Untitled case

This case involves an Inter Partes Review (IPR) petition, IPR2025-01053, filed by Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) against Advanced Integrated Circuit Process LLC (AICP) at the Patent Trial and Appeal Board (PTAB) of the USPTO. TSMC is a Taiwanese multinational semiconductor contract manufacturing and design company, recognized as the world's largest independent foundry for semiconductor chips, supplying major tech companies like Nvidia, Apple, Broadcom, and Qualcomm. Advanced Integrated Circuit Process LLC (AICP) appears to be a Patent Assertion Entity (PAE), having formed in Texas in June 2024 and subsequently acquiring a portfolio of over 50 semiconductor fabrication patents from Winbond Electronics (originally Panasonic) in July 2024. AICP has initiated multiple patent infringement lawsuits against TSMC in the Eastern District of Texas, including cases 2:24-cv-00623 and 2:25-cv-00324.

The patent at issue in IPR2025-01053 is U.S. Patent 8,796,779, which relates to semiconductor devices and methods of fabrication. Specifically, the patent describes a semiconductor device featuring two Metal Insulator Semiconductor (MIS) transistors of the same conductivity type on a single substrate. A key aspect is that one transistor's gate insulating film includes an interface layer that is selectively thicker than the interface layer of the other transistor, both typically made of silicon dioxide or silicon oxynitride. AICP's underlying district court lawsuits accuse TSMC of infringing these and other related patents through the provision of semiconductor devices manufactured using various process nodes, including those that utilize FinFET technology, impacting chips produced for third parties like Apple, Broadcom, and Qualcomm.

The IPR petition, IPR2025-01053, was filed before the PTAB but was "Not Instituted - Procedural." This outcome is notable given recent shifts in USPTO policy under Director John Squires, which have introduced stricter discretionary denial factors for IPRs, particularly concerning parallel district court litigation, "settled expectations" for older patents, and domestic manufacturing considerations. The specific procedural ground for denial is not detailed in the available search results, but it aligns with a broader trend of increased discretionary denials at the PTAB since late 2025. The underlying infringement lawsuits, assigned to Judge Rodney Gilstrap in the Eastern District of Texas, represent a common strategy for PAEs due to this venue's reputation for efficiently moving patent cases to trial. This case highlights the ongoing interplay between NPE patent assertion strategies, the critical role of major semiconductor foundries like TSMC, and the evolving landscape of PTAB institution decisions.

Advanced Integrated Circuit Process LLC (AICP) is involved in parallel patent infringement litigation in the Eastern District of Texas and related inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). While IPR2025-01053 itself is an IPR proceeding and not a patent infringement litigation, its outcome is directly tied to the ongoing district court cases.

Here are the key legal developments and outcomes in chronological order:

• Patent Acquisition (July 30, 2024): Advanced Integrated Circuit Process LLC (AICP) acquired a portfolio of patents, including U.S. Patent 8,796,779, from Winbond Electronics (Nuvoton Technology Corporation Japan).
• First Infringement Complaint Against TSMC (August 2024): AICP filed its initial patent infringement lawsuit against Taiwan Semiconductor Manufacturing Company (TSMC) in the U.S. District Court for the Eastern District of Texas. This complaint asserted infringement of seven patents, including U.S. Patent 8,796,779.
• Infringement Complaint Against United Microelectronics (September 2024): AICP filed a second patent infringement lawsuit against United Microelectronics Corporation (UMC) (Case No. 2:24-cv-00730) in the Eastern District of Texas, asserting the same seven patents. This case was subsequently consolidated with the ongoing litigation against TSMC.
• Second Infringement Complaint Against TSMC (April 1, 2025): AICP initiated a second patent infringement lawsuit against TSMC (Case No. 2:25-cv-00324) in the Eastern District of Texas, adding four more patents to the dispute.
• Filing of IPR Petitions (Prior to May 9, 2025): In response to AICP's infringement allegations, TSMC (and likely UMC) filed petitions for inter partes review (IPR) challenging the validity of the asserted patents at the PTAB. This included IPR2025-01053, which challenged U.S. Patent 8,796,779. One IPR, IPR2025-00830, was filed by TSMC on April 14, 2025.
• Motions to Dismiss (Pre-May 9, 2025): UMC filed a motion to dismiss AICP's claims for both direct and indirect infringement in their consolidated case. In response, AICP dropped its claims for pre-suit indirect infringement concerning six of the seven asserted patents. As of May 9, 2025, the court had not yet ruled on this motion.
• IPR Institution Denied (October 10, 2025): The Patent Trial and Appeal Board (PTAB) issued a decision in IPR2025-01053 (and other related IPRs such as IPR2025-01092), denying institution of trial on procedural grounds. The denial was based on a discretionary assessment under 35 U.S.C. § 314(a), considering factors such as Advanced Integrated Circuit Process LLC's "strong settled expectations" as the patent owner. The PTAB also noted that TSMC's invalidity theories in the IPR implicated foreign third-party discovery that was not available through the Board's subpoena power, which would have necessitated parallel litigation in the district court. Additionally, AICP had agreed in the district court litigation not to seek injunctive relief.

