Jenny Shum, Ph.D.

Counsel - New York

Contact Information

646.927.5530

646.927.5599

jshum@foleyhoag.com Download vCard

Jenny Shum is counsel in Foley Hoag's Intellectual Property Litigation practice, resident in the firm's New York office.  She focuses on pharmaceutical, biotechnology, medical device, biometrics and data privacy, and high technology matters. Jenny represents multinational pharmaceutical and technology clients in high-stakes litigations and international arbitrations involving patent infringement, Hatch-Waxman/ANDA, licensing, and contract issues. Jenny has experience with a variety of biotechnologies, including antibodies, antivirals, and antibiotics. In addition to patent validity and infringement matters, she has experience in domestic and international patent prosecution and patent portfolio management. Jenny also provides counsel on strategic business and intellectual property issues, including freedom-to-operate and strategic analyses, due diligence evaluations, trade secrets, trademarks, and intellectual property concerns that arise in corporate and finance transactions. 

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Education:

  • Boston College Law School, J.D.
  • Albany Medical College, Ph.D. in Biological Sciences (Biochemistry and Molecular Biology)
  • Albany Medical College, M.S., Biological Sciences (Biochemistry and Molecular Biology)
  • State University of New York at Albany, B.S., Biochemistry and Molecular Biology and East Asian Studies

Representative Experience

  • Represented leading U.S. pharmaceutical manufacturer of an abuse-deterrent opioid treatment in reaching a successful conclusion in Hatch-Waxman litigation against a generic competitor.
  • Represented Swedish pharmaceutical manufacturer of a sublingual tablet to treat opioid addiction in a successful patent litigation lawsuit involving a five-day bench trial against a generic manufacturer. 
  • Represented large multinational biotechnology company in winning and defending largest known arbitral award in excess of $450 million involving patent infringement and breach of license issues relating to herbicide resistance technology. 
  • Represented Japanese pharmaceutical company in a successful ICC arbitration against a major multinational pharmaceutical company regarding contractual and intellectual property disputes. 
  • Co-author, The Russian Roulette of Patent Eligibility Under § 101: Cries for Help (submitted).
  • Co-author, “Exploring the Legal Issues of the Autonomous Vehicle/IoT Ecosystem,” New York Law
    Journal (2019).
  • Co-author, “Biometrics: Is It Always About You?,” 2 JOURNAL OF ROBOTICS, ARTIFICIAL INTELLIGENCE &
    LAW 75 (2019).
  • Author, “Moral Disharmony: Human Embryonic Stem Cell Patent Laws, WARF, and Public Policy,” 33
    B.C. INT’L & COMP. L. REV. 153 (2010) 
  • Author, “Moral Disharmony: Human Embryonic Stem Cell Patent Laws, WARF, and Public Policy,” 33
    B.C. INT’L & COMP. L. REV. 153 (2010)

Honors

  • International and Comparative Law Review, Boston College Law School, Senior Articles Editor
  • Sidney B. Williams, Jr. Scholarship, American Intellectual Property Law Education Foundation 

Involvement

  • American Association for the Advancement of Science
  • American Intellectual Property Law Association
  • National Asian Pacific American Bar Association
  • New York City Bar Association
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Bar Admissions

  • New York

Court Admissions

  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York