NOTE: This disposition is nonprecedential.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

______________________ 

KAYVAN B. NOROOZI, Noroozi PC, Los Angeles, CA, argued for appellant. 

 TYLER R. BOWEN, Perkins Coie LLP, Phoenix, AZ, 

Case: 22-1435 Document: 72 Page: 1 Filed: 10/16/2023
2 MONTEREY RESEARCH, LLC v. STMICROELECTRONICS, INC. 

argued for appellee. Also represented by CHAD S.

CAMPBELL; DAN L. BAGATELL, Hanover, NH; PHILIP ALCIDE 

MORIN, San Diego, CA; THERESA H. NGUYEN, Seattle, WA; 

JONATHAN IRVIN TIETZ, Washington, DC. 

 PETER JOHN SAWERT, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by BENJAMIN T.

HICKMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN 

RASHEED. 

 ______________________ 

Before DYK, TARANTO, and CHEN, Circuit Judges.

DYK, Circuit Judge. 

Monterey Research, LLC (“Monterey”) appeals IPR decisions of the Patent Trial and Appeal Board (“Board”) finding 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. “Accessing multiple locations in response to a single address is 

called a burst mode access.” Id. at col. 1, ll. 14–15. According 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 patent claims to resolve this issue by teaching non-interruptible 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
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 references 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. Qualcomm withdrew from the Schaefer appeal (Appeal No. 22-

1771), and the Patent and Trademark Office intervened to 

defend the Board’s decision.

DISCUSSION

“Obviousness is a mixed question of fact and law.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1327 

(Fed. Cir. 2017). The Board’s legal conclusion of obviousness 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). Substantial 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 appeal.

AFFIRMED

Case: 22-1435 Document: 72 Page: 3 Filed: 10/16/2023