Advanced Integrated Circuit Process LLC v. Taiwan Semiconductor Manufacturing Company, Ltd.

Advanced Integrated Circuit Process LLC (AICP) has sued Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) for patent infringement in the Eastern District of Texas. AICP, formed in Texas on June 12, 2024, appears to operate as a patent assertion entity (PAE) or non-practicing entity (NPE), as it manufactures no products and is not a competitor of TSMC. Its parent company is AMTL LLC, and both AICP and a related entity, Advanced Memory Technologies LLC, share the same Allen, Texas address, suggesting a pattern of patent monetization. The patents at issue were acquired by AICP from Nuvoton Japan on July 30, 2024, having originally been developed by Panasonic Corporation. TSMC, a Taiwanese multinational semiconductor contract manufacturing and design company, is the world's largest independent foundry, producing integrated circuits for major clients like Apple, Nvidia, Broadcom, and Qualcomm. AICP alleges that TSMC infringes its patents through the manufacturing of semiconductor devices at its 22nm and 28nm process node low power variants, including products that incorporate FinFET technology for its customers.

The lawsuit, case number 2:24-cv-00730-JRG, is before District Judge Rodney Gilstrap in the Marshall Division of the Eastern District of Texas, a venue historically favored by patent plaintiffs due to its expedited trial schedules and procedural rules. While the Supreme Court's TC Heartland decision restricted patent venue, plaintiffs have adapted by targeting foreign entities like TSMC, which can be sued in any district where personal jurisdiction is established, thereby circumventing the stricter venue requirements for domestic defendants. This case is notable due to the ongoing trend of NPEs asserting semiconductor patents and its entanglement with Inter Partes Review (IPR) proceedings.

Seven U.S. patents are asserted in this litigation:

• US7579227: Relates to a semiconductor device featuring a high dielectric constant gate insulating film extending continuously from under the gate electrode to under an insulating sidewall, with a thinner portion under the sidewall.
• US7923764: Concerns methods for fabricating a semiconductor device. (A detailed one-line sketch for this patent was not explicitly found in the provided search results, beyond its inclusion in the list of asserted patents).
• US8198686: Describes a semiconductor device with n- and p-type MIS transistors having gate electrodes made of different metal materials, aimed at high precision formation and miniaturization.
• US8253180: Pertains to semiconductor devices. (A detailed one-line sketch for this patent was not explicitly found in the provided search results, beyond its inclusion in the list of asserted patents and IPR proceeding details).
• US8587076: Concerns methods for fabricating a semiconductor device. (A detailed one-line sketch for this patent was not explicitly found in the provided search results, beyond its inclusion in the list of asserted patents).
• US8796779: Describes a semiconductor device where a first MIS transistor has an interface layer in its gate insulating film that is thicker than that of a second MIS transistor on the same substrate.
• US8907425: Concerns methods for fabricating a semiconductor device. (A detailed one-line sketch for this patent was not explicitly found in the provided search results, beyond its inclusion in the list of asserted patents).

TSMC has filed motions to stay the litigation pending IPRs for at least some of these asserted patents, including IPR2025-00828 for US7579227 and IPR2025-00830 for US8253180, signaling a common strategy by defendants to challenge patent validity at the Patent Trial and Appeal Board (PTAB). Some IPR petitions for patents involved in related cases have already seen discretionary denials by the PTAB.

Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) in the Eastern District of Texas. The case, 2:24-cv-00730-JRG, involves seven asserted patents: U.S. Patent Nos. 7,579,227; 7,923,764; 8,198,686; 8,253,180; 8,587,076; 8,796,779; and 8,907,425.

Here's a chronological breakdown of the key legal developments and outcomes:

Filing & Initial Pleadings:

• 2024-09-06: Advanced Integrated Circuit Process LLC filed its complaint against Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) for patent infringement. AICP also filed a separate, but consolidated, suit against United Microelectronics Corporation (UMC) on the same date, asserting the same patent portfolio.
• 2024-11-29: TSMC filed a motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case.
• 2024-12-06: United Microelectronics Corporation (UMC) filed a motion to dismiss the direct infringement allegations for all seven patents and the pre-suit indirect infringement allegations for six of the patents, arguing that the complaint merely "parrots the claim language" and lacks adequate notice.
• 2025-01-02: The Court granted AICP's motion for leave to conduct jurisdictional discovery.
• 2025-03-17: TSMC moved to withdraw the portion of its motion seeking dismissal for lack of personal jurisdiction but maintained the request for transfer.
• 2025-03-20: The Court granted TSMC's motion for partial withdrawal.
• 2025-03-31: TSMC filed its answer to AICP's complaint, generally denying the allegations and seeking dismissal with prejudice.
• 2025-04-17: TSMC filed a motion to strike and compel supplemental infringement contentions from AICP, alleging failure to satisfy the District's Patent Rules.
• 2025-09-30: The Court denied UMC's motion to dismiss direct infringement and pre-suit indirect infringement claims, finding that AICP's allegations were sufficient.

