American Well Corp v. Teladoc Heath Inc

1. Case Identification

• Case #: IPR2021-00743
• Patent #: 9,602,765
• Filed: March 31, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-4

2. Patent Overview

• Title: Portable Remote Presence Robot
• Brief Description: The ’765 patent discloses a telepresence system for remote medical consultation. The system features a "portable robot face"—a detachable unit with a monitor, camera, and other components—that can be mounted on a platform (e.g., in an ambulance) and communicate wirelessly with a remote physician's station.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Zweig

• Prior Art Relied Upon: Zweig (Application # 2007/0061041).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zweig, which teaches a mobile telepresence robot for healthcare, discloses every limitation of the challenged claims. Zweig’s system uses a portable, detachable Personal Digital Assistant (PDA) as the robot's "face," which includes a display, speaker, microphone, camera, battery, and wireless transceiver, all within a housing. Petitioner asserted that the two limitations added during prosecution to secure allowance—a "clamp" and being "operable when...detached"—are taught or suggested by Zweig. Zweig described the need for a "robust but easy to detach system" using "temporary means (e.g. Velcro strips, hung on the robot, etc.)," which Petitioner contended a POSITA would understand to include a clamp. Further, Zweig’s stated goal of allowing a user to "easily remove the PDA...to better view the remote operator" allegedly implies the PDA remains operable after detachment.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the motivation was based on applying known design principles to the disclosed system. A POSITA would have used a common attachment means like a clamp to implement Zweig's detachable PDA.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected that a standard PDA would continue to function when detached from its mount, as this is a fundamental characteristic of such portable devices.

Ground 2: Claims 1-4 are obvious over Zweig in view of Zerhusen

• Prior Art Relied Upon: Zweig (Application # 2007/0061041) and Zerhusen (Application # 2007/0120689).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground asserted that even if Zweig alone does not render the claims obvious, Zerhusen provides the missing elements. Zerhusen discloses point-of-care computer systems for healthcare settings, including portable display devices with robust mounting hardware. Specifically, Zerhusen taught a "clamp assembly including a pair of adjustable clamps" for attaching a display housing to a platform (e.g., a hospital bed siderail). Zerhusen also disclosed mounting mechanisms that provide at least two degrees of freedom (e.g., vertical movement and rotation), as required by dependent claim 2. Petitioner argued that Zerhusen's detailed disclosure of a clamp and multi-axis mounting hardware explicitly teaches the limitations added to the ’765 patent during prosecution.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to implement Zweig's detachable telepresence system would combine it with Zerhusen's teachings for several reasons. Both references address patient care in healthcare settings. A POSITA would have been motivated to replace Zweig's simple attachment means with Zerhusen's more robust and versatile clamp assembly to improve the durability and usability of the device, which are predictable design improvements. This combination would directly address Zweig’s goal of providing a "better view" by allowing for more flexible positioning.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in combining a known mounting solution (Zerhusen's clamp) with a known portable display device (Zweig's PDA), as it involves the application of conventional mechanical components for their intended purpose.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-4 based on the combination of Sandbeg (Application # 2007/0064092), Zweig, and Zerhusen, relying on similar motivations to combine known elements from the telepresence and medical device fields.

4. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued against discretionary denial under §314(a), asserting that the Fintiv factors weighed in favor of institution. The parallel district court litigation was in its infancy, with no trial date set, no significant discovery conducted, and a motion to dismiss still pending. Petitioner contended that an institution decision would occur long before substantial resources were invested in the district court case, and a final written decision would likely issue months before any potential trial date, thereby promoting judicial efficiency.
• Discretionary Denial under §325(d): Petitioner also argued that denial under §325(d) was inappropriate. The primary prior art references, Zweig and Zerhusen, were never presented to or considered by the patent examiner during the original prosecution. Petitioner asserted that these references are not cumulative of the art of record (e.g., Sandbeg) because they directly teach the very limitations—the clamp and operability when detached—that were added to the claims to overcome the examiner’s anticipation rejection. Therefore, the examiner erred by overlooking this new, non-cumulative, and highly material prior art.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4 of the ’765 patent as unpatentable under 35 U.S.C. §103.