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About Marc

Marc Wefers, Ph.D., is a principal in the Boston office of Fish & Richardson P.C. 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 U.S. Patent and Trademark Office (USPTO), and litigation, especially in the technical areas of physics, optics, and chemistry. Marc has been lead counsel in five interferences before the USPTO, obtaining a favorable judgment in every instance, two of which have been appealed to, and affirmed by, the U.S. Court of Appeals for the Federal Circuit. Marc is currently lead counsel in a sixth interference, which is ongoing. Marc has also been lead counsel on ten inter-partes review (IPR) proceedings at the USPTO, two for petitioners and eight for patent owners. The two IPR proceedings on behalf of petitioners led to the cancelation of all requested claims, and the eight IPR proceedings for patent owners 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. Marc has also been involved in adversarial patent proceedings in Germany, the Netherlands, and Japan.

Representative clients and technologies include: Carl Zeiss SMT GmbH (optical microlithography equipment), Lipocine Inc. (pharmaceutical formulations)., Lightelligence Inc.. (photonics),  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).

Publications

  • “Space-time profiles of shaped ultrafast optical waveforms,” IEEE J. Quan. Elec. 32, 161 (1996)
  • “Generation of high-fidelity programmable ultrafast optical waveforms,” Opt. Lett. 20, 1047 (1995)

Technical Expertise

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.

Legal Expertise

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.

Patents

M.M. Wefers, K.A. Nelson, “Multi-Dimensional Shaping of Ultrashort Optical Waveforms,” U.S. Patent 5,682,262

M.M. Wefers, K.A. Nelson, “Mask Design for High Fidelity Generation of Programmable Femtosecond Waveforms Using Liquid Crystal Spatial Light Modulators,” U.S. Patent 5,719,650

U.S. District Court Cases

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.

Clarus Therapeutics, Inc. v. Lipocine, Inc. (Interference No. 106,045)

Counsel for Appellee Lipocine in appeal by Clarus from adverse decision by BPAI in Interference No. 106,045 relating to oral pharmaceutical formulations.

Post-Grant Proceedings

Carl Zeiss SMT GmbH v. Nikon Corp., IPR2013-00362

Carl Zeiss SMT GmbH v. Nikon Corp., IPR2013-00363

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.

Finisar Corp. v. Thomas Swan & Co. Ltd., 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

Fujitsu Network Communications, Inc. 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

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.

Lipocine, Inc v. Clarus Therapeutics, Inc, Interface No. 106,045

Lipocine, Inc v. Clarus Therapeutics, Inc, Interface No. 106,120

Lead counsel for Lipocine in interferences relating to oral pharmaceutical formulations

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

Focus Areas
Education

J.D. magna cum laude, Suffolk University Law School (2002)


Ph.D., Physical Chemistry, Massachusetts Institute of Technology (1996)


B.S. with highest distinction, Chemical Physics, University of Toronto (1991)

Admissions
  • U.S. Patent and Trademark Office 2005
  • Massachusetts 2002
  • U.S. Court of Appeals for the Federal Circuit 2010

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