Taiwan Semiconductor Manufacturing Company Limited et al. v. Marlin Semiconductor Ltd

This case, IPR2025-00847, involves an Inter Partes Review (IPR) before the Patent Trial and Appeal Board (PTAB) concerning US Patent 7745847, titled "Metal Oxide Semiconductor Transistor". The petitioners, challenging the patent's validity, are a consortium of prominent technology and semiconductor operating companies: Taiwan Semiconductor Manufacturing Company Limited (TSMC), Apple, Inc., Broadcom, Inc., and Qualcomm, Inc.. TSMC is the world's largest dedicated semiconductor foundry, Apple is a multinational known for consumer electronics and software, Broadcom designs and supplies a wide range of semiconductor and infrastructure software products, and Qualcomm develops and designs technologies for global communications and computing, including mobile processors and chips. The patent owner, Marlin Semiconductor Ltd., is a subsidiary of IPValue Management, a private equity-backed patent monetization firm, identifying it as a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE). Marlin acquired the asserted patent, along with a portfolio of over 480 US patents, from United Microelectronics Corporation (UMC). The '847 patent itself describes a Metal Oxide Semiconductor (MOS) transistor structure featuring raised epitaxial layers adjacent to the gate to form source/drain regions, with a key aspect being a spacer on the gate sidewall extending laterally over a portion of these raised epitaxial layers.

The IPR was filed on June 10, 2025, and has been instituted by the PTAB, meaning the Board has agreed to review the patentability of the challenged claims. This PTAB proceeding is part of a broader, multi-front defense strategy by the petitioners against patent infringement allegations brought by Marlin Semiconductor. Concurrent district court cases initiated by Marlin Semiconductor and another IPValue subsidiary, Longitude Licensing, accuse Apple, Broadcom, and Qualcomm in the Western District of Texas, and TSMC, Lenovo, and OnePlus in the Eastern District of Texas. The alleged infringement centers on semiconductor devices fabricated using TSMC's 16nm and smaller process nodes, as well as downstream products like smartphones, tablets, and wearables that incorporate these devices. An investigation (337-TA-1443) by the International Trade Commission (ITC) also involves these parties and patents, with an evidentiary hearing scheduled for February 2, 2026.

This case is notable due to the collective action by leading operating companies against an NPE asserting patents acquired from a former operating company, UMC. The involvement of TSMC, a foundational component supplier, highlights the critical nature of semiconductor manufacturing technology in modern electronics. TSMC has explicitly stated its reliance on IPRs to defend itself and its customers against what it considers "meritless patent assertions". Furthermore, the Director of the USPTO personally reviewed and decided against discretionary denial of this specific IPR (while denying others by the same petitioners against Marlin), citing that the petitioner "appears to show a material error by the Office" in granting the patent despite its age, and noting national security, economic, and public interest considerations given the vital role of TSMC's semiconductor chips to leading U.S. companies and national security. This underscores the perceived strength of the invalidity challenge and the significant market impact of the underlying technology and the parties involved.

Longitude Licensing Ltd. and Marlin Semiconductor Ltd. initiated patent infringement lawsuits against major technology companies, including the petitioners in IPR2025-00847. These actions primarily involve U.S. Patent No. 7,745,847, among others, and span district courts, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB).

I. Underlying Patent Infringement Litigation (District Court)

• Complaint Filings:
  • February 13, 2025: Longitude Licensing Ltd. and Marlin Semiconductor Limited filed a patent infringement complaint against Apple Inc., Broadcom Inc., and Qualcomm Inc. in the U.S. District Court for the Western District of Texas, Case No. 1:25-cv-00215. The complaint asserted infringement of U.S. Patent No. 7,745,847 and several other patents (U.S. Patent Nos. 9,093,473, 9,147,747, 9,184,292, and 9,953,880).
  • Around February 2025: Separately, Longitude Licensing Ltd. and Marlin Semiconductor Limited filed a patent infringement complaint against Lenovo (Motorola Mobile Communication), OnePlus, and Taiwan Semiconductor Manufacturing Company Limited (TSMC) in the U.S. District Court for the Eastern District of Texas, Case No. 2:25-cv-00171. This complaint also involved U.S. Patent No. 7,745,847 and the same portfolio of patents.
• Motion to Stay Pending ITC Action:
  • April 10, 2025: Defendants Apple Inc., Broadcom Inc., and Qualcomm Inc. filed an unopposed motion to stay the Western District of Texas case (1:25-cv-00215) pursuant to 28 U.S.C. § 1659. The request was to stay proceedings until the final determination of a co-pending ITC investigation (Inv. No. 337-TA-1443). The plaintiffs did not oppose this motion.
• Current Posture: The district court litigation is likely stayed for the claims corresponding to the ITC investigation due to the unopposed motion and statutory mandate. No further substantive developments regarding claim construction, discovery, or trial have occurred in these cases.

