Untitled case

Patent Infringement Lawsuit Targets Semiconductor Manufacturing by United Microelectronics Corporation

A patent infringement lawsuit, Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation, has been filed in the Eastern District of Texas, Marshall Division, under case number 2:24-cv-00730. The plaintiff, Advanced Integrated Circuit Process LLC (AICP), is identified as a Non-Practicing Entity (NPE), having been formed in Texas in June 2024 with AMTL LLC as its sole owner and managing member. AICP acquired a portfolio of over 50 patents from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024, indicating a strategy of patent assertion rather than product manufacturing. The defendant, United Microelectronics Corporation (UMC), is a Taiwanese global semiconductor foundry, manufacturing integrated circuits (ICs) and offering wafer fabrication, circuit design, mask tooling, assembly, and testing services for various electronics industries.

The lawsuit accuses UMC of infringing U.S. Patent No. 8,587,076, among other patents, through the manufacture and sale of certain semiconductor devices. Specifically, the "Accused Instrumentalities" are described as all products manufactured by UMC using its 22 nanometer and 28 nanometer process nodes, including semiconductor devices and electronic components incorporating such devices and processes. U.S. Patent No. 8,587,076 describes a method for fabricating a semiconductor device, focusing on techniques for forming insulating layers and spacers in transistor structures, including features like gate insulating films, offset sidewalls, and sidewall spacers. The case is presided over by District Judge Rodney Gilstrap, known for his extensive experience in patent litigation.

This case is notable for several reasons, including the plaintiff's likely status as an NPE asserting a recently acquired patent portfolio against a major global semiconductor manufacturer. The Eastern District of Texas is a favored venue for patent plaintiffs due to its reputation as a "rocket docket" with a history of plaintiff-friendly juries and procedural rules that can expedite cases. There is also a parallel case (2:24-cv-00623) filed by AICP against Taiwan Semiconductor Manufacturing Company Limited (TSMC), and both UMC and TSMC have filed inter partes review (IPR) petitions against the asserted patents, including 8,587,076, at the Patent Trial and Appeal Board (PTAB). These IPRs indicate a broader litigation campaign by AICP and a coordinated defense effort by the semiconductor industry. The ongoing litigation highlights the challenges and risks for semiconductor foundries facing patent assertions related to their core manufacturing processes.

Patent Infringement Litigation: Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation et al.

Case Number: 2:24-cv-00730
Court: U.S. District Court for the Eastern District of Texas (Marshall Division)
Assigned Judge: District Judge Rodney Gilstrap
Patents-in-Suit: U.S. Patent No. 8,587,076 (among others)
Plaintiff: Advanced Integrated Circuit Process LLC (AICP)
Defendants: United Microelectronics Corporation (UMC) and Taiwan Semiconductor Manufacturing Company Limited (TSMC)

This patent infringement litigation, currently active in the Eastern District of Texas, involves Advanced Integrated Circuit Process LLC (AICP) asserting patent 8,587,076 and other related patents against United Microelectronics Corporation (UMC) and Taiwan Semiconductor Manufacturing Company Limited (TSMC). The case has seen several key developments, including consolidation with a related action, motions to dismiss/transfer, motions to stay pending inter partes review (IPR) proceedings, and a claim construction hearing.

Key Legal Developments and Outcome:

Filing & Initial Pleadings:

• 2024-09-06: Advanced Integrated Circuit Process LLC (AICP) filed case 2:24-cv-00730 against United Microelectronics Corporation (UMC) in the Eastern District of Texas.
• 2024-08-01: A related case, 2:24-cv-00623, was filed by AICP against Taiwan Semiconductor Manufacturing Company Limited (TSMC).
• 2024-12-05: Case 2:24-cv-00730 was consolidated with 2:24-cv-00623 for all pretrial issues, with 2:24-cv-00730 designated as the lead case. Individual cases remain active for trial.

Pre-trial Motions of Substance:

• 2024-12-12: A motion to dismiss or transfer was filed by Advanced Integrated Circuit Process LLC. Responses to UMC's motion to dismiss were due by January 9, 2025, following an extension granted on December 12, 2024.
• 2025-04-28: Taiwan Semiconductor Manufacturing Company Limited (TSMC) filed an opposed motion to stay the litigation pending inter partes review (IPR) proceedings. UMC did not join TSMC's motion to stay.
• 2025-05-20: A reply to the response regarding TSMC's opposed motion to stay was filed.

