Unified Patents v. Marlin Semiconductor Ltd.

Unified Patents has initiated an Inter Partes Review (IPR) proceeding, IPR2025-01265, before the Patent Trial and Appeal Board (PTAB) of the USPTO against Marlin Semiconductor Ltd. concerning US Patent 8993384. Unified Patents is a membership-based organization that aims to deter "patent trolls" or Non-Practicing Entities (NPEs) by challenging the validity of patents in specific technology sectors through IPRs. Marlin Semiconductor Ltd. is identified as a subsidiary of IPValue Management (d/b/a IPValue), a patent monetization firm, and primarily operates by holding and owning securities of companies for control, indicating its role as a Patent Assertion Entity (PAE) or NPE. Marlin Semiconductor acquired a substantial portfolio of over 480 US patents, including those related to semiconductors, from United Microelectronics Corporation (UMC) in 2021 and 2023.

The patent at issue, US Patent 8993384, broadly relates to semiconductor technology. The petition challenges the patentability of claims within this patent, rather than accusing a specific product of infringement, which is typical for IPR proceedings. The procedural posture of this case is before the Patent Trial and Appeal Board (PTAB), a specialized administrative body within the USPTO. The PTAB provides a venue for efficient review of patent validity, often serving as a faster and less expensive alternative to district court litigation for challenging patents. The case status is "Instituted," meaning the PTAB has determined there is a reasonable likelihood that at least one claim of the patent is unpatentable and has authorized a full review.

This case is notable as it is part of a broader enforcement campaign by Marlin Semiconductor, which, along with its affiliate Longitude Licensing, has recently filed district court patent infringement lawsuits against major technology companies such as Apple, Broadcom, Qualcomm, Lenovo, OnePlus, and Taiwan Semiconductor Manufacturing Company Limited (TSMC). These lawsuits assert patents acquired from UMC and are directed at foreign-fabricated semiconductor devices. Significantly, TSMC is also a petitioner against Marlin Semiconductor in IPR2025-01265, the subject case, demonstrating a coordinated effort by operating companies and deterrence organizations like Unified Patents to challenge Marlin Semiconductor's patent assertions. Unified Patents' IPR action against Marlin Semiconductor's patent is thus a strategic response to an NPE's assertion activities in the critical semiconductor industry.

The case initially identified as "Unified Patents v. Marlin Semiconductor Ltd., IPR2025-01265" requires a correction. Public records and legal databases indicate that the petitioner in IPR2025-01265, challenging U.S. Patent 8,993,384, is Taiwan Semiconductor Manufacturing Company Limited (TSMC), not Unified Patents. Marlin Semiconductor Ltd. is the Patent Owner in this IPR.

While Marlin Semiconductor Ltd. has been involved in several patent infringement lawsuits in district courts and an ITC investigation, asserting a portfolio of other semiconductor-related patents, U.S. Patent 8,993,384 is not listed among the patents asserted in those identified litigations (e.g., cases 1:25-cv-00215, 2:25-cv-00171, 1:25-cv-01629, and ITC Investigation 337-TA-1443). Therefore, the specific "patent infringement litigation" events requested, such as the filing of a complaint, answer, counterclaims, Markman hearings, discovery, trial events, or final judgment for U.S. Patent 8,993,384 in a district court, cannot be provided as no such direct litigation has been found for this particular patent by Marlin Semiconductor Ltd.

The following outlines the key legal developments for the Inter Partes Review (IPR) IPR2025-01265 concerning U.S. Patent 8,993,384.

Key Legal Developments for IPR2025-01265 (Taiwan Semiconductor Manufacturing Company Limited v. Marlin Semiconductor Ltd.)

• Filing of Petition: Taiwan Semiconductor Manufacturing Company Limited (TSMC) filed the IPR petition (IPR2025-01265) against Marlin Semiconductor Ltd. on July 7, 2025, challenging U.S. Patent 8,993,384.
• Director Discretionary Decision (Referral): On November 19, 2025, a Director Discretionary Decision was issued, referring the matter.
• Institution Decision: The Patent Trial and Appeal Board (PTAB) instituted the IPR (granted trial) on December 10, 2025.
• Discovery Milestone (Deposition Notice): On April 21, 2026, TSMC, as the Petitioner, filed a "Petitioner's Notice of Deposition of Mr. Joseph C. McAlexander III," indicating a deposition was scheduled for May 14, 2026, by remote means.
• Current Status: The IPR is currently pending, and trial has been instituted.

Parallel PTAB IPR/PGR Proceedings on Asserted Patents and Their Effect on Litigation:

While U.S. Patent 8,993,384 is subject to this IPR, the related district court litigations by Marlin Semiconductor Ltd. against various defendants (including TSMC itself) primarily assert other patents, specifically U.S. Patent Nos. 7,745,847; 9,093,473; 9,147,747; 9,184,292; and 9,953,880. These parallel district court cases by Marlin Semiconductor (and an ITC investigation, 337-TA-1443, also involving these other patents) were filed around February and May 2025 against companies like Apple, Broadcom, Qualcomm, Lenovo, OnePlus, and TSMC.

Some defendants in these broader litigations, including TSMC, have also filed IPRs against those other patents asserted by Marlin Semiconductor. For example:

• TSMC filed IPR2025-00865 against U.S. Patent 9,147,747 on April 17, 2025, which was instituted on September 3, 2025.
• TSMC also filed IPR2025-00864 against U.S. Patent 9,184,292 on April 17, 2025, with arguments against discretionary denial emphasizing the petition's expeditious filing after the ITC investigation began.
• TSMC filed IPR2025-00847 against U.S. Patent 7,745,847 on April 17, 2025, which was instituted on October 9, 2025.

