On February 12, the Patent Trial and Appeal Board (PTAB) denied a patent owner’s motion to amend a claim in an inter partes review. Because the cited prior art likely invalidated the reviewed claim, the patent owner, Interface, Inc., attempted to amend the claim and add new claim terms to circumvent the prior art. But when a patent owner proposes to amend or substitute a claim, the patent owner must also propose constructions for the new claim terms. Despite this requirement, Interface failed to provide constructions for the new claim terms in its proposed amended claim. The PTAB determined that “[w]ithout a reasonable construction of this alleged new claim feature in proposed claim 15, patent owner does not provide adequate information for us to determine whether patent owner’s proposed substitute claim is patentable over the prior art generally.” Ultimately, the PTAB found Interface failed to meet its burden to prove the patentability of the proposed substitute claim.
Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00527 (PTAB Feb. 12, 2015).