Unified Patents v. Advanced Integrated Circuit Process LLC

Unified Patents, a member-based organization focused on deterring frivolous patent litigation and reducing assertions by Non-Practicing Entities (NPEs), initiated an Inter Partes Review (IPR) against Advanced Integrated Circuit Process LLC (AICP) concerning U.S. Patent 8,587,076. AICP is identified as a Patent Assertion Entity (PAE) or NPE, having been formed in Texas in June 2024 and subsequently acquiring a portfolio of over 50 semiconductor patents from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024. Shortly after acquiring these patents, AICP commenced infringement lawsuits against major semiconductor manufacturers, including Taiwan Semiconductor Manufacturing Company Limited (TSMC) and United Microelectronics Corporation (UMC).

The patent at issue, US Patent 8,587,076, is titled "Semiconductor device and method for manufacturing the same." This patent is part of a group of seven semiconductor fabrication patents asserted by AICP in its underlying infringement suits. The accused products and services in the district court litigation involve semiconductor devices manufactured by TSMC and UMC at various process nodes, including 22nm, 28nm, and those utilizing FinFET technology. These devices are often incorporated into third-party components from companies like Apple, Broadcom, Microsemi, and Qualcomm.

The procedural posture for this specific IPR (IPR2025-01093) is before the Patent Trial and Appeal Board (PTAB), where institution of the review was denied for procedural reasons. This IPR is one of several filed by UMC and TSMC challenging the validity of AICP's asserted patents. The denials of institution were made under 35 U.S.C. § 314(a), based on a discretionary assessment that considered factors like the patent owner's "settled expectations," a common rationale under the Fintiv standard, which often disfavors IPR institution when parallel district court litigation is advanced. The underlying patent infringement lawsuits against TSMC and UMC are being litigated in the Eastern District of Texas, presided over by District Judge Rodney Gilstrap, a venue known for its high volume of patent cases. This case is notable due to AICP's activity as a newly formed NPE aggressively asserting a portfolio of semiconductor patents against significant industry players, and Unified Patents' role in attempting to invalidate one of these patents. The PTAB's discretionary denial of institution, likely influenced by Fintiv, highlights the ongoing challenges and strategies involved in defending against NPE assertions in the current patent litigation landscape.

The case "Unified Patents v. Advanced Integrated Circuit Process LLC, IPR2025-01093" is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a direct patent infringement litigation. However, this IPR was closely linked to ongoing patent infringement lawsuits in federal district court involving the same patent.

IPR Proceeding: IPR2025-01093 (Patent Trial and Appeal Board)

• Filing: United Microelectronics Corporation and UMC Group (USA) ("UMC") filed the IPR petition challenging U.S. Patent No. 8,587,076, owned by Advanced Integrated Circuit Process LLC ("AICP"). The petition was filed on June 6, 2025.
• Non-Institution: The PTAB issued a decision denying institution of the IPR on October 10, 2025. The Board did not institute the review due to procedural reasons, specifically exercising its discretion under 35 U.S.C. § 314(a) based on the Fintiv factors.
• Reason for Denial (Procedural): The PTAB's decision was heavily influenced by parallel district court litigation where the same patent was being asserted. The Board noted that a district court trial was scheduled for June 22, 2026, with the actual trial expected between July and September 2026. This timeline indicated that a final written decision from the PTAB would likely not be issued before the district court trial, potentially leading to duplicative efforts and a risk of inconsistent decisions. Additionally, the Board considered the patent's eleven years in force as contributing to the patent owner's "strong settled expectations," which further supported the discretionary denial.

Parallel Patent Infringement Litigation (Eastern District of Texas)

U.S. Patent No. 8,587,076 is one of several patents asserted by Advanced Integrated Circuit Process LLC (AICP) in ongoing patent infringement lawsuits in the Eastern District of Texas. These cases provided the context for the PTAB's discretionary denial of the IPR.

• Initial Filings & Parties:
  • Against TSMC: In August 2024, Advanced Integrated Circuit Process LLC (AICP) filed a lawsuit against Taiwan Semiconductor Manufacturing Company Limited (TSMC), identified as Case No. 2:24-cv-00623 (E.D. Tex.), asserting seven patents, including 8,587,076.
  • Against UMC: In September 2024, AICP filed a second lawsuit, this time against United Microelectronics Corporation (UMC), Case No. 2:24-cv-00730 (E.D. Tex.), asserting the same seven semiconductor fabrication patents, including 8,587,076.
• Consolidation: U.S. District Judge Rodney Gilstrap consolidated the initial case against TSMC with the September 2024 suit against UMC.
• Initial Pleadings & Pre-trial Motions:
  • TSMC filed an answer to the complaint.
  • UMC moved to dismiss AICP's claims for both direct and indirect infringement. In response, AICP dropped its claims for pre-suit indirect infringement concerning six of the seven asserted patents but opposed the motion regarding the remaining claims.
  • The parties also engaged in discovery disputes, filing competing motions to compel related to venue materials and AICP's reverse engineering efforts. Judge Gilstrap had not yet ruled on these motions as of May 2025.
• Trial Schedule: At the time of the IPR institution decision (October 10, 2025), the district court had set a trial date of June 22, 2026, with the expectation that the trial would actually commence between July and September 2026.

