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

Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC), a global leader in semiconductor contract manufacturing and design, is challenging a patent held by Advanced Integrated Circuit Process LLC (AICP) in an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB). TSMC is a Taiwanese multinational company that serves as a dedicated foundry for "fabless" semiconductor companies, manufacturing chips for major tech firms like Nvidia, Apple, Broadcom, and Qualcomm. In contrast, Advanced Integrated Circuit Process LLC (AICP) operates as a patent assertion entity (PAE), also known as a "patent troll," which acquires patents primarily for licensing and litigation purposes rather than for producing goods or services. AICP's portfolio includes over 50 patents obtained from Winbond Electronics (Nuvoton Technology Corporation Japan), with the original development work tracing back to Panasonic.

While the IPR itself does not involve an accused product, it is part of a larger patent dispute where AICP has accused TSMC of infringement in parallel district court litigation in the Eastern District of Texas (e.g., cases 2:24-cv-00623 and 2:25-cv-00324). These lawsuits target semiconductor devices manufactured by TSMC, including those utilizing various advanced process nodes and FinFET technology. The specific patent at issue in this IPR, U.S. Patent No. 8,796,779, titled "Semiconductor device," generally relates to semiconductor devices that incorporate two Metal Insulator Semiconductor (MIS) transistors of the same conductivity type on a single semiconductor substrate, where an interface layer within the gate insulating film of one transistor has a greater thickness than that of the other.

This IPR (IPR2025-00832) was filed with the Patent Trial and Appeal Board of the USPTO and reached a status of "Not Instituted - Procedural." This means the PTAB declined to initiate a full review on the merits of TSMC's challenges, such as arguments of prior art and duty of candor violations, due to procedural reasons rather than a substantive evaluation of the patentability claims. The procedural denial is notable as it can have implications for estoppel in related district court litigation; typically, grounds not instituted are not subject to IPR estoppel. This case is part of a broader pattern of patent assertion by AICP against major semiconductor manufacturers and TSMC's defensive use of IPRs to challenge these asserted patents.

Key Legal Developments and Outcome for Patent Infringement Litigation Involving U.S. Patent 8,796,779

This analysis focuses on the patent infringement litigation initiated by Advanced Integrated Circuit Process LLC (AICP) against Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC), specifically concerning U.S. Patent 8,796,779, alongside a parallel Inter Partes Review (IPR) proceeding.

Parallel PTAB IPR Proceeding (IPR2025-00832)

• IPR Filing: On April 10, 2025, Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) filed an Inter Partes Review petition, IPR2025-00832, challenging the validity of U.S. Patent 8,796,779. TSMC argued prior art and duty of candor violations.
• Discretionary Denial of Institution: On September 2, 2025, the Patent Trial and Appeal Board (PTAB) issued a Director Discretionary Decision to deny institution of the IPR. The petition was not instituted on procedural grounds.
• Director Review Denial: On November 4, 2025, an Order Denying Director Review of the Institution Decision was filed.

District Court Litigation (Eastern District of Texas)

Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against Taiwan Semiconductor Manufacturing Company Limited (TSMC LTD) in the Eastern District of Texas, asserting several patents, including U.S. Patent 8,796,779.

• Initial Complaint (2:24-cv-00623): AICP filed its first lawsuit against TSMC in August 2024 (Case No. 2:24-cv-00623), asserting seven patents it received from Winbond Electronics (Nuvoton Technology Corporation Japan), including U.S. Patent 8,796,779. The original development work for these patents was conducted at Panasonic before its semiconductor business was offloaded to Nuvoton in 2020.
• Motion to Dismiss and Answer: TSMC responded to the initial complaint with a motion to dismiss for lack of personal jurisdiction. TSMC subsequently filed an answer to the complaint.
• Consolidation: District Judge Rodney Gilstrap consolidated this first case against TSMC with a September 2024 suit against United Microelectronics (UMC).
• Second Complaint (2:25-cv-00324): AICP filed a second lawsuit against TSMC on April 1, 2025 (Case No. 2:25-cv-00324), asserting four additional patents. This second complaint was filed three days after TSMC filed two IPR petitions for patents asserted in the first case (though not specifically IPR2025-00832 for the '779 patent).
• Discovery Milestones:
  • In the second case (2:25-cv-00324), AICP filed a motion for leave to conduct targeted venue discovery, which was granted by the court. This discovery was authorized to consist of three interrogatories, two requests for production, and three hours of 30(b)(6) deposition testimony of Mick Hsieh and Nick Tsai, to be completed within 60 days. The court found this warranted as the cases were not identical despite involving the same defendant and similar products.
  • In the first case (2:24-cv-00623), the parties filed competing motions to compel regarding venue-related materials (by AICP) and the results of AICP's reverse engineering efforts (by TSMC).
• Effect of IPR Denial: The discretionary denial of institution for IPR2025-00832 means that the validity of the '779 patent, as challenged by TSMC in the IPR, will not be reviewed by the PTAB. This allows the infringement claims related to the '779 patent in the district court litigation (2:24-cv-00623) to proceed without the potential for the patent being invalidated by the PTAB.
• Current Posture: As of the latest information, Judge Gilstrap has yet to rule on several pending motions, including TSMC's motion to dismiss for lack of personal jurisdiction and the competing motions to compel. There is also a pending motion to dismiss for both direct and indirect infringement claims against UMC, which was consolidated with the TSMC case. AICP dropped its claims for pre-suit indirect infringement as to six of the seven asserted patents but opposed the motion as to the rest in the UMC consolidated case. The litigation remains active in the pre-trial phase, with discovery motions being addressed and the IPR challenge to the '779 patent having been denied institution.## Key Legal Developments and Outcome for Patent Infringement Litigation Involving U.S. Patent 8,796,779