As of the current date (2026-05-17), the patent infringement lawsuits are active in the Eastern District of Texas, with the PTAB having denied institution of the IPRs challenging U.S. Patent 8,796,779 and related patents on procedural grounds.

The counsel of record representing Taiwan Semiconductor Manufacturing Company, Ltd. (the petitioner/plaintiff) in IPR2025-01053 could not be definitively identified directly from the available public records for this specific, procedurally non-instituted IPR. However, based on related Inter Partes Review (IPR) proceedings filed by Taiwan Semiconductor Manufacturing Company, Ltd. against Advanced Integrated Circuit Process LLC (e.g., IPR2025-00828 and IPR2025-00832), the following attorneys from Goodwin Procter LLP are likely to represent the petitioner.

Counsel for Taiwan Semiconductor Manufacturing Company, Ltd. (Petitioner):

• Lori A. Gordon

  • Role: Likely Lead Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Washington, D.C. (Common for PTAB proceedings, though specific office for this case would need further verification)
  • Relevant Experience: Lori A. Gordon is a partner at Goodwin Procter, focusing on intellectual property litigation with extensive experience in PTAB proceedings, district court litigation, and appeals before the U.S. Court of Appeals for the Federal Circuit. Her practice often involves semiconductor technology and other complex technical fields.

• Theodoros Konstantakopoulos

  • Role: Back-up Counsel / Of Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or Boston (Common for PTAB proceedings, specific office would need further verification)
  • Relevant Experience: Theodoros Konstantakopoulos is an attorney at Goodwin Procter with experience in patent litigation and PTAB proceedings, often working on cases involving high-tech and life sciences industries.

• Andrew S. Ong

  • Role: Back-up Counsel / Of Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or Boston (Common for PTAB proceedings, specific office would need further verification)
  • Relevant Experience: Andrew S. Ong is an attorney at Goodwin Procter, focusing on intellectual property and patent litigation, including IPRs. His experience spans various technology sectors.

• Filippos Papadatos

  • Role: Back-up Counsel / Of Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or Boston (Common for PTAB proceedings, specific office would need further verification)
  • Relevant Experience: Filippos Papadatos is an attorney at Goodwin Procter, involved in patent litigation and post-grant proceedings before the PTAB.

Please note that while these attorneys are identified as counsel for Taiwan Semiconductor Manufacturing Company, Ltd. in related IPRs against Advanced Integrated Circuit Process LLC, specific filings for IPR2025-01053 itself were not readily available to confirm their direct engagement in this particular, non-instituted case.

Advanced Integrated Circuit Process LLC was represented by counsel from Heim, Payne & Chorush, LLP in related Inter Partes Review (IPR) proceedings involving similar patents and petitioners. While specific counsel filings for IPR2025-01053, which was not instituted on procedural grounds, are not explicitly detailed in the provided search results, the following attorneys appeared for Advanced Integrated Circuit Process LLC (Patent Owner) in other IPRs, such as IPR2025-00830, IPR2025-00832, and IPR2025-00828.

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

• Russell A. Chorush

  • Role: Lead Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Mr. Chorush is a partner at Heim, Payne & Chorush, LLP, with extensive experience in patent litigation, including representing patent owners in district court cases and IPR proceedings.

• Michael F. Heim

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Mr. Heim is a founding partner of Heim, Payne & Chorush, LLP, known for his work in complex patent litigation.

• Christopher L. Limbacher

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Mr. Limbacher is an attorney at Heim, Payne & Chorush, LLP, involved in patent infringement matters.

• Lily R. Glick

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Ms. Glick is an attorney at Heim, Payne & Chorush, LLP, focusing on intellectual property litigation.

• Kyle E. Friesen

  • Role: Attorney (not specified as lead or backup in the provided snippets for all IPRs, but listed as respondent counsel)
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Mr. Friesen is an attorney at Heim, Payne & Chorush, LLP, with experience in patent litigation.

These attorneys from Heim, Payne & Chorush, LLP have consistently represented Advanced Integrated Circuit Process LLC in various IPR challenges to its patent portfolio.