NEWS & UPDATES
August 1: Retired Judge Michel has recently filed a brief in support of Qualcomm in the FTC v. Qualcomm Inc. case, requiring Qualcomm to license its chips to other modern chip suppliers. This decision was reached after the company’s “no license, no chip” policy was determined to be in violation of the U.S. antitrust laws. In addition to Judge Michel, representatives from major Federal agencies also sided with Qualcomm, explaining that antitrust law action would affect their ability to use the company’s chips and ultimately pose a national security threat. In his brief, Judge Michel also argued that the Court’s interpretation of the antitrust law was a controversial one, and such an interpretation could lead to unpredictability in the patent marketplace.
June 10, 2019: The Supreme Court issued its opinion in Return Mail Inc. v. U.S. Postal Service. Return Mail was a case addressing the interplay between federal agencies and private citizens when it comes to patent rights. In particular, the dispute centered around a patent action in which Return Mail sued the U.S. Postal Service ("USPS") for infringement before the U.S. Court of Claims. Return Mail claimed the USPS infringed its patent directed to use of bar codes to facilitate the processing of undeliverable mail. The USPS, as part of its defense, filed an action at the USPTO for review of the patent under the procedures for Confidential Business Method (CBM) patent review.
The issue in the case for the Supreme Court was whether the USPS qualifies as a "person" under the relevant patent statute (the Leahy-Smith America Invents Act) that allow for challenges to the validity of patents to be made with the PTO.
Dowd Scheffel submitted amicus curiae briefs at both the petition stage and the merits stage on behalf of prominent legal scholars providing important context on whether it is appropriate to allow federal agencies to have both the power of eminent domain in the context of patent rights, as well as the ability to take actions to cancel those property rights, as would a normal person. The Amici argued against federal agencies having the right to take actions to cancel patent rights.
The Court's 6-3 opinion, authored by Justice Sotomayor, determined that a federal agency did not meet the statutory requirement of a "person" for purposes of the relevant patent statute. Specifically, the Court held that in the absence of an express definition of the term “person” in the patent statutes (or other compelling evidence of Congressional intent), the Court applies a “longstanding interpretive presumption that ‘person’ does not include the sovereign,” and thus excludes a federal agency like the Postal Service. Justice Breyer dissented (joined by Justices Ginsberg and Kagan) arguing that the language of other related patent provisions suggests that in the administrative review statutes at issue, the term "person" includes the Government. Justice Breyer's primary argument was that because the Government is authorized to obtain patents, it must be a "person" for purposes of this dispute.
The judgment of the Federal Circuit was reversed and remanded for further proceedings.
June 20, 2019: The Supreme Court recently decided the closely-watched American Legion v. American Humanist Association case, in which Dowd Scheffel filed an amicus brief in support of the American Legion’s position. The Supreme Court ruled 7 to 2 to uphold the Bladensburg Cross as constitutional under the Establishment Clause of the First Amendment. The American Humanist Association argued that the Peace Cross, a memorial for 49 World War I soldiers, was an unconstitutional display under the First Amendment. Dowd Scheffel argued on behalf of the Military Order of the Purple Heart that the Peace Cross, while a Christian symbol, represented more than Christianity and was a symbol of reverence for the fallen troops of World War I. Matthew Dowd was lead counsel for the Military Order of the Purple Heart. Mr. Dowd was also quoted in two articles about the Court's ruling which can be found here and here.
February 26, 2019: Dowd Scheffel filed petition for writ of certiorari for its client, TSPatents LLC, in TS Patents LLC v. Yahoo! Inc with Matthew Dowd as lead counsel. The case follows the precedents set by Berkheimer and Aatrix by asking the U.S. Supreme Court to address the following question: Can a court dismiss a patent infringement complaint under Rule 12(b)(6), for a lack of patent eligibility under 35 U.S.C. § 101, when the complaint and patent assert that the invention yields novel technical improvements over existing technologies, or must those factual assertions be presumed true, consistent with Ashcroft v. Iqbal, 556 U.S. 662 (2009)? The filing was highlighted on Patently-O as an important follow-up case to Berkheimer.
