Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation

Advanced Integrated Circuit Process LLC (AICP) has initiated patent infringement litigation against United Microelectronics Corporation (UMC) in the U.S. District Court for the Eastern District of Texas. AICP is identified as a patent assertion entity (PAE) or non-practicing entity (NPE), having been formed in June 2024 and subsequently acquiring a portfolio of semiconductor fabrication patents, originally developed by Panasonic, from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024. The defendant, United Microelectronics Corporation, is a prominent Taiwanese global semiconductor foundry, providing integrated circuit fabrication services to fabless semiconductor companies worldwide, offering comprehensive solutions including circuit design, mask tooling, wafer fabrication, assembly, and testing.

The core of the litigation centers on UMC's alleged infringement through the provision of semiconductor devices manufactured at various process nodes, specifically the 22 and 28 nanometer process nodes. The lawsuit also targets third-party components, such as those from Microsemi and Qualcomm, that incorporate these accused semiconductor devices. The primary patent at issue is U.S. Patent 7,923,764, titled "Semiconductor Device." This patent generally relates to techniques for enhancing the driving power and reliability of a metal-insulator-semiconductor field-effect transistor (MISFET) by employing a high-dielectric-constant (high-k) gate insulating film that extends from beneath the gate electrode to under a sidewall, with the film being thicker under the gate electrode.

The case, 2:24-cv-00623, was originally filed against Taiwan Semiconductor Manufacturing Company (TSMC) in August 2024 and later consolidated with the September 2024 suit against UMC (2:24-cv-00730) under Chief Judge Rodney Gilstrap in the Eastern District of Texas, Marshall Division. This venue is frequently chosen by patent owners due to its reputation for a fast-paced docket and patent-experienced juries. The case is notable for several reasons, including AICP's pattern as a newly formed NPE rapidly asserting a recently acquired patent portfolio against major semiconductor manufacturers. Both UMC and TSMC have challenged the asserted patents, including the '764 patent, through inter partes review (IPR) petitions at the PTAB. However, several of these IPRs have faced discretionary denial by the PTAB, citing the advanced stage of the district court litigation—which includes a scheduled Markman hearing in December 2025 and a trial set for June 2026—and the risk of duplicative efforts and inconsistent decisions.

Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against United Microelectronics Corporation (UMC) in the U.S. District Court for the Eastern District of Texas. The case, originally 2:24-cv-00623, was filed on August 1, 2024, and has since been consolidated with a related case, 2:24-cv-00730. The consolidated cases involve seven patents, including U.S. Patent No. 7,923,764, which is specifically at issue in this analysis.

Here's a chronological overview of the key legal developments:

Filing & Initial Pleadings:

• 2024-08-01: Advanced Integrated Circuit Process LLC filed suit against Taiwan Semiconductor Manufacturing Company Limited (TSMC), case number 2:24-cv-00623.
• 2024-09-06: Advanced Integrated Circuit Process LLC filed suit against United Microelectronics Corporation, case number 2:24-cv-00730. This case was later consolidated with 2:24-cv-00623.
• 2024-12-10: An order was filed regarding an unopposed motion for leave to file TSMC Ltd.'s opposed motion to dismiss or in the alternative transfer in the member case 2:24-cv-00623.
• 2025-01-30: A Notice of Compliance regarding P.R. 3-1 and 3-2 disclosures was filed in the consolidated cases.
• 2025-05-01: UMC served its P.R. 3-3 Invalidity Contentions and P.R. 3-4 Document Production Accompanying Invalidity Contentions.

Pre-trial Motions of Substance:

• 2024-12-12: An order granted an unopposed motion for extension of time to file a response to UMC's Motion to Dismiss. Responses were due by January 9, 2025. The specifics and outcome of UMC's Motion to Dismiss are not explicitly detailed in the provided search results.
• 2025-02-14: A Discovery Order was signed regarding a motion for entry of a proposed discovery order.
• There is no explicit mention of motions to transfer or stay pending IPR being granted or denied in the provided snippets. However, one PTAB document indicates that UMC had "declined to file a stay motion but also inexplicably declined to join TSMC's motion" regarding the parallel litigation.

Claim Construction (Markman) Outcomes:

• 2025-12-18: A Markman hearing was scheduled. The outcome of this Markman hearing is not yet available in the provided information.

Discovery Milestones with Strategic Significance:

• 2025-03: TSMC began filing IPR petitions.
• 2025-05: UMC filed its IPR petitions.
• 2026-03-16: A joint motion to take depositions out of time was granted. This allowed for four depositions to be taken by March 18, 2026, beyond the March 12, 2026, expert discovery deadline. The depositions included Dr. David Teece, Dr. Ray Perryman, Mr. Justin Blok, and Dr. Sanjay Banerjee.

Trial Events, Verdict, and Post-trial Motions:

• A trial is set for June 2026. No verdict or post-trial motions have occurred as of the current date (May 18, 2026).

Settlement, Dismissal, Judgment, or Appeal:

• The case is ongoing.

Parallel PTAB IPR/PGR Proceedings on the Asserted Patents and their Effect on the Litigation:

• IPR2025-01079: United Microelectronics Corporation filed an IPR petition challenging patent 7,923,764. This petition was "Not Instituted - Procedural."
• IPR2025-00829: Taiwan Semiconductor Manufacturing Co Ltd. also filed an IPR petition challenging patent 7,923,764, which was also "Not Instituted - Procedural."
• UMC's delay in filing its IPR petition meant that a decision on institution would likely occur after the Markman hearing and shortly before the close of fact discovery in the parallel litigation.
• Even if TSMC's remaining petitions (for other patents in the consolidated case) were instituted and UMC's motions were granted, the final written decision deadlines were estimated to be about five months after the June 2026 trial date. This indicates that the PTAB proceedings for these specific IPRs (IPR2025-01079 and IPR2025-00829) did not stay or significantly alter the district court's schedule given their "Not Instituted" status and the timing discussed.

