Practice concentrates on patent infringement and trade secret litigation and appeals to the Federal Circuit Court of Appeals.
Represents clients in a wide range of technologies, with a particular focus on pharmaceuticals, biologics and medical devices.
Holds a Ph.D. in immunology and draws on technical background and experience to advise innovative companies on high-stakes IP disputes.

Dr. Rachel Elsby is a go-to trial counsel representing innovative biotechnology, pharmaceutical and medical device clients in IP disputes. Rachel leverages her significant trial experience and technical background to counsel innovative companies in disputes with direct competitors, as well as against biosimilar/generic challengers in BPCIA and Hatch-Waxman litigation.

Clients rely on Rachel to provide comprehensive IP advice and strategic counsel on all fronts, including representing clients in every stage of litigation, from early portfolio assessments to trial and appeal. She also regularly plays a lead role coordinating global IP disputes involving proceedings in multiple jurisdictions, including the U.S., European courts, European Patent Office (EPO) and Japan.

In addition to her role as trial counsel, Rachel has been involved with dozens of appeals in both counsel and consulting roles, and has argued multiple cases in front of the Federal Circuit. Rachel is also called upon to draft amicus briefs at the Federal Circuit and Supreme Court on patent issues.

Rachel previously served as a law clerk to the Honorable Pauline Newman at the Federal Circuit Court of Appeals, the appellate court hearing all patent appeals coming out of district courts, the United States Patent and Trademark Office (PTO) and ITC. Before attending law school, Rachel received a Ph.D. in immunology. Her research focused on understanding the mechanisms of the immune response to malignant disease and virus infection, and developing oncolytic viruses to treat cancer.

Representative Work

Represented Bristol-Myers Squibb, Ono Pharmaceutical Co. and Nobel laureate Dr. Tasuku Honjo in multiple patent infringement litigations against AstraZeneca related to anti-PD-L1 and anti-CTLA-4 antibodies. Succeeded in obtaining favorable settlement for all cases.
Representing Boston Scientific in post-trial proceedings relating to patent infringement claims brought by the Board of Regents of the University of Texas System and TissueGen Inc. The claims at issue are directed to biodegradable fiber implants with immiscible phases.
Representing a pharmaceutical company in a BPCIA “patent dance.”
Coordinating enforcement and defensive strategies across the U.S. and Europe for a pharmaceutical company developing an innovative biologic.
Represented Bristol-Myers Squibb, Ono Pharmaceutical Co. and Nobel Laureate Dr. Tasuko Honjo in patent litigation involving revolutionary immuno-oncology treatment methods. The team's work contributed to a worldwide settlement that included an initial payment by defendant Merck & Co. Inc. of $625 million and payment of ongoing royalties through 2026.

Represented Boston Scientific in a series of multi-front patent and trade secret litigations against Nevro Corp. relating to spinal cord stimulation technology in the district of Delaware. The cases involve affirmative patent and trade secret claims asserted by Boston Scientific, counterclaims for patent infringement asserted by Nevro and parallel petitions for inter partes review before the PTAB. The court scheduled trials for October 2021, January 2023 and October 2023. The jury in the 2021 trial returned a verdict finding Nevro liable for willful patent infringement and awarding Boston Scientific $20 million in damages. The case settled favorably in August 2022, prior to the next-scheduled trials.
Represented plaintiff 3M Company in a patent infringement dispute against competitor Kerr Corporation involving 3M’s innovative dental composite materials. After successive victories for 3M in connection with Markman proceedings and Daubert motions, the case settled in December 2019.
Represented 3M Company as appellees in an appeal of a decision from the Western District of Washington, in which our trial team obtained dismissal of a complaint for infringement based on TC Heartland. The Federal Circuit affirmed the dismissal.
Represented pharmaceutical companies in district court litigation and on appeal in an inventorship action related to patents involving methods of treatment for cancer with biologics.
Filed amicus brief at the Federal Circuit on behalf of the Biotechnology Innovation Organization regarding the appropriate legal standard for obviousness.
Represented a multinational food packaging company in defense of its patent through summary judgment and appeal, securing successful judgments of infringement and no invalidity.
Representing Sorenson Communications and CaptionCall, LLC against primary competitor Ultratec/CapTel Inc. in a series of district court, federal circuit and PTAB matters over Ultratec’s patents concerning telecommunications for the deaf and hard-of-hearing. The Akin team took over this series of matters during the post-trial and appellate phases following two district court jury trials. Since then, in a series of nine IPRs, the PTAB found all of Ultratec’s asserted claims in the first trial unpatentable. The Akin team also successfully challenged and rendered unpatentable all claims of three additional Ultratec patents asserted in subsequently-filed but stayed district court litigations.
Represented a chemical manufacturer in the correction of inventorship action related to compounds used to improve the barrier properties of plastic bottles, which resulted in favorable outcome at trial.
Represented a patent owner in an infringement suit involving patents to progressive lens technology in litigation that resulted in a favorable jury verdict at trial.
Represented veterans and government employees in multiple pro bono appeals to the Federal Circuit.