March 18, 2019: Dowd Scheffel, representing appellant Gail Steinbeck, filed the reply brief in Kaffaga v. Steinbeck, No. 18-5536, in the Ninth Circuit. The opening brief was filed in December. An appeal of a copyright dispute with a tortuous history, this case involves a complex web of past agreements and previous litigation regarding the rights to classic Steinbeck works like The Grapes of Wrath and East of Eden. The appeal asks the court to recognize John Steinbeck’s heirs’ termination rights in accordance with 17 U.S.C. § 304(c) and (d) notwithstanding an “agreement to the contrary.” It also asks the court to overturn the lower court’s grant of excessive punitive damages because the appellant did not have a clear understanding of her rights.
December 18, 2018: Law360 published “Will Fed. Cir. Consider the Competitor
Standing Doctrine?”, co-authored by Matthew Dowd. The article examines whether the Federal Circuit will recognize and apply the competitor standing doctrine as a basis for standing, despite not having done so in the past. The competitor standing doctrine has been applied in cases in other Article III courts where a party establishes constitutional injury in fact because a competitor was put at an advantage. The Federal Circuit has not yet adopted this standing doctrine for PTAB appeals.
December 17, 2018: Matthew Dowd is honored to join counsel of record David Boies of Boies Schiller Flexner LLP on a petition for a writ of certiorari in William C. Bond v. United States, No. 18-782. This case addresses a circuit split regarding whether a district court must provide a reason when denying a pro se litigant’s request for leave to amend a dismissed complaint. Retired Seventh Circuit Judge Richard Posner is also counsel in the case, which continues from an appeal in which Mr. Dowd and Judge Posner represented the petitioner before the U.S. Court of Appeals for the Fourth Circuit. The filing covered by Law360, and Above The Law.
July 27, 2018: Dowd Scheffel, with Matthew Dowd as lead counsel, filed an amicus
brief in Maryland-National Capital Park and Planning Commission v. American
Humanist Association on behalf of Major General Patrick Brady and Veterans Groups
Erecting and Maintaining War Memorials. The case, known as the Peace Cross case,
asks whether a war memorial violates the First Amendment’s establishment clause
merely because it is in the shape of a cross. The case has been dubbed one of the
most important cases of the Supreme Court’s term. Our brief urges the Court to
consider how current doctrine should be applied to monuments on public land like the Peace Cross which, have a religious connotation but are ultimately passive displays.
November 13, 2017: Matthew Dowd filed an amicus brief in Athena Diagnostics v.
Mayo Collaborative before the Federal Circuit on behalf of ten law professors. The
amicus brief argued that lower courts and the PTO have misunderstood the Mayo-Alice test in a way that have created indeterminate and overly restrictive doctrine on patent ineligibility under § 101. Ultimately the Federal Circuit affirmed the lower court’s decision that methods for diagnosing neurological disorders were ineligible under § 101.
March 22, 2019: Recently, Matthew Dowd of Dowd Scheffel argued a patent appeal at the Federal Circuit that was highlighted in a post about the appeal on the highly-acclaimed blog Patently-O. The court reached a decision on the appeal. The original invention of the two inventors (Joseph Conrad and Kurt Briscoe) was a urine-deflector for potty training young children. The inventors discovered that the original invention had a less-than-optimal design with a crease which collected urine are produced an odor. To improve this, the inventors filed for a new patent for his seamless design. Although the Federal Circuit affirmed the Patent Office’s rejection of the new patent application, the court's decision will prove useful for the inventors to obtain patent claims on their improved device in the future. The court’s decision can be read here.
