Litigation

Untitled case

active

2:24-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).

tool_code
print(google_search.search(queries=["2:24-cv-00730 PACER counsel", "Advanced Integrated Circuit Process LLC counsel 2:24-cv-00730", "Ward, Smith & Hill PLLC patent litigation experience", "Potomac Law Group PLLC patent litigation experience", "Eric J. Smith patent litigation", "Michael J. Smith patent litigation", "Wesley Hill patent litigation", "Ramiro Chavez patent litigation"]))
thought
The user is asking to identify the counsel of record for the plaintiff(s) in the specified patent infringement case. I need to find the names, roles, firms, and office locations for each attorney, along with a brief note on their relevant experience.

I will use web search, focusing on PACER, the docket sheet, firm websites, and legal news sources.

Here's a plan:

  1. Search for "2:24-cv-00730 PACER counsel" or similar to find the docket and attorney appearances.
  2. Identify the plaintiff's attorneys from the docket.
  3. For each attorney, search for their firm and office location.
  4. Search for their individual patent litigation experience or notable cases.

Let's start by looking for the docket and counsel information.The search results provide several attorney names associated with the plaintiff, Advanced Integrated Circuit Process LLC (AICP), in case 2:24-cv-00730. It's important to distinguish between plaintiff's and defendant's counsel. The PacerMonitor and Justia Dockets for 2:24-cv-00730 list several attorneys under Advanced Integrated Circuit Process LLC.

The PacerMonitor result explicitly lists attorneys for Advanced Integrated Circuit Process LLC. It also shows attorneys for other parties, which I will ignore for this task.

Here are the attorneys identified for the plaintiff:

  • Ravi Paul Singh Bhalla - Susman Godfrey LLP
  • Claire Abernathy Henry - Miller Fair Henry PLLC
  • Kalpana Srinivasan - Susman Godfrey Llp - Los Angeles
  • Andrea Leigh Fair - Miller Fair Henry PLLC
  • Justin Adatto Nelson - Susman Godfrey, Llp - Houston
  • Andrew Jamal Nassar - Susman Godfrey LLP
  • Ian M. Gore - Susman Godfrey L.L.P.
  • Bianca Rey - Susman Godfrey LLP

The Justia Dockets entry also mentions "NOTICE of Attorney Appearance by Ian M. Gore on behalf of Advanced Integrated Circuit Process LLC".

The RPX Empower entry for a related consolidated case (2:24-cv-00623, which was consolidated into 2:24-cv-00730) also lists some of these attorneys under Advanced Integrated Circuit Process LLC, and specifies "Ward & Smith Law Firm Local" as local counsel. However, the more direct PacerMonitor docket for 2:24-cv-00730 does not explicitly list Ward & Smith Law Firm as appearing for AICP in the main case, but rather lists Miller Fair Henry PLLC. It's possible Ward & Smith was local for a related case that was consolidated. Given the more direct listing in the PacerMonitor for 2:24-cv-00730, I will prioritize Miller Fair Henry PLLC as the local counsel.

I will now gather more details on each of these attorneys and their firms, and identify their roles.

Note on firm names: Some listings show "Susman Godfrey LLP" and "Susman Godfrey, Llp" and "Susman Godfrey L.L.P." These are variations of the same firm. Similarly for Miller Fair Henry PLLC.

Regarding "Lead Counsel" and "Local Counsel": The May 11, 2026, document (likely a scheduling order) from the case notes that "The Parties are directed to Local Rule CV-11(a)(1), which provides that ‘[o]n the first appearance through counsel, each party shall designate a lead attorney on the pleadings or otherwise.’" This indicates that a lead attorney would be formally designated. Without explicit designation in the snippets, I'll infer based on typical roles and firm presence, and note if a formal designation isn't clear. Firms with multiple attorneys appearing, especially those known for patent litigation, often have lead counsel from their ranks. Local counsel would be based in the Eastern District of Texas or nearby.

Let's refine the information for each attorney.The search results provide a solid list of attorneys for the plaintiff, Advanced Integrated Circuit Process LLC. I can identify their firms, office locations, and relevant experience. I will also clarify their roles based on the information found.

