Tasha Francis Gerasimow, Ph.D.

Partner Life Sciences Intellectual Property

Chicago +1 312 862 2384

Tasha Francis Gerasimow, Ph.D.

Overview

Tasha Francis Gerasimow, Ph.D. is a partner in the Chicago office of Kirkland & Ellis LLP, where she focuses her practice on intellectual property litigation with an emphasis on patent litigation. Her clients range from solo inventors and emerging companies in the biotechnology and biopharma industries to established international pharmaceutical and medical device companies. She has extensive experience in the areas of small molecule and biologic pharmaceuticals (including antibody technologies), drug formulation and drug delivery technologies, diagnostics, protein biochemistry, and chemicals. Tasha has represented plaintiffs and defendants in cases involving medical devices, biotechnology, and pharmaceuticals in district court, the ITC and in post-grant proceedings. Tasha also works with a variety of pro bono clients on issues including patent applications, contract disputes, death penalty appeals, habeas petitions, and amicus briefing.

Tasha is passionate about the advancement of women in STEM and law. She regularly volunteers with local Girl Scouts troops, helping them learn about inventorship, entrepreneurship and the basic tenets of intellectual property law, specifically copyrights, trademarks and patents.

Since joining Kirkland, Tasha has been involved in the following matters:

  • Certain Selective Thyroid Hormone Receptor-Beta Agonists, Processes for Manufacturing or Relating to Same, and Products Containing Same (Inv. No. 337-TA-1352, 2023) — Representing Respondent Ascletis Pharmaceuticals and related entities in trade secret litigation filed by Viking Therapeutics Inc. A four day hearing was held in November 2023.
  • Certain Wi-Fi Routers, Wi-Fi Devices, Mesh Wi-Fi Network Devices, and Hardware and Software Components Thereof (Inv. No. 337-TA-1361, 2023) — Representing Respondent TPLink in an ITC case involving six patents relating to WiFi technology. A five day hearing was held in January 2024.
  • Microspherix v. Merck et al. — Represented patent owner Microspherix in litigation related to the infringement of three patents covering implantable contraceptive devices. Case settled favorably days before trial was set to begin.
  • In Re HIV Antitrust Litigation — Represented Gilead Sciences in district court antitrust litigation against claims by consumers and other direct purchasers alleging that Gilead maintained a monopoly in the HIV drug market by unlawfully extending its patent protection for its blockbuster HIV drugs, Truvada and Atripla to delay generic competitors’ entry. After a six-week jury trial, a San Francisco jury returned a complete defense verdict for Gilead, rejecting the plaintiffs’ claims seeking more than $10 billion in damages. The jury ultimately found that Gilead did not have market power with respect to either drug and that Gilead did not pay Teva to delay generic launch. This case is only the third reverse payment antitrust case ever to go to verdict (even though more than 30 such cases have been filed in the 13 years since the Supreme Court blessed this theory of antitrust liability in 2013), and the first verdict for defendants on the dispositive threshold issues of no market power and no anticompetitive payment.
  • Sergeants Benevolent Association Health & Welfare Fund v. Allergan, Inc. — Represented Allergan in antitrust class action litigation alleging unlawful reverse payment claims related to settlement of patent litigation related to Namenda® and Namzaric®.
  • Boehringer Ingelheim Pharmaceuticals Inc., et al. v. 2 Defendants — Representing Boehringer Ingelheim in Hatch-Waxman litigation arising from Defendants’ submissions of ANDAs seeking approval to manufacture and sell generic versions of Boehringer’s Trajenta® product used to treat type II diabetes.
  • Silbersher v. Allergan Inc. — Represented Allergan winning an early dismissal of whistleblower’s qui tam action under the False Claims Act which alleged patents related to blockbuster Alzheimer’s drugs Namenda® and Namzaric® were fraudulently obtained.
  • Represented Polaris Industries in district court civil litigation relating to its off-road recreational vehicles.

