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Monique Winters Macek

Special Counsel

[email protected]

+1.858.314.1542

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Monique focuses her practice on patent prosecution and strategic portfolio counseling.  In addition to drafting and prosecuting patent applications, Monique produces infringement and validity opinions, conducts freedom-to-operate analyses, and works with clients to develop and implement offensive and defensive strategies to secure and maintain market share. She assesses competitor product lines and patent filings and helps clients determine opportunities for innovation in their own product lines, including design-around recommendations based on competitor patents.

Her clients range from startups to large, publicly traded companies in the medical device, aerospace, biotech, and action sports industries. Monique works closely with clients of all sizes to gain a deep understanding of their businesses and products. She enjoys visiting client sites to see products first-hand and to meet with engineers and the business and legal teams.

Her bio-mechanical education and engineering experience allow her to understand clients’ complex mechanical and medical devices and craft formidable patents protecting their innovations.  

Prior to joining Mintz, Monique served as a patent agent in-house at Tandem Diabetes Care, Inc. and NuVasive, Inc.  In these roles, she worked with inventors and management to participate in all aspects of intellectual property matters, including application drafting, evaluating concepts for potential patentability, and patent strategy development and analysis. She has also worked as a bio-mechanical engineer for Flex Partners, Inc.  Her engineering work revolved around medical devices such as cardiac ablation catheters, eye sensor technology, insulin pumps, and orthopedic surgical tools and implants.

viewpoints

We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform could be patented or protected under trade secret, such as related to biotech and synthetic biology.  Equally important to the discussion of how to protect components of an AI/ML platform, however, is the extent to which copyright protection may be useful or beneficial to the developer of the platform.  In this post, we explain what can be protected by copyright in an AI/ML platform.  We also explore when it is appropriate to protect portions of AI/ML platforms using a copyright, how to properly enforce copyrights, as well as when to consider using copyright protection over patent or trade secret protection.

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Mintz helped organize, and several firm attorneys made presentations at, webinars on business and legal issues co-hosted by the San Diego Volunteer Lawyer Program and the Central San Diego Black Chamber of Commerce, a pro bono project that arose from the firm’s San Diego Addressing Racial Inequality Group.
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After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. Here we provide some further information for patent owners considering ways to amend claims that are challenged in IPR by filing a reissue application or requesting reexamination.
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After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. Here we provide some instances where a motion to amend may be a favorable option for a patent owner to consider. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule 42.51(b)(2). We reviewed timing considerations and emphasized the importance of anticipating the need for additional discovery and, to the extent necessary, moving the Board as early as possible following Institution.
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The right expert can be the critical piece that saves the validity of your patent. Finding the right expert for a patent owner requires careful selection and due diligence. We previously detailed how your expert’s testimony can make or break your Patent Owner’s Response (“POR”).
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The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or patents in a licensed portfolio.
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On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan. 8, 2021). Mintz previously discussed the Federal Circuit’s decision, which found assignor estoppel to be applicable.
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On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
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When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used.  For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.”
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Recognition & Awards

  • Member, American Intellectual Property Law Association (AIPLA)

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