December 17, 2018: Dowd Scheffel is pleased to share an amicus brief filed on behalf of seven leading intellectual property law professors in the Supreme Court. The case is Return Mail v. U.S. Postal Service, and the question presented is whether the U.S. Postal Service, as a federal agency, can use post-grant proceedings under the America Invents Act to invalidate a U.S. patent. The brief can be read here.
September 24, 2018: Dowd Scheffel is pleased to report a major victory for its client @pizza, a U.K.-based pizza business, in a litigation involving claims of copyright infringement, trademark infringement, and trespass. Our client @pizza was sued by D.C.-based &pizza in D.C., despite the fact that our client operates only in the United Kingdom. Dowd Scheffel sought dismissal of the claims, and Judge Kelly of the U.S. District Court for the District of Columbia granted the motion in large part. The only remaining claim is an allegation of improper "passing off," which is based entirely on U.K. law. Judge Kelly ordered the parties to submit briefing on whether that single U.K. claim should be dismissed under the doctrine of forum non conveniens. Judge Kelly's opinion can be read here.
September 5, 2018: Dowd Scheffel filed a petition for rehearing en banc in an important patent case concerning patent eligibility under Section 101 of patent law. The rehearing petition was highlighted on the leading patent blog, Patently-O, and was also covered by Law360. The Patently-O post is here. The Law360 article is here.
July 26, 2018: Dowd Scheffel filed a Supreme Court amicus brief on behalf of the Military Order of the Purple Heart in an important First Amendment case concerning a World War I veterans memorial that has stood in Maryland for over 90 years. Known as the Bladensburg Peace Cross, the memorial was erected to remember 49 men from Maryland who served their country and sacrificed their lives in that service during World War I. The case pits the long-standing memorial against the American Humanist Association, which claims the memorial is an unconstitutional establishment of religion and therefore violates the Establishment Clause of the First Amendment. The case has attracted numerous amicus briefs, as well as reporting in the local and national media. See reports by WTOP, the Baltimore Sun, Chicago Tribune, the Washington Post, NBC4, and the National Law Journal. A copy of our amicus brief is available here.
June 25, 2018: Dowd Scheffel filed a Supreme Court amicus brief on behalf of fifteen constitutional and patent law scholars in an important case concerning Covered Business Method ("CBM") reviews under the America Invents Act ("AIA"). The case -- Return Mail, Inc. v. U.S. Postal Service -- challenges whether the Postal Service, as a federal agency, is authorized to challenge a patent through the AIA process. A copy of the amicus brief is available here. The amicus brief was reported in Law360 here.
May 22, 2018: Matthew Dowd was a panelist for a webinar hosted by the Federal Circuit Bar Association. The panel discussion focused on the issue of Article III standing and appeals from the PTAB. Other panelists included Jonathan Stroud and Saurabh Vishnubhakat, and the panel was hosted by Russell Cass.
May 14, 2018: Matthew Dowd and the Hon. Richard A. Posner (ret.) filed their reply brief in the closely watched Fourth Circuit appeal, Bond v United States. The case has been widely reported in the media. See here and here. A copy of the appeal brief is available here.
May 2, 2018: Dowd Scheffel PLLC makes its official announcement. See our announcement at this link.
April 5, 2018: Mr. Dowd argued an appeal at the Federal Circuit on behalf on inventors who have created novel biological constructs called Celloidosomes. The invention has been profiled on CNN by Dr. Sanjay Gupta here.
April 2, 2018: Mr. Dowd drafted and filed an amicus brief in an important Supreme Court patent case, Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc. The cert petition presents the question of "whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention." Mr. Dowd filed the amicus brief on behalf of The Naples Roundtable, a leading intellectual property organization founding by Judge Richard Linn. The amicus brief can be read here.
March 19, 2018: Mr. Dowd filed an appeal brief in a closely watched First Amendment appeal at the U.S. Court of Appeals for the Fourth Circuit. Mr. Dowd is co-counsel with the Honorable Richard A. Posner (ret.) of the U.S. Court of Appeals for the Seventh Circuit. News reports on this matter are available here.
