Litigation
Untitled case
active2:24-cv-00730
Patents at issue (1)
Summary
Active litigation concerning US patent 8253180 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 number 2:24-cv-00730, is currently active in the Eastern District of Texas, Marshall Division, before District Judge Rodney Gilstrap. The plaintiff is Advanced Integrated Circuit Process LLC (AICP), which appears to be a patent assertion entity (PAE) given its name and the nature of the lawsuit. The defendants are United Microelectronics Corporation (UMC) and Taiwan Semiconductor Manufacturing Company Limited (TSMC), both multinational semiconductor foundries. UMC, headquartered in Taiwan, is a leading global semiconductor foundry, offering a wide range of integrated circuit (IC) fabrication services. Similarly, TSMC, also based in Taiwan, is the world's largest dedicated independent semiconductor foundry, manufacturing chips for various companies.
The asserted patents in this consolidated action include US Patent No. 8,253,180, along with US Patent Nos. 7,579,227; 7,923,764; 8,587,076; and 8,796,779, all generally related to semiconductor devices and fabrication processes, specifically involving features like gate insulating films, offset sidewalls, and sidewall spacers. The '180 patent, for example, broadly concerns a metal-insulator-semiconductor field-effect transistor (MISFET) device and its manufacturing method. The accused products are semiconductor devices manufactured by UMC and TSMC, particularly highlighting chips made using their 22 nanometer and 28 nanometer process nodes, such as the Qualcomm MDM9625M and Microsemi MPF300T-FCG484E semiconductor devices.
The case is being heard in the Eastern District of Texas, a venue historically known for its plaintiff-friendly reputation in patent litigation, characterized by fast trial schedules and a jury pool often perceived as sympathetic to patent holders. While the Supreme Court's TC Heartland decision in 2017 aimed to restrict patent venue, plaintiffs have adapted by sometimes targeting foreign affiliates to bypass these restrictions. This case is notable due to the involvement of major semiconductor manufacturers, indicating potential industry-wide implications for fabrication processes. Furthermore, there are ongoing inter partes reviews (IPRs) at the USPTO concerning some of the asserted patents, including the ones relevant to this case, with both UMC and TSMC filing petitions to challenge the patents' validity. The litigation also includes claims of induced and contributory infringement by the defendants for their manufacturing services and designs related to the accused semiconductor devices.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Patent Infringement Litigation: Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation (2:24-cv-00730)
This active patent infringement lawsuit, filed in the Eastern District of Texas, involves U.S. Patent 8,253,180, among others. The plaintiff is Advanced Integrated Circuit Process LLC (AICP), and the primary defendant is United Microelectronics Corporation (UMC). The case is currently moving through pre-trial phases, with a Markman hearing having occurred and a trial date set.
Key Legal Developments and Outcome:
1. Filing & Initial Pleadings (2024)
- Complaint Filed: Advanced Integrated Circuit Process LLC (AICP) initiated the lawsuit against United Microelectronics Corporation (UMC) in the Eastern District of Texas on September 6, 2024. This case was assigned to District Judge Rodney Gilstrap.
- Related Case and Consolidation: AICP had previously filed a separate lawsuit on August 1, 2024, against Taiwan Semiconductor Manufacturing Company Limited (TSMC) (Case No. 2:24-cv-00623-JRG), asserting the same seven semiconductor fabrication patents, including U.S. Patent 8,253,180. These cases were later consolidated, with 2:24-cv-00730-JRG designated as the lead case on December 6, 2024. The asserted patents were acquired by AICP from Winbond Electronics (Nuvoton Technology Corporation Japan) in late July 2024.
2. Pre-trial Motions of Substance (2025)
- Docket Control Order: An amended Docket Control Order was issued on February 21, 2025, setting various deadlines.
3. Claim Construction (Markman) Outcomes (2025)
- Markman Hearing: A Markman hearing for claim construction was scheduled for December 18, 2025, at 9:00 AM.
- Claim Construction Order: The court has already issued an order determining the construction of several disputed terms for U.S. Patents 7,579,227; 7,923,764; 8,253,180; 8,587,076; and 8,796,779. The court found that most disputed terms, including "gate insulating film," "offset sidewall," and "sidewall spacer," retain their plain and ordinary meanings, rejecting attempts by defendants to narrow the claim terms beyond their ordinary meaning.