Final Disposition or Present Posture:

The IPR proceeding (IPR2025-01093) concluded with a procedural denial of institution, meaning no trial was initiated by the PTAB to review the patent's validity. The underlying patent infringement litigation in the Eastern District of Texas, involving patent 8,587,076 and other patents asserted by Advanced Integrated Circuit Process LLC against TSMC and UMC, remains active and is proceeding towards a scheduled trial in mid-to-late 2026.

While specific counsel of record for IPR2025-01093, Unified Patents v. Advanced Integrated Circuit Process LLC, could not be directly confirmed through public dockets due to the case's "Not Instituted - Procedural" status, Unified Patents consistently relies on a combination of external law firms and its in-house legal team for its inter partes review (IPR) petitions.

Based on Unified Patents' regular filings and publicly available information, the following attorneys are typically involved in representing Unified Patents in IPR proceedings:

External Counsel (likely from Erise IP, P.A.):

• Jason R. Mudd
  • Role: Lead Counsel (frequently serves as lead counsel for Unified Patents in IPRs)
  • Firm: Erise IP, P.A. (Overland Park, Kansas or Greenwood Village, Colorado office)
  • Experience: Mr. Mudd is a shareholder at Erise IP and has consistently led IPR filings for Unified Patents, contributing to the firm reaching milestones such as 200 PTAB challenges. Erise IP is consistently ranked among the best-performing firms for IPR petitioners.
• Eric A. Buresh
  • Role: Counsel (frequently involved in IPR filings for Unified Patents)
  • Firm: Erise IP, P.A. (Overland Park, Kansas office)
  • Experience: Mr. Buresh is a shareholder at Erise IP and has worked alongside Jason Mudd on numerous IPRs for Unified Patents, contributing to successful outcomes at the PTAB and Federal Circuit.
• Kelly R. Hughes
  • Role: Counsel (listed as backup counsel in other IPRs for Unified Patents)
  • Firm: Erise IP, P.A. (Greenwood Village, Colorado office)
  • Experience: Ms. Hughes is listed as a Senior Patent Counsel on the Unified Patents team page, indicating both internal and external representation capabilities, and has been involved in PTAB proceedings.

In-House Counsel (Unified Patents LLC):

• Jonathan Stroud
  • Role: Chief Operating Officer & Chief Legal Officer (COO & CLO) / General Counsel
  • Firm: Unified Patents LLC (Chevy Chase, Maryland / Washington, DC)
  • Experience: Mr. Stroud oversees Unified Patents' legal and corporate work, focusing on PTAB proceedings, district court, and appellate litigation. He was previously a patent attorney at Finnegan, Henderson, Farabow, Garrett and Dunner LLP, where he handled early post-grant review matters, and also served as a patent examiner at the USPTO.
• Roshan Mansinghani
  • Role: Head of Operations (formerly Assistant General Counsel / Legal Head-NPE)
  • Firm: Unified Patents LLC (Dallas, Texas / Washington, DC)
  • Experience: Mr. Mansinghani leads Unified Patents' deterrence strategies, including overseeing numerous USPTO invalidation proceedings annually. He has participated in scores of post-grant proceedings and previously practiced intellectual property law at Baker Botts L.L.P.
• Jordan M. Rossen
  • Role: Counsel (listed as backup counsel in other IPRs for Unified Patents)
  • Firm: Unified Patents LLC (Washington, DC)
  • Experience: Mr. Rossen is listed as a Senior Patent Counsel on the Unified Patents team page and has been involved in PTAB matters.

The specific docket for IPR2025-01093 was not found to explicitly name the counsel for this particular filing. However, the listed attorneys and firms represent Unified Patents' established legal team for IPR proceedings.

Advanced Integrated Circuit Process LLC, the Patent Owner in IPR2025-01093, is represented by attorneys from Heim, Payne & Chorush, LLP.

The counsel of record are:

• Russell A. Chorush

  • Role: Lead Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Chorush is listed as lead counsel for Advanced Integrated Circuit Process LLC in multiple related IPR proceedings before the PTAB.

• Michael F. Heim

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Heim is also listed as backup counsel for Advanced Integrated Circuit Process LLC in related IPRs.

• Christopher L. Limbacher

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Limbacher is listed as backup counsel for Advanced Integrated Circuit Process LLC in related IPR proceedings.

• Lily R. Glick

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Ms. Glick is listed as backup counsel for Advanced Integrated Circuit Process LLC in related IPR proceedings.

• Kyle E. Friesen

  • Role: Backup Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Friesen is listed as backup counsel for Advanced Integrated Circuit Process LLC in related IPR proceedings.