`
`
`
`NOTE: This disposition is nonprecedential.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, ar-
`gued for appellant.
`
` TYLER R. BOWEN, Perkins Coie LLP, Phoenix, AZ,
`
`
`
`Case: 22-1435 Document: 72 Page: 2 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, ar-
`gued 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 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: 3 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 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.
`DISCUSSION
`“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
`
`
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