4. Discovery Milestones with Strategic Significance (2025-2026)
- Discovery Order: A discovery order was entered on February 14, 2025.
- Fact Discovery Deadline: The deadline for completing fact discovery and filing motions to compel is January 29, 2026.
- Motion for Letter Rogatory: On June 20, 2025, TSMC filed a motion requesting the court to issue a letter rogatory to Nuvoton Technology Corporation Japan, a prior owner of the asserted patents, to obtain relevant documents and deposition testimony for TSMC's defenses.
5. Trial Events & Post-Trial Motions (Scheduled for 2026)
- Jury Selection: Jury selection is scheduled for June 22, 2026, at 9:00 a.m. in Marshall, Texas.
- Pretrial Conference: A pretrial conference is set for May 18, 2026.
- Pretrial Filings: Deadlines for various pretrial filings include:
- May 11, 2026: Filing of Joint Pretrial Order, Joint Proposed Jury Instructions, Joint Proposed Verdict Form, Responses to Motions in Limine, Updated Exhibit Lists, Updated Witness Lists, and Updated Deposition Designations.
- May 26, 2026: Submission of an editable juror questionnaire, if one is to be used.
- 10 days before Jury Selection: Plaintiff to disclose final election of asserted claims.
- 7 days before Jury Selection: Defendant to disclose final invalidity theories, prior art, and equitable defenses.
- Dispositive Motions: The deadline for dispositive motions (including Daubert motions and summary judgment motions) was March 3, 2026, with responses due by March 31, 2026.
6. Settlement, Dismissal, Judgment, or Appeal (Present Posture)
- The case is currently active and proceeding towards trial.
7. Parallel PTAB IPR/PGR Proceedings on the Asserted Patents (2025)
- IPR Filings: Petitioners, including TSMC and UMC, have filed Inter Partes Review (IPR) petitions against the asserted patents. TSMC began filing IPR petitions in March 2025, while UMC filed its IPRs starting in May 2025.
- PTAB Discretionary Denial: In at least one related IPR (IPR2025-01093, concerning U.S. Patent 8,587,076), the Patent Trial and Appeal Board (PTAB) found that all five Fintiv factors favored discretionary denial of institution, noting that the district court's Markman hearing would occur before the IPR institution deadline, and fact discovery would close the following month. This suggests the PTAB is likely to deny institution for IPRs related to this litigation, allowing the district court case to proceed.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Susman Godfrey
- Kalpana Srinivasan · lead counsel
- Justin Adatto Nelson · lead counsel
- Ravi Paul Singh Bhalla · counsel
- Ian M. Gore · counsel
- Andrew Jamal Nassar · counsel
- Bianca Rey · counsel
- Miller Fair Henry
- Claire Abernathy Henry · local counsel
- Andrea Leigh Fair · local counsel
I'll research plaintiff's counsel of record through multiple searches.
I have strong primary-source data. Let me verify attorney backgrounds and check for recent appearances.
Plaintiff's Counsel of Record — Advanced Integrated Circuit Process LLC (2:24-cv-00730-JRG)
Bottom line: AICP is represented by a two-firm team — Susman Godfrey LLP as lead/primary counsel (nine attorneys appearing across Houston, Los Angeles, Seattle, and New York) and Miller Fair Henry PLLC of Longview, Texas as East Texas local/co-counsel. AICP is a non-practicing entity with no in-house counsel appearing on the docket.
The single most authoritative source I located is a July 7, 2025 print of the live docket sheet for 2:24-cv-00730-JRG (attached as an exhibit in the parallel IPR proceedings), which carries the full attorney roster, plus plaintiff's own signature blocks on Dkt. 45 (Notice of Compliance, Jan. 30, 2025).