February 20, 2018: Mr. Dowd was quoted in an article about the Federal Circuit's use of Rule 36 as a way for deciding appeals from the U.S. Patent and Trademark Office (and in particular from the Patent Trial and Appeal Board). The article can be read here.
February 16, 2018: Mr. Dowd was quoted in an article about the Federal Circuit's use of Rule 36 as a way for deciding appeals from the U.S. Patent and Trademark Office (and in particular from the Patent Trial and Appeal Board). The article can be read here.
January 22, 2018: Mr. Dowd filed an amicus brief in an important Supreme Court case, Brott v. United States, No. 17-712. The cert petition asks the question of whether constitutional Fifth Amendment takings claims must be brought in an Article III court or if they can be litigated an Article I forum (the U.S. Court of Federal Claims). A copy of the amicus brief is here.
January 22, 2018: The U.S. District Court for the District of Columbia ruled favorably for the Firm's client SharLynn Foo. The district court again rejected the Federal Government's contention that Ms. Foo has to pay for the Department of State's mismanagement of funds. Mr. Dowd successfully opposed the government's request for rehearing on the issue of whether Foreign Service Grievance Board (with the Department of State) properly applied the legal standard when using on a request for a waiver of the repayment of an annuity overpayment. The decision rejecting the Government's request for rehearing is available here. The district court's earlier opinion grant summary judgment in favor of the Firm's client is here.
December 15, 2017: Matthew Dowd was quoted in an article on Law360 about the issue of tribal immunity and the PTAB. Titled "Could A High Court Case Blunt AIA Tribal Immunity Defense?," the article reported on a recent cert grant by the U.S. Supreme Court that may affect whether a Native American tribe can invoke tribal immunity in order to shield its intellectual property from review at the PTAB. The article can be read here.
November 27, 2017: Mr. Dowd provided expert commentary on two U.S. Supreme Court cases argued earlier the same day -- Oil States Energy Services v. Greene's Energy Group and SAS Institute v. Matal. This presentation was a Courthouse Steps program organized by the Federalist Society and can be listened to at this link.
September 1, 2017: Matthew Dowd and Chief Judge Paul R. Michel (ret.) co-authored a piece of IAM's IP Hall of Fame column. "A growing consensus recognizes that U.S patent system's dangerous decline," the authors explain. The article is available here.
August 11, 2017: Mr. Dowd represented the patent advocacy group US Inventor in challenging the USPTO's refusal to grant US Inventor a permit to conduct a protest of the USPTO's patent policy. Mr. Dowd filed an internal appeal of the agency's refusal to grant the application. After further negotiation, US Inventor successfully conducted its demonstration which was covered in the national news. See here and here.
August 10, 2017: Matthew Dowd presented a scholarship work-in-progress. The law review article, being co-authored with John Duffy (Samuel H. McCoy II Professor of Law at the University of Virginia School of Law, is tentatively titled "Patent Equity Lost." The work explores the long history of trying patent cases in equity and without juries. A working abstract can be viewed here.
July 20, 2017: By invitation, Matthew Dowd participated in a presentation about the year-in-review for Supreme Court developments in intellectual property law. The presentation was held at the Rayburn House Office Building and was attended by over 40 Congressional staffers who work for members of Congress involved in the current patent legislation efforts.
April 28, 2017: The Spring Issue of Competition Policy International journal published an article authored by by Chief Judge Paul Michel (ret.) of the Federal Circuit and Matthew Dowd of Dowd PLLC. The article, titled The Need of "Innovation Certainty" at the Crossroads of Patent and Antitrust Law. The article can be viewed here.
