Taiwan Semiconductor Manufacturing Company Limited v. Advanced Integrated Circuit Process LLC

Taiwan Semiconductor Manufacturing Company Limited (TSMC), a Taiwanese multinational semiconductor contract manufacturing and design company and the world's largest independent semiconductor foundry, is involved in a patent dispute with Advanced Integrated Circuit Process LLC (AICP). AICP appears to be a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE), formed in Texas in June 2024, and holding a portfolio of over 50 patents acquired from Winbond Electronics (Nuvoton Technology Corporation Japan), with original development work attributed to Panasonic.

This particular proceeding is an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), IPR2025-00829, challenging U.S. Patent No. 7,923,764. The petition was filed by TSMC, but the IPR was not instituted due to procedural reasons. This IPR is linked to a broader patent infringement litigation initiated by AICP against TSMC in the U.S. District Court for the Eastern District of Texas. AICP's lawsuits accuse TSMC of infringing various patents, including the '764 patent, through the manufacture of semiconductor devices using its 22nm and 28nm process node low power variants, such as its Ultra Low Leakage (22ULL), 22nm Ultra Low Power (22ULP), and 28nm Ultra Low Power (28ULP) process nodes. These accused products are critical components often found in chips supplied to major tech companies like Apple, Broadcom, and Qualcomm. The U.S. Patent No. 7,923,764 is titled "Semiconductor device and method of manufacturing the same."

The case is notable for several reasons, primarily reflecting a common pattern of NPE assertion against major operating companies in the high-stakes semiconductor industry. AICP's acquisition of a substantial patent portfolio from former Panasonic intellectual property, followed by its assertion against a global leader like TSMC, highlights the strategic use of patent assets. TSMC's role as the dominant pure-play foundry, manufacturing chips for a vast array of companies, means that litigation impacting its core processes has significant implications across the global technology supply chain. The "Not Instituted - Procedural" outcome in this IPR signals that the PTAB declined to review the patent's validity on the merits, potentially due to factors such as parallel district court litigation, stipulations under Sotera, or other discretionary considerations.

Advanced Integrated Circuit Process LLC (AICP) initiated patent infringement litigation against Taiwan Semiconductor Manufacturing Company Limited (TSMC), asserting U.S. Patent No. 7,923,764, among others. This litigation is coupled with an inter partes review (IPR) proceeding filed by TSMC against the patent at the Patent Trial and Appeal Board (PTAB).

Parallel PTAB IPR Proceedings

• 2025-03-26: Taiwan Semiconductor Manufacturing Company Limited (TSMC) filed an inter partes review (IPR) petition, IPR2025-00829, challenging U.S. Patent No. 7,923,764, which is owned by Advanced Integrated Circuit Process LLC. This IPR was filed in connection with an infringement lawsuit brought by AICP against TSMC in the Eastern District of Texas (Case No. 2:24-cv-00623).
• Status: Not Instituted - Procedural: The PTAB did not institute the IPR proceeding, with the status listed as "Not Instituted - Procedural". This decision occurred during a period in 2025 when the PTAB implemented significant changes to its institution process, centralizing and expanding the Director's discretion to deny institution, and making it harder for petitions to be instituted, particularly based on discretionary factors.

Patent Infringement Litigation: Advanced Integrated Circuit Process LLC v. Taiwan Semiconductor Manufacturing Company Limited, Case No. 2:24-cv-00623 (E.D. Tex.)

