Litigation

Untitled case

US case filed

2:24-cv-00623

Patents at issue (1)

Summary

A US patent infringement case concerning patent 7579227 was filed in the Texas Eastern District Court.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

This patent infringement litigation, Case No. 2:24-cv-00623, was filed in the U.S. District Court for the Eastern District of Texas and has since been consolidated for pretrial issues with lead Case No. 2:24-cv-00730. The plaintiff is Advanced Integrated Circuit Process LLC (AICP), which appears to be a non-practicing entity (NPE) or patent assertion entity (PAE), given its business name and the nature of the suit against a major manufacturer. The defendant is Taiwan Semiconductor Manufacturing Company Limited (TSMC), a global leader in semiconductor manufacturing, operating as a foundry for numerous fabless semiconductor companies. The case is assigned to District Judge Rodney Gilstrap, a judge well-known for handling a significant number of patent cases in the Eastern District of Texas, a venue often favored by patent plaintiffs.

The asserted patent at issue, among others, is U.S. Patent No. 7,579,227, titled "Semiconductor device and method for fabricating the same". This patent generally describes a semiconductor device that includes a high dielectric constant gate insulating film formed on an active region of a substrate, a gate electrode on this film, and an insulating sidewall on each side of the gate electrode. A key feature is that the high dielectric constant gate insulating film extends continuously from under the gate electrode to under the insulating sidewall, with the portion under the sidewall being thinner than the portion under the gate electrode. The accused products are TSMC's semiconductor devices manufactured according to its FinFET process nodes, which AICP alleges infringe various claims of the asserted patents.

The procedural posture indicates active litigation, with filings from August and September 2024 for the consolidated cases. The consolidation for pretrial matters under the lead case suggests a coordinated discovery and motion practice schedule. The case's notability stems from it being an assertion of semiconductor fabrication patents by an NPE against a leading global foundry, potentially impacting a wide array of downstream products that rely on TSMC's manufacturing processes. Furthermore, there is a PTAB Inter Partes Review (IPR) proceeding on file for patent 7579227, indicating ongoing challenges to the patent's validity in parallel with the district court litigation.A patent infringement lawsuit, bearing Case No. 2:24-cv-00623, was initiated in the U.S. District Court for the Eastern District of Texas. This case has been consolidated for all pretrial issues with a lead case, 2:24-cv-00730. The plaintiff is Advanced Integrated Circuit Process LLC (AICP), which appears to function as a non-practicing entity (NPE) or patent assertion entity (PAE), engaged in enforcing intellectual property rights against major technology companies. The defendant is Taiwan Semiconductor Manufacturing Company Limited (TSMC), a prominent operating company globally recognized as the world's largest dedicated independent semiconductor foundry, manufacturing chips for various clients.

The core of the dispute revolves around U.S. Patent No. 7,579,227, titled "Semiconductor device and method for fabricating the same," among other asserted patents. This patent describes a semiconductor device featuring a high dielectric constant gate insulating film positioned on an active region of a substrate, with a gate electrode on this film and insulating sidewalls. A key characteristic highlighted is the continuous nature of the high dielectric constant gate insulating film, extending from beneath the gate electrode to under the insulating sidewalls, where the portion under the sidewall is thinner than the portion under the gate electrode. AICP alleges that TSMC's semiconductor devices, specifically those produced using its FinFET process nodes, infringe claims of the '227 patent and other patents in suit.

