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.

While Taiwan Semiconductor Manufacturing Company, Ltd. (TSMC) is a frequent target of patent assertion entities, news coverage specifically detailing IPR2025-00832, which challenged U.S. Patent No. 8,796,779 held by Advanced Integrated Circuit Process LLC (AICP), and its procedural denial, is limited. General reporting on TSMC's broader patent disputes often focuses on its battles with various "patent trolls" rather than individual Inter Partes Review outcomes.

Several legal intelligence platforms, such as RPX Empower and Mondaq (republishing RPX content), have reported on AICP's patent infringement lawsuits against TSMC in the Eastern District of Texas. These reports note that AICP, an entity formed in Texas, received over 50 patents from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024, with the original development work tracing back to Panasonic. AICP filed its first lawsuit against TSMC in August 2024 (Case No. 2:24-cv-00623), asserting seven of these patents, including the '779 patent, which relates to semiconductor devices. A second lawsuit (Case No. 2:25-cv-00324) followed in April 2025, asserting four additional patents. These articles also mention that TSMC responded to AICP's initial complaint by filing multiple Inter Partes Review petitions, including for the '779 patent, as a defensive measure.

While the procedural denial of IPR2025-00832 on September 2, 2025, and the subsequent denial of Director Review on November 4, 2025, were key developments in this specific PTAB proceeding, this particular outcome has not garnered widespread attention from major news outlets. Instead, much of the recent press coverage concerning TSMC's patent woes, particularly in June 2026, has focused on a separate and more high-profile patent infringement investigation initiated by Longitude Licensing and Marlin Semiconductor (subsidiaries of IPValue Management) at the U.S. International Trade Commission (USITC). Taiwanese officials, including Liao Cheng-wei, Director-General of Taiwan's Intellectual Property Office (TIPO), publicly described Longitude Licensing and Marlin Semiconductor as "patent trolls," noting their primary objective is to seek licensing fees or settlement money. This USITC case, which could lead to import restrictions on TSMC's advanced chips, has been highlighted as significant due to its potential impact on the semiconductor industry, AI development, and national defense, with some U.S. Republican lawmakers urging strict enforcement of patent rights against TSMC. The Ministry of Economic Affairs in Taiwan has expressed confidence in TSMC's compliance with patent regulations and its ability to handle such disputes. While the broader context points to TSMC actively defending its intellectual property against various assertion entities, specific media analysis regarding the procedural denial of IPR2025-00832 and its direct implications for the '779 patent has been subsumed by these larger, more publicly debated patent disputes.

Sources

• mondaq.com
• rpxcorp.com
• rpxcorp.com
• pacermonitor.com
• uspto.gov
• focustaiwan.tw
• biggo.com
• taipeitimes.com
• sedaily.com
• youtube.com
• taiwannews.com.tw
• iipla.org

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.

I'll research the counsel representing the patent owner/defendant, Advanced Integrated Circuit Process LLC, in this IPR and related proceedings.

I found the key filing. Let me verify the counsel details and gather experience backgrounds.

Counsel of Record — Defendant/Patent Owner Side

Important framing note

IPR2025-00832 is an inter partes review, not a district court infringement action, so there is technically no "defendant." The adverse party to TSMC's petition is the Patent Owner, Advanced Integrated Circuit Process LLC (AICP) — which is the entity the case metadata lists as the "Defendant." I therefore report AICP's PTAB counsel of record below, and then briefly identify TSMC's defense counsel in the parallel E.D. Tex. infringement suits, since the task frame ("patent infringement case") points at that litigation.

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1. PTAB counsel of record for Advanced Integrated Circuit Process LLC (Patent Owner) — IPR2025-00832

The Patent Owner's mandatory notices and updated power of attorney identify Heim, Payne & Chorush, LLP (Houston, TX) as counsel of record, all practicing from 609 Main Street, Suite 3200, Houston, TX 77002. Service email: aicppllit@hpcllp.com.

