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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
1 Citations are to papers in IPR2025-01 053. The parties filed similar papers in IPR2025-01076, IPR2025-01079, IPR2025-01090, IPR2025-01091, IPR2025-01092, and IPR2025-01093.
2
ApS, IPR2025-00408, Paper 21 at 2-3 (Director June 18, 2025). Petitioner's argument that Patent Owner does not have settled expectations because Patent Owner did not previously assert the challenged patents against Petitioner does not defeat Patent Owner's settled expectations. DD Opp. 5. Accordingly, in the absence of sufficient explanation, Patent Owner's strong settled expectations further favor of discretionary denial. 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.
3
FOR PETITIONER:
Tim Xia
Emma Bennett
TROUTMAN PEPPER LOCKE LLP
tim.xia@troutman.com emma.bennett@lockelord.com
FOR PATENT OWNER:
Russell Chorush Michael Heim Christopher Limbacher Lily Glick
Kyle Friesen
HEIM, PAYNE & CHORUSH, LLP rchorush@hpcllp.com heim@hpcllp.com
climbacher@hpcllp.com lglick@hpcllp.com
kfriesen@hpcllp.com
4
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