Taiwan Semiconductor Manufacturing Co Ltd. v. Advanced Integrated Circuit Process LLC

Case Overview: Taiwan Semiconductor Manufacturing Co Ltd. v. Advanced Integrated Circuit Process LLC

This case involves an Inter Partes Review (IPR) proceeding, IPR2025-01305, before the Patent Trial and Appeal Board (PTAB) where Taiwan Semiconductor Manufacturing Co Ltd. (TSMC) challenged U.S. Patent 8,329,572, owned by Advanced Integrated Circuit Process LLC. The IPR was ultimately not instituted due to procedural reasons. [cite: IPR2025-01305] This PTAB action is closely linked to ongoing patent infringement litigation in the U.S. District Court for the Eastern District of Texas, where Advanced Integrated Circuit Process LLC (AICP) has accused TSMC of infringement.

The plaintiff in the IPR, Taiwan Semiconductor Manufacturing Co Ltd. (TSMC), is a global leader in semiconductor contract manufacturing and design, operating a pure-play foundry model. It produces chips for major technology companies like Nvidia, Apple, Broadcom, and Qualcomm. The defendant and patent owner, Advanced Integrated Circuit Process LLC (AICP), appears to operate as a patent assertion entity (PAE) or Non-Practicing Entity (NPE). AICP's patent portfolio, including the patent at issue, was acquired from Winbond Electronics (Nuvoton Technology Corporation Japan), with the original development work attributed to Panasonic. AICP's parent company is identified as AMTL LLC.

The primary patent at issue in this IPR is U.S. Patent 8,329,572, which is broadly directed to semiconductor fabrication. In the parallel district court litigation, AICP has accused TSMC of infringing this and other patents through the manufacture of semiconductor devices, specifically mentioning certain chips from Apple, Broadcom, and Qualcomm that utilize various process nodes, including FinFET technology. The procedural posture of the IPR is that it was filed on July 15, 2025, but was "Not Instituted - Procedural" by the PTAB, meaning the Board did not proceed to a full review of the patentability challenge, likely due to an administrative or procedural deficiency in the petition rather than a substantive evaluation of the prior art. [cite: IPR2025-01305] This IPR is part of a broader litigation strategy by TSMC to defend against infringement claims brought by AICP in the Eastern District of Texas (e.g., Advanced Integrated Circuit Process LLC v. Taiwan Semiconductor Mfg Co Ltd, Case Nos. 2:24-cv-00623 and 2:25-cv-00324, consolidated under 2:24-cv-00730), a venue known for its active patent docket and experienced Judge Rodney Gilstrap.

This case is notable due to several factors. It highlights the ongoing trend of NPEs like Advanced Integrated Circuit Process LLC asserting acquired patent portfolios against major operating companies in the semiconductor industry. Given TSMC's dominant position as the world's leading semiconductor foundry, any litigation concerning its fabrication processes has significant implications for the global technology supply chain. The "Not Instituted - Procedural" status of the IPR, while not a decision on the merits, underscores the complexities and potential pitfalls in challenging patent validity through PTAB proceedings, especially in parallel with district court litigation.

This analysis covers the key legal developments and outcome for the patent infringement litigation involving Advanced Integrated Circuit Process LLC (AICP) and Taiwan Semiconductor Manufacturing Co Ltd. (TSMC), specifically noting the parallel Inter Partes Review (IPR) proceeding, IPR2025-01305, which concerns US Patent 8,329,572.

Key Legal Developments and Outcome:

District Court Litigation – Initial Filing and Consolidation:

• 2024-08-01: Initial Complaint Filed
  Advanced Integrated Circuit Process LLC (AICP) initiated its first patent infringement lawsuit against Taiwan Semiconductor Manufacturing Co Ltd. (TSMC) in the U.S. District Court for the Eastern District of Texas, case number 2:24-cv-00623. This initial complaint asserted infringement of seven patents.
• 2024-12-05: Consolidation Order Issued
  The first case (2:24-cv-00623) was consolidated for all pretrial issues with another related lawsuit filed by AICP against United Microelectronics Corporation (2:24-cv-00730) in the Eastern District of Texas. Case 2:24-cv-00730 was designated as the lead case for pretrial matters.
• Motions to Dismiss (First Case)
  TSMC filed a motion to dismiss the initial complaint for lack of personal jurisdiction or, in the alternative, to transfer the case to the Northern District of California.

