Marc Wefers is a Principal in the Boston office of Fish & Richardson. He joined the firm in 1996, having previously served as an associate, patent agent, and technology specialist with the firm.
Marc’s practice focuses on patent strategy, including patent prosecution, adversarial proceedings before the United States Patent and Trademark Office (USPTO), and litigation, especially in the technical areas of physics, optics, and chemistry. Marc has been lead counsel on four interferences before the USPTO, obtaining a favorable judgment in every instance, one of which was appealed and affirmed at the United States Court of Appeals for the Federal Circuit. Marc has also been lead counsel on ten inter-partes review (“IPR”) proceedings at the USPTO, two for Petitioner and eight for Patent Owner. The two IPR proceedings on behalf of a Petitioner led to the cancelation of all requested claims, and the eight IPR proceedings for a Patent Owner led to favorable settlements. Prior to such AIA proceedings Marc was involved in many reexamination proceedings at the USPTO. Marc has also been the technical lead in various patent litigations relating to fiber lasers, fiber amplifiers, and microlithography exposure systems.
Representative clients and technologies include: Carl Zeiss SMT GmbH (optical microlithography equipment), Fujifilm Electronic Materials USA, Inc. (semiconductor chemistry), IPG Photonics Inc. (fiber lasers and amplifiers), Osram Opto Semiconductors GmbH (light-emitting diodes), WiTricity Inc. (wireless power transfer), Thomas Swan & Co. Ltd. (optical networking equipment), and Zygo Corporation (optical interferometry). Several of Marc’s former start-up clients were acquired on favorable terms: Ahura Scientific Inc. (acquired by Thermo Fisher Scientific in 2010 for $145 million) and Rhythmia Medical Inc. (acquired by Boston Scientific in 2012 for $90 million, and an additional $175 million in contingent payments).
Prosecuted and analyzed patent applications in areas such as optics, interferometry (e.g., distance measuring interferometry and surface profiling interferometry), spectroscopy (including medical diagnostic techniques and material characterization techniques), biomedical imaging, optical waveguides, optical routers, semiconductors, mass spectroscopy, liquid crystal devices, chemical vapor deposition, amorphous diamond coatings, medical devices, tissue engineering, microlithography, light-emitting diodes, and wireless energy transfer.
Experience with patent prosecution, patent portfolio management, contentious matters before the United States Patent & Trademark Office (USPTO) (including ex parte reexamination, inter partes reexamination, interference, and inter-partes review), due diligence on patent portfolios, patent opinions, patent litigation, and licensing.
Patent Litigation Examples
Nikon Corporation v. ASML Lithography, Inc. and Carl Zeiss SMT AG – (Case No. C02-5081-MHP)
Technical lead for Carl Zeiss SMT AG in litigation relating to optical exposure systems for microlithography.
Scientific-Atlanta v. IPG Photonics Corp. – (Case No. 05 CV 10850 (RWZ)
Spectra Physics Inc. v. IPG Photonics Corp. – (Case No. C 06-03953-JF (RS) MED)
IMRA America Inc. v. IPG Photonics Corp. – (Case No. 2:06-15139 (ADT) (MKM)) CardioFocus Inc., v. Candela Corp.; IPG Photonics Corp.; Photomedex, Inc.; Surgical Laser Technologies Inc.; Xintec Corp.; Trimedyne Inc.; Laserscone; Cardiogenesis Corp., and New Star Lasers, Inc. – (Case No. 1:08-cv-10285 NMG)
Technical lead for defendant IPG Photonics in several litigations relating to fiber lasers and fiber amplifiers, including in related proceedings in Europe and Japan.
Omura v. Shafer, CAFC No. 2010-1357 (Interference No. 105,678)
Counsel for Appellee Shafer (real party Carl Zeiss SMT) in appeal by Omura (real party Nikon Corp.) from adverse decision by BPAI in Interference No. 105,678 relating to optical projection objectives used in microlithography.
Post-Grant USPTO Proceedings Examples
IPR2013-00362 – Carl Zeiss SMT GmbH v. Nikon Corp.
IPR2013-00363 – Carl Zeiss SMT GmbH v. Nikon Corp.
Lead counsel for Carl Zeiss SMT before the PTAB in inter-partes review petitions relating to microlithography patents owned by Nikon, both of which led to final PTAB decision canceling all claims for which IPR was requested.
IPR2014-00460 – Finisar Corp. v. Thomas Swan & Co. Ltd.
IPR2014-00461 – Finisar Corp. v. Thomas Swan & Co. Ltd..
IPR2014-00462 – Finisar Corp. v. Thomas Swan & Co. Ltd.
IPR2014-00465 – Finisar Corp. v. Thomas Swan & Co. Ltd.
IPR2014-01381 – Fujitsu Network Communications, Inc. v. Thomas Swan & Co. Ltd.
IPR2014-01382 – Fujitsu Network Communications, Inc. v. Thomas Swan & Co. Ltd.
IPR2014-01383 – Fujitsu Network Communications, Inc. v. Thomas Swan & Co. Ltd.
IPR2014-01384 – Fujitsu Network Communications, Inc. v. Thomas Swan & Co. Ltd.
Lead counsel for Thomas Swan & Co. Ltd. as Patent Owner in several IPR proceedings relating to optical networking equipment, all of which settled thereby leaving the patents in force.
Shafer v. Omura, Interference Nos. 105,678
Shafer v. Omura, Interference Nos. 105,749
Shafer v. Omura, Interference Nos. 105,753
Shafer v. Omura, Interference Nos. 105,834
Lead counsel for Shafer (real party Carl Zeiss SMT) against Omura (real party Nikon Corp.) in several patent interferences before the BPAI at the USPTO relating to optical projection objectives used in microlithography.
Inter Partes Reexamination Control No. 95/001,527
Inter Partes Reexamination Control No. 95/001,666
Inter Partes Reexamination Control No. 95/001,524
Inter Partes Reexamination Control No. 95/001,678
Inter Partes Reexamination Control No. 95/001,770
Counsel for Carl Zeiss SMT in various inter partes reexaminations relating to optical systems for microlithography.
Ex Parte Reexamination Control No. 90/010,578
Ex Parte Reexamination Control No. 90/010,194
Ex Parte Reexamination Control No. 90/008,971
Ex Parte Reexamination Control No. 90/010,650
Counsel for IPG Photonic in various ex parte reexaminations proceedings related to fiber amplifiers and fiber lasers