Marcus Simon

Marcus has over 23 years of experience in patent prosecution and counseling. He counsels clients on patent and trademark portfolio development and management, intellectual property litigation, intellectual property licensing, and intellectual property due diligence. His 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 Marcus’ practice includes representing clients from outside of the United States before the U.S. Patent and Trademark Office, including clients from Europe, China, Japan, Korea, and Israel.

Marcus helps 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, Marcus works with the client and Dorsey intellectual property trial attorneys to provide the most cost-effective strategy to realize the client's goals. 

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

Clients also trust Marcus’ counseling on patent infringement and validity issues. Marcus has 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. He has also performed due diligence investigations for investors and companies considering acquiring large patent portfolios.

While Marcus has specific experience with medical device, materials science, and mechanical technologies, his patent prosecution and counseling experience covers a wide range of technology areas. Some examples of specific technologies he has 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, Marcus gained practical engineering experience as a materials engineer and fracture mechanics specialist at a large aerospace corporation that designed solid-fuel rocket motors.