II. Parallel ITC Investigation (Inv. No. 337-TA-1443)

• Complaint Filing:
  • February 18, 2025: Longitude Licensing Ltd. and Marlin Semiconductor Limited filed a complaint with the U.S. International Trade Commission (ITC) alleging violations of Section 337. The complaint was supplemented on February 21, 2025, and March 10, 2025.
• Institution of Investigation:
  • March 21, 2025: The ITC formally instituted an investigation, designated as Inv. No. 337-TA-1443, titled "Certain Foreign-Fabricated Semiconductor Devices, Products Containing the Same, and Components Thereof."
• Respondents: The investigation named Apple Inc., Broadcom Inc., Lenovo Group Limited, Motorola Mobile Communication Technology Ltd, OnePlus Technology (Shenzhen) Co., LTD., and Taiwan Semiconductor Manufacturing Company Limited as respondents.
• Patents at Issue: The ITC investigation involves U.S. Patent No. 7,745,847, alongside U.S. Patent Nos. 9,093,473, 9,147,747, 9,184,292, and 9,953,880.
• Target Date Set:
  • April 23, 2025: The presiding Administrative Law Judge (ALJ) issued an order setting an 18-month target date of September 29, 2026, for the completion of the investigation.
  • May 22, 2025: The Commission adopted this target date. The final Initial Determination (ID) is expected by May 29, 2026.
• Hearing Schedule:
  • February 2, 2026: The hearing in the ITC investigation is scheduled to take place.

III. Parallel PTAB IPR Proceedings (IPR2025-00847)

• IPR Petition Filing:
  • April 17, 2025: Taiwan Semiconductor Manufacturing Company Limited and Apple Inc. filed Inter Partes Review (IPR) petition IPR2025-00847, challenging claims 1-11 of U.S. Patent No. 7,745,847.
• Patent Owner Request for Discretionary Denial:
  • July 15, 2025: Marlin Semiconductor Ltd., the patent owner, filed a request for discretionary denial of institution, citing factors such as the parallel ITC proceeding.
• Director's Decision on Discretionary Denial:
  • September 3, 2025: The Acting Director of the USPTO issued a decision denying the request for discretionary denial for IPR2025-00847, thereby allowing the petition to proceed. Although the ITC proceeding was noted, the Director determined that discretionary denial was not appropriate for this specific IPR. However, discretionary denial was granted for several other IPRs challenging different patents in the portfolio.
• Institution of IPR:
  • October 8, 2025: The Patent Trial and Appeal Board (PTAB) formally instituted IPR2025-00847.
• Projected Final Written Decision:
  • November 15, 2026: The projected date for the final written decision in IPR2025-00847 is set for November 15, 2026. This date follows the scheduled ITC trial.
• Patent Expiration: U.S. Patent No. 7,745,847 is set to expire on June 10, 2028.

Outcome/Present Posture:

The primary district court patent infringement cases are currently likely stayed pending the outcome of the parallel ITC investigation (Inv. No. 337-TA-1443), which is active and scheduled for a hearing on February 2, 2026, with a target completion date of September 29, 2026. Concurrently, IPR2025-00847, challenging U.S. Patent No. 7,745,847, has been instituted by the PTAB and is proceeding towards a final written decision anticipated in November 2026. The litigation remains active across these interconnected forums.

The following counsel of record represent the plaintiff(s) (Taiwan Semiconductor Manufacturing Company Limited, Apple, Inc., Broadcom, Inc., and Qualcomm, Inc.) in IPR2025-00847:

From Finnegan, Henderson, Farabow, Garrett & Dunner, LLP:

• Joseph Long (Counsel)

  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. His profile mentions offices in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC. His email address provided in the PTAB document suggests a connection to the Washington D.C. office or another U.S. office.
  • Experience: J.P. Long (Joseph P. Long) regularly handles intellectual property matters, including litigation, licensing, and patent portfolio management, across various forums such as federal district courts, the ITC, and the PTAB. He has a background in physics, electrical engineering, and materials science. He previously represented Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) in six inter partes review proceedings where all petitions were granted and challenged claims cancelled.