Susman Godfrey LLP Attorneys:

  • Kalpana Srinivasan: Co-Managing Partner, Susman Godfrey LLP, Los Angeles, CA. She is noted as having secured significant victories in trade secret, antitrust, patent, and copyright disputes and is a "Titan of the Plaintiffs Bar." She served as lead counsel for Caltech in patent infringement litigation against Samsung involving Wi-Fi patents and co-lead counsel in Paltalk v. Cisco, securing a $65.7 million jury verdict in a patent infringement lawsuit. A document dated March 7, 2025, also explicitly designates Kalpana Srinivasan as "Lead Counsel" in a related motion for leave to amend infringement contentions.
  • Justin Adatto Nelson: Lead Counsel, Susman Godfrey LLP, Houston, TX. He was part of the Susman Godfrey team that secured a $787.5 million settlement for Dominion Voting Systems in its defamation case against Fox News. His profile indicates extensive experience in complex commercial litigation, and he is explicitly listed as "LEAD ATTORNEY" in the docket for 2:24-cv-00730.
  • Ravi Paul Singh Bhalla: Partner, Susman Godfrey LLP, New York, NY. His practice includes theft and infringement of intellectual property and large-scale class actions. He is frequently the principal drafter of briefing submitted to the court.
  • Ian M. Gore: Partner, Susman Godfrey LLP, Seattle, WA. His practice areas include intellectual property. He defended Jawbone in a patent infringement action before the ITC, successfully securing a ruling that Fitbit's patents were invalid. He was also part of the Susman Godfrey team that secured a $31.5 million verdict for Koninklijke KPN N.V. against Ericsson for patent infringement in the Eastern District of Texas. He also played a leading role in the "Sunday Ticket" Antitrust Litigation, where plaintiffs won a $4.7 billion jury verdict.
  • Andrew Jamal Nassar: Associate, Susman Godfrey LLP, New York, NY. While his firm profile does not explicitly detail patent litigation experience, Susman Godfrey is a premier litigation firm with a strong intellectual property practice. His listed court admissions include the U.S. District Court for the Southern District of New York and the Eastern District of New York.
  • Bianca Rey: Associate, Susman Godfrey LLP, Seattle, WA. Her listed court admissions include the U.S. District Court for the Eastern District of Texas. Her profile indicates experience in class action litigation.

Miller Fair Henry PLLC Attorneys:

  • Claire Abernathy Henry: Partner, Miller Fair Henry PLLC, Longview, TX. She is an experienced litigator in complex commercial and patent litigation, with extensive knowledge of federal court practice in the Eastern and Western Districts of Texas. She has been involved in dozens of patent trials and recognized as a Texas Super Lawyer for Intellectual Property Litigation. Her firm is based in Longview, TX, making her local counsel. She, along with Andrea Fair and Johnny Ward, secured patent verdicts including a $62.7 million verdict for Solas OLED Ltd. against Samsung and a $43 million verdict for Intellectual Ventures I LLC.
  • Andrea Leigh Fair: Partner, Miller Fair Henry PLLC, Longview, TX. She focuses on intellectual property litigation and excels at developing trial strategies and presentations. She, along with Claire Henry, secured a $121.95 million jury verdict for AlmondNet Inc. against Amazon and was also part of the team that won the $62.7 million patent verdict for Solas OLED Ltd. against Samsung. Her firm is based in Longview, TX, making her local counsel.

Based on the explicit "Lead Counsel" designations for Justin Nelson and Kalpana Srinivasan in court documents, and the local presence and extensive patent litigation experience of Miller Fair Henry attorneys in the Eastern District of Texas, I can assign roles. The remaining Susman Godfrey attorneys are likely part of the plaintiff's core litigation team.

It's important to note that the term "local counsel" in the Eastern District of Texas often implies a firm physically located in the district and familiar with its unique procedures. Miller Fair Henry PLLC, being in Longview, TX, fits this description.

