NOTE: This disposition is nonprecedential.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

______________________ 

DONALD LEE JACKSON, 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, argued for intervenor. Also represented by PETER J. AYERS,

Case: 22-1430 Document: 54 Page: 1 Filed: 10/13/2023
2 MONTEREY RESEARCH, LLC v. VIDAL

THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, PETER 

JOHN SAWERT. 

 ______________________ 

Before DYK, TARANTO, and CHEN, Circuit Judges.

DYK, Circuit Judge. 

Monterey Research, LLC (“Monterey”) appeals the Patent 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 unpatentable as obvious in view of PIC16 and AN594 Application 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 functions by changing the contents of a few registers therein.” 

’407 patent, J.A. 59, col. 2, ll. 5–7. “[T]he circuit components of the programmable digital circuit block are designed for reuse in several of the predetermined digital 

functions such that to minimize the size of the programmable 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 unpatentable 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 instituted 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 Qualcomm decided not to participate in these appeals. The PTO 

intervened to defend the Board’s decisions. 

DISCUSSION

“In reviewing the Board’s determination on the question 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 determination based on Vorbach, we need not reach the anticipation and obviousness determinations based on PIC16 

in the ’1493 IPR (Appeal No. 22-1773). 

AFFIRMED

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