© 2018 by Dowd Scheffel PLLC. 

APPEALS

Dowd Scheffel’s in-depth and long-standing appellate experience traces its roots to the U.S. Court of Appeals for the Federal Circuit. The Firm was founded by two attorneys who clerked for two separate judges of the Federal Circuit. Throughout the years, Mr. Dowd and Mr. Scheffel have represented clients in all stages of appeals and have been involved in seminal patent law cases.

 

For example, Mr. Dowd represented Nobel Laureate James Watson in the famous “gene patent” case, Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2017).  He has argued fifteen appeals at the Federal Circuit and briefed dozens of others.  

Beyond intellectual property appeals, the Firm’s appellate practice draws on its depth of experience in appeals courts throughout the country and in all types of civil litigation, administrative law, Fifth Amendment takings cases, contract claims, government employment issues, and criminal law.  In 2018, Mr. Dowd is co-counsel with the Hon. Richard Posner (ret.) of U.S. Court of Appeals for the Seventh Circuit in an appeal before the U.S. Court of Appeals for the Fourth Circuit.  

Mr. Dowd and Mr. Scheffel have been involved in dozens of appeals to the Federal Circuit, in both cases that they tried in district courts, and cases where they were brought in to provide their specific appellate expertise.  Some of these appeals are identified below.  

 

In addition, Mr. Dowd is currently appointed as a Professorial Lecturer in Law at The George Washington University Law School.  He teaches appellate advocacy and is the coach for the student moot court team for the AIPLA Giles Sutherland Rich Moot Court Competition.  

 

Representative Appeals and Amicus Briefs

 

ABT Holding Co. v. Garnet BioTherapeutics, Inc., No. 16-2116 (Fed. Cir. 2016).  Lead counsel in appeal of PTO interference decision involving patents relating to stem cell technology.  Main author of brief and argued the appeal on behalf of appellee Garnet.  After oral argument, the client successfully settled the case, whereby Garnet received, among other consideration, $500K cash payment and 1 million shares of Athersys common stock plus $250K in each of the next four quarters.  The appeal brief is here.

 

Impression Products, Inc. v. Lexmark Int'l, LLC, 137 S. Ct. 1523 (2017).  Counsel of record for Professors John Duffy and Richard Hynes in Supreme Court case concerning patent exhaustion and whether the doctrine of patent exhaustion extends to goods sold overseas.  The amicus brief is here.

 

Retirement Capital Access Mgmt. Co. v. U.S. Bancorp, 136 S. Ct. ___ (2016). Primary author of Brief in Opposition that persuaded the U.S. Supreme Court to deny a petition for writ of certiorari.  This case was highlighted on Patently-O here.  A copy of the Brief in Opposition is here.

 

Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182 (S. Ct. 2016) and Ariosa Diagnostics, Inc. v. Sequenom Inc., 809 F.3d 1282 (Fed Cir. 2015). Lead counsel in amicus brief filed in support petition for writ of certiorari concerning the patentability of DNA-based inventions. The amicus brief is available here.  Matt also filed an amicus brief in support of the rehearing petition before the en banc Federal Circuit, which was highlighted by Patently-O here.

Retirement Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed. App’x 1007 (Fed. Cir. 2015). Successfully briefed and argued Federal Circuit appeal affirming the PTAB’s decision in a covered business method (CBM) review of a patent asserted against multiple financial institutions.

Phigenix, Inc. v. Immunogen Inc., 845 F.3d 1168 (Fed. Cir. 2017).  Mr. Dowd was lead counsel (at former firm) in appeal concerning the appealability of a final decision of the Patent Trial and Appeal Board.  Mr. Dowd was principal author of appeal briefs that persuaded the Federal Circuit to adopt a broad legal rule about what evidence could support Article III standing on appeal from the PTAB.  The court's decision can be read here.

Astornet Technologies, Inc. v. BAE Systems, Inc., 802 F.3d 1271 (Fed. Cir. 2015). Successfully represented appellee in appeal concerning scope and application of 28 U.S.C. 1498(a), which governs claims of patent infringement against the federal government.  Mr. Dowd was the primary brief author of appellees' response brief.  The court's decision can be read here

 

MCM Portfolio LLC v. Hewlett-Packard Co., No. 15-1330 (S. Ct. 2015). Counsel of record for amicus brief in support of petition for certiorari concerning to the constitutionality of post-grant proceedings under the America Invents Act.  Read the amicus brief here.

Halo Electronics, Inc. v. Pulse Electronics, Inc., Nos. 14-1513 and 14-1520 (S. Ct. 2015). Counsel of record for amicus brief in Supreme Court case addressing enhanced damages in patent infringement cases and the proper interpretation of 35 U.S.C. § 284.  Read the amicus brief here.

 

White v. United States, 1346 A.3d 101 (D.C. 2016). Mr. Dowd successfully briefed and argued a pro bono criminal appeal concerning a Sixth Amendment challenge to a plea agreement concerning second degree murder.  


Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016). Counsel of record for amicus brief in support of petition for rehearing en banc concerning whether the PTAB or the Director of the USPTO is authorized to institute an inter partes review under the America Invents Act.

 

Frankel v. United States, 842 F.3d 1246 ( (Fed. Cir. 2016).  Briefed and argued appeal about the FTC's Robocall Challenge administered pursuant to the America COMPETES Reauthorization Act of 2010. The 

 

Shukh v. Seagate Technology, LLC, 803 F.3d 659 (Fed. Cir. 2015).  Matt authored and filed an amicus brief on behalf of two academics in support of a rehearing petition.  The rehearing petition raised the question of whether the “automatic assignment” rule first announced in FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), should be overruled.  The amicus brief can be read here.


TomTom, Inc. v. Adolph, 790 F.3d 1315 (Fed. Cir. 2015).  Mr. dowdAssisted with briefing of patent appeal to the Federal Circuit.

 

Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349 (Fed. Cir. 2015).  Briefed and argued appeal concerning the validity of the PTO's decision to revive an abandoned international patent application).  Listen to the oral argument here.  Read the decision  here.

 

Salem Financial, Inc. v. United States, 786 F.3d 932 (Fed. Cir. 2015).  Member of appellate team successfully challenging  the decision of the U.S. Court of Federal Claims in an action to recover a refund of over $600 million.  Assisted with briefing and preparation for oral argument. 

 

Biogen MA v. Japanese Foundation for Cancer Research, 785 F. 3d 648 (Fed. Cir. 2015).  Filed amicus brief in Federal Circuit appeal concerning the appealability of an interference under the America Invents Act.  Although the court declined to entertain the amicus brief, the court did agree with legal argument advanced in the brief.  Read the court's opinion here.  Filing of the amicus brief was reported here and here.

 

Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013). Represented Nobel laureate James D. Watson as amicus curiae in gene patent case.  

TrinCo Investment Co. v. United States, 722 F.3d 1375 (Fed. Cir. 2013).  Successfully briefed and argued appeal concerning Fifth Amendment takings claim against the federal government.  Listen to the argument here.  Read the opinion here.


King v. Office of Personnel Management, 730 F.3d 1342 (Fed. Cir. 2013).  Successfully briefed and argued a rare appeal concerning federal annuity benefits.  Mr. Read the court's opinion is here.

 

Kam-Almaz v. United States, 682 F.3d 1364 (Fed. Cir. 2012). Briefed and argued implied contract claim.

Ward v. U.S. Postal Service, 634 F.3d 1274 (Fed. Cir. 2011). Successfully briefed and argued government employee case. 

 

In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011). Lead counsel and author of amicus brief for Cantor Fitzgerald in support of petition for rehearing en banc.  The brief is available here.