Monterey Research, LLC v. Stmicroelectronics, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MONTEREY RESEARCH, LLC,
Appellant
v.
STMICROELECTRONICS, INC.,
Appellee
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1435, 2022-1771
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00985, IPR2020-01492, IPR2021-00355, IPR2021-00702.
______________________
Decided: October 16, 2023
______________________
K AYVAN B. N OROOZI, Noroozi PC, Los Angeles, CA, ar-
gued for appellant.
T YLER R. BOWEN , Perkins Coie LLP, Phoenix, AZ,
Case: 22-1435 Document: 72 Page: 1 Filed: 10/16/2023

-- 1 of 3 --

MONTEREY RESEARCH , LLC v. STMICROELECTRONICS, INC. 2
argued for appellee. Also represented by CHAD S.
CAMPBELL ; D AN L. BAGATELL , Hanover, NH; P HILIP ALCIDE
MORIN, San Diego, CA; T HERESA H. N GUYEN, Seattle, WA;
J ONATHAN I RVIN T IETZ, Washington, DC.
P ETER J OHN SAWERT , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by BENJAMIN T.
HICKMAN, T HOMAS W. K RAUSE, F ARHEENA YASMEEN
RASHEED.
______________________
Before D YK, T ARANTO, and CHEN, Circuit Judges.
D YK, Circuit Judge.
Monterey Research, LLC (“Monterey”) appeals IPR de-
cisions of the Patent Trial and Appeal Board (“Board”) find-
ing claims 1–21 of U.S. Patent No. 6,651,134 unpatentable.
We affirm.
BACKGROUND
The ’134 patent is titled “Memory Device with Fixed
Length Non Interruptible Burst” and is directed to
“memory devices generally and, more particularly, to a
memory device that transfers a fixed number of words of
data with each access.” ’134 patent, col. 1, ll. 1–8. “Access-
ing multiple locations in response to a single address is
called a burst mode access.” Id. at col. 1, ll. 14–15. Accord-
ing to the patent, these “bursts” of data were difficult to
achieve in conventional Dynamic Random Access Memory
(“DRAM”) “because of the need to refresh” data within the
memory cell “once every few milliseconds” meaning bursts
would be interrupted. Id. at col. 1, ll. 22–27. The ’134 pa-
tent claims to resolve this issue by teaching non-interrupti-
ble bursts of a predetermined length.
STMicroelectronics, Inc. (“STMicro”) challenged claims
1–21 of the ’134 patent as obvious over a combination of
Case: 22-1435 Document: 72 Page: 2 Filed: 10/16/2023

-- 2 of 3 --

MONTEREY RESEARCH , LLC v. STMICROELECTRONICS, INC. 3
U.S. Patent No. 6,115,280 (“Wada”) and U.S. Patent No.
5,584,033 (“Barrett”) in IPR2020-00985. Qualcomm Inc.
(“Qualcomm”) challenged claims 1–7 and 9–21 of the ’134
patent as anticipated by U.S. Patent No. 5,600,605
(“Schaefer”) and obvious over Schaefer and other refer-
ences in IPR2020-01492. The Board found claims 1–21 of
the ’134 patent were obvious over the combination of Wada
and Barrett. Additionally, the Board found claims 1–5, 7,
9, 10, 12–18, 20, and 21 of the ’134 patent were anticipated
by Schaefer and claims 1–7 and 9–21 were obvious over
Schaefer and other references. Monterey appeals. Qual-
comm withdrew from the Schaefer appeal (Appeal No. 22-
1771), and the Patent and Trademark Office intervened to
defend the Board’s decision.
D ISCUSSION
“Obviousness is a mixed question of fact and law.” No-
vartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1327
(Fed. Cir. 2017). The Board’s legal conclusion of obvious-
ness is subject to de novo review, while “factual findings
are reviewed for substantial evidence.” Okajima v.
Bourdeau, 261 F.3d 1350, 1354 (Fed. Cir. 2001). Substan-
tial evidence is “such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
We affirm that the ’134 patent was obvious over the
combination of Wada and Barrett and conclude that the
Board’s decision was supported by substantial evidence.
Because we affirm the Board’s obviousness determination
based on Wada and Barrett, we decline to reach the issue
of anticipation or obviousness over Schaefer or the question
of whether STMicro is a proper party to the Schaefer ap-
peal.
AFFIRMED
Case: 22-1435 Document: 72 Page: 3 Filed: 10/16/2023

-- 3 of 3 --