Represented Boston Scientific in a series of multi-front patent and trade secret litigations against Nevro Corp. relating to spinal cord stimulation technology in the district of Delaware. The cases involve affirmative patent and trade secret claims asserted by Boston Scientific, counterclaims for patent infringement asserted by Nevro and parallel petitions for inter partes review before the PTAB. The court scheduled trials for October 2021, January 2023 and October 2023. The jury in the 2021 trial returned a verdict finding Nevro liable for willful patent infringement and awarding Boston Scientific $20 million in damages. The case settled favorably in August 2022, prior to the next-scheduled trials.
Represented plaintiff 3M Company in a patent infringement dispute against competitor Kerr Corporation involving 3M’s innovative dental composite materials. After successive victories for 3M in connection with Markman proceedings and Daubert motions, the case settled in December 2019.
Represented 3M Company as appellees in an appeal of a decision from the Western District of Washington, in which our trial team obtained dismissal of a complaint for infringement based on TC Heartland. The Federal Circuit affirmed the dismissal.
Represented pharmaceutical companies in district court litigation and on appeal in an inventorship action related to patents involving methods of treatment for cancer with biologics.
Filed amicus brief at the Federal Circuit on behalf of the Biotechnology Innovation Organization regarding the appropriate legal standard for obviousness.
Represented a multinational food packaging company in defense of its patent through summary judgment and appeal, securing successful judgments of infringement and no invalidity.
Representing Sorenson Communications and CaptionCall, LLC against primary competitor Ultratec/CapTel Inc. in a series of district court, federal circuit and PTAB matters over Ultratec’s patents concerning telecommunications for the deaf and hard-of-hearing. The Akin team took over this series of matters during the post-trial and appellate phases following two district court jury trials. Since then, in a series of nine IPRs, the PTAB found all of Ultratec’s asserted claims in the first trial unpatentable. The Akin team also successfully challenged and rendered unpatentable all claims of three additional Ultratec patents asserted in subsequently-filed but stayed district court litigations.
Represented a chemical manufacturer in the correction of inventorship action related to compounds used to improve the barrier properties of plastic bottles, which resulted in favorable outcome at trial.
Represented a patent owner in an infringement suit involving patents to progressive lens technology in litigation that resulted in a favorable jury verdict at trial.
Represented veterans and government employees in multiple pro bono appeals to the Federal Circuit.

Education
J.D., George Mason University School of Law, 2010
Ph.D., University of Miami, 2007
B.S., University of Miami, 2002

Clerkships
U.S.C.A., Federal Circuit

Bar Admissions
District of Columbia
U.S. Patent and Trademark Office
Virginia

Recognitions

IAM Patent 1000—The World’s Leading Patent Professionals, Leading Private Patent Litigator in Washington, D.C., 2024.
The Legal 500 US, Patents: Litigation (Full Coverage), 2021 and 2023-2024.
Super Lawyers, Rising Star, Washington, D.C., 2020.
Akin, Stark Ritchie Counsel Award for Pro Bono Service, 2019.
Federal Circuit Bar Association, Special Achievement Award, 2018.

Speeches and Publications

Panelist, “Pre-Suit Exchanges and the BPCIA Tango: Production, Timing, and the Notice of Commercial Marketing,” ACI Summit on Biosimilars & Innovator Biologics, September 23, 2020.
Panelist, “Gauging the Impact of COVID-19 Across the Global IP Market: Lessons Learned from the Novel Coronavirus” ACI Webinar, June 24, 2020.
Moderator, “Current Developments in the Doctrine of Equivalents,” Giles Rich Inn of Court, October 22, 2019.
Moderator, “Federal Circuit Appeals from Biotech IPRs,” PTAB Bar Association, October 22, 2019.
Moderator, “In-House Counsel Practice,” Giles S. Rich Inn of Court, October 16, 2018.
Moderator, “Oil States and SAS: A Preview to Oral Argument and Beyond,” FCBA, Webinar, November 9, 2017.
Panelist, “112(b) - Practitioners' Perspective,” USPTO Biotechnology, Chemical and Pharmaceutical Partnership (BCP) Meeting, November 6, 2017.
Panelist, “Federal Circuit Review of PTAB Proceedings: What We Know and Still Don’t Know,” 27thAll Ohio Annual Institute on Intellectual Property, September 13 and 14, 2017.
Panelist, “Issues in Appeals from the PTAB,” PTAB Bar Association, Webinar, August 1, 2017.
Panelist, “The Impact of the Patent Trial and Appeal Board,” The Catholic University of America, Columbus School of Law, Washington, D.C., February 28, 2017.
Panelist, “Annual Survey of American Law,” New York University, New York, February 21, 2017.
Panelist, “Two Years of Federal Circuit Review of PTAB Proceedings: What We Know and Still Don't Know,” Washington, D.C., February 7, 2017.
“Tips for Appellate Writing,” Panelist, DC Bar Young Lawyers Drafting Series, Washington, D.C., January 21, 2015.