United Microelectronics Corporation et al. v. Advanced Integrated Circuit Process LLC

United Microelectronics Corporation (UMC) and its subsidiary, UMC Group (USA), are the petitioners in this inter partes review (IPR) proceeding. UMC is a prominent Taiwanese semiconductor foundry, a global leader in providing integrated circuit (IC) fabrication services, focusing on logic and various specialty technologies for the electronics industry, including automotive, communication devices, consumer electronics, and computing. UMC operates 12 manufacturing facilities worldwide, with most of its 12-inch and 8-inch fabs and core R&D located in Taiwan, and additional facilities across Asia, along with offices in the United States, Europe, China, Japan, Korea, and Singapore.

The patent owner is Advanced Integrated Circuit Process LLC (AICP). AICP appears to be a patent assertion entity (PAE), formed in Texas on June 12, 2024, and identifying AMTL LLC as its managing member and sole owner. AICP acquired a portfolio of over 50 patents related to semiconductor fabrication from Winbond Electronics (Nuvoton Technology Corporation Japan) in July 2024. This IPR is directly linked to an ongoing patent infringement lawsuit, Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation, filed in the Eastern District of Texas (Case No. 2:24-cv-00730) on September 6, 2024. In that district court case, AICP accused UMC of infringing seven semiconductor fabrication patents, including U.S. Patent No. 7,923,764, by manufacturing semiconductor devices at its 22nm and 28nm process nodes.

The patent at issue in this IPR is U.S. Patent No. 7,923,764, titled "Semiconductor Device." This patent broadly relates to techniques for improving the driving power and reliability of a metal-insulator-semiconductor field-effect transistor (MISFET) by extending a high-dielectric-constant (high-k) gate insulating film from under the gate electrode to under a sidewall, and making it thicker under the gate electrode than under the sidewall. The IPR petition, IPR2025-01079, was filed at the Patent Trial and Appeal Board (PTAB) on June 2, 2025, challenging claims 1-6 and 11-19 of the '764 patent. The petition was "Not Instituted - Procedural" on October 10, 2025. This outcome suggests a discretionary denial by the PTAB, which has become more common due to recent changes in PTAB practice, including the Director's increased involvement in institution decisions and the emphasis on discretionary factors like parallel litigation. Several other IPRs involving AICP's patents, including other patents asserted against UMC and TSMC, also show "Discretionary Denial" or "Not Instituted - Procedural" statuses. The case is notable for highlighting the assertion patterns of PAEs like AICP, which acquire patent portfolios and then initiate litigation against major semiconductor manufacturers, often leading to defensive IPR filings. The procedural denial also reflects the USPTO's recent policy shifts at the PTAB, making it harder to institute IPRs, especially when parallel district court litigation is ongoing.

The initial case information provided, IPR2025-01079, is for an inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. However, the search results clearly indicate that there is a related patent infringement litigation in a district court.

Specifically, Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against United Microelectronics Corporation (UMC) in the Eastern District of Texas, Case No. 2:24-cv-00730. This lawsuit, filed on September 6, 2024, asserts U.S. Patent No. 7,923,764, among others.

The IPR (IPR2025-01079) filed by United Microelectronics Corporation and UMC Group (USA) challenges claims 1-6 and 11-19 of patent 7,923,764. The petition was filed on June 2, 2025.

The IPR was "Not Instituted - Procedural." This is a key development. PTAB records indicate that the Director of the USPTO issued a decision denying institution of the IPR on October 10, 2025, in a consolidated decision covering IPR2025-01053 and other related IPRs, including IPR2025-01079. The denial was based on a discretionary decision, citing factors such as "settled expectations" and the existence of parallel district court litigation. The Director referenced a request for discretionary denial filed by the Patent Owner. This discretionary denial falls under the PTAB's recent policy shifts in 2025, which have made it harder to institute IPRs, particularly when parallel district court litigation is underway.

Now, I will construct the chronological list of legal developments, focusing on the district court litigation and the related IPR.