Pre-trial Motions of Substance:

• 2025-04-28: TSMC filed a motion to stay the litigation pending Inter Partes Reviews (IPRs) for all seven asserted patents. TSMC argued that the IPRs, which were diligently filed, would simplify or eliminate issues in the litigation, which was still in its early stages.
• 2025-06-20: TSMC filed a motion for issuance of a Letter Rogatory to Nuvoton Technology Corporation Japan, a prior owner of the asserted patents, to obtain discovery relevant to its defenses and damages theories.

Claim Construction (Markman) Outcomes:

• 2025-12-18: A Markman hearing was scheduled for December 18, 2025.
• Date not specified (likely after Dec 2025, before May 2026): The Court issued a claim construction order addressing disputes for U.S. Patents 7,579,227; 7,923,764; 8,253,180; 8,587,076; and 8,796,779. The court determined that most disputed terms, including 'gate insulating film,' 'offset sidewall,' 'sidewall spacer,' and '[first] insulating spacers interposed between the [first] gate electrode and the [first] sidewall spacers,' retain their plain and ordinary meanings. The court rejected attempts to narrow claim terms beyond their ordinary meaning without clear lexicography or disavowal.

Discovery Milestones:

• 2025-01-02: Jurisdictional discovery was granted.
• 2025-02-05: AICP served amended infringement contentions asserting the same claims.
• 2025-02-21: The Court granted AICP's unopposed motion for leave to amend its Disclosure of Asserted Claims and Infringement Contentions.
• 2025-06-30: Jurisdictional and venue discovery related to TSMC's motion to transfer was set to close.
• 2026-01-29: Fact discovery was scheduled to close.
• 2026-03-12: Expert discovery was scheduled to end.
• 2026-03-17: Dispositive motions were due.

Trial Events, Verdict, and Post-trial Motions:

• 2026-06-22: A trial date was set for June 22, 2026. The case is currently ongoing and has not reached a verdict or post-trial motions.

Final Disposition or Present Posture:

• The case is currently ongoing in the Eastern District of Texas.

Parallel PTAB IPR/PGR Proceedings:

• TSMC has filed multiple IPR petitions challenging the validity of all seven asserted patents. AICP had acquired the patents from Nuvoton Japan just two days before suing TSMC.
• 2025-03-26: TSMC filed its first IPR petition.
• 2025-04-14: TSMC filed IPR2025-00830 against U.S. Patent No. 8,253,180. The PTAB issued a Director Discretionary Denial on September 2, 2025, which was upheld by an Order Denying Director Review of Institution Decision on November 4, 2025.
• 2025-04-15: TSMC filed IPR2025-00828 challenging U.S. Patent No. 7,579,227.
• 2025-07-25: TSMC filed IPR2025-01212. This IPR was denied institution on November 20, 2025, via discretionary denial.
• 2025-08-14: The Director of the USPTO denied institution for IPR2025-00682, challenging U.S. Patent Nos. 8,198,686 and 8,907,425, in the related consolidated case against UMC.
• Expected by October 2025: TSMC expected the PTAB to begin issuing institution decisions on its IPR petitions.
• TSMC argued that the IPRs would have a substantial streamlining effect by narrowing the number of asserted patents, claims, prior art references, and claim construction issues.
• UMC also filed IPR petitions against the asserted patents, with UMC's IPRs reportedly filed later than TSMC's, starting in May 2025.

Here is the counsel of record representing Advanced Integrated Circuit Process LLC in the patent infringement case Advanced Integrated Circuit Process LLC v. Taiwan Semiconductor Manufacturing Company, Ltd., Case No. 2:24-cv-00730-JRG:

Susman Godfrey L.L.P.

• Ian M. Gore

  • Role: Lead Counsel (implied through active filings and firm's lead counsel representation in high-stakes IP litigation for plaintiffs).
  • Firm & Office Location: Susman Godfrey L.L.P., Seattle, Washington (also noted with firm presence in Houston, Los Angeles, and New York).
  • Relevant Experience: Represents both plaintiffs and defendants in high-stakes litigation, including intellectual property disputes. Recognized with the American Antitrust Institute's Outstanding Antitrust Litigation Achievement by a Young Lawyer Award. Was instrumental in successfully upholding plaintiffs' allegations in In re National Football League's “Sunday Ticket” Antitrust Litigation and defended Jawbone in a patent infringement action before the ITC, securing a ruling that Fitbit's patents were invalid.

• Justin Adatto Nelson

  • Role: Counsel
  • Firm & Office Location: Susman Godfrey, L.L.P., Houston, Texas.
  • Relevant Experience: Susman Godfrey is known for securing over one billion dollars for clients in patent infringement cases and providing defense against infringement claims.

