Monterey Research, LLC has brought four more patents into the litigation campaign that it began back in November 2019. It has done so through a new Eastern District of Texas suit filed against both DENSO and Renesas Electronics (2:24-cv-00238), DENSO as the alleged customer of the wide array of accused semiconductor devices and integrated circuits, including certain embedded flash memory devices, as well as microcontrollers. Past defendants in this campaign include AMD, Broadcom, Marvell, and Qualcomm, as well as Nanya Technology and STMicro, the cases against which are on the verge of closure after extensive activity before the USPTO over the patents asserted there.
Monterey Research’s newly asserted patents generally relate to “erasing a memory cell with a substrate” (6,243,300); providing a “system level reset function for an electronic device” (7,089,133); a semiconductor device with a “voltage generating circuit” (7,679,968); and a circuit with a “plurality of circuit blocks”(7,825,688). All were once held by Cypress Semiconductor (acquired by Infineon in April 2020), which assigned Monterey Research its extensive portfolio, with assets numbering in the thousands, through a series of transactions dated between August 2016 and December 2019. The original development work for the ‘300 patent actually occurred at AMD, winding its way through acquisitions into Monterey’s current hands.
Monterey’s campaign is not the first to see assertion of the ‘688 patent. Cypress asserted it, with two others, in a case filed against Silego Technology in September 2013. Silego answered the complaint, after which little happened before an apparent settlement ended the litigation in May 2014. Silego was acquired by Dialog Semiconductor in 2017; Dialog was acquired by Renesas in 2021. Monterey pleads willfulness based on alleged meetings with Renesas “about potential licensing in 2017 and 2018”, after which Renesas purportedly stopped responding. Per Monterey, that silence prompted it to approach Renesas’s “customer Denso”, which simply referred Monterey back to Renesas.
The prior defendants responded to Monterey’s complaints, in part, by filing petitions for inter partes review (IPR) and ex parte reexamination (EPR) of the asserted patents. Those proceedings were successful in causing the cancellation of many of the challenged claims from those asserted patents. A stipulation for a dismissal with prejudice of the case against STMicro, long stayed, has been docketed, following an unsuccessful set of Monterey appeals from various of those IPR results. A stay has been imposed in the Nanya Technology case (until April 25, 2024) to facilitate the finalization of a settlement there. Judge Nitza I. Quinones Alejandro of the Eastern District of Pennsylvania, sitting by designation of the Chief Judge of the Third Circuit, presides over both cases.
Chief Judge Rodney Gilstrap has been assigned to the new suit, with Russ August & Kabat continuing to provide representation. Monterey Research is an IPValue Management (d/b/a IPValue) plaintiff; IPValue is a subsidiary of Vector Capital. For additional background about this campaign, see “Monterey Research Sues AMD Twice More” (August 2021).
