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Monique Winters Macek

Special Counsel

[email protected]



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.


  • University of San Diego School of Law (JD)
  • San Diego State University (BS, Biology and Mechanical Engineering)

Recognition & Awards

  • Member, American Intellectual Property Law Association (AIPLA)


Pro Bono Viewpoint
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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Patent Owner Tip #13 for Surviving an Instituted IPR: When to Amend Claims in an IPR

August 6, 2021 | Blog | By Monique Winters Macek, Michael Newman

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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Patent Owner Tip #5 for Surviving An Instituted IPR: The Right Expert Can Save Your Patent

May 6, 2021 | Blog | By Daniel Weinger, Monique Winters Macek

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 Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity

April 21, 2021 | Blog | By Brad M Scheller, Peter Cuomo, Monique Winters Macek, Mark Hammond

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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Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court

February 25, 2021 | Blog | By Christina Sperry, Monique Winters Macek

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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Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek

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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Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation

January 24, 2018 | Blog | By Christina Sperry, Monique Winters Macek

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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USPTO Launches PTAB Procedural Reform Initiative

April 18, 2017 | Blog | By Christina Sperry, Monique Winters Macek

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings. 
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