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IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

SEMICONDUCTOR CONNECTIONS 

LLC, 

 Plaintiff, 

v. 

TAIWAN SEMICONDUCTOR 

MANUFACTURING COMPANY 

LIMITED, and TSMC NORTH AMERICA 

 Defendants. 

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CASE NO. 6:20-cv-109 

JURY TRIAL DEMANDED 

PLAINTIFF’S ORIGINAL COMPLAINT

 Plaintiff SEMICONDUCTOR CONNECTIONS LLC (“Plaintiff” herein) files this 

Complaint for Patent Infringement against Defendants TAIWAN SEMICONDUCTOR 

MANUFACTURING COMPANY LIMITED (“TSMC” herein), and TSMC NORTH AMERICA 

(“TSMC NA” herein). TSMC and TSMC NA are collectively referred to herein as “Defendants.” 

PARTIES

1. Plaintiff is a Limited Liability Company organized and existing under the laws of 

Texas and has a principal place of business located at 6136 Frisco Square Boulevard, Suite 400, 

Frisco, TX 75034. 

2. TSMC is a company organized and existing under the laws of Taiwan. It has a 

principal place of business located at 8, Li-Hsin Rd. 6, Hsinchu Science Park, Hsinchu 300-78, 

Taiwan, R.O.C. TSMC is the parent corporation of Defendant TSMC NA. TSMC engages in 

business in the State of Texas. Pursuant to §17.044 of the Texas Civil Practice & Remedies Code, 

TSMC has designated the Secretary of State as its agent for service of process and may be served 

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with process through the Secretary of State. The Secretary of State may forward service to TSMC 

at its home office address located at 8, Li-Hsin Rd. 6, Hsinchu Science Park, Hsinchu 300-78, 

Taiwan, R.O.C. Alternatively, TSMC may be served with process by serving the Registered Agent 

of TSMC NA, Steven A. Schulman at 2851 Junction Avenue, San Jose, CA 95134. 

3. TSMC NA is a corporation organized and exiting under the laws of California and 

has a physical place of business located at 11921 North Mopac Expressway, Austin, TX 78759. 

TSMC NA may be served with process by serving its Registered Agent, Steven A. Schulman at 

2851 Junction Avenue, San Jose, CA 95134. 

4. Defendant TSMC and TSMC NA are related entities that work in concert to design, 

manufacture, import, distribute, market, and/or sell products that are manufactured according to 

processes patented in the United States. 

JURISDICTION AND VENUE 

5. This is an action for infringement of United States patents under 35 U.S.C. §§ 271, 

et seq. Federal question jurisdiction is conferred to this Court over patent infringement actions 

under 28 U.S.C. §§ 1331 and 1338(a). 

6. Defendants are subject to this Court’s specific and general personal jurisdiction 

pursuant to due process and/or the Texas Long Arm Statute, by virtue of at least their substantial 

business conducted in this forum, directly and/or through intermediaries, including (i) having 

solicited business in the State of Texas, transacted business within the State of Texas and attempted 

to derive financial benefit from residents of the State of Texas, including benefits directly related 

to the instant patent infringement causes of action set forth herein; (ii) having placed its products 

and services into the stream of commerce throughout the United States and having been actively 

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engaged in transacting business in Texas and in this District; and (iii) either alone or in conjunction 

with others, having committed acts of infringement within Texas and in this District. 

7. Defendants have sufficient minimum contacts with the Western District of Texas 

such that this venue is fair and reasonable. Defendants have committed such purposeful acts and/or 

transactions in this District that they reasonably should know and expect that they could be hailed 

into this Court as a consequence of such activity. Defendants have transacted and, at the time of 

the filing of this Complaint, continue to transact business within the Western District of Texas. 

8. Defendants directly and/or through intermediaries have advertised (including 

through websites), offered to sell, sold and/or distributed products made by patented processes, in 

this District. Further, Defendants directly and/or through intermediaries have purposefully and 

voluntarily placed such products in the stream of commerce knowing and expecting them to be 

purchased and used by consumers in Texas and in this District. 

9. Venue is proper against Defendant TSMC in this District pursuant to 28 U.S.C. § 

1391(c)(3) and 28 U.S.C. § 1400(b). TSMC is not a resident of the United States and may be sued 

in any district, including this District. As will be explained further herein, TSMC has committed 

acts of infringement within this District. On information and belief, TSMC conducts business in 

the United States through its subsidiaries, including through Defendant TSMC NA. 

10. Venue is proper against TSMC NA in this District pursuant to 28 U.S.C. § 1400(b) 

because TSMC NA has a regular and established place of business in this District and has 

committed acts of infringement in this District. TSMC NA has a permanent office location in 

Austin, Texas, which is in Travis County and within this District. Based on information and belief, 

TSMC NA employs full-time personnel such as sales personnel and engineers in this District, 

including in Austin, Texas. TSMC NA has also committed acts of infringement in this District by 

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commercializing, marketing, selling, distributing, testing, and/or servicing certain products 

accused of being manufactured by patented processes in this action. 