Advanced Integrated Circuit Process LLC is represented by attorneys from several law firms in this consolidated patent infringement case. Based on docket information for 2:24-cv-00623 and its consolidated case 2:24-cv-00730, the following counsel are of record for the plaintiff:

Susman Godfrey LLP

• Kalpana Srinivasan (Lead Counsel)
  • Firm & Office: Susman Godfrey LLP - Los Angeles, CA
  • Experience Note: Named an IP Trailblazer by The National Law Journal, she has extensive experience in high-stakes patent litigation, including representing clients in the Eastern District of Texas.
• Justin Adatto Nelson (Lead Counsel)
  • Firm & Office: Susman Godfrey, LLP - Houston, TX
  • Experience Note: Actively files motions and proposed orders on behalf of Advanced Integrated Circuit Process LLC in the Eastern District of Texas, indicating a lead role in the litigation.
• Ravi Paul Singh Bhalla (Lead Counsel)
  • Firm & Office: Susman Godfrey LLP - Houston, TX
  • Experience Note: Appears as counsel of record for Advanced Integrated Circuit Process LLC in related cases and has experience in domestic and international technology disputes, including patent and trade secret litigations.
• Ian M. Gore (Counsel)
  • Firm & Office: Susman Godfrey L.L.P. - Houston, TX
  • Experience Note: Has entered an appearance on behalf of Advanced Integrated Circuit Process LLC.
• Andrew Jamal Nassar (Counsel)
  • Firm & Office: Susman Godfrey LLP - Houston, TX
  • Experience Note: Listed as counsel for Advanced Integrated Circuit Process LLC in related proceedings.
• Bianca Rey (Counsel)
  • Firm & Office: Susman Godfrey LLP - Houston, TX
  • Experience Note: Has entered an appearance on behalf of Advanced Integrated Circuit Process LLC and files motions for the plaintiff.

Miller Fair Henry PLLC

• Claire Abernathy Henry (Local Counsel)
  • Firm & Office: Miller Fair Henry PLLC - Tyler, TX
  • Experience Note: Has filed appearances and waivers of service on behalf of Advanced Integrated Circuit Process LLC in the Eastern District of Texas, consistent with a local counsel role.
• Andrea Leigh Fair (Local Counsel)
  • Firm & Office: Miller Fair Henry PLLC - Tyler, TX
  • Experience Note: Filed the initial complaint and related documents for Advanced Integrated Circuit Process LLC in the Eastern District of Texas.

Scheef & Stone, LLP

• Michael C. Smith (Local Counsel)
  • Firm & Office: Scheef & Stone, LLP - Marshall, TX
  • Experience Note: Partner in the Marshall office focusing on complex commercial and patent litigation in federal court, with appearances as counsel of record in over 900 civil cases in the Eastern District of Texas. He is also recognized as an IP Trailblazer by The National Law Journal.

Other attorneys mentioned in the broader search results (Eric J. Filer, Joseph B. Shelton, Robert E. McAdoo) do not appear to be counsel of record for Advanced Integrated Circuit Process LLC in this specific patent infringement case based on the provided docket information. Eric J. Filer's practice areas include education, municipal, and bankruptcy law, with no clear indication of patent litigation. Joseph P. Shelton focuses on employment discrimination and trade secrets defense. Robert Buchanan's experience is in patent prosecution and IP counseling, but no direct link to representing the plaintiff in this litigation was found. The search for Robert E. McAdoo did not yield any relevant legal experience in patent litigation.

It is important to note that the PacerMonitor and Justia Dockets entries are snapshots and real-time PACER access would provide the most current and complete list of counsel.

Here is the counsel of record representing United Microelectronics Corporation (UMC) in Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation, consolidated case number 2:24-cv-00623 (lead case 2:24-cv-00730):

• Mark A. Hannemann
  • Role: Attorney (appeared Pro Hac Vice)
  • Firm: Likely associated with a national firm, as "Pro Hac Vice" indicates he is not locally admitted to the Eastern District of Texas. Further search needed to confirm firm.
  • Note: Appeared on behalf of United Microelectronics Corporation on December 10, 2024.

Further Research Needed:

While Mark A. Hannemann has appeared, the role of lead counsel, local counsel, and other attorneys involved for UMC is not fully detailed in the provided search results. A complete docket search for both 2:24-cv-00623 and its lead case 2:24-cv-00730 on PACER would be necessary to identify all counsel of record, their specific roles (e.g., lead counsel, local counsel, of counsel, in-house), their firms, and office locations. It is common for defendants in Eastern District of Texas patent cases to have a combination of national and local counsel.

A prior press release from January 2024 indicated that Morgan Lewis, with partners Andrew Gray, J. Clayton Everett, Jr., Albert Lung, and Of Counsel Emily Lowe, represented UMC in a collaboration with Intel Corp.. While this indicates a past attorney-client relationship for IP matters, it does not confirm their involvement in the current litigation. United Microelectronics Corporation has also been involved in numerous patent disputes and IPR proceedings, suggesting a history of engaging specialized patent litigation counsel.