Taiwan Semiconductor Manufacturing Company Ltd. v. Marlin Semiconductor Ltd.

Case Overview and Background: Taiwan Semiconductor Manufacturing Company Ltd. v. Marlin Semiconductor Ltd. (IPR2025-01484)

This case involves an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO), where Taiwan Semiconductor Manufacturing Company Ltd. (TSMC) challenged the patentability of U.S. Patent No. 9,786,510 B2, owned by Marlin Semiconductor Ltd.. Taiwan Semiconductor Manufacturing Company Ltd. (TSMC) is the world's largest independent semiconductor foundry, a public multinational company headquartered in Taiwan that focuses solely on manufacturing integrated circuits for other companies, including major chip designers like Apple and Nvidia. Marlin Semiconductor Ltd., conversely, is a private subsidiary of Meridian IP Ireland Limited and operates as a patent assertion entity (PAE) or non-practicing entity (NPE). It acquired its substantial portfolio of over 800 worldwide patents, covering logic, memory, manufacturing processes, and packaging patents for semiconductors, from United Microelectronics Corporation (UMC).

The specific accused product, service, or technology in the underlying dispute that led to this IPR is broadly related to semiconductor devices fabricated using TSMC's advanced process nodes, specifically 16nm and smaller process nodes. While the precise one-line technical sketch for U.S. Patent No. 9,786,510 B2 is not readily available in public search snippets, Marlin Semiconductor's portfolio, from which this patent originates, generally pertains to semiconductor structures, processes, and circuits.

The procedural posture for this case is an Inter Partes Review (IPR) at the USPTO's Patent Trial and Appeal Board (PTAB), identified as IPR2025-01484. The petition was filed on August 29, 2025, and terminated on January 9, 2026, with the PTAB denying institution. This venue matters significantly due to parallel litigation: Marlin Semiconductor, along with Longitude Licensing Ltd., filed a complaint with the U.S. International Trade Commission (USITC) (337-TA-1443) on February 18, 2025, alleging violations of Section 337 against TSMC and other major tech companies such as Apple, Broadcom, Lenovo, Motorola Mobile Communication, OnePlus, and Qualcomm, concerning foreign-fabricated semiconductor devices that allegedly infringe patents asserted by Marlin.

This case is notable primarily due to its linkage to the parallel USITC investigation and the PTAB's decision to deny institution. The denial of institution in this IPR, and in several other related IPR petitions filed by TSMC against Marlin Semiconductor, was influenced by the unlikelihood of the PTAB issuing a final written decision before the USITC conducted its trial in February 2026. This reflects the PTAB's discretionary denial framework, which considers factors such as "settled expectations" and the timing of parallel infringement proceedings. The PTAB's decision highlights the strategic interplay between IPR proceedings and parallel district court or ITC actions in patent litigation, especially when a non-practicing entity asserts patents against a major operating company in the critical semiconductor industry.

Taiwan Semiconductor Manufacturing Company Ltd. initiated an inter partes review (IPR) proceeding, IPR2025-01484, challenging U.S. Patent 9,786,510, owned by Marlin Semiconductor Ltd. before the Patent Trial and Appeal Board (PTAB) of the USPTO. The IPR ultimately concluded with the PTAB denying institution.

Here is a chronological summary of the key legal developments:

• 2025-08-29 – IPR Petition Filed: Taiwan Semiconductor Manufacturing Company Ltd. filed a petition for inter partes review against Marlin Semiconductor Ltd., challenging the patentability of U.S. Patent 9,786,510.
• 2025-09-03/07 – Director's Discretionary Denial Decisions (General Context): Around this period, the USPTO Acting Director Coke Morgan Stewart issued several Director Discretionary Denial decisions for multiple IPR petitions filed by Taiwan Semiconductor Manufacturing Company (TSMC) against Marlin Semiconductor. For many of these related IPRs (e.g., IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879), institution was denied due to the unlikelihood of the PTAB issuing a final written decision before a scheduled U.S. International Trade Commission (ITC) trial in parallel proceedings, which was set for February 2026. This consideration aimed to avoid duplication of effort and the risk of inconsistent decisions, reflecting a focus on "settled expectations" and timing of parallel proceedings.
• 2026-01-09 – Institution Denied and Case Terminated: The PTAB denied institution of IPR2025-01484 and subsequently terminated the proceeding on this date. The Board found that the petitioner failed to show a reasonable likelihood of prevailing on the challenged claims. While the specific decision document for IPR2025-01484 explicitly detailing the grounds for denial on this date was not located in the search, the denial falls within a period where several discretionary denials in similar cases were noted, often influenced by parallel ITC litigation.

