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 different 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). In 2018, Mr. Dowd was 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 has argued close to twenty appeals, including at the Federal Circuit, the Ninth Circuit, and the D.C. Circuit. He and Mr. Scheffel have briefed dozens of other cases throughout their years of practice.

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, government contracts, administrative law, Fifth Amendment takings cases, contract claims, government employment issues, and criminal law. .

Mr. Dowd has been recognized as a leading appellate lawyer in the D.C. area, through SuperLawyers 2020.

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.

Mr. Dowd also gives back to the appellate community. He 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. Under his tutelage, the GW team has advanced to the national rounds for the last three years (2018, 2019, 2020) and has won the competition the last two years (2019 and 2020).

Supreme Court Cases

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430 (S. Ct. 2019). Dowd Scheffel filed an amicus brief on behalf of the Honorable Paul R. Michel (ret.) of the U.S. Court of Appeals for the Federal Circuit. This case asked the Supreme Court to clarify its patent-eligibility doctrine under the Alice/Mayo framework on the subject of medical diagnostic patent claims. Our amicus brief was highlighted here.

American Legion v. American Humanist Association, 139 S. Ct. 2067 (2019). Dowd Scheffel was proud to represent the veterans organization Military Order of the Purple Heart in this important case involving religious freedom under the Establishment Clause of the U.S. constitution. The Supreme Court ruled 7 to 2 to uphold the Bladensburg Peace Cross as constitutional under the Establishment Clause of the First Amendment. Dowd Scheffel's brief 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. Dowd Scheffel's brief can be read here. Mr. Dowd was also quoted in two articles about the Court's ruling which can be found here and here.

TS Patents LLC v. Yahoo! Inc., 139 S.Ct. 1569 (S. Ct. 2019). Dowd Scheffel filed a petition for writ of certiorari for its client, TS Patents LLC, with Mr. 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 the leading patent blog Patently-O as an important follow-up case to Berkheimer.

Bond v. United States, No. 139 S.Ct. 1619 (2019). Mr. Dowd was co-counsel in a petition for writ of certiorari, led by David Boies and joined by the Honorable Richard A. Posner (ret.) of the U.S. Court of Appeals for the Seventh Circuit. The cert petition raised the issue of the appropriate legal rule for permitting pro se litigants to amend their pleadings. The case was highlighted by numerous articles in the press including:

Trading Technologies Int'l, Inc. v. IBG LLC, No. 19-353 (S. Ct. 2019). Dowd Scheffel filed an amicus brief on behalf of US Inventor in a patent case concerning patent eligibility under 35 U.S.C. 101.

Tam v. Matal, 137 S. Ct. 1744 (2017). Mr. Dowd was lead counsel on an amicus brief by leading intellectual property professors in the groundbreaking case concerning the constitutionality of Section 2 of the Lanham Act. The Supreme Court ultimately ruled that the disparagement prohibition of Section 2 was unconstitutional, in agreement with our amicus brief. Read the amicus brief here.

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

Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182 (S. Ct. 2016). Mr. Dowd was lead counsel for an amicus brief filed in support of a petition for writ of certiorari concerning the patentability of DNA-based inventions. The amicus brief is available here.

Retirement Capital Access Mgmt. Co. v. U.S. Bancorp, 136 S. Ct. 1513 (2016). Mr. Dowd was the primary author of the 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.

Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (S. Ct. 2016). Mr. Dowd was counsel of record for amicus brief in the 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.

MCM Portfolio LLC v. Hewlett-Packard Co., No. 15-1330 (S. Ct. 2015). Mr .Dowd was counsel of record for an amicus brief in support of a petition for certiorari concerning the constitutionality of post-grant proceedings under the America Invents Act. The amicus brief can be read here.

Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013). Mr. Dowd represented Nobel Laureate James D. Watson as amicus curiae in the famous "gene patent" case.

