IPValue’s Monterey Research Sues Renesas, Alleged Customer DENSO – Patent

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).

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