Site Search
Professionals 21 results
Capabilities 9 results
Practice Area
Our Patent Litigation Practice is one of the country’s most active and highly regarded. Our seasoned patent litigators bring extensive courtroom experience to every matter we handle. According to Lex Machina, we are among the top three national patent defense firms in the country for number of appearances and cases filed, and we also were the top national defense firm for number of patent trials in the last five years (2018–2022).
Practice Area
Winston’s Intellectual Property (IP) Practice is one of the most active and highly regarded in the United States per Chambers USA, Benchmark Litigation US, and Best Law Firms®, among other ranking organizations. Our team features some of the country’s best IP lawyers, attorneys with the technical abilities to litigate and try highly complex IP disputes, and technical lawyers who provide critical advisory services.
Industry
Insights & News 78 results
Seminar/CLE
|May 13, 2025
2025 Health Care & Life Sciences Summit
Winston & Strawn is pleased to host its fifth annual Health Care & Life Sciences Summit. Clients and friends of the firm are invited to join us to network with peers and gain insights from industry leaders and legal experts. The summit will take place live at our Chicago office, and CLE-eligible recordings of the Summit’s sessions will be available shortly following the event.
Client Alert
|March 27, 2025
|5 Min Read
Patent Office Issues New Guidance for PTAB Proceedings
The U.S. Patent and Trademark Office (USPTO) has not been slow in pushing out new Patent Trial and Appeal Board (PTAB) guidance following the change in administration. Updates are listed below; please contact us with any questions.
Client Alert
|March 12, 2025
|4 Min Read
USPTO Plunges PTAB’s Fintiv Discretion Analysis Into Uncertainty
On Friday, February 28, 2025, the USPTO rescinded the June 21, 2022, memorandum from then-Director Katherine Vidal, “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum).[1] That Memorandum provided guidelines and clarity on how the PTAB should apply its precedential decision in Apple Inc. v. Fintiv Inc. The Fintiv decision outlined a case-specific six-factor balancing test for the PTAB to apply when deciding whether to exercise its discretion under 35 U.S.C. § 314(a) to deny a petition for inter partes review (IPR) where parallel litigation regarding the challenged patent is pending. In the notice of rescission, the USPTO directed parties to refer to the PTAB’s precedential Fintiv and Sotera Wireless decisions. The rescission notice further stated that any PTAB or Director Review decisions that relied on the Memorandum “shall not be binding or persuasive on the PTAB.”
Other Results 12 results
Site Content
The United States Patent and Trademark Office refers to a trade secret as a type of intellectual property. This definition of trade secret is in reference to the business ownership of a formula, pattern, compilation, program, device, method, technique, or process that provides a competitive edge. As a member of the World Trade Organization, the U.S. government has a responsibility to protect trade secrets. The passage of the Defend Trade Secrets Act of 2016 (DTSA) also increased trade secret protection. Under the DTSA, an individual or organization may be found liable in a civil case for the misappropriation of trade secrets.
Law Glossary
What Is the Patent Trial and Appeal Board?
The Patent Trial and Appeal Board (PTAB) is a tribunal within U.S. Patent and Trademark Office. The PTAB oversees trial proceedings, namely: inter partes review (IPR), post-grant review (PGR), covered business method (CBM) review, and derivation proceedings. The Board also hears appeals from adverse patentability decisions by patent examiners in original applications, reissues, and reexaminations. And, while phasing out since the passage of the America Invents Act (AIA) in 2011, the PTAB is also responsible for deciding interferences. The PTAB was previously referred to as the Board of Patent Appeals and Interferences and was renamed by the AIA.
Location
Launched in 2013, Winston & Strawn’s Silicon Valley office is home to nationally recognized attorneys that draw clients from Fortune 500 companies, startups, and everything in between. Led by Kelly Hunsaker—who has deep roots in Silicon Valley spanning nearly three decades—the office draws from the firm’s deep bench strength and global network of resources to serve clients in a variety of industries, including the semiconductor, computer hardware and software, telecommunications, life sciences, and pharmaceutical sectors. The office’s intellectual property attorneys have litigated extensively in all the top national patent litigation venues, as well as before the International Trade Commission and the Patent Trial and Appeals Board of the USPTO.