In its first case against TSMC, filed in August 2024, Advanced Integrated Circuit Process LLC (AICP) asserted seven of the more than 50 patents that it received from Winbond Electronics (Nuvoton Technology Corporation Japan). Last week, AICP hit TSMC again (2:25-cv-00324), targeting with four additional such assets the provision of semiconductor devices—including certain Apple, Broadcom, and Qualcomm chips—manufactured using various process nodes, including those that utilize FinFET technology. The second complaint drops three days after TSMC filed two petitions for inter partes review (IPR) of patents asserted in the first case.
The newly asserted patents (7,439,623; 7,632,751; 8,329,572; 8,884,373) are broadly directed to semiconductor fabrication. Like the seven already in suit (7,579,227; 7,923,764; 8,198,686; 8,253,180; 8,587,076; 8,796,779; 8,907,425), the original development work was conducted at Panasonic before it offloaded its semiconductor business to Winbond's Nuvoton in 2020. TSMC has so far filed petitions for IPR of the '686 and '425 patents.
Otherwise, TSMC has responded to the earlier complaint against it with a motion to dismiss for lack of personal jurisdiction over the named defendant, Taiwan Semiconductor Manufacturing Corporation Limited ("TSMC LTD"). Per the motion, that entity "provides foundry services exclusively in Taiwan, whereby it manufactures semiconductor wafers according to its customers' designs (in Taiwan) and delivers the wafers to the customers (in Taiwan and other locations outside the United States)" such that "[i]t is the customers and other third parties (not TSMC LTD) who further process and incorporate the semiconductor wafers into downstream commercial electronic devices". Transfer to the Northern District of California is requested as an alternative to dismissal.
In its complaint, and in the motion to dismiss, the parties address "specific chips from Freescale/NXP, MediaTek, and Apple that AICP alleges are manufactured by TSMC", but AICP apparently served infringement contentions that "reference[] numerous additional specific chips from additional companies that AICP alleges are also manufactured by TSMC". In light of this additional disclosure, TSMC has withdrawn the portion of its motion to dismiss that seeks dismissal for lack of personal jurisdiction, leaving it as "standalone motion to transfer" for convenience.
TSMC has since filed an answer. The parties have since also filed competing motions to compel: AICP, of venue-related materials; and TSMC, of the results of AICP's reverse engineering efforts. District Judge Rodney Gilstrap has yet to rule. Judge Gilstrap consolidated this first case against TSMC with a September 2024 suit against UMC, which moved to dismiss AICP's claims for both direct and indirect infringement. In response, AICP dropped its claims for presuit indirect infringement as to six of the seven asserted patents but opposed the motion as to the rest. The court has yet to rule.
AICP was formed in Texas on June 12, 2024, identifying AMTL LLC as its managing member in Texas and as its sole owner in federal court. Of uncertain management or personnel, AMTL was created in Delaware on April 1, 2024. Both AICP and another recipient of former Panasonic patents from Winbond's Nuvoton, Advanced Memory Technologies LLC (formed in Delaware on March 19, 2024) locate themselves at the same Allen, Texas address. Advanced Memory filed suit over a portion of its received assets on December 30, 2024, hitting SK hynix, also in the Eastern District of Texas. The plaintiff there just filed an amended complaint, on April 2; it makes extensive venue allegations concerning alleged SK hynix customers AMD, Dell, Microsoft, and NVIDIA.
Public records do not identify AMTL's personnel or management. AICP is represented by Susman Godfrey LLP and Miller Fair Henry PLLC, as is Advanced Memory. The new case has been assigned to Judge Gilstrap. 4/1, Eastern District of Texas.
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