11. For these reasons, personal jurisdiction exists, and venue is proper in this Court 

under 28 U.S.C. §§ 1391(b), (c) and/or 28 U.S.C. § 1400(b). 

BACKGROUND FACTS 

12. Plaintiff is the exclusive licensee of United States Patent No. 6,548,391 (“the ‘391 

Patent” or “Patent-in-Suit”) which was issued on April 15, 2003 for a “Method of Vertically 

Integrating Electric Components by Means of Back Contacting.” A true and correct copy of the 

‘391 Patent is attached hereto as Exhibit A. 

13. Generally speaking, the ‘391 Patent relates to the design and manufacture of 

semiconductor devices. More specifically, the ‘391 Patent claims a method of connecting two 

semiconductor components. By way of example, Claim 1 of the ‘391 Patent reads as follows: 

1. A method of connecting two semiconductor components comprising the 

steps of 

providing in a first main surface of a first semiconductor substrate first 

component structures including first contact areas; 

forming in said first semiconductor substrate via holes filled with 

electrically conductive material and electrically insulated from said first 

semiconductor substrate, said via holes extending down to a second main 

surface of the first semiconductor substrate and being connected in an 

electrically conductive manner to said first contact areas via an electrically 

conductive connection material; 

forming on the second main surface of the first semiconductor substrate first 

lands which are connected in an electrically conductive manner to the first 

contact areas via the electrically conductive material in the via holes; 

providing a second semiconductor substrate having second components 

structures including second contact areas; 

forming second lands which are connected in an electrically conductive 

manner to the second contact areas; 

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connecting the first and the second semiconductor substrate in such a way 

that an electrically conductive as well as a mechanically stable connection 

between two substrates is established exclusively via the first and the second 

lands. 

14. Figures 2a, 2b, 3 and 4 of the ‘391 Patent show diagrams of an exemplary 

embodiment of the invention, illustrating how two substrates may be joined: 

15. In the above embodiments, Figures 2a and 2b show a first and second substrate as 

recited in Claim 1. Figure 3 illustrates the via holes and the connections between the first and 

second substrates. Figures 3 and 4 also illustrate the contact areas and lands (8 and 9) identified 

and included in Claim 1. The first and second semiconductor substrates are connected in such a 

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way that an electrically conductive as well as a mechanically stable connection between the two 

substrates is established exclusively via the first and the second lands. 

COUNT 1 – PATENT INFRINGEMENT

16. Under 35 U.S.C. § 271(g), “[w]however without authority imports into the United 

States or offers to sell, sells, or uses within the United States a product which is made by a process 

patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or 

use of the product occurs during the term of such process patent.” 

17. Defendant TSMC owns and operates a foundry in Taiwan which manufactures 

semiconductor devices according to the patented method covered by at least Claim 1 of the ‘391 

Patent. A foundry manufactures chips for its customers, that sell the chips to other companies for 

inclusion in other products. For example, TSMC manufactures semiconductor devices at a variety 

of different process nodes, including 28-nanometer (“28nm”) process nodes. TSMC is a foundry 

that has contracts with many chip designers to manufacture chips which are eventually sold within 

the United States, or that are integrated into consumer products that are sold within the United 

States. On information and belief, TSMC collaborates with its customers in the United States 

regarding the design of the semiconductor devices. 

18. Defendant TSMC NA is a wholly owned subsidiary of TSMC that sells 

manufactured chips in the United States, including those that were made via the patented process 

covered by at least Claim 1 of the ‘391 Patent. TSMC’s Annual Report lists the “Major Corporate 

Function” of TSMC NA as “[s]ales, market development, field technical solutions and business 

operations for customers in North America.”1

 Defendant TSMC and TSMC NA are related entities 

1

 Publicly available for download at: https://www.tsmc.com/download/ir/annualReports/2018/english/index.html 

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that work in concert to design, manufacture, import, distribute, market, and/or sell products that 

are manufactured according to processes patented in the United States. 

19. Xilinx, Inc. is a chip design company that partners with, and/or purchases from, 

TSMC and/or TSMC NA. Xilinx is based in the United States and designs, markets, offers for 

sale, sells and/or imports certain semiconductor chips within the United States. 

20. The term “Accused Products” used hereafter, shall refer to all products 

manufactured by practicing the patented processes covered by the claims of the ‘391 Patent. The 

Accused Products include, but are not limited to, the Xilinx Virtex-7 2000T and H580T FPGAs 

manufactured by TSMC, and all TSMC semiconductor devices, integrated circuits, and products 

manufactured at the 28nm technology nodes or other process nodes in the same or similar manner. 

By way of example only, a discussion regarding the Accused Products and their design may be 

found at: http://www.chipscalereview.com/legacy/tech_monthly/csrtm-1213-front.php.htm 

21. The Accused Products are manufactured in accordance with the method covered by 

at least Claim 1 of the ‘391 Patent. The Accused Products comprise a first and second substrate 

(e.g., interposer and chip layer), as shown below2

: 

2 See, e.g., excerpts from B. Banijamali, S. Ramalingam, H. Liu, M. Kim, Xilinx, Inc., “Outstanding and Innovative 

Reliability Study of 3D TSV Interposer and the Fine Pitch Solder Micro-bumps,” Proc. Of IEEE/ECTC, May 2012, 

pp. 309-314. 

