Marcus Scott Simon

I have over 19 years of experience counseling clients on patent portfolio development and management, intellectual property litigation, intellectual property licensing, and intellectual property due diligence. My clients span a number of different industries, including medical devices, health care, life sciences, university research and development, energy, mining, and aerospace. A significant part of my practice includes representing clients from outside of the United States before the U.S. Patent and Trademark Office, including clients from Europe, China, and Israel.

I help clients analyze the risks associated with introducing new products, including analyzing patent infringement and patent validity issues, and preparing related opinions. When a client needs assistance dealing with an intellectual property infringement or enforcement issue, I work with the client and Dorsey intellectual property trial attorneys to provide the most cost-effective strategy to realize the client's goals.

U.S. patents in the medical device field that I prosecuted have been successfully asserted at the district court to obtain a multi-million dollar judgement. I have served as opinion counsel for a defendant in a patent infringement case in which the patent at issue was found invalid and not infringed at the district court along with the decision being upheld by the Court of Appeals for the Federal Circuit. I have performed due diligence investigations for investors considering acquiring companies with large patent portfolios.

While I have particular experience with medical device, materials science, and mechanical technologies, my patent prosecution and counseling experience covers a wide range of technology areas. Some examples of specific technologies that I have worked with include invasive and external urinary catheters, stents, bone implants, diagnostic devices, and cardiovascular devices; polycrystalline diamond cutting elements and bearings; physical and process metallurgy; chemical compositions and processes; composite materials; food science and technology; osmosis systems; and lasers, fiber optics, photodetectors, and other photonic devices.

Before practicing law, I gained practical engineering experience as a materials engineer at a large aerospace corporation that designs solid-fuel rocket motors.