Case: 22-1577 Document: 59 Page: 1 Filed: 12/12/2023
NOTE: This disposition is nonprecedential.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
______________________
2022-1577
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01124.
______________________
Decided: December 12, 2023
______________________
DONALD LEE JACKSON, RIMON, PC, McLean, VA, ar-
gued for appellant.
BENJAMIN T. HICKMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by PETER J. AYERS,
FARHEENA YASMEEN RASHEED, PETER JOHN SAWERT.
Case: 22-1577 Document: 59 Page: 2 Filed: 12/12/2023
2 MONTEREY RESEARCH, LLC v. VIDAL
______________________
Before TARANTO, CLEVENGER, and STOLL, Circuit Judges.
CLEVENGER, Circuit Judge.
Monterey Research, LLC (“Monterey”) appeals an IPR
decision 1 of the Patent Trial and Appeal Board (“Board”)
finding claims 1–19 of
U.S. Patent No. 6,629,226 (“’226 pa-
tent”) unpatentable. We affirm.
BACKGROUND
A. The ’226 Patent
The ’226 patent, titled “FIFO Read Interface Protocol,”
relates to a system of electrical circuits for storing data
packets in a buffer memory and retrieving and moving said
packets when a host system—such as a computer, disk
drive, or other such logic system— cannot receive them due
to insufficient memory or a busy network. The ’226 patent
is directed to “a method and/or architecture for implement-
ing a multiqueue first-in-first-out (FIFO) memory read in-
terface” to address synchronization issues and allow for the
management of “variable-sized data packets.” ’226 patent,
col. 1, ll. 16–29;
id. col. 2, ll. 42–59. The “multiqueue FIFO
memory” is claimed as a “multiqueue storage device” that
stores data packets in multiple queues and is coupled to an
interface (“read device”) to read and orchestrate the re-
trieval of the data packets.
Id. col. 9, ll. 50–67. Figures 3
and 4 of the ’226 patent, replicated below, represent pre-
ferred embodiments, and demonstrate the relationship be-
tween the multiqueue storage device, the read device, and
the handshaking signals used to implement the read pro-
tocol.
1 Advanced Micro Devices, Inc. v. Monterey Research,
LLC, No. IPR2020-01124,
2022 WL 213039 (P.T.A.B. Jan.
27, 2021) (“Decision”).
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MONTEREY RESEARCH, LLC v. VIDAL 3
’226 patent, Figs. 3 and 4.
As depicted in Figure 3 of the ’226 patent, the claimed
system is made up of a multiqueue storage device, depicted
in the preferred embodiment as structure “MQFIFO” that
interfaces with external read device through various sig-
nals.
Id. col. 3, ll. 21–34. For example, MQFIFO sends an
address request, labelled ADDR_REQ, to the read device,
which returns a queue address, labelled “ADDRESS,” and
a validity signal, labelled “ADDR_VALID.” J.A. 3 (citing
Case: 22-1577 Document: 59 Page: 4 Filed: 12/12/2023
4 MONTEREY RESEARCH, LLC v. VIDAL
’226 patent, col. 3, ll. 35–46). The handshaking protocol
that the system uses to transfer data is as follows: the
ADD_REQ signal requests the next queue address, which
causes the read device to return ADD_VALID, indicating
that the queue address is valid.
Id. col. 4, ll. 2–5. Then,
MQFIFO asserts DATA_VALID and DATA in response.
Id. col. 4, ll. 5–7.
As shown in Figure 4, the read device contains the
queue scheduler, which manages the data queues in
MQFIFO, and MQFIFO contains “synchronization circuit
150 [(‘SYNC 150’)], address circuit 152, read interface cir-
cuit 154, controller circuit 156, and memory circuit 158.”
J.A. 5 (citing ’226 patent, col. 4, ll. 51–65). The controller
interacts with SYNC 150 and address circuit 152 by send-
ing ADDR_REQ(@SYSCLK) to each component, after
which SYNC 150 sends ADDREQ(@INFCLK) to the read
device which returns ADDRESS(@INFCLK) and
ADDR_VALID to address circuit 152. ’226 patent, col. 5, ll.