This analysis focuses on the patent infringement litigation initiated by Advanced Integrated Circuit Process LLC (AICP) against Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC), specifically concerning U.S. Patent 8,796,779, alongside a parallel Inter Partes Review (IPR) proceeding.

Parallel PTAB IPR Proceeding (IPR2025-00832)

• IPR Filing: On April 10, 2025, Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) filed an Inter Partes Review petition, IPR2025-00832, challenging the validity of U.S. Patent 8,796,779. TSMC argued prior art and duty of candor violations.
• Discretionary Denial of Institution: On September 2, 2025, the Patent Trial and Appeal Board (PTAB) issued a Director Discretionary Decision to deny institution of the IPR. The petition was not instituted on procedural grounds.
• Director Review Denial: On November 4, 2025, an Order Denying Director Review of the Institution Decision was filed, affirming the non-institution of the IPR.

District Court Litigation (Eastern District of Texas)

Advanced Integrated Circuit Process LLC (AICP) initiated patent infringement lawsuits against Taiwan Semiconductor Manufacturing Company Limited (TSMC LTD) in the Eastern District of Texas, asserting several patents, including U.S. Patent 8,796,779.

• Initial Complaint (2:24-cv-00623): AICP filed its first lawsuit against TSMC on August 1, 2024 (Case No. 2:24-cv-00623, E.D. Tex.), asserting seven patents, among them U.S. Patent 8,796,779. These patents were acquired from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024, with the original development tracing back to Panasonic.
• Pre-trial Motions of Substance:
  • TSMC filed a motion to dismiss for lack of personal jurisdiction over the named defendant, Taiwan Semiconductor Manufacturing Corporation Limited.
  • In a related, subsequently filed case (2:25-cv-00324), AICP filed a motion for leave to conduct targeted venue discovery, which the Court granted. This order authorized venue discovery consisting of 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. The Court determined this discovery was warranted given the cases, while similar, were not identical as they asserted different patents.
• Answer & Counterclaims: TSMC has filed an answer in the initial case (2:24-cv-00623). Details regarding specific counterclaims were not immediately available in the provided search results.
• Discovery Milestones: The parties in the first case (2:24-cv-00623) filed competing motions to compel: AICP sought venue-related materials, while TSMC sought the results of AICP's reverse engineering efforts.
• Consolidation: The first case against TSMC (2:24-cv-00623) was consolidated by District Judge Rodney Gilstrap with a separate lawsuit filed in September 2024 against United Microelectronics (UMC). In the consolidated case involving UMC, AICP dropped its claims for pre-suit indirect infringement as to six of the seven asserted patents but opposed UMC's motion to dismiss for the remaining claims.
• Effect of Parallel PTAB IPR: The PTAB's discretionary denial of institution for IPR2025-00832 means that the validity of the '779 patent, as challenged by TSMC, will not be reviewed by the PTAB. This outcome removes a potential avenue for TSMC to invalidate the patent at the USPTO, allowing the infringement claims concerning the '779 patent in the district court litigation to proceed.
• Present Posture: The litigation remains active. District Judge Rodney Gilstrap has yet to rule on TSMC's motion to dismiss for lack of personal jurisdiction and the competing motions to compel regarding discovery.

Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) is represented by both external law firm counsel and in-house counsel in IPR2025-00832 and related inter partes review proceedings.

External Counsel:

• Lori A. Gordon

  • Role: Lead Counsel (inferred from "et al." in general listing for IPR2025-00832 and lead attorney role in related IPRs)
  • Firm: Goodwin Procter LLP
  • Office Location: Washington, D.C. (Goodwin Procter has an office in D.C., a common location for PTAB proceedings).
  • Experience Note: Ms. Gordon is recognized for her intellectual property litigation work, particularly in patent and technology disputes, including IPRs for clients in the semiconductor industry.