Key Legal Developments and Outcome for Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation

1. Patent Infringement Litigation Filing & Initial Pleadings:

• 2024-09-06: Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against United Microelectronics Corporation (UMC) in the U.S. District Court for the Eastern District of Texas, Case No. 2:24-cv-00730. The complaint asserted seven semiconductor fabrication patents, including U.S. Patent No. 7,923,764. The case was assigned to Chief Judge Rodney Gilstrap.
• AICP is represented by Susman Godfrey LLP and Ward, Smith & Hill, PLLC. Counsel for UMC includes attorneys from Troutman Pepper Locke LLP.
• Prior to IPR filing (before 2025-06-02): UMC moved to dismiss AICP's claims for both direct and indirect infringement. In response, AICP dropped its claims for pre-suit indirect infringement as to six of the seven asserted patents but opposed the motion for the remainder.

2. Parallel PTAB IPR Proceedings and Their Effect on Litigation:

• 2025-06-02: United Microelectronics Corporation and UMC Group (USA) filed an inter partes review (IPR) petition, IPR2025-01079, challenging claims 1-6 and 11-19 of U.S. Patent No. 7,923,764.
• 2025-10-10: The Director of the USPTO issued a decision denying institution of IPR2025-01079 and other related IPRs. The denial was a discretionary one, based on the Patent Owner's request for discretionary denial, likely considering factors such as the existence of parallel district court litigation and the "settled expectations" doctrine, which were prominent in PTAB policy shifts in 2025. The decision stated, "Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). ... FURTHER ORDERED that the Petitions are denied, and no trial is instituted."
• The IPR was "Not Instituted - Procedural." This outcome means that the PTAB did not proceed with a full review of the patentability of the challenged claims, leaving the validity of Patent 7,923,764 to be litigated in the district court.

3. Current Posture of the Litigation:

• The district court case (2:24-cv-00730) remains active in the Eastern District of Texas. As of May 9, 2025, Judge Gilstrap had not yet ruled on UMC's motion to dismiss.

This summary focuses on the specific IPR provided and its direct impact, as well as the underlying district court litigation it was connected to. Due to the "Not Instituted - Procedural" status of the IPR, there are no claim construction, discovery, or trial milestones to report from the IPR itself. These developments would occur in the district court litigation.United Microelectronics Corporation and UMC Group (USA) initiated an inter partes review (IPR) proceeding, IPR2025-01079, challenging U.S. Patent No. 7,923,764. This IPR was filed in response to a patent infringement lawsuit brought by Advanced Integrated Circuit Process LLC (AICP) against United Microelectronics Corporation in the U.S. District Court for the Eastern District of Texas.

Here is a chronological overview of the key legal developments:

1. Patent Infringement Litigation Filing & Initial Pleadings:

• 2024-09-06: Advanced Integrated Circuit Process LLC (AICP) filed a patent infringement lawsuit against United Microelectronics Corporation (UMC) in the U.S. District Court for the Eastern District of Texas, Case No. 2:24-cv-00730. The complaint asserted infringement of seven semiconductor fabrication patents, including U.S. Patent No. 7,923,764. The case was assigned to Chief Judge Rodney Gilstrap. AICP is represented by Susman Godfrey LLP and Ward, Smith & Hill, PLLC, while UMC's counsel includes attorneys from Troutman Pepper Locke LLP.
• Pre-2025-06-02: Prior to the IPR filing, UMC moved to dismiss AICP's claims for both direct and indirect infringement. AICP subsequently dropped its claims for pre-suit indirect infringement concerning six of the seven asserted patents but maintained its opposition to the dismissal motion for the remaining claims.

2. Parallel PTAB IPR Proceedings and Their Effect on Litigation:

• 2025-06-02: United Microelectronics Corporation and UMC Group (USA) filed an inter partes review petition, IPR2025-01079, challenging claims 1-6 and 11-19 of U.S. Patent No. 7,923,764.
• 2025-10-10: The Director of the U.S. Patent and Trademark Office (USPTO) issued a decision denying institution of IPR2025-01079, along with several other related IPRs. The denial was a discretionary decision, falling under the "Not Instituted - Procedural" status. This decision was based on a request for discretionary denial filed by the Patent Owner, Advanced Integrated Circuit Process LLC. The Director's decision stated that the petitions were denied under 35 U.S.C. § 314(a), and no trial was instituted. This outcome reflects the PTAB's policy changes in 2025, which generally made it more challenging to institute IPRs, especially when parallel district court litigation is ongoing, often citing factors like "settled expectations."