District Court Litigation – Second Filing (Asserting US Patent 8,329,572):

• 2025-04-01: Second Complaint Filed
  AICP filed a second patent infringement lawsuit against TSMC, Advanced Integrated Circuit Process LLC v. TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED, case number 2:25-cv-00324, also in the Eastern District of Texas. This second complaint asserted four additional patents, notably including US Patent 8,329,572, which is the patent at issue in the IPR.
• Discovery Milestones
  In case 2:25-cv-00324, the court granted AICP's motion for leave to conduct targeted venue discovery. This authorized discovery included three interrogatories, two requests for production, and three hours of 30(b)(6) deposition testimony from Mick Hsieh and Nick Tsai, to be completed within 60 days of the order. The court deemed this necessary because, despite similar parties and products, the asserted patents in this second case differed from those in the earlier litigation.
• 2026-05-14: Claim Construction (Markman) Hearing
  A Claim Construction Hearing (Markman) was scheduled for May 14, 2026, in district court case 2:25-cv-00324.
• 2026-10-13: Case Management Conference
  A Case Management Conference is scheduled for October 13, 2026, in district court case 2:25-cv-00324, indicating the ongoing nature of the litigation.

Parallel PTAB IPR Proceeding (IPR2025-01305):

• 2025-07-15: IPR Petition Filed
  Taiwan Semiconductor Manufacturing Co Ltd. filed an Inter Partes Review (IPR) petition, IPR2025-01305, against Advanced Integrated Circuit Process LLC concerning US Patent 8,329,572. This was part of TSMC's broader strategy to challenge patents asserted by AICP in the ongoing district court litigations.
• Status: Not Instituted - Procedural
  IPR2025-01305 was not instituted due to procedural reasons. While the specific date of this non-institution decision for IPR2025-01305 was not identified in public search results, around this timeframe, the USPTO Director has issued decisions denying institution of IPRs based on discretionary factors, including petitions perceived as attempting a "second bite at the apple" after district court proceedings. A precedential decision denying institution on such grounds was issued on May 14, 2026. It is plausible that the procedural denial of IPR2025-01305 aligns with these discretionary policies.

Current Posture:
The district court litigation, specifically case 2:25-cv-00324 involving US Patent 8,329,572, remains active, with a Claim Construction Hearing having occurred in May 2026 and a Case Management Conference scheduled for October 2026. The parallel IPR challenge against US Patent 8,329,572 (IPR2025-01305) concluded without institution, likely leaving the patentability of the asserted claims to be litigated in the district court.

Based on publicly available information for related proceedings and Taiwan Semiconductor Manufacturing Co Ltd.'s (TSMC) usual counsel in patent matters, the following attorneys are likely to represent the plaintiff. While specific counsel for IPR2025-01305 might not be extensively documented due to its "Not Instituted - Procedural" status, these individuals and their firms frequently represent TSMC in PTAB IPRs against Advanced Integrated Circuit Process LLC and in semiconductor patent litigation.

In-House Counsel:

• Billie Chen
  • Role: Associate General Counsel and Chief IP Counsel
  • Firm: Taiwan Semiconductor Manufacturing Co Ltd. (TSMC), Hsinchu, Taiwan.
  • Note: Ms. Chen leads TSMC's global patent strategy and portfolio, directing offensive and defensive strategies for patent disputes and litigation, including IPRs, and is a certified United States attorney.

External Counsel:

• Lori A. Gordon

  • Role: Partner (likely lead counsel or key counsel for PTAB matters)
  • Firm: Goodwin, Washington, DC.
  • Note: Ms. Gordon is a partner in Goodwin's Intellectual Property Litigation group and focuses intensively on inter partes matters, with experience in over 260 contested case proceedings before the Patent Trial and Appeal Board (PTAB). She represents clients in a broad range of industries, including semiconductor devices and fabrication. She was listed as "Petitioner Counsel" in IPR2025-00830, a related IPR filed by TSMC against Advanced Integrated Circuit Process LLC.

• Nicholas M. Lagerwall

  • Role: Partner (likely key counsel for PTAB matters)
  • Firm: Foley & Lardner LLP, Washington, DC.
  • Note: Mr. Lagerwall is a partner in Foley & Lardner's Electronics Practice with substantial experience in various post-grant proceedings before the U.S. Patent and Trademark Office, representing both patent owners and petitioners. His experience includes semiconductor devices and fabrication. He was listed as "Petitioner Counsel" in IPR2025-01210, another related IPR filed by TSMC against Advanced Integrated Circuit Process LLC.

Advanced Integrated Circuit Process LLC (AICP), as the Patent Owner in IPR2025-01305, is represented by counsel from Heim, Payne & Chorush, LLP. While specific counsel for IPR2025-01305 were not directly listed due to its "Not Instituted - Procedural" status, these attorneys were formally designated as lead and backup counsel for AICP in a related IPR, IPR2025-01093, and their firm has also appeared for AICP in other IPR proceedings.

The counsel of record representing Advanced Integrated Circuit Process LLC include:

• Russell A. Chorush

  • Role: Lead Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience: Represents patent owners in patent litigation, including numerous Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board.

• Michael F. Heim

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience: Experienced in patent litigation and IPR proceedings.

• Christopher L. Limbacher

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience: Practices in patent litigation and IPR matters.

• Lily R. Glick

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience: Involved in patent litigation and IPR proceedings.

• Kyle Friesen

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience: Focuses on patent litigation, including IPRs.