1. Lead counsel
| Attorney | Role | Firm / office | Notes |
|---|---|---|---|
| Justin Adatto Nelson (Tex. Bar No. 24034766; jnelson@susmangodfrey.com) | Lead Counsel — docket roster expressly designates him "LEAD ATTORNEY"; plaintiff's filings style him "Justin A. Nelson – Lead Counsel" | Susman Godfrey LLP, 1000 Louisiana St., Suite 5100, Houston, TX 77002 | Signed the original 35 U.S.C. § 271 complaint (filed 9/6/2024), the P.R. 3-1/3-2 compliance notice, oppositions to UMC's and TSMC's motions to dismiss, and settlement/extension motions. First appearance on docket 9/25/2024 (Dkt. 9). |
2. Susman Godfrey LLP — plaintiff's trial team ("ATTORNEY TO BE NOTICED" per docket)
| Attorney | Role | Office | Notes |
|---|---|---|---|
| Kalpana Srinivasan (Cal. Bar No. 237460) | Lead trial team; senior partner | Los Angeles (1900 Ave. of the Stars / 1901 Ave. of the Stars) | Appeared 9/16/2024 (Dkt. 7). Long-running PTAB/district-court patent practice for patent owners (e.g., Arendi S.A.R.L. v. Apple/Google, D. Del./E.D. Tex.). |
| Ian M. Gore (Wash. Bar No. 54519) | Partner | Seattle (401 Union St., Ste. 3000) | Appeared 10/3/2024 (Dkt. 11); named a Best Lawyers "Ones to Watch" honoree beginning in 2024. |
| Kemper P. Diehl (Wash. Bar No. 53212) | Partner | Seattle | Appeared (Dkt. 31 period); expressly confirmed in his 7/11/2025 IPR declaration that he is "counsel of record" for AICP in both 2:24-cv-623 and 2:24-cv-730. Patent/semiconductor experience includes Arigna Technology v. Apple/Google (ITC) and Arendi v. Apple/Google. |
| Andrew Jamal Nassar (N.Y. Bar No. 6162226; anassar@susmangodfrey.com) | Attorney | New York (One Manhattan West, 50th Fl.) | See correction flag below — the prior case section mislabeled him as UMC's counsel. |
| Ravi Paul Singh Bhalla (N.Y. Bar No. 548223) | Attorney | New York (One Manhattan West, 50th Fl.) | Appeared 9/25/2024 (Dkt. 8); signed plaintiff's filings in the follow-on 2:25-cv-00324 action. |
| Bianca Rey (Wash. Bar No. 62422) | Attorney | Seattle | Appeared 12/12/2024 (Dkt. 31). |
| Stuart Eric Pollack | Attorney | New York (One Manhattan West, 50th Fl.) | Listed on the docket roster, but he does not appear in the January 2025 signature block or later filings I reviewed — possibly no longer active on the team. Flagging as unconfirmed. |
3. East Texas local / co-counsel — Miller Fair Henry PLLC
Both are listed on the docket roster and are styled "Of Counsel" in plaintiff's signature blocks (they function as local counsel under E.D. Tex. Local Rule CV-83 / the court's local-counsel practice).
| Attorney | Role | Firm / office | Notes |
|---|---|---|---|
| Claire Abernathy Henry (Tex. Bar No. 24053063; claire@millerfairhenry.com) | Local/East Texas trial counsel | Miller Fair Henry PLLC, 1507 Bill Owens Pkwy., Longview, TX 75604 | First plaintiff-side appearance in the case (Dkt. 6, 9/9/2024). Stanford Law '05; Best Lawyers in patent & IP litigation; Lawdragon 500 Leading Litigators. Also local counsel to plaintiffs in other EDTX patent matters (e.g., ParTec v. Microsoft; Malikie Innovations). |
| Andrea Leigh Fair (Tex. Bar No. 24078488; andrea@millerfairhenry.com) | Local/East Texas trial counsel | Miller Fair Henry PLLC, Longview, TX | Name partner; IP trial specialist with nine-figure EDTX patent results (Finesse Wireless v. AT&T, $166M verdict; Atlas Global v. TP-Link, $37M+ verdict; AlmondNet v. Amazon). Elected to ABOTA and the International Society of Barristers. |
Firm-transition note: The summons (Sept. 2024) lists Andrea Fair at andrea@wsfirm.com — the domain of predecessor firm Ward, Smith & Hill, PLLC, which reconstituted as Miller Fair Henry PLLC effective Oct. 1, 2024. Same attorneys, same Longview address; only the firm name/domain changed. (Ward, Smith & Hill's former name partners Johnny Ward, Wesley Hill, and Bruce Smith ended their trial practices; Judge T. John Ward and former Mag. Judge Charles Everingham IV remain of counsel.)
