Monterey Research, LLC v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MONTEREY RESEARCH, LLC,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1430, 2022-1773
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00989, IPR2020-01493.
______________________
Decided: October 13, 2023
______________________
D ONALD L EE J ACKSON, Davidson Berquist Jackson &
Gowdey, LLP, McLean, VA, argued for appellant.
BENJAMIN T. HICKMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by P ETER J. AYERS ,
Case: 22-1430 Document: 54 Page: 1 Filed: 10/13/2023

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MONTEREY RESEARCH , LLC v. VIDAL 2
T HOMAS W. K RAUSE, F ARHEENA YASMEEN RASHEED, P ETER
J OHN SAWERT .
______________________
Before D YK, T ARANTO, and CHEN, Circuit Judges.
D YK, Circuit Judge.
Monterey Research, LLC (“Monterey”) appeals the Pa-
tent Trial and Appeal Board’s (“the Board”) final written
decisions in IPR2020-00989 (the “’989 IPR”) and IPR2020-
01493 (the “’1493 IPR”). In the ’989 IPR, the Board found
claims 1–3, 6–10, 13–17, and 20 of U.S. Patent
No. 6,765,407 (the “’407 patent”) unpatentable as obvious
in view of U.S. Patent No. 6,728,871 (“Vorbach”). In the
’1493 IPR, the Board found claims 1, 3, 8, 10, 15, and 17 of
the ’407 patent unpatentable as anticipated by the
PIC16C7X Datasheet (“PIC16”) and claims 2, 9, and 16 un-
patentable as obvious in view of PIC16 and AN594 Appli-
cation Note (“AN594”). We affirm.
BACKGROUND
The ’407 patent, entitled “Digital Configurable Macro
Architecture,” concerns a programmable digital device,
which utilizes a programmable digital circuit block. The
programmable digital circuit block can be “programmed to
perform any one of a variety of predetermined digital func-
tions by changing the contents of a few registers therein.”
’407 patent, J.A. 59, col. 2, ll. 5–7. “[T]he circuit compo-
nents of the programmable digital circuit block are de-
signed for reuse in several of the predetermined digital
functions such that to minimize the size of the programma-
ble digital circuit block.” ’407 Patent, J.A. 59, col. 2, ll. 9–
13.
Advanced Micro Devices, Inc. (“AMD”) filed a petition
for inter partes review, challenging claims 1–3, 6–10, 13–17,
and 20 of the ’407 patent. AMD argued the claims were
unpatentable as obvious over Vorbach. The Board
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MONTEREY RESEARCH , LLC v. VIDAL 3
instituted review on the challenged claims in the ’989 IPR.
The Board found that 1–3, 6–10, 13–17, and 20 were un-
patentable as obvious over Vorbach. Monterey appeals this
decision (Appeal No. 22-1430).
Qualcomm Inc. (“Qualcomm”) filed a petition for inter
partes review, challenging claims 1–3, 7–10, and 14–17 of
the ’407 patent. Qualcomm argued claims 1, 3, 7, 8, 10, 14,
15, and 17 were anticipated by PIC16. The Board insti-
tuted review of the challenged claims in the ’1493 IPR. The
Board determined that claims 1, 3, 8, 10, 15, and 17 were
anticipated by PIC16 and claims 2, 9, and 16 were obvious
in view of PIC16 and AN594. Monterey appeals the
Board’s determinations (Appeal No. 22-1773).
The two appeals were consolidated. AMD and Qual-
comm decided not to participate in these appeals. The PTO
intervened to defend the Board’s decisions.
D ISCUSSION
“In reviewing the Board’s determination on the ques-
tion of obviousness, we review the Board’s legal conclusions
de novo and its factual findings for substantial evidence.”
Becton, Dickinson & Co. v. Baxter Corp. Englewood, 998
F.3d 1337, 1339 (Fed. Cir. 2021) (internal quotation marks,
citation, and alterations omitted). “What a reference
teaches and the differences between the claimed invention
and the prior art are questions of fact which we review for
substantial evidence.” In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1280 (Fed. Cir. 2015).
In the ’989 IPR (Appeal No. 22-1430), we see no legal
error in the Board’s obviousness determination based on
Vorbach and conclude that it was supported by substantial
evidence. Because we affirm the Board’s obviousness de-
termination based on Vorbach, we need not reach the an-
ticipation and obviousness determinations based on PIC16
in the ’1493 IPR (Appeal No. 22-1773).
AFFIRMED
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