Prior to joining Kirkland, Tasha was involved in the following representative matters:

  • Idenix Pharmaceuticals LLC et al. v. Gilead Sciences, Inc. — Represented Gilead Sciences in patent litigation related to its blockbuster drugs SOVALDI®, HARVONI®, and EPCLUSA® which cure hepatitis C. Helped wipe out the $2.5 billion willful infringement jury verdict against the client. At the time, this was the largest patent damages award in history, which was reversed after a rare win on a motion for judgment as a matter of law, and affirmed on appeal to the Federal Circuit.
  • Dainippon Sumitomo Pharma Co. Ltd. v. 16 Defendants — Served as member of trial team for client Dainippon Sumitomo Pharma Co. Ltd. (Sunovion) in protecting its multibillion-dollar branded drug LATUDA®, the company’s best-selling product.
  • Represented various pharmaceutical companies in Hatch-Waxman litigation (E.D. Tex., D. Del., D. N.J.) against generic drug manufacturers asserting patents covering FDA approved glaucoma drugs, nanoparticular formulations, and cosmetic products.
  • Represented medical device company in trade secret misappropriation and breach of contract claims related to laparoscopic surgical devices in JAMS arbitration.
  • Successfully aided prisoner pro bono client in habeas appeal to commute death sentence penalty to life in prison based on a violation of Atkins v. Virginia ruling which banned the death penalty on individuals with intellectual disabilities.

More

Thought Leadership

Publications

In addition to her work on behalf of her clients, Dr. Gerasimow writes and presents extensively on topics related to life science litigation.

Representative publications include:

  • “Pharmaceutical Legal and Regulatory Trends To Watch in 2024,” New York Law Journal, January 12, 2024
  • “Pharma Faces More Scrutiny Under Drug Patent Suspension Plan,” Bloomberg Law, December 20, 2023
  • “A Reminder For Drug Cos. To Confirm Orange Book Listings,” Law360, October 11, 2023
  • “Life Sciences Commercialisation in the United States: Overview,” Thomson Reuters Global Guide on Practical Law, June 1, 2023
  • “Peeling Back the Layers of Inventorship in 'Glass Onion',” Law360, January 5, 2023
  • “Navigating the Murky Waters of the Hatch-Waxman ‘Safe Harbor’,” New York Law Journal, September 13, 2022
  • “Dosing regimen patents scrutinized by the Federal Circuit,” Reuters Legal News, March 23, 2022 
  • “Strategies for Pharma Patent Litigation Take Shape for 2022,” Bloomberg Law, March 11, 2022
  • “How Litigation Strategies Shifted Under Covid-19,” Bloomberg Law, January 26, 2022
  • “Biosimilar Litigation Review: Ongoing BPCIA District Court Cases to Watch,” Biosimilar Development, January 14, 2020
  • “Websites Can Be Liable When Users Post Infringing Marks,” Intellectual Property Magazine, May 2018
  • “Litigation-Related Issues Under the Biologics Price Competition and Innovation Act. In: Gutka, H., Yang, H., Kakar, S. (eds) Biosimilars,” AAPS Advances in the Pharmaceutical Sciences Series, vol. 34. Springer, Cham, 2018
  • “Biosimilars 2017 Year in Review,” Bloomberg Law, February 6, 2018
  • “BPCIA at Fed. Circ.: Awaiting Guidance on Patent Dance,” Law360, October 12, 2017
  • “Justices Struggle with BPCIA Enigma,” Law360, April 28, 2017
  • “Recent Developments in Biopharma PTAB Practice,” NYIPLA, February/March 2017
  • “Kyle Bass Wins at the PTAB,” IP Litigator, Vol. 23, #1, January/February 2017
  • “A Dive into BPCIA Confidential Info Disclosure Requirements,” Law360, March 15, 2017
  • “Biosimilars: Looking Back and Looking Ahead,” Bloomberg Law: Pharmaceutical Law & Industry Report, January 18, 2017
  • “You Can't Patent Dance Your Way Out of Biosimilar Notice,” Law360, July 8, 2016
  • “Will the Trans-Pacific Partnership Derail Biologics?” Pharmaceutical Compliance Monitor, December 4, 2015
  • “Choose Your Court,” Life Sciences Intellectual Property Review, July 23, 2015
  • “The Confusing and Often Contradictory World of Pleading Defenses and Counterclaims in Patent Cases,” IPO Daily News, June 25, 2015
  • “Continued Employment as Sufficient Consideration for Pre-Invention Assignment Agreements,” State Bar of Michigan IPLA Proceedings, 25, 1-5, 2014
  • “Target Identification and Validation of a Novel Family of Anti-Inflammatory 1,4-benzodiazepine-2,5-diones,” Dissertations Abstracts International, 2010
  • “Synthesis of Iso-Epoxy-Amphidinolide N and Des-Epoxy-Carbenolide I structures,” Initial Forays. Org. & Biomol. Chem., 11, 2119, 2006
  • “Identification of cytotoxic, T-cell selective 1,4-benzodiazepine-2,5-diones,” Bio. Org. Med. Chem. Lett., 16, 2432, 2006
  • “Radiative Exciplexes of 1,2,4,5-Tetracyanobenzene with Sterically Hindered Alkylbenzenes.” J. Phys. Chem. A., 107, 8319-8326, 2003
  • “A Spectroscopic and Computational Study of the Singlet and Triplet Excited States of Synthetic Functionalized Chlorins,” Chemical Physics, 294, 285-303, 2003
  • “The Solution Dynamics of Photoinduced Geminate Radical Ion Pairs: Free Ion Formation,” Chemical Physics Letters, 362, 63-71, 2002