Clapper v. Amnesty International, USA, 133 S.Ct. 1138 (2013). While at a prior firm, Mr. Dowd assisted with the drafting of an amicus brief filed by six former Attorneys General urging the U.S. Supreme Court to throw out a lawsuit challenging the constitutionality of a 2008 federal statute that expanded the authority of federal officials to engage in overseas electronic surveillance. The Supreme Court agreed with the position advanced in the amicus brief.

Representative Appeals

IMAPizza, LLC v. At Pizza Ltd., No. 18-7168 (D.C. Cir.). Dowd Scheffel currently represent appellees in a case about the international application of U.S. copyright and trademark law, as well as claims based on D.C. trespass law and U.K. law. Dowd Scheffel successfully represented in the district court proceeding. The appeal was argued on February 19, 2020, by Mr. Dowd, before Judges Rogers, Tatel, and Ginsburg.

O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, No. 2019-1134 (Fed. Cir. Apr. 13, 2020). Dowd Scheffel were primary authors of the appeal brief on behalf of appellee O.F. Mossberg & Sons. The firm advanced the successful argument concerning attorney's fees. The Federal Circuit's decision can be read here.

Kaffaga v. Estate of Steinbeck, 938 F.3d 1006 (9th Cir. 2019). Dowd Scheffel represented the Estate of Thomas Steinbeck and others in an important appeal concerning copyright termination rights. The firm's successful arguments on appeal were able to convince the appeals court to vacate an award of $8 million in punitive damages. Mr. Dowd argued the case before a panel of the Ninth Circuit when it was sitting in Anchorage, Alaska. The court's decision is available here. The case was reported widely in the press, including in the following articles:

The Boeing Co. v. Secretary of the Air Force, No. 19-2147 (Fed. Cir.). Dowd Scheffel filed an amicus brief on behalf of the Chamber of Commerce of the United States and Professional Services Council. The amicus brief argues that Federal Circuit should reverse an order from Armed Services Board of Contract Appeals that construed DFARS regulation to prohibit government contractors from notifying third parties of retained data rights. The case is highlighted here, and our brief can be read here.

Federal Trade Commission v. Qualcomm Inc., No. 19-16122 (9th Cir.). Mr. Dowd prepared and filed an amicus brief on behalf of the Honorable Paul R. Michel (ret.) of the U.S. Court of Appeals for the Federal Circuit. The appeal concerns an antitrust enforcement action brought by the Federal Trade Commission against Qualcomm. Our amicus brief noted errors with the district court's analysis and urged the appeals court to reverse. Our amicus brief can be read here. Coverage of the amicus brief:

In re Conrad, No. 18-1659 (Fed. Cir. 2019). Dowd Scheffel represented the inventor of a successful child-care product. The Federal Circuit's decision can be read here. While the court rejected the inventor's appeal, the arguments Dowd Scheffel developed are now being used by the inventor in the prosecution of the continuation patent application to obtain patent protection for the novel invention. The case was highlighted on the leading patent blog Patently-O in a post about the appeal.

Bond v. United States, No. 17-2150 (4th Cir. Aug. 2, 2018). Mr. Dowd was co-counsel with the Honorable Richard A. Posner (ret.) as pro bono counsel on an appeal that concerned allegations of First Amendment and due process violations. Mr. Dowd drafted the opening appeal brief with Judge Posner, and the media reports have described the brief as "powerful" and "incisive." The case was profiled in the news here. The court's decision is here.

Dragon Intellectual Property, LLC v Unified Patents, LLC, No. 16-1813 (Fed. Cir. 2017). Mr. Dowd was engaged at the appellate level to draft and file a response to patent owner's petition for rehearing. The patent owner had lost an IPR and also lost on appeal. In the petition for rehearing, the patent owner argued that the appeal was not moot and the court should vacate the PTAB's decision under the Munsingwear doctrine. Mr. Dowd's response on behalf of Unified Patents persuaded the court to deny the patent owner's petition for rehearing. The Response Brief can be read here.

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.