The existence of these IPRs can lead to stays of the parallel district court litigation or ITC investigations, as seen in a motion to stay filed by defendants (Apple, Broadcom, Qualcomm) in one of Marlin Semiconductor's Western District of Texas cases (1:25-cv-00215) pending the outcome of the ITC investigation (337-TA-1443). The IPR process, by potentially invalidating claims of the asserted patents, could significantly impact the strength of Marlin Semiconductor's infringement allegations in the companion litigations.

Unified Patents often engages a mix of in-house counsel and external law firms for its Inter Partes Review (IPR) petitions before the Patent Trial and Appeal Board (PTAB). While specific counsel for Unified Patents in IPR2025-01265 could not be definitively identified from public records due to conflicting information in the search results regarding the petitioner for that specific IPR number (some records indicate Taiwan Semiconductor Manufacturing Company Limited as the petitioner for IPR2025-01265), the following attorneys and firms have been noted as representing Unified Patents in other IPR proceedings:

In-House Counsel for Unified Patents:

• Jonathan Stroud
  • Role: In-house counsel
  • Firm: Unified Patents
  • Note: Has represented Unified Patents in IPR proceedings, including an appeal before the Federal Circuit where Unified Patents secured an IPR victory.
• Roshan Mansinghani
  • Role: In-house counsel
  • Firm: Unified Patents
  • Note: Also involved in IPR proceedings and appeals for Unified Patents.
• Matt Beck
  • Role: Counsel (now at Unified Patents)
  • Firm: Unified Patents (previously with Haynes and Boone)
  • Note: Has represented Unified Patents in IPR proceedings, including a case against Peter Henrik Pedersen where challenged claims of a patent were found unpatentable.
• Kelly Hughes
  • Role: In-house counsel
  • Firm: Unified Patents
  • Note: Involved in IPR proceedings for Unified Patents.
• Alyssa Holtslander
  • Role: In-house counsel
  • Firm: Unified Patents
  • Note: Involved in IPR proceedings for Unified Patents.

External Counsel for Unified Patents:

• Finnegan, Henderson, Farabow, Garrett & Dunner LLP
  • Note: Represented Unified Patents in an IPR proceeding that led to a Federal Circuit affirmance of unpatentability against an Intellectual Ventures patent. Finnegan is a prominent intellectual property law firm with multiple offices, including Washington D.C., and is frequently listed among top firms representing petitioners before the PTAB.
• Haynes and Boone LLP

  • Note: Several attorneys from Haynes and Boone, including Jon Bowser, Angela Oliver, and Michael McCarty, have represented Unified Patents in IPR proceedings. Haynes and Boone is also recognized for its PTAB practice and appears on lists of top firms representing petitioners.

  • Jon Bowser

    • Role: Counsel
    • Firm: Haynes and Boone, LLP
    • Note: Represented Unified Patents in IPR proceedings.

  • Angela Oliver

    • Role: Counsel
    • Firm: Haynes and Boone, LLP
    • Note: Represented Unified Patents in IPR proceedings.

  • Michael McCarty

    • Role: Counsel
    • Firm: Haynes and Boone, LLP
    • Note: Represented Unified Patents in IPR proceedings.

In the Inter Partes Review (IPR) case IPR2025-01265, styled Taiwan Semiconductor Manufacturing Company Ltd. v. Marlin Semiconductor Ltd., the defendant, Marlin Semiconductor Ltd. (Patent Owner), is represented by attorneys from Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C..

The counsel of record for Marlin Semiconductor Ltd. are:

• William A. Meunier, Member.

  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA.
  • Relevant Experience: Recognized as a top IPR practitioner with decades of experience in high-stakes patent litigation, including achieving success for patent owners in over 90% of IPRs and securing the first complete reversal and remand of an IPR decision against a patent owner at the Federal Circuit.

• Adam S. Rizk, Co-Chair of the ITC Practice.

  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA.
  • Relevant Experience: Focuses on high-tech patent litigation in the ITC and federal district courts, and has led numerous ITC investigations to successful outcomes, managing interdisciplinary teams and coordinating multinational enforcement campaigns. He often serves in first-chair or lead counsel roles in Section 337 investigations.

• Michael T. Renaud, Chair of the Intellectual Property Division.

  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Boston, MA.
  • Relevant Experience: Recognized as a leading intellectual property strategist, he develops and implements multinational enforcement, licensing, and litigation strategies, and has helped clients realize returns of over $1 billion through litigation, licensing, and sale activities. He has extensive experience in Section 337 matters before the International Trade Commission and in federal district courts.

• Reza Dokhanchy, Member.

  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., San Diego, CA.
  • Relevant Experience: An accomplished patent and trade secret litigator for plaintiffs and defendants in high-tech and life sciences fields, with extensive experience in federal district courts, the ITC, and the PTAB, handling disputes across a wide range of technical areas including semiconductors.

• Tawfik Goma, Member.

  • Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., Miami, FL.
  • Relevant Experience: A seasoned patent litigator representing clients in complex patent disputes before the ITC, federal district courts, and the PTAB, drawing on his experience as in-house counsel and a patent examiner, with a background in electrical engineering. He advises clients on various technologies, including telecommunications and semiconductor technologies.