Marc S. Johannes

Overview

Marc Johannes has more than 20 years of experience in all aspects of patent prosecution and client counseling including patent procurement, patent portfolio strategy and development, patent validity and infringement opinions, due diligence, clearance studies, and advising clients in both offensive and defensive utilization of their intellectual property.

Marc’s experience spans a variety of technologies, such as extensive experience in imaging technologies including x-ray, magnetic resonance imaging (MRI), medical imaging and equipment, computer vision and image processing, pattern recognition, and also includes experience in speech recognition and speech synthesis, electrical and optical devices, semiconductor devices, networking, MEMS devices, and all aspects of software.

Prior to joining Wolf Greenfield, Marc served as a software engineer with Scansoft, Inc., where he was responsible for the design and development of an image acquisition, Image Processing, and Optical Character Recognition application programming interface for document analysis and management applications.

Marc’s graduate research has included projects in the areas of pattern recognition, computer vision and shape modeling, image understanding, and speech recognition systems.

Experience

• Developed and managed patent portfolio for medical imaging/device start-up company to strategically position the company for acquisition. The value of the patent portfolio factored significantly in the acquisition by industry leader.
• Represented numerous start-up, small, and mid-sized clients to optimize resources to build, develop, and manage strategic patent portfolios.
• Assisted in multiple reexamination proceedings to obtain confirmation of all original claims of respective patents asserted by client in parallel litigation.
• Successfully challenged the validity of multiple patents owned by client’s direct competitor via reexamination proceedings. All claims for which reexamination requested were found unpatentable and were canceled and the decision was upheld by the Federal Circuit.
• Evaluated patents and advised client in connection with avoiding litigation with multiple non-practicing entities without needing to license the subject patents.
• Extensive experience in representing both patent challengers and patent owners in AIA post-grant proceedings.

Recognition

• Ranked among the top 5% of best performing practitioners—out of over 6,000 attorneys—when representing petitioners in inter partes reviews before the Patent Trial and Appeal Board (PTAB) in Patexia’s IPR Intelligence Report
• Repeatedly named one of Massachusetts Super Lawyers’ “Rising Stars” in the field of intellectual property law