K. Shannon Mrksich, Ph.D.

Dr. Mrksich counsels clients regarding long-term patent strategies, including developing and protecting intellectual property rights; analyzing the scope and coverage of patents; identifying patent design-around opportunities; and implementing effective licensing strategies both in the U.S. and internationally.

Shannon attended the California Institute of Technology, where she received her Ph.D. in chemistry. Her thesis studies focused on the design and synthesis of small molecule peptide mimics and their use to study structure activity relationships in N-glycosylation. Shannon has represented clients in the technical areas of pharmaceuticals (including active ingredients, polymorphs, formulations and methods of use), chemistry (compounds, assays and methodology), polymers, genetics (transgenic plants/animals, genetic screening, isolated genes/gene products, embryonic and adult stem cells, novel cell lines), nanotechnology, biologics, microbiology, medical devices and various other technologies in the chemical and biochemical arts. In recent years, Shannon has assisted multiple clients in developing Paragraph IV patent challenges, based on the Hatch-Waxman Act, for bringing generic pharmaceutical products to the U.S. market.

Shannon currently serves as chair of the firm's Biotechnology and Pharmaceutical practice group. She also teaches an LLM class on substantive intellectual property at John Marshall and serves on the board of the Legal Aid Foundation of Metropolitan Chicago.

• American Association of University Women, 1991
• National Institute of Health Predoctoral Research Award, 1989-1992

• Star Scientific, Inc. v. R.J. Reynolds Tobacco Company, No. 2007-1448 (Fed. Cir. 2008). Appeal relating to inequitable conduct and indefiniteness.
• KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727 (Apr. 30, 2007). Represented Chemistry and Bioengineering Professors as amici curiae in support of Respondents and supporting the "teaching-suggestion-motivation test" (TSM test) for obviousness. The Court reversed, holding that the TSM test was a "helpful insight," rather than a rigid rule, and imposed a flexible standard when applying the law to the facts on obviousness.
• Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (SD. MD), Civil Action Nos. AW 01-CV-1504 and AW 01-CV-2504. Consolidated patent infringement cases relating to methods for treating tobacco to yield low nitrosamine products.
• Crown Cork & Seal Technologies Corporation v. Continental PET Technologies, Inc. (D. Del), Civil Action No. 99-234-JJF. Patent infringement case relating to plastic bottles with an oxygen barrier layer.
• American National Can Co. v. Continental PET Technologies, Inc. (D. Conn.), Civil Action No. B 90 558 (EBB). Patent infringement case relating to plastic bottles with an oxygen barrier layer.

• Genentech, Inc. v. ZymoGenetics, Inc. (2009) U.S. Patent Interference No. 105,723. The interference involves polypeptides relating to the Type-1 Cytokine Receptor GLM-R.
• Genentech, Inc. v. ZymoGenetics, Inc. (2008) U.S. Patent Interference No. 105,664. The interference relates to technology involving nucleic acids encoding the Type-1 Cytokine Receptor GLM-R.
• Leiden v. Wolff (2004) Led team representing the University of Michigan, the assignee of the Leiden patent. The technology relates to direct injection of proteins into cardiac tissue to induce angiogenesis.
• Nabel v. Finkel (1998-2003) Participated in a team representing the University of Michigan, the assignee of the Nabel patent application. The technology relates to gene therapy, specifically a method of treating restenosis with thymidine kinase. The interference terminated following a settlement agreement.
• Bloembergen v. Rimsa (1999-2001) Participated in a team representing MBI, Inc., the assignee of the Bloembergen patent. The technology relates to thermoplastic blends of a biodegradable, predominately amorphous, hydrophobic, water-repellant, starch esters and biodegradable polyesters.

• 6,202,649 and 6,425,401 (Williams) “Method of treating tobacco to reduce nitrosamine content, and products produced thereby” Filed third-party requests in both patents on behalf of RJ Reynolds. Patents were involved in concurrent litigation. 
• 5,784,225 (Saito, et al.) "Magnetoresistive Head Using Exchange Anisotropic Magnetic Field With An Antiferromagnetic Layer"
• 5,661,133 (Leiden, et al.) "Expression Of A Protein In Myocardium By Injection Of A Gene" (Assignee: University of Michigan). A method of genetically transforming cardiac myocytes in vivo. The method is useful in treating various cardiovascular disorders and for promoting angiogenesis.
• 4,670,444 (Grohe, et al.) "7-Amino-1-(Cyclopropyl-4-Oxo)-1,4-Dihydro-Quinoline And Naphthyridine-3-Carboxylic Acids And Antibacterial Agents Containing These Compounds." The technology was a chemical process for preparing a quinoline compound, which is one of the world's most widely used antibiotic. Bayer AG sells this antibiotic under the tradename Ciprofloxacin.

• "Generic Line: Obviousness Guidelines Good for Generics," interview, FDAnews October 31, 2007
• "The Pre-Clinical Research Statutory Infringement Exemption: How Far Back is 'Reasonably Related?,'" co-author with Meredith Martin Addy, Patent Strategy & Management, an ALM Newsletter, Vol. 6, No. 6, October 2005
• "Supreme Court Grants Cert in Landmark Hatch-Waxman Case," co-author, Intellectual Property & Technology Law Journal, Vol. 17, No. 3, March 2005
• "The Hatch-Waxman Act: When Is Research Exempt from Patent Infringement?," co-author, ABA-IPL Newsletter, Vol 22, Num 4, Summer 2004
• "The Written Description Requirement For Biotechnology Inventions," co-author, 2003 IP Law Update, Belvis, G.P., ed., Aspen Publishers, 2003, pp. 67-88

• "Maximizing the Biologic Patent Lifecycle and Protecting the Value of IP for Biologics in Light of New Legislation: Written Description, Enablement, the Doctrine of Equivalents and More," American Conference Institute's Follow-On Biologics, New York, New York, June 21-22, 2010 
• "Hot Topics in Biotechnology Patent Law," at University of Washington Center for Commercialization, Seattle, Washington, March 2010 (Approved for Washington State CLE)
• "Deciphering the Impact of In re Kubin on Application of §103 Obviousness Requirement," American Conference Institute's 11^th Advanced Forum on Biotech Patents, Boston, Massachusetts, September 30-October 1, 2009
• "Why the Odds Are Better For Winning a Chemical Obviousness Argument," Institute for International Research, Washington, DC, September 18, 2007
• "Claim Construction: New Strategies in Light of Phillips," Managing the Risks of IP Litigation, Chicago, Illinois, October 2005

• American Chemical Society
• American Intellectual Property Law Association
• American Bar Association
• Chicago Bar Association
• Federal Circuit Bar Association

• Biosimilar Provisions Enacted in Health Care Bill

• Patent Assassins.com (blog)
• Crain's Chicago Business (print and Web); PinHawkChicagoLawFirmNewzDigest.com
• Advances in Textiles Technology
• Chicago Lawyer
• Businesswire