well as involvement in inter partes reviews (IPR), reexaminations, interferences, and European oppositions. Other experience includes support for patent litigation and IP licensing issues. In addition, Gina has experience in patentability opinions, freedom to operate evaluations, intellectual property due diligence and inventorship assessments.
Her patent work involves a wide variety of medical and life science technologies, such as: biomarkers; diagnostic reagents and assays; drug formulation, development and screening; gene editing; gene therapy; immunotherapy and cell-based therapy; microbiomes; pharmacogenomics; reagents; small molecules; and vaccines. These relate to a range of indications such as autoimmune diseases, cancer, cardiovascular, muscular, and neurological diseases and other conditions, and diabetes. Additionally, her litigation, due diligence and prosecution experience includes work on 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
PhD, 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 (USPTO).
- New York State Bar
- Texas State Bar
- US Patent and Trademark Attorney
Patent Prosecution/Post-Grant
- 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, research hospitals, and companies
- Lead counsel on successful appeals before the Patent Trial and Appeals Board (PTAB)
- Lead counsel evaluating inventorship issues
- Lead counsel for re-examined patent covering commercial technology in area of pharmacogenomics
- Lead counsel on inter partes reviews of patent asserted against client in patent litigation, resulting in successful invalidation of allegedly infringed claims.
- Co-counsel in patent interference matter involving cancer gene therapy in which other party conceded priority
Litigation
- Supporting technical counsel during pre-litigation of IP licensing case
- 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
Patent Due Diligence and Opinion Work
- Lead counsel for global life sciences/pharmaceutical company in due diligence matters involving biotechnology, biopharmaceuticals, 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
- Lead counsel on noninfringement and/or invalidity opinions in the areas of biopharmaceuticals, diagnostics, and other areas
- American Bar Association, Margaret Brent Women Lawyers of Achievement Award, 2024
- Lawdragon Legend, 2024
- 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
- 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 – 2024
- Legal 500 US, Recommended Lawyer, Intellectual property: Patents: Prosecution (including re-examination and post-grant proceedings), The Legal 500, 2024
- Legal 500 US, Recommended Lawyer, 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
- AM Patent 1000, Texas: prosecution and Texas: transactions, Intellectual Asset Management, 2013 – 2017; 2020 – 2023
- New York Metro Super Lawyer, Intellectual Property, Thomson Reuters, 2017 – 2023
- Texas Super Lawyer, Intellectual property, Thomson Reuters, 2012 – 2023
- 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
- "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, "Future of the Legal Profession," Fifth Circuit Judicial Conference, Austin, Texas, May 10, 2024
- 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, "The Changing Dynamics of the Legal Workforce," 2022 Women's Power Summit, Austin, Texas, April 7, 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
- 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