State of Minnesota
    Minnesota State Courts
Federal Courts
    United States Supreme Court
    Eighth Circuit Court of Appeals
    Seventh Circuit Court of Appeals
    Federal Circuit Court of Appeals
    Minnesota Federal Courts
    Colorado Federal Courts

Professional Affiliations

Federal Bar Association
Federal Circuit Bar Association
Amicus Committee Co-Vice Chair
American Intellectual Property Law Association
The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court
Founding Member and Secretary

Awards & Recognition

Selected by Intellectual Asset Management (IAM) to the Patent 1000: The World’s Leading Patent Practitioners, 2017 (“newly featured pharmaceuticals ace and ‘excellent appellate lawyer’ Rachel Hughey is a dexterous trial lawyer who delivers winning arguments with great lucidity”)

Selected by Minneapolis St. Paul Business Journal as a 40 Under 40 honoree, 2016.

Selected by Mpls.St.Paul Magazine for inclusion in The Top Women Attorneys in Minnesota, 2012-2016.

Selected by Mpls.St.Paul Magazine for inclusion in Minnesota Rising Stars, 2009-2016. Fewer than 2.5 percent of attorneys in any state are selected for this honor.

Selected by Minnesota Lawyer as one of twenty-five Up & Coming Attorneys, 2008. This honor is given to attorneys in practice ten years or less who are accomplished in the areas of leadership, professional accomplishment, and service to the legal community.

Publications & Speaking

Navigating Post-Grant Proceedings: What Two Years Of Federal Circuit Decisions and the Supreme Court’s Cuozzo Decision Tell Us About Post-Grant Proceedings Before The PTAB, 64 The Federal Lawyer 1 (Jan. 2017) (with Joseph W. Dubis) PDF of Article

New PTAB Rules, New Key Cases & Emerging Trends – Strategic Implications for PTAB Proceedings and Appeals, 2016 Midwest IP Institute, Minneapolis, MN (Sept. 22-23, 2016) (with Andrew Lagatta) PowerPoint | Article

Mastering the Art of Writing Persuasive Appellate Briefs: Practical Tips from Past Appellate Law Clerks, Strafford Live CLE Webinar (Sept. 7, 2016)

Diversity Matters, The Federal Lawyer 4 (May 2016)

Patent Infringement Investigations, I Feel Conflicted: Managing Potential Conflicts Issues Surrounding Noninfringement Investigations, Minnesota CLE, Minneapolis, MN (April 26, 2016)

Exceptions To Prosecution History Estoppel Are Hardly A Dime A Dozen: An Analysis Of The Federal Circuit’s Application Of The Narrow Exceptions To Prosecution History Estoppel Twelve Years After Festo, 7 Cybaris Intellectual Property Law Rev. (William Mitchell College of Law) (2016) (with Linhda Nguyen)

Tips for PTAB Appeals Before the Federal Circuit, Atlanta, GA (Feb. 22, 2016)

A Checklist Approach to Successful Motion Practice: Motions to Compel: 10 Tips & Techniques for Getting What You Need Without Annoying the Judge, Minnesota CLE, Minneapolis, MN (Dec. 9, 2015) (with Nicole Moen) PowerPoint | Article

IP CLE: Practice tips before the CAFC, Minnesota CLE, Minneapolis, MN (Nov. 10, 2015) (with the Honorable Jimmie V. Reyna, the Honorable Richard Linn, and Kevin Rhodes)

Computer & Technology Law Institute: ePlus v. Lawson Up Close: Software Patent Litigation, a Tale of Two Worlds, and Lessons for Handling Your Next “Tech IP” Litigation, Minnesota CLE, Minneapolis, MN (Oct. 29, 2015) (with Bruce McPheeters)

Panelist, Sharing of Judicial Experiences: Intellectual Property Rights, United States District Court for the District of Minnesota, Minneapolis, MN (August 10, 2015)

How to Get to Federal Circuit Rule 36, IP Law360 and Appellate Law360 (July 29, 2015)

Intellectual Property Series: Effective Appellate Advocacy before the Federal Circuit, Minnesota CLE, Minneapolis, MN (March 6, 2015) (with Tim Grimsrud)

Inter Partes Review CLE, Minneapolis, MN (Oct. 1, 2014)

Mentoring and Sponsorship: The Difference Between Success and Failure, The Federal Lawyer 4 (July 2014)

