Dianne B. Elderkin represents clients in intellectual property (IP) disputes, in federal courts, in the International Trade Commission (ITC), and at the United States Patent and Trademark Office. She is the rare combination of an accomplished trial lawyer and an experienced patent lawyer. She is one of the few registered patent lawyers to have been inducted into the American College of Trial Lawyers and the International Academy of Trial Lawyers.
Practice & Background
Although Ms. Elderkin’s 30+ years of patent litigation experience spans a broad range of life sciences technology, her focus in recent years has been in the biotechnology area, including cases having to do with genetic engineering and antibody technology.
Ms. Elderkin led a team of lawyers who won a jury verdict for clients Centocor Ortho Biotech, Inc. and New York University in a patent infringement suit against Abbott Laboratories for its flagship product, Humira®. The jury returned a verdict that Ms. Elderkin’s clients’ patent was infringed and not invalid, and awarded damages of $1.67 billion, reported by Bloomberg to be the largest jury verdict in U.S. history in a patent case. The American Lawyer named her “Litigator of the Week” on July 1, 2009. She was the first woman selected for this honor.
Ms. Elderkin also led a team of lawyers who won a jury verdict for client Janssen Biotech Inc. in a patent infringement suit brought by Abbott GMBH & Co. The jury returned a verdict that claims in two patents asserted by Abbott against Janssen’s antibody drug product, Stelara®, were invalid. The district court’s judgment entered on that verdict was affirmed by the Federal Circuit in June 2014 in an appellate proceeding that was also handled by Ms. Elderkin and her team.
More recently, Ms. Elderkin led a team of lawyers representing client Bristol-Myers Squibb, Ono Pharmaceutical Co. and Japanese immunologist Dr. Tasuku 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.
Ms. Elderkin and her team have also been at the forefront of litigation under the Biologics Price Competition and Innovation Act, representing client Janssen Biotech, Inc. in several litigations involving biosimilar challenges to Janssen’s blockbuster drug Remicade®.
Ms. Elderkin brings extensive experience in patent prosecution and as in-house patent counsel to bear in counseling her clients and representing them in litigation. She served as in-house patent counsel at the DuPont Company for nine years prior to entering private practice. She is registered to practice before the United States Patent and Trademark Office and is representing and advising clients in numerous inter partes review proceedings.
Ms. Elderkin received her J.D. with high honors from The George Washington University Law School in 1978, where she was a member of the Order of the Coif. She received her B.S. in chemistry in 1975 from Bucknell University.
Ms. Elderkin’s recent engagements include:
- currently representing an innovator pharmaceutical company and a university in one of the first biosimilar patent challenges
- currently representing a pharmaceutical company in a patent infringement suit involving meningitis B vaccines
- currently representing a pharmaceutical company in inter partes reviews of a patent relating to the treatment of prostate cancer
- currently representing a pharmaceutical company in an inventorship challenge to patents involving methods of treatment for cancer with biologics
- currently representing a medical device company in a trade secret action
- representing a pharmaceutical company in a patent infringement suit involving methods of treatment for cancer with biologics
- representing a pharmaceutical companies in a patent infringement suit involving biologic therapeutics for treating hypercholesterolemia
- representing a diagnostics company and a university in a patent infringement suit involving methods and devices for detecting single nucleotide polymorphism
- representing a medical device manufacturer in an ITC proceeding.
Ms. Elderkin is involved in community, civic and charitable activities that include being a:
- past chair of the American Intellectual Property Law Association’s Patent Litigation Committee
- past co-chair and faculty member for the Sedona Conference on Patent Litigation
- board member for Philabundance, the Philadelphia region’s largest food bank and hunger relief organization
- board member for Fare & Square, the nation’s first nonprofit grocery store, built in a food desert in a Philadelphia suburb
- former trustee of the American Intellectual Property Law Education Foundation, an organization that provides scholarships for minority students seeking careers in intellectual property law.
Awards & Accolades
Ms. Elderkin has been recognized repeatedly by:
- Chambers USA
- Managing Intellectual Property as an "IP Star"
- Best Lawyers in America for Patent Litigation
- Legal 500
- LawDragon 500
- The International Who’s Who of Patent Law
- The Who’s Who Legal – Compendium Edition
- Pennsylvania Super Lawyers as a leading patent litigator
- Pennsylvania Super Lawyers as among the Top 50 Women.
Other recent professional recognitions received by Ms. Elderkin include:
- In 2017, Ms. Elderkin was listed in the IAM Patent 1000 and was described as “an excellent high-stakes litigator who has had a lot of success, Elderkin is trusted by clients, highly respected by judges and resonates with juries.”
- Elderkin was named a 2017 World IP Review Leader.
- In 2016, Ms. Elderkin was selected as a BTI Client Service All-Star.
- In 2013, Ms. Elderkin was nominated for the LMG Life Sciences "IP Attorney of the Year" award.
- In October 2012, Ms. Elderkin was a Pennsylvania Biotechnology Association/Philadelphia Business Journal Life Sciences Award winner under the Best Consultant Category.
- Elderkin was named 2013 Lawyer of the Year in the area of Litigation – Patent in Philadelphia by Best Lawyers in America.
- IAM 2010 Life Sciences 250 included Ms. Elderkin in the Best of the Best issue as one of 11 top life sciences patent litigators in the United States.
- The Legal Intelligencer named Ms. Elderkin a Woman of Distinction in 2010, an honor bestowed upon select attorneys in Pennsylvania.