I have found one consolidated case (2:24-cv-00623) where attorneys from Ward & Smith Law Firm were listed for the plaintiff (Advanced Integrated Circuit Process LLC), and the current case (2:24-cv-00730) is the lead case in a consolidation order. However, the explicit attorney appearances for the lead case itself primarily list Miller Fair Henry PLLC and Susman Godfrey LLP. Given the detailed information on Miller Fair Henry's attorneys and their local presence, I will list them as local counsel.

Here's the structured output.The plaintiff, Advanced Integrated Circuit Process LLC (AICP), is represented by a team of experienced patent litigators from two firms: Susman Godfrey LLP and Miller Fair Henry PLLC.

Here is the counsel of record for the plaintiff:

  • Kalpana Srinivasan

    • Role: Lead Counsel
    • Firm & Office Location: Susman Godfrey LLP, Los Angeles, CA.
    • Note: Kalpana Srinivasan is a Co-Managing Partner at Susman Godfrey and has a distinguished record in high-stakes intellectual property, trade secret, antitrust, and copyright disputes, recognized as a "Titan of the Plaintiffs Bar." She served as lead counsel for the California Institute of Technology in patent infringement litigation against Samsung related to Wi-Fi patents and co-lead counsel in Paltalk v. Cisco, which resulted in a $65.7 million jury verdict for patent infringement.
  • Justin Adatto Nelson

    • Role: Lead Counsel
    • Firm & Office Location: Susman Godfrey LLP, Houston, TX.
    • Note: Justin Nelson is explicitly designated as "Lead Attorney" on the docket for this case. He has significant experience in complex commercial litigation, including being part of the Susman Godfrey team that secured a $787.5 million settlement in the Dominion Voting Systems defamation case against Fox News.
  • Claire Abernathy Henry

    • Role: Local Counsel
    • Firm & Office Location: Miller Fair Henry PLLC, Longview, TX.
    • Note: Ms. Henry is an experienced litigator specializing in complex commercial and patent litigation, particularly active in the Eastern and Western Districts of Texas. She has been involved in numerous patent trials and is recognized as a Texas Super Lawyer for Intellectual Property Litigation. Notable successes include a $62.7 million patent verdict for Solas OLED Ltd. against Samsung and a $43 million verdict for Intellectual Ventures I LLC.
  • Andrea Leigh Fair

    • Role: Local Counsel
    • Firm & Office Location: Miller Fair Henry PLLC, Longview, TX.
    • Note: Andrea Fair focuses on intellectual property litigation and is adept at crafting trial strategies and presentations. She was part of the legal team that secured a $121.95 million jury verdict for AlmondNet Inc. against Amazon and also contributed to the $62.7 million patent verdict for Solas OLED Ltd. against Samsung.
  • Ravi Paul Singh Bhalla

    • Role: Counsel
    • Firm & Office Location: Susman Godfrey LLP, New York, NY.
    • Note: Mr. Bhalla's practice includes commercial litigation matters involving intellectual property infringement and large-scale class actions. He is frequently involved in drafting court briefings and has experience arguing major motions.
  • Ian M. Gore

    • Role: Counsel
    • Firm & Office Location: Susman Godfrey LLP, Seattle, WA.
    • Note: Mr. Gore's practice encompasses intellectual property and antitrust. He successfully defended Jawbone against Fitbit's patent infringement claims at the ITC and was part of the team that secured a $31.5 million patent infringement verdict for Koninklijke KPN N.V. against Ericsson in the Eastern District of Texas. He also played a key role in the "Sunday Ticket" Antitrust Litigation, which saw a $4.7 billion jury verdict for the plaintiffs.
  • Andrew Jamal Nassar

    • Role: Counsel
    • Firm & Office Location: Susman Godfrey LLP, New York, NY.
    • Note: Admitted to practice in the U.S. District Courts for the Southern and Eastern Districts of New York, Mr. Nassar is part of Susman Godfrey's litigation practice.
  • Bianca Rey

    • Role: Counsel
    • Firm & Office Location: Susman Godfrey LLP, Seattle, WA.
    • Note: Ms. Rey is admitted to practice in the U.S. District Court for the Eastern District of Texas, indicating her ability to appear in the present case. Her experience includes class action litigation.

Defendant representatives

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