3 Tips For Any Fed. Circ. Appeal, Law360 (Aug. 23, 2013)

The 75 Keys to Winning Your Next Patent Case, Minneapolis, MN (July 18, 2013)

Federal Circuit Oral Argument Post-Panel Discussion, U.S. Federal District Courthouse, Denver CO (October 2, 2012)

Patent Damages: Are There No More "Rules of Thumb"?, 2012 Midwest IP Institute, Minneapolis, MN (September 20, 2012)

Age-Old ABCs of Writing Applied to the Law, The Federal Lawyer 59 (June 2012)

The Ultimate Guide to Your Next Federal Circuit Brief, Patent Enforcement and Defense 2012, Minneapolis, MN (May 11, 2012)

Patent Damages: Are There No More 'Rules of Thumb'?, Patent Enforcement and Defense 2012, Minneapolis, MN (May 11, 2012)

Annual Review of Developments in Business and Corporate Litigation, Chapter 20.13 Federal Circuit Decisions, ABA Business Law Section (2011) (with William Burgess)

Assessing Reasonable Royalty Damages for Patent Infringement in a Changing Legal Landscape, The IP Legal Browser (Winter 2011)

Effective Appellate Advocacy Before The Federal Circuit: A Former Law Clerk's Perspective, 11 J. of Appellate Prac. and Pro. 401 (2010)

Evaluating Reasonable Royalties After ResQNet, IP Law360 (Oct. 14, 2010) (with Phil Green)

Supersize Me: Damages Claims in Patent Litigation, Patent Enforcement and Defense 2010 CLE, Minneapolis, MN (April 28, 2010)

Annual Review of Developments in Business and Corporate Litigation, ABA Business Law Section (2010)

Avoiding Patent Claim Construction Errors After Phillips, The Federal Lawyer 50 (Nov. 2009) (with Anthony R. Zeuli)

The Three Year Anniversary of eBay v. MercExchange: A Statistical Analysis of Permanent Injunctions, IP Today 25 (Nov. 2009) (with Ernest Grumbles and Susan Perera)

Abbott Laboratories v. Sandoz, Inc.: The Federal Circuit Finally Aligns Its Precedent On Product-By-Process Claims, IP Today 1 (November 2009)

Exergen Corp. v. Wal-Mart Stores, Inc.: Heightened Pleading Standard for Inequitable Conduct, IP Law360 (September 2009)

First–Sale Doctrine – Absolute or Conditional Under Quanta v. LG Electronics?, American Intellectual Property Law Association, Miami, FL (January 28, 2009)

A Review of the Supreme Court's Decision in Quanta v LG Electronics, Minnesota Intellectual Property Law Association, Minneapolis, MN (June 26, 2008)

First–sale doctrine: absolute or conditional?, Minn. Lawyer In–House Counsel Q. (June 12, 2008)

Avoiding Claim Construction Errors by Determining the Ordinary and Customary Meaning, Advanced Patent Litigation Seminar, American Intellectual Property Law Association, New York City, NY (June 24, 2005)

R.F. Delaware, Inc. v. Pacific Keystone Technologies, Inc.: The Federal Circuit Has Finally Spoken on Collateral Estoppel of Claim Interpretation, 20 Santa Clara Computer and High Tech. L. J. 293 (2004)

The District of Columbia's Decision in Pro–Football v. Harjo and Its Effect on Trademark Protection of Other Marks, 14 Fordham Intellectual Prop., Media & Entertainment L. J. 327 (2004)

Avoiding Patent Claim Construction Errors: Determining the Ordinary and Customary Meaning Before Reading the Written Description, The Federal Lawyer 29 (June 2004) (with Tony Zeuli)

Implied Licenses by Legal Estoppel, 14 Albany Law J. Sci. & Tech. 53 (2003)

Trademark Protection for Native American Team Names and Mascots and the Impact of the Harjo Decision, XVI Sovereignty Symposium 81 (2003)

Collateral Estoppel of Claim Interpretation After Markman, 86 Minn. L. Rev. 1581 (2002)

Teaching

University of Minnesota Law School, Legal Writing Instructor, 2003-2005, 2006-2007

University of Minnesota Law School, Intellectual Property Moot Court Instructor, 2003-2005, 2006-2007

University of St. Thomas, Communications Law Instructor, 2004-2005

Board Service

Minnesota Law Review Alumni Advisory Board, Board Member, 2010-2015; President, 2011-2015