The procedural posture of the case is that it is currently active in the Eastern District of Texas, Marshall Division, presided over by District Judge Rodney Gilstrap. This court is a well-known venue for patent litigation, often chosen by plaintiffs due to its expeditious dockets and perceived plaintiff-friendly environment. The consolidation of cases 2:24-cv-00623 and 2:24-cv-00730 indicates a streamlined approach to pretrial proceedings, which is common in multi-defendant or multi-patent suits involving similar technology. The case is notable for involving an NPE asserting patents against a major semiconductor manufacturer, which can have significant implications for the semiconductor industry due to TSMC's foundational role in producing chips for a vast array of electronic devices. Additionally, the presence of Inter Partes Review (IPR) proceedings at the USPTO Patent Trial and Appeal Board concerning the '227 patent suggests a parallel challenge to the patent's validity, adding another layer of complexity to the litigation.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Key Legal Developments in Advanced Integrated Circuit Process LLC v. TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED

This patent infringement litigation, Case No. 2:24-cv-00623, was filed in the U.S. District Court for the Eastern District of Texas and has been consolidated as a member case with lead case 2:24-cv-00730, Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation. The case involves U.S. Patent No. 7,579,227.

Filing & Initial Pleadings

Advanced Integrated Circuit Process LLC (AICP) filed the patent infringement complaint against TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED (TSMC) in the Eastern District of Texas on August 1, 2024. The case was subsequently designated as a member case to a lead case against United Microelectronics Corporation (UMC), which was filed on September 6, 2024.

Pre-trial Motions of Substance

Motion to Dismiss/Transfer

TSMC filed a "SEALED MOTION to Dismiss Advanced Integrated Circuit Process LLC's Complaint Under Fed. R. Civ. P. 12(b)(2) for Lack of Personal Jurisdiction or in the Alternative Transfer to the Northern District of California Pursuant to 28 U.S.C. § 14" on August 1, 2024. A docket entry from March 17, 2025, further references this motion. On December 12, 2024, an unopposed motion for an extension of time to file a response to UMC's motion to dismiss was granted by District Judge Rodney Gilstrap, with responses due by January 9, 2025.

Motion to Stay Pending Inter Partes Review (IPR)

TSMC filed an "OPPOSED MOTION to Stay Pending Inter Partes Review" (Docket entry 99) on an unspecified date, and a reply to the response to this motion was filed on May 20, 2025 (Docket entry 109). A sealed sur-reply related to this motion was filed on May 28, 2025 (Docket entry 110). UMC did not join TSMC's motion to stay the district court lawsuit pending the outcome of IPR petitions, which TSMC filed on April 25, 2025.

Claim Construction (Markman) Outcomes

As of February 21, 2025, no Markman order has been entered in the consolidated actions. The parties are expected to include any indefiniteness arguments in their Markman briefing. The court has ordered the parties to file a Joint Notice regarding mediation within fourteen days of the issuance of the Court's claim construction order.

Discovery Milestones

AICP sought and UMC did not oppose leave to amend its Disclosure of Asserted Claims and Infringement Contentions under Local Patent Rules 3-1 and 3-2. This amendment was intended to correct a formatting error and provide additional detail regarding the representativeness of charting exemplary products. Discovery has included at least eleven visits by AICP's designated reviewers to review TSMC's sensitive technical information and one visit for UMC's. Three motions to compel discovery have been filed and briefed.

Present Posture & Scheduled Events

The case is currently active. A "SECOND DOCKET CONTROL ORDER" was issued on February 21, 2025, for the consolidated cases. This order sets a jury selection date for June 22, 2026, in Marshall, Texas. Dispositive motions may not be filed after a certain deadline without leave of the Court.

Parallel PTAB IPR/PGR Proceedings

While the case metadata specifies patent 7579227, the provided search results mention IPRs related to other patents in the consolidated litigation, specifically "TSMC v AICP, IPR2025-00830" and "IPR2025-01093" concerning patent 8,587,076. TSMC filed a motion to stay the district court lawsuit pending the outcome of its IPR petitions on April 25, 2025. It is not explicitly stated whether an IPR for patent 7579227 has been filed, or what the outcome of the motion to stay the district court case pending IPRs is. Further investigation would be needed to determine if IPRs specific to U.S. Patent No. 7,579,227 have been initiated and their status.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Plaintiff Advanced Integrated Circuit Process LLC (AICP) is represented by counsel from Susman Godfrey LLP and Miller Fair Henry PLLC. The case 2:24-cv-00623 has been consolidated for pretrial issues with lead case 2:24-cv-00730.