Claim Construction (Markman) Outcomes:

• 2025-02-14: A Markman Hearing was set for December 18, 2025, at 9:00 AM before District Judge Rodney Gilstrap.
• The court has already addressed claim construction disputes for patent 8,587,076, along with U.S. Patents 7,579,227, 7,923,764, 8,253,180, and 8,796,779.
• For many disputed terms, including "gate insulating film," "offset sidewall," and "sidewall spacer," the court determined they retain their plain and ordinary meanings, rejecting attempts by defendants to narrow them beyond intrinsic evidence. Specifically, the court found that "offset sidewall" does not require a specialized construction and rejected the defendants' proposed "spaced from the substrate" limitation as redundant. The court also construed "outer end of the insulating sidewall" to specify the outermost layer directly on the gate insulating film, while rejecting an unsupported "top surface" limitation. The term "sidewall spacer" was also given its plain and ordinary meaning, denying the defendants' attempt to exclude spacers on top of the gate electrode. Similarly, for "insulating spacers interposed between the gate electrode and the sidewall spacers," the court ruled that "interposed" does not require contact with the gate electrode.

Discovery Milestones with Strategic Significance:

• 2025-06-20: TSMC requested the issuance of a letter rogatory to Nuvoton Technology Corporation Japan, a prior owner of the asserted patents, to obtain documents and deposition testimony material to TSMC's defenses. AICP had objected to prior interrogatories seeking this information from third parties.
• The deadline for completing fact discovery and filing motions to compel is January 29, 2026.

Trial Events:

• 2025-02-21: A Second Docket Control Order was issued.
• 2026-06-22: Jury selection is scheduled to begin at 9:00 a.m. in Marshall, Texas.
• 2026-05-11: The deadline for filing the 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.
• 2026-05-18: A Pretrial Conference is scheduled for 9:00 a.m. in Marshall, Texas.

Parallel PTAB IPR/PGR Proceedings:

• IPR2025-00831: Filed by Taiwan Semiconductor Manufacturing Co Ltd. against patent 8,587,076 on April 15, 2025. This IPR is currently listed as "Not Instituted - Procedural."
• IPR2025-01093: Filed by United Microelectronics Corp. and UMC Group USA against patent 8,587,076 on June 6, 2025. This IPR is also currently listed as "Not Instituted - Procedural."
• The existence of these IPRs has led to motions to stay the district court litigation. The PTAB will consider factors such as the stage of the district court proceeding, with the Markman hearing scheduled for December 2025 and fact discovery concluding in January 2026, as relevant to institution decisions under Fintiv.

Current Posture:
The case is currently in the pre-trial phase, with a Markman hearing scheduled for December 2025 and a jury trial set to commence in June 2026. Parallel IPR proceedings are ongoing at the PTAB, but both IPRs identified for patent 8,587,076 are currently marked as "Not Instituted - Procedural". The court has issued a Second Docket Control Order, outlining upcoming deadlines for pretrial filings and trial.

The following attorneys represent the plaintiff, Advanced Integrated Circuit Process LLC, in Advanced Integrated Circuit Process LLC v. TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED, case number 2:24-cv-00730, in the Eastern District of Texas:

• Justin Adatto Nelson

  • Role: Attorney of Record (appeared on behalf of Advanced Integrated Circuit Process LLC)
  • Firm: Susman Godfrey L.L.P., Houston.
  • Experience Note: Justin Adatto Nelson is a partner at Susman Godfrey LLP, with experience representing plaintiffs in patent infringement cases. He is listed as appearing on behalf of the plaintiff in filings related to the case.

• Ian M. Gore

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Susman Godfrey L.L.P.
  • Experience Note: Ian M. Gore is a partner at Susman Godfrey. The firm has a strong reputation for intellectual property litigation.

• Kemper P. Diehl

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Susman Godfrey LLP.
  • Experience Note: Kemper P. Diehl is a partner at Susman Godfrey, a firm known for its extensive trial experience in patent cases.

• Ravi Paul Singh Bhalla

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Susman Godfrey LLP.
  • Experience Note: Ravi Paul Singh Bhalla is a partner at Susman Godfrey, a firm frequently involved in high-stakes intellectual property disputes.

• Kalpana Srinivasan

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Susman Godfrey L.L.P., Los Angeles.
  • Experience Note: Kalpana Srinivasan is a managing partner at Susman Godfrey and has been recognized for her work in intellectual property litigation.

• Andrea Leigh Fair

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Miller Fair Henry PLLC.
  • Experience Note: Miller Fair Henry PLLC is an East Texas firm, suggesting a potential local counsel role, and is involved in patent litigation.

• Claire Abernathy Henry

  • Role: Attorney (listed for the plaintiff in consolidated proceedings)
  • Firm: Miller Fair Henry PLLC.
  • Experience Note: Miller Fair Henry PLLC, based in East Texas, often serves as local counsel in patent infringement cases in the Eastern District of Texas.

