Overview

Marc Wefers, Ph.D., has more than 20 years of experience assisting companies both large and small in obtaining patents, preparing to fight infringement allegations, and resolving disputes, both in the U.S. and internationally. He is especially well-versed in technologies involving physics, optics, and chemistry, where he has deep technical knowledge based on academic training and professional experience.

Marc has led clients in numerous contentious matters before the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office, including reexaminations, inter partes review proceedings, and patent interferences.

Specifically, Marc is the firm’s go-to attorney for patent interferences before the USPTO. As lead counsel in many interferences, he obtained a favorable judgment in nearly all instances where there has been a decision on the merits, with two affirmed on appeal by the U.S. Court of Appeals for the Federal Circuit. He has also been lead counsel in many IPR proceedings at the USPTO. Beyond the USPTO, Marc has assisted clients in adversarial patent proceedings at the European Patent Office (opposition proceedings), the German Patent Office (nullity proceedings), the Japanese Patent Office (nullity proceedings), and the District Court of the Hague in the Netherlands.

Marc also has been the technical lead on several patent litigations in U.S. District Courts and at the U.S. International Trade Commission, as well as in arbitration proceedings before the International Centre for Dispute Resolution.

He also has assisted clients in building patent portfolios and navigating competitor patent portfolios across many technical areas, including:

  • Optics
  • Interferometry (e.g., distance measuring interferometry and surface profiling interferometry)
  • Spectroscopy, including optical, electron, and mass spectroscopy, medical diagnostic techniques, and material characterization techniques
  • Biomedical imaging
  • Optical waveguides, routers, and neural networks
  • Pharmaceutical compositions
  • Semiconductor processing chemicals
  • Medical devices
  • Tissue engineering
  • Microlithography
  • Light-emitting diodes
  • Wireless energy transfer

    • Marc joined Fish & Richardson in 1996. Before becoming a partner, he was an associate, a patent agent, and a technology specialist at the firm.

    Experience

    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 Board of Patent Appeals and Interferences 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 IPR 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, Interference No. 106,045
  • Lipocine, Inc v. Clarus Therapeutics, Inc, Interference No. 106,120
  • Lead counsel for Lipocine in interferences relating to oral pharmaceutical formulations
  • SHL Medical AG v. Sanofi-Aventis Deutschland GmbH, Interference No. 106,135
  • Co-Lead counsel for Sanofi-Aventis in interference relating to a syringe carrier
  • 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

    • Testimonials

    From the Thomson Reuters’ Stand-out Lawyers 2022 survey:

    "Marc is responsive, has deep technical expertise, and is one of the smartest people I have ever known." - Nomination was non-attributable, 2019

    "He is a brilliant technologist. We are in the tech industry and it's pretty complicated technology, so you need to rely heavily on the expertise of the lawyers." - Nominated by Tim King, IPG Photonics Corporation, 2020

    Patents

  • M. Wefers, K.A. Nelson, U.S. Patent 5,682,262, Multi-dimensional shaping of ultrashort optical waveforms
  • M. Wefers, K.A. Nelson, U.S. Patent 5,719,650, Mask design for high fidelity generation of programmable femtosecond waveforms using liquid crystal spatial light modulators