• 2024-08-01: Filing of Complaint: Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against Taiwan Semiconductor Manufacturing Company Limited (TSMC) in the U.S. District Court for the Eastern District of Texas, Case No. 2:24-cv-00623. This marked AICP's initial lawsuit, where it accused TSMC of infringing seven patents, including U.S. Patent No. 7,923,764. The case was assigned to Chief Judge Rodney Gilstrap.
• Initial Pleadings - Infringement Contentions: AICP subsequently provided its Disclosure of Asserted Claims and Infringement Contentions, asserting claims 1, 2, 3, 4, 5, 6, 11, 12, 13, 14, 15, 16, 17, 18, and 19 of the '764 patent against TSMC. AICP alleged that TSMC directly infringes by manufacturing, using, selling, offering to sell, and/or importing accused semiconductor devices into the United States. AICP further contended indirect infringement through TSMC's offering and/or selling services for manufacturing and designs for these accused products. AICP's contentions were based on available information, with a reservation to supplement after discovery and claim construction.
• Current Posture: The provided information indicates that this litigation remains active, with no details on pre-trial motions, claim construction, discovery milestones, trial, or final judgment available in the provided search results. A separate, later-filed case, Advanced Integrated Circuit Process LLC v. TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED, 2:25-cv-00324 (E.D. Tex.), also involving TSMC, was filed on April 1, 2025, and has a claim construction hearing scheduled for May 14, 2026, and a case management conference for October 13, 2026, suggesting ongoing litigation. The specific relationship between the 2:24-cv-00623 and 2:25-cv-00324 cases is not explicitly detailed in the provided information.

While specific counsel filings for IPR2025-00829 are not explicitly detailed due to its "Not Instituted - Procedural" status, counsel for Taiwan Semiconductor Manufacturing Company Limited in the closely related IPR2025-00830, against the same patent owner Advanced Integrated Circuit Process LLC, are listed as attorneys from Goodwin Procter LLP. It is highly probable that the same team handled IPR2025-00829.

The counsel of record representing Taiwan Semiconductor Manufacturing Company Limited are:

• Lori A. Gordon - Partner, Lead Counsel

  • Firm: Goodwin Procter LLP, Washington, DC.
  • Experience: Partner in Goodwin's Intellectual Property Litigation group, with extensive experience in inter partes matters, including over 260 contested case proceedings before the Patent Trial and Appeal Board (PTAB). She has been recognized as a top woman litigator at the PTAB since its inception.

• Theodoros Konstantakopoulos, Ph.D. - Partner, Counsel

  • Firm: Goodwin Procter LLP, New York.
  • Experience: Partner in the Intellectual Property Litigation group, focusing on post-grant proceedings before the PTAB, patent litigation in district courts, and ITC actions. He has been recognized as a top-performing attorney representing petitioners in PTAB proceedings and holds a Ph.D. in electrical engineering and computer engineering.

• Andrew S. Ong - Partner, Counsel

  • Firm: Goodwin Procter LLP, San Francisco (at the time of filing).
  • Experience: Focuses on complex intellectual property issues, including patent and trade-secret litigation in federal courts and proceedings before the USPTO (including IPRs and reexaminations). His work encompasses a diverse range of technology areas, including network devices, design automation software, data storage, and semiconductor chips. (Note: Andrew Ong joined King & Spalding in August 2025, after the filing of IPR2025-00829).

• Filippos Papadatos, Ph.D. - Senior Science Advisor and Patent Agent, Counsel

  • Firm: Goodwin Procter LLP, various offices.
  • Experience: Specializes in domestic and international intellectual property portfolio strategy, including patent application preparation and prosecution, patent validity and infringement opinions, and patentability and freedom-to-operate analyses. His expertise covers semiconductor and microelectronics manufacturing processes, among other technological fields.

Advanced Integrated Circuit Process LLC, the defendant in IPR2025-00829, is represented by attorneys from Heim, Payne & Chorush, LLP. While specific docket entries for IPR2025-00829 were not found, this firm and its listed attorneys consistently represent Advanced Integrated Circuit Process LLC in related inter partes review proceedings, such as IPR2025-00828 and IPR2025-01076, also involving Taiwan Semiconductor Manufacturing Company Ltd. or United Microelectronics Corporation.

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: Represents Advanced Integrated Circuit Process LLC as Patent Owner in related PTAB proceedings.

• Michael F. Heim

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Represents Advanced Integrated Circuit Process LLC as Patent Owner in related PTAB proceedings.

• Kyle E. Friesen

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Represents Advanced Integrated Circuit Process LLC as Patent Owner in related PTAB proceedings.

• Lily R. Glick

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Represents Advanced Integrated Circuit Process LLC as Patent Owner in related PTAB proceedings.

• Christopher L. Limbacher

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Note: Represents Advanced Integrated Circuit Process LLC as Patent Owner in related PTAB proceedings.