United Microelectronics Corporation v. Advanced Integrated Circuit Process LLC

Director_Discretionary_Decision@uspto.gov 571-272-7822

Paper 12

Date: October 10, 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

UNITED MICROELECTRONICS CORPORATION,

and UMC GROUP (USA),

Petitioner,

v.

ADVANCED INTEGRATED CIRCUIT PROCESS LLC,

Patent Owner.

IPR2025-01053 (Patent 8,796,779 B2) IPR2025-01076 (Patent 7,579,227 B2) IPR2025-01079 (Patent 7,923,764 B2) IPR2025-01090 (Patent 8,907,425 B2) IPR2025-01091 (Patent 8,198,686 B2) IPR2025-01092 (Patent 8,253,180 B2) IPR2025-01093 (Patent 8,587,076 B2) Before COKE MORGAN STEWART, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.

DECISION

Denying Institution of Inter Partes Review

1

Advanced Integrated Circuit Process LLC ("Patent Owner") filed a request for discretionary denial (Paper 8, "DD Req.") in the above-captioned cases, and United Microelectronics Corporation and UMC Group (USA) (collectively, "Petitioner") filed an opposition (Paper 10, "DD Opp.").¹ 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. In particular, the projected final written decision due date in these Board proceedings is December, 2026. DD Req. 2. The district court's scheduled trial date is June 22, 2026, and the time-to-trial statistics suggest trial will begin between July and September 2026. Id. at 25, 27. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Furthermore, the challenged patents have been in force for eleven, sixteen, fourteen, ten, thirteen, thirteen, and twelve years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power

2