Outcome:
The final disposition of IPR2025-01484 was an institution denial by the PTAB. This means the Board decided not to proceed with a full inter partes review trial. The denial was based on the petitioner's failure to demonstrate a reasonable likelihood of prevailing on the merits of its patentability challenge.

Inapplicable Stages for this IPR:
Given that institution was denied, the following stages typical of patent infringement litigation or an instituted IPR did not occur: initial pleadings beyond the petition (like counterclaims within the IPR), pre-trial motions of substance (other than the request for discretionary denial), claim construction (Markman) proceedings, discovery milestones, trial events, verdict, post-trial motions, or appeals of a final written decision.

Counsel for Taiwan Semiconductor Manufacturing Company Ltd. (Plaintiff/Petitioner)

In the Inter Partes Review (IPR) case IPR2025-01484, Taiwan Semiconductor Manufacturing Company Ltd. (TSMC) was represented by both external and in-house counsel.

• Christian Camarce
  • Role: Petitioner Counsel (specific role like lead counsel not explicitly defined in available snippets, but listed as counsel for the petitioner).
  • Firm & Office Location: The initial search results confirm Christian Camarce as counsel, but do not specify his law firm or office location.
  • Relevant Patent Litigation Experience: Further research is needed to identify specific litigation experience.

TSMC also has a robust in-house legal team that is actively involved in patent litigation and IPRs:

• Billie Chen

  • Role: Associate General Counsel and Chief IP Counsel.
  • Firm & Office Location: Taiwan Semiconductor Manufacturing Company Ltd. (in-house).
  • Relevant Patent Litigation Experience: Leads global patent strategy, patent portfolio establishment, and directs offensive and defensive strategies for patent disputes and litigation. Has led TSMC's IP team to win several patent litigations and maintained high institution rates for IPRs.

• Sylvia Fang

  • Role: Senior Vice President and General Counsel.
  • Firm & Office Location: Taiwan Semiconductor Manufacturing Company Ltd. (in-house).
  • Relevant Patent Litigation Experience: Has worked on numerous high-profile corporate transactions, precedent-setting intellectual property trade secret litigations, and the promotion of significant legal changes.

• Michael M. Shen

  • Role: Chief Counsel, Patent Litigation.
  • Firm & Office Location: Taiwan Semiconductor Manufacturing Company Ltd. (in-house).
  • Relevant Patent Litigation Experience: Has been involved in TSMC's IPR efforts, as indicated by his signature on a USPTO comment regarding discretionary denial rules for PTAB proceedings.

• David C. Hsia

  • Role: Senior Counsel, Patent Litigation.
  • Firm & Office Location: Taiwan Semiconductor Manufacturing Company Ltd. (in-house).
  • Relevant Patent Litigation Experience: Also involved in TSMC's IPR efforts, co-signed the same USPTO comment as Michael M. Shen.

While the search results confirm Christian Camarce as a petitioner's counsel, the specific firm he belongs to for this IPR is not directly stated in the provided snippets. The other individuals (Chen, Fang, Shen, Hsia) are confirmed in-house counsel at TSMC with extensive patent litigation experience, and while they oversee or participate in TSMC's overall patent strategy and litigation, their direct appearance in this specific IPR is not explicitly stated, except that Billie Chen, Michael M. Shen, and David C. Hsia signed a USPTO comment related to IPRs in general.

Marlin Semiconductor Ltd. was represented by attorneys from Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. in IPR2025-01484. The counsel of record included:

• William A. Meunier

  • Role: Counsel for Patent Owner (likely lead based on position in filings)
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA
  • Experience Note: Mr. Meunier is a registered patent attorney with experience in inter partes review proceedings, as evidenced by his representation in multiple IPRs for Marlin Semiconductor.

• Adam S. Rizk

  • Role: Counsel for Patent Owner (likely supporting counsel)
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA
  • Experience Note: Mr. Rizk is involved in patent litigation before the PTAB, representing patent owners such as Marlin Semiconductor.

• Michael T. Renaud

  • Role: Counsel for Patent Owner (likely supporting counsel)
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA
  • Experience Note: Mr. Renaud's practice includes patent litigation, and he has represented patent owners in PTAB proceedings.

• Reza Dokhanchy

  • Role: Counsel for Patent Owner (likely supporting counsel)
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., San Diego, CA
  • Experience Note: Mr. Dokhanchy's experience includes representing patent owners in inter partes review cases before the USPTO.

• Tawfik Goma

  • Role: Counsel for Patent Owner (likely supporting counsel)
  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Miami, FL
  • Experience Note: Mr. Goma is a registered patent attorney engaged in patent litigation and PTAB proceedings.