MONTEREY RESEARCH, LLC v. Renesas Electronics Corporation et al

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
MONTEREY RESEARCH, LLC and MR
LICENSING LLC,
Plaintiffs,
v.
RENESAS ELECTRONICS CORP.,
DENSO CORP., and DENSO
INTERNATIONAL AMERICA, INC.,
Defendants.
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CIVIL ACTION NO. 2:24-CV-00238-JRG
MEMORANDUM OPINION AND ORDER
The Court held a Pretrial Conference in the above-captioned case on December 23, 2025
regarding pending pretrial motions, motions in limine (“MILs”), and disputed exhibits between
Plaintiffs Monterey Research, LLC (“Monterey”) and MR Licensing LLC (“MRL”) (together
“Plaintiffs”), and Defendants Renesas Electronics Corp. (“Renesas”), Denso Corp., and Denso
International America, Inc. (“Denso”) (together, “Defendants”) (collectively, the “Parties”). (Dkt.
Nos. 176, 177, 178, 179, 180, 181, 218, 219, 220.) This Order memorializes the Court’s rulings
on the pretrial motions, MILs, and disputed exhibits as announced from the bench and read into
the record, including additional instructions that were given to the Parties. While this Order
summarizes the Court’s rulings as announced into the record during the Pretrial Conference, this
Order in no way limits or constrains such rulings from the bench. Accordingly, it is hereby
ORDERED as follows:
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1. 	Renesas’ Omnibus Motion for Summary Judgement of Noninfringement of the ’133
Patent, Noninfringement of the ’300 Patent, and No Indirect Infringement of the ’688
Patent (Dkt. No. 176).
The motion was GRANTED-IN-PART and DENIED-IN-PART.
Regarding 	the 	assertion 	that 	the 	Corut 	should 	grant 	summary 	judgement 	of
noninfringement of the ’133 patent on the basis that MRL cannot prove the accused products
contain a “third reset detector,” the Court GRANTED the motion with respect to the RL78
products but otherwise DENIED the motion. The Court found that the asserted claims require the
third reset detector to be a separate structure, and that no questions of material fact exist that the
RL78 products lack the claimed third reset detector. For all other asserted products, the Court
determined that material questions of fact remain which preclude granting summary judgement as
to noninfringement based on a lack of a third reset detector.
The Court DENIED the reaminder of the motion as well, finding that material questions
of fact remain as to noninfringement of the ’133, ’300, and ’688 patents. With regard to the ’300
patent, the Court determined that differing expert opinions on the “substantially neutralizing” step,
in particular, precluded granting summary judgement. With regard to the ’688 patent, the Court
found that fact questions remain as to whether Renesas was willfully blind to Monterey’s patents.
2. 	Monterey’s Motion to Dismiss Monterey for Lack of Standing (Dkt. No. 180).
This motion was GRANTED AS UNOPPOSED in light of Renesas withdrawing is
opposition to the motion. Monterey Research, LLC is DISMISSED as a party and the style of this
case, going forward, shall reflect MR Licensing LLC as the sole party plaintiff.
3. 	Renesas’ Motion to Strike Expert Testimony of Sanjay Banerjee (Dkt. No. 177).
This motion was GRANTED given Dr. Banerjee’s disavowal of the 22% figure he
provided in his report. In particular, the Court found that in light of Dr. Banerjee’s statement at his
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deposition that “[w]hether it would reduce it by 22 percent or 15 percent, I couldn’t really tell
you,” his expert testimony which culminated in said 22% figure must be struck. The Court
correspondingly struck the reliance on this 22% figure by MRL’s damages expert, Mr. Kennedy,
as discussed in relation to the motion to strike Mr. Kennedy below.
4. 	Renesas’ Motion to Strike Dr. Brogioli (Dkt. No. 178).
The first half of this motion was DENIED AS MOOT, given that it pertained to a request
to strike opinions regarding the RL78 products on which the Court previously granted summary
judgement.
The second half of this motion was DENIED as procedurally improper, as Renesas sought
to strike deposition testimony of Dr. Brogioli, rather than material from his report. The Court
provided guidance to Renesas that, to the extent Renesas believes Dr. Brogioli’s testimony at trial
exceeds or conflicts with his report, then impeachment would be the proper response.
5. 	Renesas’ Motion to Strike David Kennedy (Dkt. No. 179).
The first half of this motion was DENIED AS MOOT, given that it pertained to Mr.
Kennedy’s reliance on Dr. Brogioli’s opinions on the RL78 products.
The second half of this motion was GRANTED. The motion sought to strike Mr.
Kennedy’s opinions regarding damages related to the ’300 patent, because Mr. Kennedy relies
solely on Dr. Banerjee’s disavowed 22% figure to derive such figures. Since the Court granted
Renesas’ motion to strike Dr. Banerjee (Dkt. No. 177), the Court granted this part of the motion to
strike Mr. Kennedy as well.
