Marcus Scott Simon

I have more than two decades of experience in patent prosecution and counseling. I counsel clients on patent and trademark 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. In addition to representing U.S. clients, I also represent clients from outside of the United States before the U.S. Patent and Trademark Office, including clients from Europe, China, Japan, Korea, and Israel.

Clients trust my ability to obtain patents that are enforceable against competitors. U.S. patents in the medical device field that I obtained have been successfully asserted at the district court level to obtain a multimillion-dollar judgement. U.S. patents in the superabrasive materials technology area that I obtained have been enforced at the U.S. International Trade Commission.

I also advise clients on new product development and introduction, including patent infringement and patent validity issues. 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.

While I have specific 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 I have worked with include invasive and external urinary catheters, ureteral and vascular stents, thrombectomy devices, bone implants, diagnostic devices, cardiovascular devices, and superelastic and shape memory alloys; 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 metallurgist and fracture mechanics specialist at a large aerospace corporation that designed solid-fuel rocket motors.