3–9, 31–47. In response, address circuit 152 sends
ADDRESS(@SYSCLK) to controller 156, which then sends
PHY_ADDR to memory 158.
Id. col. 5, ll. 10–14;
id. col. 6,
ll. 56–59, 64–67. The exchange of data signals and address
validation “ensures that data is transferred when the
queue address is valid.” Appellant’s Br. 4 (citing J.A. 52;
J.A. 1232).
Claim 1 of the ’226 patent is representative of chal-
lenged claims 1–19:
1. An interface coupled to a multiqueue storage de-
vice and configured to interface said multiqueue
storage device with one or more handshaking sig-
nals, wherein said multiqueue storage device and
said interface are configured to transfer variable
size data packets and said multiqueue storage de-
vice is configured to generate an address request
signal.
’226 patent, col. 9, ll. 51–58.
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MONTEREY RESEARCH, LLC v. VIDAL 5
B. The Board’s Claim Construction
The Board construed “‘multiqueue storage device’ as ‘a
storage device having data organized into multiple queues,’
without any limitation on the logic or component that or-
ganizes or manages the queues—whether that logic or com-
ponent is internal or external to the multiqueue storage
device.” Decision,
2022 WL 213039, at *5. Based on the
intrinsic evidence, the Board determined that the ’226 pa-
tent, while disclosing a “multiqueue storage device” that
internally “includes the circuits that organize, manage,
and control access to the data in the multiqueue storage
device,” did not limit “the multiqueue storage device to in-
clude internal management, organization, access control,
and control of reading and writing of data into the multi-
queue storage device.”
Id. The Board also considered ex-
trinsic evidence to find that “a multiqueue storage device
implicitly requires some component or logic that organizes
or manages the queues” but that this does not require the
device itself to contain the component that organizes the
queues in the storage device.
Id. The Board therefore con-
cluded that it was not the case that “the multiqueue stor-
age device itself must control access to reading and writing
data to the queues in the multiqueue storage device.”
Id.
C. Anticipation by Joshi
Advanced Micro Devices, Inc. 2 challenged claims 1–19
of the ’226 patent as anticipated by Joshi, 3 along with ob-
viousness challenges based on combinations of other prior
art references that are not at issue in this appeal.
Id. at
2 The parties have since settled and Advanced Micro
Devices, Inc. has declined to participate in this appeal—
thus, the Director of the United States Patent and Trade-
mark Office has intervened to defend the Board’s decision
on appeal.
3
U.S. Patent No. 4,949,301 (“Joshi”).
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6 MONTEREY RESEARCH, LLC v. VIDAL
*1–2. The Board decided that, since it found that claims 1–
19 were anticipated by Joshi, it did not have to address the
merits of the other grounds for invalidity.
Id. at *16.
The Board found that, contrary to Monterey’s argu-
ments, Joshi disclosed a “multiqueue storage device” that
is “configured to generate an address request signal.”
Id.
at *9–16. The Board determined that Joshi’s components
DPC 43 and BM 38 met the limitation’s requirement for a
“multiqueue storage device” and that its components RBC
44 and FORMAC 34 comprised the “interface” that the
“multiqueue storage device” is “coupled to.”
Id. at *8–10.
The Board then concluded that, despite the intervening
steps in Joshi’s process, Joshi disclosed a “multiqueue stor-
age device [] configured to generate an address request sig-
nal” because its signals DRDREQA and DRDREQS
ultimately caused component RBC 44 to send the next
packet address to BM 38.
Id. at *12–14. Given the Board’s
findings regarding Joshi’s teachings, it concluded that
claims 1–19 of the ’226 patent are anticipated by Joshi and
thus unpatentable.
DISCUSSION
A patent claim is anticipated when each and every lim-
itation is expressly or inherently disclosed in a single prior
art reference. Nidec Motor Corp. v. Zhongsgan Broad
Ocean Motor Co.,
851 F.3d 1270, 1273 (Fed. Cir. 2017).
Whether a claim is anticipated and what a prior art refer-
ence teaches are questions of fact. In re Chudik,
851 F.3d
1365, 1371 (Fed. Cir. 2017); Para-Ordnance Mfg., Inc. v.