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6. 	Plaintiffs’ Motion for Partial Summary Judgement of No Limitation on Damages
Under 35 U.S.C. § 287 and Summary Judgement Dismissing Defendants’ Tenth,
Fourteenth, and Seventeenth Defenses (Dkt. No. 181).
Given the representations from counsel that there remained no live issue on this motion at
the time of the Pretrial Conference, the Court found that it should be and hereby is DENIED AS
MOOT.
7. 	Parties’ Opposed Motions in Limine (Dkt. Nos. 218 and 220).
a. 	Renesas’ Motion in Limine: exclude evidence, testimony, or argument suggesting that
Renesas or Denso had an affirmative obligation to review the patents in Monterey’s
portfolio that were not identified to Renesas or Denso.
This MIL was withdrawn by Renesas.
b. 	MRL’s Motion in Limine 1: modify standing MIL 10 to prevent the parties from
introducing evidence, testimony, or argument that cited prior art was/was not
considered during prosecution of any of the asserted patents.
Counsel for the Parties read an agreement into the record stating, inter alia, that neither
side will try to put on evidence before the jury about the subjective mental processes of the
examiner during prosecution of the patents-in-suit. The Court accepts the Parties’ agreement as
read into the record and will enforce it during trial. The MIL was otherwise DENIED in light of
the narrowing and recitations in the record.
c. 	MRL’s Motion in Limine 2: preclude evidence, testimony, or arguments that figures in
the patents were copied or improperly obtained from prior art.
This MIL was GRANTED AS AGREED.
d. 	MRL’s Motion in Limine 3: preclude evidence, testimony, or arguments that the
voltage detectors in the accused products are disabled by default.
This MIL was withdrawn by MRL.
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e. 	MRL’s Motion in Limine 4: preclude evidence, testimony, or arguments regarding the
pre-litigation licensing offers from Monterey from Renesas.
This MIL was GRANTED, but the Court provided guidance to Renesas that such evidence
will be permitted by the Court to be presented to the jury only for the limited purpose of rebutting
a showing from MRL of willful blindness. The Court instructed Renesas that counsel will need to
seek and obtain leave to use the evidence in this limited way prior to its introduction at trial.
8. 	Parties’ Agreed Motions in Limine (Dkt. No. 219).
The Court acknowledged that the Parties submitted three (3) “agreed modification[s]” to
the Court’s standing MILs, and seven (7) additional “agreed” MILs. The Court DENIED these
submissions. However, it instructed the Parties that instead of accepting or granting these
submitted MILs, the Parties are ORDERED to prepare and submit any stipulations of their
choosing on the docket.
9. 	Parties’ Exhibit Disputes
The Parties reached agreement regarding their exhibits following the Court’s rulings on the
pretrial motions and 	MILs. The following 	exhibits were read into the record as PRE-
ADMITTED:
Plaintiff’s exhibits PTX-003, PTX-004, PTX-005, PTX-006, PTX-007, PTX-009, and PTX-
010 are PRE-ADMITTED.
The Court further ORDERED the Parties to prepare and submit a complete list of agreed upon
pre-admitted exhibits to the Courtroom Deputy within ten (10) days of the Pretrial Conference.
10. Additional Matters
a. 	Denso’s request for the Court to sever and stay their case.
Denso included in the Parties’ Joint Pretrial Order a reiteration of its request for the Court to
sever and stay the case against it. After hearing argument on this, the Court GRANTED this
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request to stay the case as to Denso, but DENIED their request to be severed into a separate case.
The Court further ORDERED that MRL may take up to a three (3) hour deposition of a designated
Denso witness as soon as is practicable. With that accommodation to MRL, the trial is STAYED
as to Denso, based in large part on Denso’s stipulation in the Joint Pretrial Order that it will be
fully bound by the verdict in the trial between MRL and Renesas on all issues tried to the jury
including infringement and validity (see Dkt. No. 230 at 10-11).
b. 	MRL’s request for a deposition of Mr. Snyder.
MRL raised the issue to the Court that one of the inventors of the ’133 and ’688 patents, Mr.
Warren Snyder, was not deposed during fact discovery and has now been retained by Renesas as
a consultant. Mr. Snyder is listed on Renesas’ witness list as a “may call.” After hearing argument
on the matter from both sides, the Court ORDERED that MRL may take a remote, out-of-time
deposition of Mr. Snyder lasting up to two (2) hours.
c. 	Renesas’ request for outstanding document production.
Renesas raised the issue of two documents it believes to be outstanding given an agreement
from the Parties which settled a prior dispute concerning a motion to compel in this case. After
hearing argument on the matter from both sides, as well as counsel for MRL reading into the record
the agreement the Parties reached in settling their earlier dispute, the Court determined that this
request for relief from Renesas should be and hereby is DENIED.
.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
So ORDERED and SIGNED this 7th day of January, 2026.
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