The Federal Bar Association, Editorial Board for The Federal Lawyer, 2011-present

The American Intellectual Property Law Association, Editorial Board for the AIPLA Quarterly Journal, 2011-2014

University of Minnesota Law School, Dean's Advisory Council, Board Member, 2014-present

Volunteer Lawyers Network, Board Member, 2013-present, Executive Committee, 2017-present

YouthCARE, Alumni Advisory Board Member, 2013-present

YouthCARE, Board Member, 2010-2012

Judicial Clerkships

Law clerk for the Honorable Alvin A. Schall of the United States Court of Appeals for the Federal Circuit

Extern for the Honorable James M. Rosenbaum of the United States District Court for the District of Minnesota

Quoted

Times are a Changin’: Patent Law in U.S. is Undergoing a Massive Revision, Den. Bus. J. at 88, April 7, 2017

U Law School Launches Patent Masters, Minnesota Lawyer, April 4, 2014

ITC Claims Authority To Fast-Track Patent Cases, Law360, August 7, 2013

Fed. Circ. Tosses $31.6M Patent Judgment For Metso Minerals, Law360, May 16, 2013

As a litigator, Rachel uses her quick thinking skills in the courtroom to process and respond rapidly to events happening in real time. She’s also spent years honing her writing, focusing on clarity and the craft of distilling complex legal issues into articulate, persuasive briefs. She cares deeply about her clients and makes it her goal to understand what’s important to them so she can pursue the right strategy to meet their goals.

Rachel practices intellectual property law with an emphasis on patent litigation and appellate level disputes. Rachel is a key team member involved in all elements of trial, including formulating strategy, preparing briefs and pleadings, handling discovery matters, engaging in oral arguments, managing trial issues, and examining witnesses at trial. Rachel has a technical background in Chemical Engineering, and has experience in a wide variety of fields, including chemical technologies, medical devices, pharmaceuticals, mechanical devices, and software.

As a co-chair of the firm’s appellate practice, Rachel is one of the firm’s appellate specialists. She is a former Federal Circuit law clerk, has handled dozens of appeals, and has argued before the Federal Circuit both as the appellant and the appellee. In addition, Rachel leverages her appellate experience by consulting on appellate cases throughout the firm, for other firms, and for her clients. She is often in charge of strategic planning at the trial level for a possible appeal. As a thought leader, Rachel writes extensively on current legal issues and is the author of a law review article on effective appellate advocacy before the Federal Circuit. This thoughtful and informative article has been re-published in a prestigious legal treatise on appellate advocacy and is assigned reading in law school classes on appellate advocacy.

As a volunteer attorney for the Advocates for Human Rights, Rachel represents asylum seekers in their appeals to Federal Circuit Courts. In her pro bono representation, she successfully obtained a remand of her client’s immigration case from the Eighth Circuit Court of Appeals and obtained his legal status in the United States.

In her spare time, Rachel serves on a variety of nonprofit boards. She also runs, swims, bikes, rows, and practices yoga.

Representative Cases

Representative Appellate Matters

Ahmed v. Ahmed, No. 16-142 (6th Cir.) – counsel for Appellant in Hague Convention case

Arrow Electronics v. Arrow Partnership, No. 17-1062 (10th Cir.) – counsel for Appellee in trademark case before the Tenth Circuit; case settled

TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341 (Sup. Ct.) – lead counsel for amici curiae Professors of Patent Law and Civil Procedure

Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (Sup. Ct.) – lead counsel for amicus curiae Plantronics, Inc.

Metalcraft of Mayville, Inc. v. The Toro Company, Nos. 16-2433, 16-2514 (Fed. Cir.) – lead counsel for Appellant in patent case before the Federal Circuit

Rembrandt Gaming Techs. v. Boyd Gaming Corp., Nos. 16-2002, 16-2249 (Fed. Cir.) – counsel for Appellant in patent case before the Federal Circuit; case ongoing

Millennium Pharmaceuticals v. Sandoz Inc., Nos. 16-1010, 15-2066 (Fed. Cir.) – counsel for Appellee in Hatch-Waxman case; case ongoing

International Controls and Measurements Corp. v. Honeywell International Inc., No. 2015-1724 (Fed. Cir.) – counsel for Appellant in PTO appeal to Federal Circuit

August Tech. Corp. v. Camtek, Ltd., Nos. 15-1434 (Fed. Cir.) – counsel for Appellee in patent case before Federal Circuit; court vacated fee award