Ariosa Diagnostics, Inc. v. Sequenom Inc., 809 F.3d 1282 (Fed Cir. 2015). Mr. Dowd was lead counsel for an amicus brief filed in support a petition for rehearing concerning the patentability of DNA-based inventions. The amicus brief was highlighted by Patently-O here.

Retirement Capital Access Mgmt. Co. v. U.S. Bancorp, 611 Fed. App’x 1007 (Fed. Cir. 2015). Mr. Dowd successfully briefed and argued a 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 in an appeal concerning the appealability of a final decision of the Patent Trial and Appeal Board. Mr. Dowd was principal author of the appeal briefs that persuaded the Federal Circuit to adopt the legal theory advanced 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). Mr Dowd was part of a team that successfully represented appellee in an appeal concerning the 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.

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. The court's decision is available here.

Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016). Mr. Dowd was 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). Mr. Dowd briefed and argued an appeal about the FTC's Robocall Challenge administered pursuant to the America COMPETES Reauthorization Act of 2010. The case was reported on here.

Shukh v. Seagate Technology, LLC, 803 F.3d 659 (Fed. Cir. 2015). Mr. Dowd 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. Dowd assisted with the briefing of a patent appeal to the Federal Circuit.

Exela Pharma Sciences, LLC v. Lee, 781 F.3d 1349 (Fed. Cir. 2015). Mr. Dowd briefed and argued an 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). Mr. Dowd was a member of an 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. Mr. Dowd assisted with briefing and preparation for oral argument.

Biogen MA v. Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015). Mr. Dowd filed an amicus brief in a case 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. The filing of the amicus brief was reported here and here.

Cohen v. Shinseki, No. 11-0945 (CAVC Jan. 3, 2013). Mr. Dowd was lead appellate counsel for a World War II veteran who was seriously injured twice in combat, once at the Battle of the Bulge, earning the Purple Heart with Oak Cluster and three Bronze Battle Stars. As pro bono counsel, Mr. Dowd successfully briefed the appeal to the U.S. Court of Appeals for Veterans Claims.

TrinCo Investment Co. v. United States, 722 F.3d 1375 (Fed. Cir. 2013). Mr. Dowd successfully briefed and argued an appeal concerning a 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). Mr. Dowd successfully briefed and argued a rare appeal concerning federal annuity benefits. Read the court's opinion is here.

Kam-Almaz v. United States, 682 F.3d 1364 (Fed. Cir. 2012). Mr. Dowd represented a U.S. citizen whose laptop business computer was seized by Immigration and Customs Enforcement (now U.S. Customs and Border Patrol) when returning to the United States through Dulles International Airport. Mr. Dowd wrote the appeal briefs and argued the appeal on issues of implied contract, Fifth Amendment takings, and Fourth Amendment. The opinion is here.

Ward v. U.S. Postal Service, 672 F.3d 1294 (Fed. Cir. 2012). Mr. Dowd successfully petitioned for attorney's fees under the Equal Access to Justice Act ("EAJA"). The Federal Circuit granted the fee request based on the successful appeal in Ward v. U.S. Postal Serv., 634 F.3d 1274 (Fed. Cir. 2011). In awarding the fees, the court issued three separate opinions about whether attorneys fees under EAJA can be awarded based on a successful remand to the agency. The opinions can be read here.

Ross v. Shinseki, No. 11-7025 (Fed. Cir. 2012). Mr. Dowd was lead pro bono counsel in an appeal representing a U.S. veteran seeking to overturn an adverse decision concerning service-related benefits.

Ward v. U.S. Postal Service, 634 F.3d 1274 (Fed. Cir. 2011). Mr. Dowd successfully briefed and argued an appeal concerning the wrongful termination of a 19-year employee of the U.S. Postal Service who was also a Navy veteran. The appeal resulted in an important decision concerning Due Process rights of federal employees. After the appeal, Mr. Dowd successfully negotiated a settlement with the Postal Service which returned Mr. Ward to employment and included a significant payment for lost wages as well as attorney's fees. The court's opinion is available here.

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