Speaking Engagements

Presenter, “The Orange Book Gets Juicy in 2024,” PLI, February 5, 2024.

Panelist, “A 360 Degree Examination of Reverse-Payment Settlements: Non-Monetary Provisions, State Legislation, Expert Testimony, and Recent Litigation,” American Conference, October 25, 2023.

Presenter, “Navigating the Murky Waters of the Safe Harbor Provision,” Celesq® AttorneysEd Center, Program 3306, January 31, 2023.

Presenter, “Attorney Mental Health and Wellness,” Kirkland & Ellis Knowledge Now Webinar, September 9, 2022.

Panelist, “Examining the Role of the ITC in Biotech Litigation: Investigations, IP Infringement and Trade Secrets,” American Conference, June 28, 2022

Presenter, “Hot Topics in Biologics/Biosimilar Disputes,” West LegalEdcenter, July 19, 2018.

Recognition

Recognized as a “Rising Star," by Super Lawyers, 2022–2023

Recognized as a "Rising Star" in the United States by Managing Intellectual Property Magazine, 2018–2019

Recognized as a "North Star Lawyer" by the Minnesota State Bar Association, 2019

Selected as a "Trailblazer" by WIPR Influential Women in Intellectual Property, 2019

Memberships & Affiliations

Richard Linn American Inn of Court (2021–present), Programming Co-Chair

IPO, Pharmaceutical & Biotechnology Issues Committee (2022–present)

ChiWIP, Committee Member (2020–present)

Certified Mediator – Completed a 40-hour Cook County Court approved training program at the Center for Conflict Resolution (CCR) (2022)

Credentials

Admissions & Qualifications

  • 2020, Illinois 
  • 2013, Minnesota
  • Registered to practice before the United States Patent and Trademark Office

Courts

  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the District of Minnesota
  • United States District Court for the Northern District of Illinois
  • United States District Court for the Northern District of Illinois, Trial Bar

Education

  • University of Michigan Law SchoolJ.D.cum laude2013
    Michigan Telecommunications and Technology Law Review
  • University of MichiganPh.D., Chemical Biology2010
  • The Scripps Research InstituteM.S., Organic Chemistry
  • Dartmouth CollegeB.A., Chemistry & Mathematics2002