The counsel of record representing the defendants in Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation, Case No. 2:24-cv-00730, in the Eastern District of Texas are:

For Defendant United Microelectronics Corporation (UMC):

• Mark A. Hannemann

  • Role: Counsel
  • Firm: Troutman Pepper Hamilton Sanders LLP, with an office in San Diego, CA.
  • Relevant Experience: Hannemann is a partner at Troutman Pepper with experience in patent litigation, particularly in the semiconductor industry. He has represented clients in federal district courts and before the International Trade Commission.

• Emma Anne Bennett

  • Role: Counsel
  • Firm: Troutman Pepper Hamilton Sanders LLP
  • Relevant Experience: Her practice focuses on intellectual property litigation, including patent infringement.

• Ryan E. Dornberger

  • Role: Counsel
  • Firm: Troutman Pepper Hamilton Sanders LLP
  • Relevant Experience: Dornberger is an associate who practices in intellectual property litigation, including patent and trade secret disputes.

For Defendant Taiwan Semiconductor Manufacturing Company Limited (TSMC):

• Conrad Gosen

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP
  • Relevant Experience: Gosen is a partner specializing in intellectual property litigation, particularly in patent cases involving complex technologies.

• Jodie W. Cheng

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP
  • Relevant Experience: Cheng is an attorney at Quinn Emanuel with experience in intellectual property and complex commercial litigation.

• Gyushik Jang

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP (San Francisco office)
  • Relevant Experience: Jang is an attorney whose practice includes patent litigation.

• Iman Lordgooei

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP (San Francisco office)
  • Relevant Experience: Lordgooei is an attorney at Quinn Emanuel focusing on intellectual property and commercial litigation.

• Sean S. Pak

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP (San Francisco office)
  • Relevant Experience: Pak is a partner and co-chair of Quinn Emanuel's national intellectual property litigation practice, with extensive experience in high-stakes patent disputes.

• Michael J. McKeon

  • Role: Counsel
  • Firm: Fish & Richardson P.C. (Washington D.C. office)
  • Relevant Experience: McKeon is a principal at Fish & Richardson, focusing on patent litigation, post-grant proceedings, and IP due diligence. He has represented clients in the semiconductor industry.

• James Lee Huguenin-Love

  • Role: Counsel
  • Firm: Fish & Richardson P.C.
  • Relevant Experience: His practice includes patent litigation in various technology areas.

• Jennifer Leigh Truelove

  • Role: Counsel
  • Firm: McKool Smith, P.C. (Marshall office)
  • Relevant Experience: Truelove is a principal at McKool Smith and serves as local counsel in many Eastern District of Texas patent cases. She has significant experience in patent litigation.

• Benjamin Christoff

  • Role: Counsel
  • Firm: Fish & Richardson P.C.
  • Relevant Experience: Christoff is an associate at Fish & Richardson, whose practice includes patent litigation.

• Karolina Jesien

  • Role: Counsel
  • Firm: Fish & Richardson P.C. (New York office)
  • Relevant Experience: Jesien is an associate focusing on intellectual property litigation.

• Anthony Van Nguyen

  • Role: Counsel
  • Firm: Fish & Richardson P.C. (Houston office)
  • Relevant Experience: Nguyen is a principal at Fish & Richardson with experience in patent litigation across various technologies.

• Kevin K. Su

  • Role: Counsel
  • Firm: Fish & Richardson P.C.
  • Relevant Experience: Su is an associate whose practice involves patent litigation.

• Karrie E. Washenfelder Wheatley

  • Role: Counsel
  • Firm: Fish & Richardson P.C. (Houston office)
  • Relevant Experience: Wheatley is a principal at Fish & Richardson, focusing on patent litigation and other intellectual property disputes.

• Christian A. Chu

  • Role: Counsel
  • Firm: Fish & Richardson P.C. (Washington D.C. office)
  • Relevant Experience: Chu is a principal at Fish & Richardson, with experience in patent litigation, particularly in the electrical and computer technology fields.

• Jacqueline T. Moran

  • Role: Counsel
  • Firm: Fish & Richardson P.C.
  • Relevant Experience: Moran is an associate at Fish & Richardson, whose practice includes patent litigation.

• James E. Quigley

  • Role: Counsel
  • Firm: McKool Smith, P.C. (Austin office)
  • Relevant Experience: Quigley is a principal at McKool Smith with a focus on patent and commercial litigation.

The case was filed on September 6, 2024, and later consolidated with another case against TSMC. The court has issued a Second Docket Control Order, and a jury selection is scheduled for June 22, 2026.