February 28, 2017: Matthew Dowd successfully briefed and argued a case of first impression before the U.S. Court of Federal Claims. The case involves takings claims under the Fifth Amendment of the U.S. Constitution. The federal government, as defendant, had moved for summary judgment and argued that the takings claims of the plaintiffs (who are represented by Dowd PLLC of Washington, D.C., and Wesley Higbie, Esq., of Sausalito, CA) were foreclosed. The Court of Federal Claims rejected the government's argument, ruling that factual disputes preclude a grant of summary judgment. The court's decision can be read here.
February 7, 2017: The Criterion Journal on Innovation published an article authored by by Chief Judge Paul Michel (ret.) of the Federal Circuit and Matthew Dowd of Dowd PLLC. The article, titled Understanding the Errors of eBay, offered a critical analysis of the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), and the adverse effects the decision has had on intellectual property during the past ten years. The article can be viewed here.
January 24, 2017: Matthew Dowd was counsel of record for Professors John Duffy and Richard Hynes in the Supreme Court case Impression Products, Inc. v. Lexmark International, LLC. The questions presented in the case address whether authorized sales exhaust, whether in the United States or in another country, exhaust a patentee's right in the patented product. A copy of the amicus brief is available here.
December 16, 2016: Matthew Dowd was counsel of record for Professors Gregory Dolin, Tara J. Helfman, Irina D. Manta, and Kristen Jacobsen in one of the most important cases concerning trademark protection and the First Amendment. In Lee v. Tam, the U.S. Patent & Trademark Office is contending that the trademark applicant's mark is disparaging and cannot be registered under Section 2(a) of the Lanham Act. Matthew Dowd filed the amicus brief on behalf of Professor Dolin and the other law professors detailing why the Section 2(a) is unconstitutional under the First Amendment. A copy of the amicus brief is available here.
October 5, 2016: IAM (Intellectual Asset Management) Magazine publishes an article co-authored by Chief Judge Paul Michel (ret.) of the Federal Circuit and Matthew Dowd of Dowd PLLC analyzing the critical U.S. Supreme Court decisions during the last ten years. (link, sub. req'd)
September 7, 2016: Matthew Dowd argued before the U.S. Court of Appeals for the Federal Circuit in an important appeal concerning the rights of an individual who submitted an innovative solution to the robocall problem. The appeal challenged the Federal Trade Commission's flawed decision in its 2013 Robocall Challenge prize competition, seeking solutions to block robocalls. The oral argument was covered in the news by Law360, with prior coverage in Government Executive.
September 1, 2016: Matthew Dowd achieves success in a criminal appeal before the D.C. Court of Appeals. In a unanimous opinion, the D.C. Court of Appeals ruled that our client received incorrect information about parole eligibility and is therefore entitled to a hearing on his motion to withdraw his guilty plea. Click herefor the opinion. This victory was highlighted by the D.C. Public Defender Service here.
August 22, 2016: Matthew Dowd is quoted in an article about a pending appeal before the U.S. Court of Appeals for the Federal Circuit concerning the client's legal challenge to a FTC Robocall Challenge prize competition under the America COMPETES Act of 2010.
July 8, 2016: Matthew Dowd was quoted in an in-depth article on Law360 about the current state of patent law, titled The Battle for Patent Law. (Link)
June 16, 2016: At his former firm, Matthew Dowd argued a pro bono case before the U.S. Court of Appeals for the Ninth Circuit before Judges Schroeder, Tashima, and Owens. The appeal challenged the district court's summary judgment in favor of the Commissioner of Social Security's decision to reduce the appellant's supplemental security income benefits under Title XVI of the Social Security Act. At the end of the oral argument, Judge Tashima commended Mr. Dowd for taking on the pro bono argument.
June 10, 2016: Matthew Dowd was quoted in an article on Law360 about effective brief writing, titled 5 IP Cliches You Need To Avoid. (link)
February 26, 2016: While at his former firm, Matthew Dowd was named to the Editorial Advisory Board for Law360. Mr. Dowd continues in this capacity. (Link)