Wiley Rein LLP


Scott A. Felder
Practice Areas
Education
  • J.D., University of Virginia School of Law; Order of the Coif
  • B.E., summa cum laude, Vanderbilt University
Law Journals
  • Executive Editor, Virginia Sports and Entertainment Law Journal
Bar & Court Admissions
  • District of Columbia Bar
  • Missouri Bar
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for Veterans Claims
  • U.S. District Court for the District of Columbia
  • U.S. Court of Federal Claims
  • U.S. Patent and Trademark Office

Scott A. Felder

PARTNER

202.719.7029  |  sfelder@wileyrein.com


Scott represents clients in the acquisition, protection, management, and enforcement of intellectual property rights. His practice focuses on the complex intellectual property issues confronted by government contractors, including patent rights and rights in technical data and computer software, with emphasis on the aerospace and defense sectors. Scott routinely represents clients in intellectual property disputes and negotiations with the government.

As the head of the Firm’s Patent Prosecution practice, Scott also represents clients before the United States Patent and Trademark Office, including the Patent Trial and Appeal Board.

A frequent speaker and author on intellectual property issues, Scott is the co-instructor of the Federal Publications Seminars Government Contract Intellectual Property Workshop and the co-author of a forthcoming desk reference on intellectual property in government contracts. He currently serves as a vice chair of the Intellectual Property Committee and as a co-chair of the Technology and Electronic Communications Committee of the American Bar Association's (ABA) Section of Public Contract Law.


REPRESENTATIVE EXPERIENCE

Government Contracts Intellectual Property Matters

  • Lead counsel for BAE Systems, Inc. in a patent infringement action in federal district court. Drafted and argued a dispositive motion that resulted in dismissal of the action against BAE Systems and two related actions. Lead counsel for BAE Systems in the plaintiff's appeal of the dismissal to the Federal Circuit.
  • Represents a Fortune 100 defense contractor in a patent infringement action at the Court of Federal Claims related to unmanned aerial systems. Successfully argued the authorization and consent aspects of a motion to stay a parallel district court infringement proceeding.
  • Lead counsel for the patentee in a patent infringement action against the United States related to military training and simulation technology. 
  • Provides a wide range of intellectual property-related advice and strategic counseling to a Fortune 200 government contractor.
  • Represents contractors in administrative claims for patent infringement submitted to the Department of Defense.
  • Advises government contractors in connection with licensing their intellectual property to the government and each other under contracts, subcontracts, and other funding agreements.
  • Provides advice related to the government's rights in patents under the Bayh-Dole Act and its implementing regulations.
  • Provides patent and data rights training to government contractors.

Patent Prosecution and Related Counseling

  • Prosecutes key patent applications and provides related strategic counseling for a Fortune 500 medical device manufacturer.
  • Represents a major wireless carrier in inter partes review proceedings. 
  • Provides patent prosecution, patent acquisition, and related strategic counseling services to Fingerprint Cards AB, a leading manufacturer of biometric recognition technologies.
  • Prepares and prosecutes patent applications in a number of other fields, including fluid systems, aerospace and automotive technologies, computer hardware and software, wireless communications, data security, data privacy, and data analytics. 
  • Represents clients in appeals to the Patent Trial and Appeal Board.
  • Performs validity, non-infringement, and freedom-to-operate analyses.
  • Conducts intellectual property due diligence studies.
  • Assists clients with intellectual property licensing and other transactions.

PROFESSIONAL EXPERIENCE

U.S. Army Judge Advocate General's (JAG) Corps (2002-Present)

  • Professor (2006-2010, 2013-Present) and Vice Chair (2013-Present), Contract and Fiscal Law Department, The Judge Advocate General's Legal Center and School, Charlottesville, VA. Instructs in Fiscal Law and Government Contract Law, including courses on Intellectual Property in Government Contracts.
  • Associate General Counsel/Brigade Judge Advocate, Uniformed Services University of the Health Sciences, Bethesda, MD (2010-2013)
  • Assistant Counsel, Office of Chief Counsel, Headquarters, US Army Corps of Engineers, Washington, DC (2002-2005). Advised the Chief Counsel and command senior leadership in all aspects of intellectual property acquisition, management, and enforcement. 

AFFILIATIONS

  • American Bar Association (ABA)
    • Section of Intellectual Property Law
    • Vice Chair, Section of Public Contract Law, Intellectual Property Committee (2011-Present)
  • American Intellectual Property Law Association (AIPLA)
  • American Society of Mechanical Engineers (ASME)
  • Federal Circuit Bar Association
  • Society of American Military Engineers (SAME)

HONORS & AWARDS

  • Named one of DC's "Super Lawyers" for Intellectual Property by Super Lawyers magazine (2013, 2015)

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