4. Contradictions with the previously generated sections (flagged per instructions)
- Material error — Andrew Nassar's client. The earlier "Defendant representatives" section states Nassar of Susman Godfrey was "identified as counsel for UMC in a March 2025 filing." That is wrong. The 2:24-cv-00730 docket roster and the 2:25-cv-00324 docket both list Andrew Jamal Nassar as counsel for plaintiff Advanced Integrated Circuit Process LLC, not UMC. The earlier section appears to have inverted the parties. Correcting it here.
- UMC's district-court counsel is Troutman Pepper Locke, not (only) Xia. The docket shows Mark A. Hannemann (Troutman Pepper Locke, New York) as UMC's LEAD ATTORNEY (pro hac vice), with Emma Anne Bennett and Ryan E. Dornberger (Houston) and others. Tim Tingkang Xia (Troutman) is UMC's IPR counsel — a related but separate role from the district-court team.
- "Lorie Gordon" as TSMC IPR counsel could not be verified in any of my searches; treat as unsourced. (TSMC's IPR petitions are captioned Taiwan Semiconductor Manufacturing Company Ltd. v. Advanced Integrated Circuit Process LLC, IPR2025-00828 through -00832.)
- Outside-counsel shift for the plaintiff side: AICP filed a second, separate EDTX suit against TSMC on April 1, 2025 (2:25-cv-00324-JRG) on related patents. Same Susman Godfrey team (Nelson, Nassar, Rey, Bhalla, Gore, Srinivasan) plus Miller Fair Henry, with appearances filed April–May 2025.
5. PTAB representation (separate from district court — noted for completeness)
In the IPRs challenging the asserted patents, AICP (as Patent Owner) is also represented by Russell Chorush (Chorush LLP, Houston) according to PTAB case metadata for IPR2025-01076, alongside Susman Godfrey attorneys (Diehl's declaration is filed on AICP's behalf in IPR2025-00828–00832). I could not fully reconcile which firm leads which IPR; treat the Chorush reference as a lead rather than a confirmed-of-record fact.
6. Verification limits
- The docket roster I
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Troutman Pepper Hamilton Sanders
- Tim Tingkang Xia · lead counsel
- Susman Godfrey
- Andrew Nassar · counsel
- In-house counsel
- Lorie Gordon · petitioner counsel
The defendants, United Microelectronics Corporation (UMC) and Taiwan Semiconductor Manufacturing Company Limited (TSMC), are represented by separate counsel in this consolidated patent infringement case.
For Defendant United Microelectronics Corporation (UMC):
While specific lead counsel information for UMC in the district court case 2:24-cv-00730 is not immediately available through broad searches, court filings related to Inter Partes Reviews (IPRs) at the Patent Trial and Appeal Board (PTAB) offer insight into their legal representation. UMC has filed IPR petitions challenging some of the patents asserted by AICP in the district court action.
- Tim Tingkang Xia (Lead Counsel for IPRs)
- Firm: Troutman.com (presumably Troutman Pepper Hamilton Sanders LLP)
- Note: Mr. Xia is listed as lead counsel for UMC in IPR proceedings related to patents also at issue in the district court case, suggesting his involvement in the broader litigation strategy.
For Defendant Taiwan Semiconductor Manufacturing Company Limited (TSMC):
TSMC's litigation counsel has been involved in discovery matters and IPR proceedings related to this case.
- Andrew Nassar
- Firm: Susman Godfrey LLP
- Note: Andrew Nassar of Susman Godfrey LLP is identified as counsel for UMC in a March 2025 filing, acknowledging service of documents. This suggests Susman Godfrey LLP is representing UMC in the district court.
- Lorie Gordon (Petitioner Counsel for IPRs)
- Firm: (Not explicitly stated in the provided snippets, but likely a firm specializing in patent litigation and PTAB proceedings).
- Note: Ms. Gordon is listed as petitioner counsel for TSMC in IPR proceedings against AICP.
It is important to note that while the IPR filings provide strong indications of counsel involved in the overall defense strategy, the specific attorneys designated as "lead counsel" in the district court case itself may differ or be part of a larger team from these firms. Further, docket entries for the consolidated case (2:24-cv-00730) would provide the most definitive list of appearing counsel in the district court. Due to subscription requirements for detailed docket information on some platforms, a comprehensive list of all counsel of record and their specific roles (e.g., local counsel) is not fully accessible through open web searches.