Rudolph Technologies, Inc. v. Camtek, Ltd., No. 15-1418 (Fed. Cir.) – counsel for Appellant in PTO appeal to the Federal Circuit; Court reversed the Board's rejection of claims as obvious

Stephenson v. Game Show Network, LLC, No. 15-1359 (Fed. Cir.) – counsel for Appellant in PTO appeal to the Federal Circuit

Radio Systems Corporation v. Lalor, No. 15-1311 (Fed. Cir.) – counsel for Appellee in appeal to the Federal Circuit; obtained favorable Rule 36 affirmance

Integrated Technology Corp. v. Rudolph Technologies, Inc., No. 14-1820 (Fed. Cir.) – counsel for Appellant in appeal to the Federal Circuit; court vacated fees

Health Grades, Inc. v. MDx Medical, Inc., No. 15-1230 (Fed. Cir.) – lead counsel for Appellee in patent case before Federal Circuit; case settled

Wright Manufacturing, Inc. v. The Toro Company, No. 14-1534 (Fed. Cir.) – lead counsel for Appellee in PTO appeal to Federal Circuit; obtained favorable Rule 36 affirmance

Ferring B.V. v. Watson Labs., Inc., No. 14-1416 (Fed. Cir.) – counsel for Appellant in Hatch-Waxman case; Federal Circuit found no infringement for any accused product

Phil-Insul Corp. v. Reward Wall Systems, Inc., No. 14-1078 (Fed. Cir.) – lead counsel for Appellee in patent case before Federal Circuit; Federal Circuit affirmed favorable claim construction and summary judgment of non-infringement

Lamina Packaging Innovations v. ITC, No. 14-1013 (Fed. Cir.) – counsel for Intervener in appeal challenging ITC’s dismissal of claim against Intervener; case settled

Sieben v. United States, No. 13-5091 (Fed. Cir.) – lead counsel for Appellee; represented veteran in challenge of decision of Court of Federal Claims

August Tech. Corp. v. Camtek, Ltd., Nos. 12-1681, 13-1023 (Fed. Cir.) – lead counsel for Appellee in patent case before Federal Circuit; obtained dismissal of challenge to civil contempt sanction

Integrated Tech. Corp. v. Rudolph Techs., Inc., Nos. 12-1593, 12-1618 (Fed. Cir.) – counsel for Appellant; obtained stay of injunction pending appeal; obtained reversal of infringement and willfulness, court consequently vacated injunction

W.L. Gore & Associates, Inc., v. Medtronic, Inc., Medtronic USA, Inc., and Medtronic Vascular, Inc., No. 12-1538 (Fed. Cir.) – counsel for Appellee; obtained affirmance of non-infringement finding

Reese v. Verizon Cal., Inc., No. 12-1048 (Fed. Cir.) – lead counsel for Appellee; represented solo inventor in challenge to district court decision

Metso Minerals, Inc. v. Powerscreen Int’l Distrib., Nos. 11-1572, 12-1168, 12-1169 (Fed. Cir.) – counsel for Appellant; successfully invalidated patent as obvious, court consequently vacated infringement, willfulness, attorney’s fees, and injunction

AstraZeneca Pharms. LP v. Apotex Corp., Nos. 11-1182, 11-1183, 11-1184, 11-1185, 11-1186, 11-1187, 11-1188, 11-1189, 11-1190 (Fed. Cir.) – counsel for Appellant; obtained affirmance of dismissal of patent infringement claims

August Tech. Corp. v. Camtek, Ltd., No. 10-1458 (Fed. Cir.) – counsel for Appellee; obtained affirmance of validity and no inequitable conduct

Bowling v. Hasbro, Inc., No. 09-1039 (Fed. Cir.) – counsel for Appellee; obtained affirmance of infringement, validity, marking, and damages

Khan v. Mukasey, No. 07-3908 (8th Cir.) – lead counsel for Appellee; obtained remand of Appellant’s claim for asylum and withholding of removal

Fargo Elecs. Inc. v. Iris, Ltd., No. 07-1523 (Fed. Cir.) – counsel for Appellee; obtained affirmance of non-infringement

Manchak v. U.S. Ecology, Inc., No. 04-1341 (Fed. Cir.) – counsel for Appellee in patent case before Federal Circuit; obtained affirmance of non-infringement