• Aidan Skoyles (Counsel)

  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. His email address in the PTAB document suggests a U.S. office.
  • Experience: Specific patent litigation experience for Aidan Skoyles was not detailed in the provided snippets, beyond his listing as counsel for the petitioners.

• Carlos Duarte-Guevara (Counsel)

  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. His email address in the PTAB document suggests a U.S. office.
  • Experience: Specific patent litigation experience for Carlos Duarte-Guevara was not detailed in the provided snippets, beyond his listing as counsel for the petitioners.

From Fish & Richardson P.C.:

• Walter Renner (Counsel)

  • Firm & Office: Fish & Richardson P.C. His email address in the PTAB document suggests a U.S. office.
  • Experience: Fish & Richardson is a prominent firm in patent litigation and PTAB proceedings. Walter Renner's specific experience was not detailed beyond his role as counsel.

• Thomas Rozylowicz (Counsel)

  • Firm & Office: Fish & Richardson P.C. His email address in the PTAB document suggests a U.S. office.
  • Experience: Fish & Richardson is a prominent firm in patent litigation and PTAB proceedings. Thomas Rozylowicz's specific experience was not detailed beyond his role as counsel.

• Minseung Ahn (Counsel)

  • Firm & Office: Fish & Richardson P.C. His email address in the PTAB document suggests a U.S. office.
  • Experience: Fish & Richardson is a prominent firm in patent litigation and PTAB proceedings. Minseung Ahn's specific experience was not detailed beyond his role as counsel.

In-House Counsel for Petitioners (supporting roles in the litigation):

• Taiwan Semiconductor Manufacturing Company Limited (TSMC):

  • Sylvia Fang (Senior Vice President and General Counsel)
  • Billie Chen (Associate General Counsel and Chief IP Counsel)
  • Note: TSMC actively uses IPRs to defend against patent assertions, with a high success rate for institution and claim cancellation.

• Apple, Inc.:

  • Jennifer Newstead (Senior Vice President and General Counsel)
  • Jeff Myers (Chief IP Counsel)
  • Noreen Krall (Former Vice President and Chief Litigation Counsel)
  • Note: Apple is deeply engaged in defending its intellectual property through litigation and strategic patenting.

• Broadcom, Inc.:

  • Mark Brazeal (Chief Legal and Corporate Affairs Officer)
  • Mark Terrano (Vice President and General Manager, Intellectual Property and Licensing Division)
  • Amanda Swaim (Senior IP Counsel)
  • Note: Broadcom manages extensive IP licensing programs and offensive/defensive IP litigations.

• Qualcomm, Inc.:

  • Ann Chaplin (EVP, General Counsel & Corporate Secretary)
  • Robert Giles (Senior Vice President, Chief IP Counsel)
  • Note: Qualcomm actively engages in patent litigation, particularly defending against non-practicing entity (NPE) assertions.

Marlin Semiconductor Ltd. is represented by attorneys from Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. in IPR2025-00847.

The counsel of record for Marlin Semiconductor Ltd. includes:

• William A. Meunier

  • Role: Counsel for Patent Owner
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
  • Office Location: Boston, MA
  • Experience: Meunier is listed as counsel for Marlin Semiconductor Ltd. in multiple IPR proceedings, including IPR2025-00847, IPR2025-01265, and IPR2025-01082, indicating significant PTAB experience.

• Michael T. Renaud

  • Role: Counsel for Patent Owner
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
  • Office Location: Boston, MA
  • Experience: Renaud also represents Marlin Semiconductor Ltd. in IPR2025-00847 and is identified as counsel in other litigation involving Marlin Semiconductor Ltd.

• Tawfik A. Goma

  • Role: Counsel for Patent Owner
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
  • Office Location: Miami, FL
  • Experience: Goma is listed as counsel for Marlin Semiconductor Ltd. in this IPR proceeding.

• Michael R. Dokhanchy (also referred to as Reza Dokhanchy)

  • Role: Counsel for Patent Owner
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
  • Office Location: San Diego, CA
  • Experience: Dokhanchy is listed as counsel for Marlin Semiconductor Ltd. in IPR2025-00847.

• Adam S. Rizk

  • Role: Counsel for Patent Owner
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
  • Office Location: Boston, MA
  • Experience: Rizk is listed as counsel for Marlin Semiconductor Ltd. in IPR2025-00847.