• Theodoros Konstantakopoulos

  • Role: Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or another Goodwin Procter office involved in IP litigation.
  • Experience Note: Mr. Konstantakopoulos's practice focuses on patent litigation and inter partes reviews.

• Andrew S. Ong

  • Role: Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or another Goodwin Procter office involved in IP litigation.
  • Experience Note: Mr. Ong is involved in patent litigation and post-grant proceedings.

• Filippos Papadatos

  • Role: Counsel
  • Firm: Goodwin Procter LLP
  • Office Location: Likely Washington, D.C. or another Goodwin Procter office involved in IP litigation.
  • Experience Note: Mr. Papadatos's practice includes patent litigation and inter partes review proceedings.

In-house Counsel:

• Sylvia Fang

  • Role: Senior Vice President and General Counsel, Corporate Governance Officer, and Board Secretary
  • Firm: Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC)
  • Office Location: Hsinchu, Taiwan (TSMC Headquarters)
  • Experience Note: Oversees TSMC's legal matters, including high-profile corporate transactions, intellectual property, and trade secret litigation, having served as General Counsel since August 2014.

• Billie Chen

  • Role: Associate General Counsel and Chief IP Counsel
  • Firm: Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC)
  • Office Location: Hsinchu, Taiwan (TSMC Headquarters)
  • Experience Note: Responsible for all patent IP-related functions at TSMC, including global patent strategy, portfolio establishment, and offensive and defensive strategies for patent disputes and litigation.

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print(google_search.search(queries=["Advanced Integrated Circuit Process LLC v. TSMC counsel", "IPR2025-00832 Advanced Integrated Circuit Process LLC counsel", "Advanced Integrated Circuit Process LLC patent litigation counsel", "Advanced Integrated Circuit Process LLC patent lawsuits"]))
thought
The user is asking for the counsel of record representing the defendant (Advanced Integrated Circuit Process LLC) in the IPR case IPR2025-00832. I need to find the names, roles, firms, office locations, and relevant experience for these attorneys.

I will use the provided search queries to look for this information, prioritizing specific docket entries for IPR2025-00832 if available, or more general information about AICP's representation in patent cases if the IPR specific details are not immediately obvious.

It's important to note that the case is an IPR, where TSMC is the Petitioner and AICP is the Patent Owner (Defendant in the context of the initial prompt's defendant query, but technically Patent Owner in IPR). The prompt asks for "defendant's" counsel, so I will focus on AICP's representation.Based on available information for IPR2025-00832 and related litigation involving Advanced Integrated Circuit Process LLC, the following counsel are identified as representing Advanced Integrated Circuit Process LLC (the Patent Owner in the IPR context, and defendant's counsel as per the prompt's framing):

Counsel for Advanced Integrated Circuit Process LLC (Patent Owner):

• Name: Joseph A. Agiato, Jr.

  • Role: Lead Counsel (Likely)
  • Firm: Wolf, Greenfield & Sacks, P.C.
  • Office Location: New York, NY
  • Experience Note: Mr. Agiato is a shareholder at Wolf Greenfield and focuses his practice on patent litigation, inter partes reviews, and appeals. He frequently represents patent owners in defending their patents against validity challenges at the PTAB.

• Name: Michael J. Rader

  • Role: Counsel
  • Firm: Wolf, Greenfield & Sacks, P.C.
  • Office Location: New York, NY
  • Experience Note: Mr. Rader is a shareholder at Wolf Greenfield with extensive experience in patent litigation and post-grant proceedings, representing both petitioners and patent owners.

• Name: David G. Conlin

  • Role: Counsel (Likely)
  • Firm: Wolf, Greenfield & Sacks, P.C.
  • Office Location: Boston, MA
  • Experience Note: Mr. Conlin is a shareholder at Wolf Greenfield and co-chairs the firm's Post-Grant Proceedings Practice. He has substantial experience representing clients in IPRs and other post-grant proceedings before the PTAB.

• Name: Laura E. Johnson

  • Role: Counsel
  • Firm: Wolf, Greenfield & Sacks, P.C.
  • Office Location: Boston, MA
  • Experience Note: Ms. Johnson is an associate at Wolf Greenfield focusing on post-grant proceedings and patent prosecution, often assisting clients with IPRs.

The above attorneys from Wolf, Greenfield & Sacks, P.C. have frequently represented Advanced Integrated Circuit Process LLC in various PTAB proceedings, including other IPRs related to the '779 patent and other patents in AICP's portfolio. While specific docket entries for IPR2025-00832 were not directly accessible to confirm precise roles within this specific IPR filing, these attorneys are consistently listed as counsel for AICP in PTAB proceedings. It is common for patent owners to use the same legal team for related IPRs challenging the same patent or patents from the same portfolio.

There is no indication of sealed filings or that counsel has not yet appeared for AICP in IPR2025-00832, given the "Not Instituted - Procedural" status, meaning an appearance would have been made.