Monterey sues Qualcomm for Patent Infringement

On November 1, Monterey Research, an intellectual property and technology licensing company, sued Qualcomm Incorporated and its wholly owned subsidiaries Qualcomm Technologies and Qualcomm CDMA Technologies Asia-Pacific Pte for patent infringement (Monterey Research, LLC v. Qualcomm Incorporated et al 1:19-cv-02083). The complaint was filed in Delaware federal court for patent infringement on the eight Patents-in-Suit.

Monterey is the owner and assignee of the Patents-in-Suit, not the inventor.  These patents, in order, are entitled “SRAM Cell Design,” “Use  of  High-K Dielectric Material in  Modified  ONO Structure for Semiconductor Devices,” “Memory  Device  with  Fixed  Length  Non  Interruptible Burst,” “Controlled Thickness Gate Stack,” “Digital Configurable Macro Architecture,” “Method  and  Apparatus  for  Reducing  Soft  Error Rate  in SRAM Arrays Using Elevated SRAM Voltage  During Periods of Low  Activity,” “Semiconductor  Formation  Method  that  Utilizes Multiple Etch Stop Layers,” and “Integrated Circuit with Contact Region and Multiple Etch Stop Insulation Layer.” The Patents-in-Suit were developed in part by large high-technology companies like Cypress Semiconductor Corporation and are designed to improve the size, speed, and efficiency for semiconductors, integrated circuits, and products containing semiconductors and integrated semiconductors. These devices are used in products like televisions, smartphones, and tablets.

The complaints stated that Qualcomm works with third parties to “make, use, sell, offer to sell, and/or import” semiconductors, integrated circuits, and products containing semiconductors and integrated semiconductors that are covered by the Patents-in-Suit. Qualcomm also provides marketing for these products.

The complaint alleged that the Plaintiff originally contacted the Defendant to inform them of their violation of the patents, specifying the Patents-in-Suit as being infringed on, the products which were infringing on these patents, and offering to license the patents to the Defendant. Since January 2018 Qualcomm and Monterey, through its agent IPValue, have had communication through letters, emails, and in-person meetings. The complaint stated that “at no time during any of those meetings, or at any time prior to Monterey’s filing of this Complaint, did Qualcomm deny infringing any element of any claim of the Patents-in-Suit.”

Due to the alleged willful infringement by the Defendant, Monterey is pursuing advanced damages up to three times the amount of found damages as well as attorney fees and costs. They also requested that Qualcomm and its subsidiaries, divisions, and successors be directed to cease infringing on all the Patents-in-Suit. In the event that there is not a permanent injunction against Qualcomm, Monterey requested an award of mandatory licensing fees going forward. The counsel for the Plaintiff is Delaware law firm Farnan. The case has been assigned to Judge Colm F. Connolly.