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22. The first semiconductor substrate (interposer layer) includes a first main surface, 

first component structures and first contact areas. 

23. The Accused Products also include via holes (sometimes referred to as “TSV”) 

filled with electrically conductive material insulated from the first semiconductor substrate. By 

way of example, the via holes may be filled with electrically conductive copper that is insulated 

from the silicon substrate by a silicon dioxide layer. The via holes extend to a second main surface 

area of the first semiconductor substrate to form an electrically conductive connection. 

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24. On the second main surface of the first semiconductor substrate there are first lands 

which are connected in an electrically conductive manner to the first contact areas via the 

electrically conductive connection material. 

25. The second semiconductor substrate (chip layer) has second component structures 

and second contact areas. Second lands are connected in an electrically conductive manner to the 

second contact areas. By way of example in the figure below, copper pillars are present as second 

lands. 

26. This configuration allows for connection of the first and second semiconductor 

substrates in such a way that an electrically conductive as well as a mechanically stable connection 

between the two substrates is established exclusively via the first and the second lands. 

27. Defendant TSMC directly and/or through its subsidiaries, affiliates, agents and/or 

business partners, have in the past and continue to infringe at least Claim 1 of the ‘391 Patent 

pursuant to 35 U.S.C. § 271(g) by making, using, selling, or offering to sell, and/or importing 

integrated circuits devices made by practicing and by performing processes that practice the 

inventions claimed in the ‘391 Patent, within the United States and this District. By way of 

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example, TSMC owns and operates one or more foundries responsible for the manufacturing of 

the Accused Products. In addition, TSMC directly or through its subsidiaries, including TSMC 

NA, uses, imports, offers for sale, and/or sells the Accused Products within the United States. The 

Accused Products made by the processes claimed in the ‘391 Patent are not materially changed by 

subsequent processes prior to the importation, use, sale, or offer for sale in the United States. 

28. Defendant TSMC NA directly and/or through its subsidiaries, affiliates, agents 

and/or business partners, have in the past and continue to infringe at least Claim 1 of the ‘391 

Patent pursuant to 35 U.S.C. § 271(g) by making, using, selling, or offering to sell, and/or 

importing integrated circuits devices made by practicing and by performing processes that practice 

the inventions claimed in the ‘391 Patent, within the United States and this District. By way of 

example, TSMC NA is responsible for using, importing, marketing, offering for sale, and/or selling 

the Accused Products to customers within the United States. Xilinx has a presence within the 

United States and is a customer for semiconductor chips, such as the Accused Products, 

manufactured, offered for sale, sold and/or imported by TSMC and/or TSMC NA. 

29. Defendants are constructively aware that a significant amount of its Accused 

Products are eventually sold in the United States. 

30. Defendants have actual notice of the ‘391 Patent. At the latest, the filing of this 

Complaint constitutes actual notice in accordance with 35 U.S.C. § 287. 

31. Plaintiff and all predecessors-in-interest to the ‘391 Patent have complied with the 

requirements of 35 U.S.C. § 287. 

32. Plaintiff expressly reserves the right to assert additional claims of the ‘391 Patent 

against Defendants. 

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33. Plaintiff has been damaged as a result of Defendants’ infringing conduct. 

Defendants are, thus, liable to Plaintiff in an amount that adequately compensates for their 

infringement, which, by law, cannot be less than a reasonable royalty, together with interest and 

costs as fixed by this Court under 35 U.S.C. § 284. 

JURY DEMAND 

34. Plaintiff hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of 

Civil Procedure. 

PRAYER FOR RELIEF 

WHEREFORE, Plaintiff respectfully requests that the Court find in its favor and against 

Defendants, and that the Court grant Plaintiff the following relief: 

a. Judgment that one or more claims of the Asserted Patents have been directly 

infringed, either literally or under the doctrine of equivalents, by Defendants; 

b. Judgment that Defendants account for and pay to Plaintiff all damages to and costs 

incurred by Plaintiff because of Defendants’ infringing activities and other conduct 

complained of herein; 

c. That Plaintiff be granted pre-judgment and post-judgment interest on the damages 

caused by Defendants’ infringing activities and other conduct complained of herein; 

d. That the Court declare this an exceptional case and award Plaintiff its reasonable 

attorney’s fees and costs in accordance with 35 U.S.C. § 285; and 

e. That Plaintiff be granted such other and further relief as the Court may deem just 

and proper under the circumstances. 

 

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DATED: February 11, 2020. Respectfully submitted, 

 /s/ Jonathan T. Suder 

Corby R. Vowell 

Dave R. Gunter 

FRIEDMAN, SUDER & COOKE 

604 East 4th Street, Suite 200 

Fort Worth, TX 76102 

817-334-0400 

Fax: 817-334-0401 

jts@fsclaw.com 

vowell@fsclaw.com

gunter@fsclaw.com

ATTORNEYS FOR PLAINTIFF 

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