SGS Importers Int’l, Inc.,
73 F.3d 1085, 1088 (Fed. Cir.
1995).
This court reviews the Board’s determinations on ques-
tions of fact for substantial evidence.
5 U.S.C. § 706(2)(E).
On review for substantial evidence, this court must sustain
the Board’s conclusions when they are reasonably drawn
from the evidence in record, even if a plausible alternative
conclusion could also have been drawn from the evidence.
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MONTEREY RESEARCH, LLC v. VIDAL 7
In re Jolley,
308 F.3d 1317, 1329 (Fed. Cir. 2002). When
multiple conclusions can be reasonably drawn from the rec-
ord, and these conclusions are inconsistent with one an-
other, the “decision to favor one conclusion over the other
is the epitome of a decision that must be sustained upon
review for substantial evidence.”
Id.
The Board’s decision that the ’226 patent is anticipated
by Joshi is supported by substantial evidence.
Monterey’s arguments to the contrary on appeal pri-
marily rely on the contention that Joshi does not disclose
“an interface coupled to a multiqueue storage device” be-
cause its components DPC 43 and BM 38 cannot together
be considered a “multiqueue storage device”—however, the
Board reasonably concluded from the evidence on the rec-
ord that nothing in the claims or specification of the ’226
patent indicated that a “multiqueue storage device” must
be one physical component and, similarly, that nothing in
the patent required any minimum level of access between
multiple components to be considered one device.
Id. at *9–
10.
This court refrains from imputing the requirement of a
unitary physical structure where the claims and specifica-
tion do not require one, even when the only preferred em-
bodiment in the claimed invention shows a single physical
structure, so long as the specification doesn’t otherwise
limit the invention to a single component. Cross Med.
Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d
1293, 1309 (Fed. Cir. 2005); CCS Fitness v. Brunswick
Corp.,
288 F.3d 1359, 1367 (Fed. Cir. 2002); Gen. Elec. Co.
v. ITC,
685 F.3d 1034, 1045–46 (Fed. Cir. 2012). The ’226
patent’s claims and specification do not indicate that a
“multiqueue storage device” must be a unitary structure,
and in fact the specification makes clear that “[w]hile the
invention has been particularly shown and described with
reference to preferred embodiments thereof, it will be un-
derstood by those skilled in the art that various changes in
Case: 22-1577 Document: 59 Page: 8 Filed: 12/12/2023
8 MONTEREY RESEARCH, LLC v. VIDAL
form and details may be made without departing from the
spirit and scope of the invention.” ’226 patent, col. 9, ll. 46–
50. Therefore, the Board’s conclusion that Joshi’s disclo-
sure of DPC 43 and BM 38 meets the claim requirements
for a “multiqueue storage device” is supported by substan-
tial evidence.
Monterey’s only argument that the ’226 patent is not
anticipated by Joshi that does not rely on the contention
that DPC 43 and BM 38 cannot function as a “multiqueue
storage device” is that substantial evidence does not sup-
port the Board’s finding that Joshi’s DRDREQS and
DRDREQA signals were “address request signals” as de-
scribed in the ’226 patent because an address is not re-
turned in direct response to these signals. Appellant’s Br.
21. As the Board explained, this argument also fails be-
cause the specification and claims contain no indication
that intervening steps between the sending of a signal and
the return of an address are prohibited and instead focus
on the function of the “address request signals” in ulti-
mately causing the return of an address to facilitate the
transfer of data. ’226 patent, col 2, ll. 42–59. Monterey’s
own expert admits that “although it’s a very inefficient and
distributed method, Joshi claims that it’s generating that
address” after a sequence of steps initiated by DRDREQS
and DRDREQA. Bagherzadeh Dep. 109:18–20, Ex. 1012,
IPR2020-01124. Therefore, the Board’s conclusion that
Joshi’s DRDREQS and DRDREQA signals disclose address
request signals is supported by substantial evidence.
For the reasons stated above, we hold that the Board’s
conclusion that the ’226 patent is anticipated by Joshi was
supported by substantial evidence.
AFFIRMED