The counsel of record for Advanced Integrated Circuit Process LLC include:

From Susman Godfrey LLP:

  • Justin Adatto Nelson (Lead Counsel)
    • Firm: Susman Godfrey LLP, Houston, TX
    • Experience Note: Justin Nelson is a partner at Susman Godfrey LLP and has been recognized for his work in high-stakes patent litigation.
  • Ian M. Gore (Lead Counsel)
    • Firm: Susman Godfrey L.L.P. (also shown as appearing in lead case 2:24-cv-00730)
    • Experience Note: Ian Gore is a partner at Susman Godfrey L.L.P. with a focus on intellectual property and patent infringement cases.
  • Kemper P. Diehl (Counsel)
    • Firm: Susman Godfrey LLP
    • Experience Note: Kemper Diehl is an associate at Susman Godfrey LLP, involved in complex commercial litigation, including patent disputes.
  • Ravi Paul Singh Bhalla (Counsel)
    • Firm: Susman Godfrey LLP
    • Experience Note: Ravi Bhalla is an attorney at Susman Godfrey LLP, contributing to various litigation matters, including patent infringement.
  • Kalpana Srinivasan (Lead Counsel)
    • Firm: Susman Godfrey LLP, Los Angeles, CA
    • Experience Note: Kalpana Srinivasan is a managing partner at Susman Godfrey LLP and has a prominent track record in intellectual property disputes, including numerous patent infringement trials.

From Miller Fair Henry PLLC:

  • Andrea Leigh Fair (Local Counsel)
    • Firm: Miller Fair Henry PLLC
    • Experience Note: Andrea Fair is a named partner at Miller Fair Henry PLLC, a firm frequently engaged as local counsel in Eastern District of Texas patent cases.
  • Claire Abernathy Henry (Local Counsel)
    • Firm: Miller Fair Henry PLLC
    • Experience Note: Claire Henry is a named partner at Miller Fair Henry PLLC, specializing in intellectual property litigation in the Eastern District of Texas.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

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The user is asking for the counsel of record representing the defendant(s) (TSMC) in case 2:24-cv-00623. I need to find the names of the attorneys, their roles, their firms and office locations, and a brief note on their relevant experience. I will use the provided case number and party names to search for docket information, firm websites, and legal news sources. I will also check the lead case 2:24-cv-00730 as the cases are consolidated.## Counsel of Record for Defendant Taiwan Semiconductor Manufacturing Company Limited (TSMC)

Based on publicly available docket information for the consolidated cases 2:24-cv-00623 and 2:24-cv-00730 in the Eastern District of Texas, the following attorneys represent Taiwan Semiconductor Manufacturing Company Limited (TSMC):

  • Darren J. Campana

    • Role: Lead Counsel
    • Firm: Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale) - Palo Alto, CA
    • Note: Campana is a partner at WilmerHale and focuses on patent litigation, particularly in the semiconductor and electronics industries.
  • David M. Hoffman

    • Role: Lead Counsel
    • Firm: Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale) - Washington, D.C.
    • Note: Hoffman is a partner at WilmerHale and co-chair of the firm's Patent Litigation Group, with significant experience in high-stakes intellectual property disputes.
  • Daniel M. Becker

    • Role: Counsel
    • Firm: Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale) - Boston, MA
    • Note: Becker is a partner in WilmerHale's IP Litigation Group, specializing in patent, trade secret, and other technology-related litigation.
  • Jamie N. Stam

    • Role: Counsel
    • Firm: Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale) - Palo Alto, CA
    • Note: Stam is a counsel at WilmerHale focusing on intellectual property litigation, particularly in the technology sector.
  • Michael E. Jones

    • Role: Local Counsel
    • Firm: Potter Minton, P.C. - Tyler, TX
    • Note: Jones is a well-known local counsel in the Eastern District of Texas, frequently appearing in patent cases before Judge Gilstrap.

No in-house counsel for TSMC has formally appeared as counsel of record on the public docket for these cases as of the last available entries.