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Taiwan Semiconductor Manufacturing Company Ltd. v. Advanced Integrated Circuit Process LLC
Director_Discretionary_Decision@uspto.gov Paper 17 571-272-7822 Date: September 3, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
TAIWAN SEMICONDUCTOR MANUFACTORING COMPANY LTD.,
Petitioner,
v.
ADVANCED INTEGRATED CIRCUIT PROCESS LLC,
Patent Owner.
IPR2025-00828 (Patent 7,579,227 B2) IPR2025-00829 (Patent 7,923,764 B2) IPR2025-00830 (Patent 8,253,180 B2) IPR2025-00831 (Patent 8,587,076 B2) IPR2025-00832 (Patent 8,796,779 B2) Before COKE MORGAN STEWART, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.
DECISION
Denying Institution of Inter Partes Review
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Advanced Integrated Circuit Process LLC ("Patent Owner") filed a request for discretionary denial (Paper 8, "DD Req.") in the above-captioned cases, and Taiwan Semiconductor Manufacturing Company Limited ("TSMC") ("Petitioner") filed an opposition (Paper 12, "DD Opp.").1With authorization, Patent Owner filed a Reply (Paper 13), and Petitioner filed a Sur-reply (Paper 14).
After considering the parties' arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented. These cases present essentially the same discretionary considerations as those presented in IPR2025-00682 and IPR2025-00683. See, e.g., Taiwan Semiconductor Mfg. Co. v. Advanced Integrated Circuit Process LLC, IPR2025-00682, Paper 17 (Director Aug. 14, 2025) (denying Patent Owner's request for discretionary denial). Accordingly, that analysis is incorporated here. Id. at 2-3. Further, Petitioner's argument that the Office erred is insufficient to overcome the considerations favoring discretionary denial. See DD Opp. 7-11.
Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because "[t]he semiconductor chips manufactured by TSMC are vital to U.S. industries (from Apple and NVIDIA to Meta and Tesla); and to U.S. military (e.g.,
1 Citations are to papers in IPR2025-00828. The parties filed similar papers in IPR2025-00829, IPR2025-00830, IPR2025-00831, and IPR2025-00832.
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missile guidance systems and F35 stealth fighters)." DD Opp. 33. Petitioner further states that it "offers multiple technologies, ranging from 28nm to 3nm, to power widespread military/defense applications," and contends that
"TSMC-built chips power the vast majority of electronic devices in the world." DD Opp. 35, 37. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner's arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.
Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. ยง 314(a).
In consideration of the foregoing, it is:
ORDERED that Patent Owner's request for discretionary denial is granted; and
FURTHER ORDERED that the Petitions are denied, and no trial is instituted.
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FOR PETITIONER:
Lori Gordon Andrew Ong
Filippos Papadatos Theodoros Konstantakopoulos
GOODWIN PROCTER LLP
gordon-ptab@goodwinlaw.com aong@goodwinlaw.com fpapadatos@goodwinlaw.com tkonstantakopoulos@goodwinlaw.com
FOR PATENT OWNER:
Russell Chorush Michael Heim Christopher Limbacher Lily Glick
Kyle Friesen
HEIM PAYNE & CHORUSH, LLP rchorush@hpcllp.com mheim@hpcllp.com
climbacher@hpcllp.com lglick@hpcllp.com
kfriesen@hpcllp.com
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