Grounding: The Patent Owner's Mandatory Notices filed August 28, 2025 in IPR2025-00832 list Chorush as lead with Heim, Limbacher, Glick, and Friesen as back-up (PTAB Patent Owner submission); the June 23, 2025 updated power of attorney confirms the same roster plus Friesen (PTAB updated POA). The same HPC team appears in AICP's sister IPRs (e.g., IPR2025-00829, -00830, -00831, and the later -01302/-01305 filings), per IP Verse's counsel listings (IP Verse IPR2025-00832).

Data caveat: Sources disagree on Chorush's registration number — the Aug. 28, 2025 mandatory notice and the June 23, 2025 POA show 55,869, while an April 2025 AICP mandatory notice (IPR2025-00829) OCR shows 55,689. I report 55,869 as the more recent/consistent figure but flag the discrepancy.

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2. Contrast — the two sides' district court counsel (parallel E.D. Tex. cases 2:24-cv-00623 & 2:25-cv-00324)

In the infringement suits, the party roles reverse: AICP is plaintiff and TSMC is defendant. Neither set of district-court counsel is counsel of record in the IPR.

AICP (plaintiff in district court) — litigation counsel:

• Justin A. Nelson — Lead Counsel, Susman Godfrey LLP (Houston, TX; also Los Angeles, Seattle, New York offices). Nelson heads AICP's district-court team; co-counsel include Kalpana Srinivasan (LA), Ravi Bhalla and Andrew Nassar (New York), and Ian Gore, Kemper Diehl, Bianca Rey (Seattle).
• Claire Abernathy Henry and Andrea Fair — Miller Fair Henry PLLC (Longview, TX), designated "Of Counsel"/local Texas counsel for AICP.
• Grounding: AICP's Rule 3-1/3-2 Notices of Compliance in 2:25-cv-00324 (Dkt. 45) and per the Justia docket for 2:25-cv-00324.

TSMC (defendant in district court) — defense counsel:

• Jennifer Truelove appears in the docket filings; the case is defended by McKool Smith, PC (Austin) per IP Verse's party-counsel mapping, with additional appearances by Michael J. McKeon, Kevin K. Su, Christian A. Chu, Karrie E. Washenfe Wheatley, Anthony Van Nguyen, James Lee Huguenin-Love, Benjamin Christoff, Jacqueline T. Moran, Karolina Jesien, and Carlos Eduardo Duarte-Guevara (pro hac vice notices, E.D. Tex. 2:25-cv-00324, Dkts. 16–24).
• On the patent prosecution side / separate IPRs, TSMC has used different firms: Goodwin Procter LLP (Lori A. Gordon et al.) as petitioner's counsel in the IPR2025-00828–00832 family, and Foley & Lardner LLP (Michael Houston, Pavan Agarwal, Nicholas Lagerwall) as petitioner's counsel in the later IPR2025-01212 family — a notable detail given the existing summary identifies Goodwin's Gordon as TSMC's counsel.
• TSMC in-house: Billie Chen, Associate General Counsel & Chief IP Counsel (signed the Foley power of attorney), and Sylvia Fang, SVP & General Counsel.

Caveat on firm attribution: The Periphas/IP Verse docket aggregator attributes TSMC's district-court defense to McKool Smith, PC (Austin); I could not independently confirm the individual McKool Smith partner of record from a primary PACER/firm-court filing. Treat the firm-level attribution as reasonably supported but the individual McKool Smith lead counsel as not verified.

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3. Things I could not confirm

• No sealed or non-public counsel has been inferred. All AICP PTAB counsel listed derive from public PTAB filings.
• I found no evidence that counsel withdrew or substituted in IPR2025-00832; the file was closed at the institution-denial stage (discretionary denial Sept. 2025; Director Review denied Nov. 2025), so no additional appearances would be expected.
• McKool Smith's individual counsel of record for TSMC in the E.D. Tex. cases is not confirmed from a primary source in this research pass.

Would you like me to pull the PACER docket sheet for 2:24-cv-00623/2:25-cv-00324 to confirm the TSMC defense team's individual counsel of record?