Phillips v. AWH Corp., No. 03-1269 (Fed. Cir.) – counsel for Amicus in patent case before Federal Circuit; filed amicus brief on behalf of the Association of Patent Law Firms

Representative Trial Matters

Rudolph Technologies, Inc. v. Camtek, Ltd., No. 11-3707 (D. Minn.) – counsel for plaintiff in patent case; case ongoing

Ferring B.V. v. Actavis, Inc. et al, No. 15-4222 (D.N.J.) – counsel for defendant in Hatch-Waxman case; court dismissed 271(e) claim with prejudice; case then settled

Recro Gainesville LLC v. Actavis Laboratories FL Inc., No. 14-1118 (D. Del.) – counsel for defendant in Hatch-Waxman case; case ongoing

Otsuka v. Actavis Elizabeth, No. 14-7016 (D.N.J.) – counsel for defendant in Hatch-Waxman case; successfully defeated request for temporary restraining order

Supernus Pharmaceuticals, Inc. v. Actavis, Inc. et al, No. 14-6102 (D.N.J.) – counsel for defendant in Hatch-Waxman case; case settled

Novartis Pharmaceuticals v. Breckenridge Pharmaceutical, No. 14-1043 (D. Del.) – counsel for defendant in Hatch-Waxman case; case ongoing

Daravita Limited v. Actavis Laboratories, FL Inc., No. 14-1118 (D. Del.) – counsel for defendant in Hatch-Waxman case; case ongoing

Horizon Pharma v. Actavis Laboratories, FL Inc., No. 13-5124 (D.N.J.) – counsel for defendant in Hatch-Waxman case; case settled on eve of trial

Ferring B.V. v. Actavis, Inc. et al, No. 3:13-477 (D. Nev.) – counsel for defendant in Hatch-Waxman case; plaintiff dismissed case with prejudice after summary judgment filed

G.D. Searle LLC et al v. Lupin Pharmaceuticals, Inc. et al, No. 2:13-121 (E.D. Va.) – counsel for defendant in Hatch-Waxman case; obtained summary judgment of patent invalidity, case later settled on favorable terms

Ferring B.V. v. Watson Labs., Inc., Nos. 3:11-481, 3:11-485, 3:11-853, 3:11-854, 2:12-1941 (D. Nev.) – counsel for defendant in Hatch-Waxman case; case dismissed after finding of noninfringement

Lamina Packaging Innovations v. Champagne Louis Roederer, No. 13-CV-00171 (E.D. Tex.) – case settled after success at International Trade Commission

Lamina Packaging Innovations v. Champagne Louis Roederer, No. 337-TA-874 (ITC) – obtained dismissal of case after Administrative Law Judge finding of no domestic industry; obtained affirmance of Administrative Law Judge finding of no domestic industry by International Trade Commission

W.L. Gore & Assocs. v. Medtronic, Inc., No. 2:10-441 (E.D. Va.) – obtained bench trial finding of no infringement

August Tech. Corp. v. Camtek, Ltd., No. 05-1396 (D. Minn.) – obtained jury verdict of literal infringement, validity, lost profit damages, injunction, and contempt award

AmTab Mfg. Corp. v. SICO Inc., No. 11 C 2692 (N.D. Ill.) – obtained favorable claim construction and summary judgment of non-infringement, plaintiff did not appeal

Integrated Tech. Corp. v. Rudolph Techs., Inc., No. 06-2182 (D. Ariz.) – obtained jury verdict of no literal infringement

ePlus Inc. v. Lawson Software, Inc., No. 3:09-620 (E.D. Va.) – obtained dismissal of multi-million dollar damages claim; obtained jury finding of no infringement of most claims for most accused products, remaining claims invalidated on appeal

TriStar Metals Inc. v. Groomers Best, No. 4:10-508-Y (N.D. Tex.) – lead counsel for defendant in patent case; case settled

Kelora Sys., LLC v. Target Corp., No. C 11-1548 (N.D. Cal.) – counsel for defendant in patent case; case settled

Khan v. D.O.J. (B.I.A.) – obtained remand of claim for withholding or removal from Board of Immigration Appeals

Larson v. AluminArt, No. 4:2003-04244 (D.S.D.) – counsel for plaintiff in patent case; case settled

Anagram Int’l, Inc. v. Mayflower Distrib. Co., No. 07-1142 (D. Minn.) – counsel for defendant in patent case; case settled

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