3. Current Posture of the Litigation:

• As of the latest available information, the district court patent infringement case, Advanced Integrated Circuit Process LLC v. United Microelectronics Corporation (2:24-cv-00730), remains active in the Eastern District of Texas. The court had not yet ruled on UMC's motion to dismiss as of May 9, 2025. The procedural denial of the IPR means that the validity challenges to U.S. Patent No. 7,923,764 will continue to be litigated in the district court action.

United Microelectronics Corporation and UMC Group (USA), the petitioners in IPR2025-01079, are represented by attorneys from Troutman Pepper Locke LLP. The following counsel are listed as back-up counsel for the petitioners in a related IPR, IPR2025-01093, with similar papers filed in IPR2025-01079.

• Tim Tingkang Xia, Ph.D.

  • Role: Back-up Counsel. While listed as back-up counsel in the IPR, Dr. Xia also serves as lead counsel in numerous intellectual property litigations.
  • Firm: Troutman Pepper Locke LLP, Atlanta, GA.
  • Experience: Dr. Xia advises clients on all aspects of intellectual property law, including patentability, infringement, and validity. He has extensive experience in commercial and intellectual property litigation, having served as lead counsel in over 70 cases, including Section 337 investigations before the ITC. His technical background is in physics, which enhances his understanding of diverse technologies, including telecommunications, nanotechnologies, and medical devices.

• Emma A. Bennett

  • Role: Back-up Counsel.
  • Firm: Troutman Pepper Locke LLP, Houston, TX.
  • Experience: Ms. Bennett focuses her practice on litigating complex intellectual property cases, encompassing patent infringement, trademark infringement, copyright infringement, and trade secret misappropriation. She represents clients before federal district courts, the Patent Trial and Appeal Board (PTAB), and the Trademark Trial and Appeal Board (TTAB).

Advanced Integrated Circuit Process LLC is represented by Heim, Payne & Chorush, LLP in related inter partes review (IPR) proceedings. Given the procedural non-institution of IPR2025-01079, formal appearances might be limited, but the same counsel typically handles related IPRs for a patent owner. The following attorneys are identified as counsel for Advanced Integrated Circuit Process LLC in a related IPR (IPR2025-01093) against the same petitioners, United Microelectronics Corporation and UMC Group (USA):

• Russell A. Chorush

  • Role: Lead Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Chorush is a founding partner of Heim, Payne & Chorush, LLP and is experienced in patent litigation.

• Michael F. Heim

  • Role: Back-up Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Heim is a founding partner of Heim, Payne & Chorush, LLP and has extensive experience in patent litigation.

• Christopher L. Limbacher

  • Role: Back-up Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Limbacher is an attorney at Heim, Payne & Chorush, LLP, focusing on intellectual property litigation.

• Lily R. Glick

  • Role: Back-up Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Ms. Glick is an attorney at Heim, Payne & Chorush, LLP, with a practice in intellectual property and complex commercial litigation.

• Kyle Friesen

  • Role: Back-up Counsel
  • Firm: Heim, Payne & Chorush, LLP, Houston, TX
  • Experience Note: Mr. Friesen is an attorney at Heim, Payne & Chorush, LLP, involved in patent and intellectual property disputes.

It is also noted that Advanced Integrated Circuit Process LLC has been represented by Susman Godfrey LLP and Miller Fair Henry PLLC in related district court cases. In Advanced Integrated Circuit Process LLC v. TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LIMITED, case number 2:2024cv00623 in the U.S. District Court for the Eastern District of Texas, attorneys from Susman Godfrey LLP appeared for Advanced Integrated Circuit Process LLC, including Kalpana Srinivasan, Justin Adatto Nelson, Ian M. Gore, and Ravi Paul Singh Bhalla, along with Claire Abernathy Henry and Kemper P Diehl from other firms.