• Kemper P. Diehl

  • Role: Counsel
  • Firm & Office Location: Susman Godfrey L.L.P.
  • Relevant Experience: The firm has a strong intellectual property and patent litigation practice, handling complex technical matters.

• Ravi Paul Singh Bhalla

  • Role: Counsel
  • Firm & Office Location: Susman Godfrey L.L.P.
  • Relevant Experience: Susman Godfrey's trial lawyers have extensive experience in patent litigation, taking cases from inception to jury verdict.

• Kalpana Srinivasan

  • Role: Counsel
  • Firm & Office Location: Susman Godfrey L.L.P., Los Angeles, California.
  • Relevant Experience: As a partner at Susman Godfrey, she is part of a firm recognized for its high-stakes intellectual property and patent litigation.

• Andrew Nassar

  • Role: Counsel
  • Firm & Office Location: Susman Godfrey L.L.P.
  • Relevant Experience: Joined Susman Godfrey after clerking for a U.S. Court of Appeals judge. His firm has a broad litigation practice including intellectual property.

Miller Fair Henry PLLC

• Andrea Leigh Fair

  • Role: Counsel (likely local counsel given East Texas presence and firm's practice)
  • Firm & Office Location: Miller Fair Henry PLLC, Longview, Texas (implied from firm's typical operations as East Texas counsel).
  • Relevant Experience: Miller Fair Henry PLLC is frequently identified alongside Susman Godfrey as representing AICP in filings, suggesting a co-counsel or local counsel role.

• Claire Abernathy Henry

  • Role: Counsel (likely local counsel given East Texas presence and firm's practice)
  • Firm & Office Location: Miller Fair Henry PLLC, Longview, Texas (implied from firm's typical operations as East Texas counsel).
  • Relevant Experience: Her firm is often involved in patent litigation in the Eastern District of Texas.

Heim, Payne & Chorush LLP

• Russell A. Chorush
  • Role: Attorney for Patent Owner (Advanced Integrated Circuit Process, LLC) in related IPR proceedings, suggesting a substantive role in the district court case as well.
  • Firm & Office Location: Heim, Payne & Chorush LLP, Houston, Texas.
  • Relevant Experience: Specializes in patent infringement and antitrust cases, particularly in high technology. Co-founder of a patent litigation boutique known for sophisticated litigation related to patent infringement. Recognized by IAM Patent 1000 and has achieved recoveries well in excess of $2 billion in cases.

Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) is represented by attorneys from Wilmer Cutler Pickering Hale and Dorr LLP (WilmerHale) and, as is common in the Eastern District of Texas, typically engages local counsel. Based on available docket information, the primary counsel of record for TSMC include:

Wilmer Cutler Pickering Hale and Dorr LLP

• James E. Quigley

  • Role: Counsel
  • Firm & Office Location: Wilmer Cutler Pickering Hale and Dorr LLP. Specific office location not detailed in provided search results but WilmerHale has offices in major legal centers, including Palo Alto, Boston, Washington D.C., and New York.
  • Relevant Experience: WilmerHale is recognized as an "exceptional firm for high stakes patent litigation" with expertise in complex medical technology and high-technology patent trials. James E. Quigley appeared on behalf of TSMC in this case on December 12, 2024.

• Jacqueline T. Moran

  • Role: Counsel
  • Firm & Office Location: Wilmer Cutler Pickering Hale and Dorr LLP. Specific office location not detailed in provided search results.
  • Relevant Experience: Appeared on behalf of TSMC in this case on December 9, 2024. WilmerHale's litigation department is consistently recognized for its intellectual property work, including being named "Patent Contentious Firm of the Year" for the Northeast region.

• Karolina Jesien

  • Role: Counsel
  • Firm & Office Location: Wilmer Cutler Pickering Hale and Dorr LLP. Specific office location not detailed in provided search results.
  • Relevant Experience: Appeared on behalf of TSMC in this case on December 9, 2024. WilmerHale handles a wide array of litigation, including patent, copyright, and trademark cases.

• Benjamin Christoff

  • Role: Counsel
  • Firm & Office Location: Wilmer Cutler Pickering Hale and Dorr LLP. Specific office location not detailed in provided search results.
  • Relevant Experience: Appeared on behalf of TSMC in this case on December 9, 2024. WilmerHale's intellectual property litigation practice group is involved in major disputes concerning intellectual property and other commercial matters.

While a specific local counsel appearance for TSMC from an East Texas firm in this particular case was not explicitly identified in the provided search snippets, firms like Gillam & Smith LLP (Marshall, TX) are frequently retained as local counsel in patent litigation in the Eastern District of Texas. Melissa R. Smith, a partner at Gillam & Smith LLP, has extensive experience as local counsel in over three thousand patent cases in the Eastern District of Texas and has been recognized as a "go-to" lawyer by Fortune 500 companies in intellectual property matters. It is highly probable that TSMC has engaged or will engage local counsel given the venue, even if a formal notice of appearance was not detailed in the available snippets.