PTAB Issues Order Proposing Claim Amendments to Patent Owner
The PTAB issued an order stating that it would grant Patent Owner’s motion to amend claims upon Patent Owner accepting further claim amendments suggested by the judges in Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo Kaisha IP Bridge 1, IPR2016-01249, Paper 46 (P.T.A.B. Dec. 12, 2017).
On March 7, 2017, Patent Owner Godo Kaisha filed a contingent motion to amend. The motion included three proposed substitute claims. On May 22, Petitioner Taiwan Semiconductor filed its opposition. On June 21, Godo filed its reply. On August 7, 2017, an oral hearing was conducted. The PTAB’s final written decision is due by December 21, 2017.
On December 12, the PTAB issued an Order indicating that it intended to grant Patent Owner’s motion to amend with respect to one dependent substitute claim, but the grant was conditioned upon Patent Owner supplementing its Motion to Amend by (1) re-writing the dependent claim in independent format, and (2) replacing three recitations of “being composed of” with “consisting essentially of” as shown below:
Claim 13. A multi-layered wiring structure comprising a barrier film which prevents diffusion of copper from a copper wiring layer formed on a semiconductor substrate,
said barrier film having a multi-layered structure of first and second films,
said first film being composed of consisting essentially of crystalline metal containing nitrogen therein, the nitrogen being present throughout the first film,
said second film being composed of consisting essentially of amorphous metal nitride,
said barrier film being constituted of common metal atomic species,
said first film being formed on said second film,
said first film in direct contact with said second film,
said first film containing nitrogen in a smaller content than that of said second film,
wherein said first film has a thickness in the range of 60 angstroms to 300 angstroms both inclusive;
wherein said first film being composed of consisting essentially of crystalline metal containing nitrogen therein is a solid solution; and
a copper film is formed on and in direct contact with said first film.
The Order indicated Patent Owner had made representations that the “being composed of” recitations were intended to mean “consisting essentially of.” The PTAB required Patent Owner to file a paper containing the suggested claim amendments by December 15. It does not appear that Patent Owner filed the invited paper supplementing the original Motion to Amend.
It will be interesting to see if future PTAB panels offer proposed claim amendments to Patent Owners, and whether such proposed claim amendments may result in an increased number of motions to amend being granted.
