American Well Corp v. Teladoc Heath Inc

1. Case Identification

• Case #: IPR2021-00749
• Patent #: 10,471,588
• Filed: April 2, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Timothy C. Wright, et al.
• Challenged Claims: 1-7

2. Patent Overview

• Title: ROBOTIC BASED HEALTH CARE SYSTEM
• Brief Description: The ’588 patent describes a patient treatment system featuring a mobile telepresence robot at a patient site that communicates with a remote physician station over a network. The system's allegedly novel aspect, added during prosecution, is a computer at a nurses’ station, separate from the robot, which displays a user interface for entering patient and medical data into multiple data fields.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang421, Clements, and Hampton - Claims 1-4 and 6 are obvious over Wang421, Clements, and Hampton.

• Prior Art Relied Upon: Wang421 (Application # 2004/0143421), Clements (Application # 2006/0271400), and Hampton (Patent 6,594,634).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang421 taught the foundational robotic telepresence system, including a mobile robot at a patient site and a remote control station for a physician, connected via a network. To meet the limitation of a separate computer for data entry, Petitioner asserted that Clements disclosed "nurse computers or workstations" at a customer site, separate from patient-side medical devices, used by nurses to access electronic medical records and enter patient administration data. Finally, Petitioner mapped Hampton to the claimed user interface limitations, arguing Hampton taught a handheld computer with an interface displaying a plurality of data fields for user input, including a "narrative field" for patient information and a "detail field" for medical data like blood pressure.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Wang421's robotic system with Clements' separate data entry station to improve clinical workflow. This combination would allow a nurse to manage patient data on the Clements workstation while a remote physician simultaneously conducted a telepresence consultation using the Wang421 robot, a predictable and beneficial division of labor. Incorporating Hampton's user interface design, with its specific data fields, would have been a simple, obvious design choice to implement the data entry functionality on the Clements computer.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved integrating known network-compatible components (a telepresence robot and a data-entry computer) to perform their conventional functions in a well-established healthcare environment.

Ground 2: Obviousness over Wang421, Clements, Hampton, and Brown - Claim 5 is obvious over the combination for Ground 1 in view of Brown.

• Prior Art Relied Upon: Wang421 (Application # 2004/0143421), Clements (Application # 2006/0271400), Hampton (Patent 6,594,634), and Brown (Patent 5,997,476).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted the added limitation of claim 5, "wherein said remote station provides a medical tool." Petitioner argued that Brown disclosed a remote patient monitoring system where a "script entry screen" at a remote workstation was used to generate script programs with queries and response choices. These scripts, when executed on a patient's device, functioned as a "medical tool" to determine the patient's medical condition.
  • Motivation to Combine: A POSITA would be motivated to add Brown's medical tool functionality to the base combination to enhance its diagnostic capabilities. The combination would be improved by allowing the remote physician not only to see and speak with the patient via the robot but also to administer interactive questionnaires (the "medical tool") to gather structured clinical data, thereby improving the quality of the remote assessment.

Ground 3: Obviousness over Wang421, Clements, Hampton, Brown, and Brun - Claim 7 is obvious over the combination for Ground 2 in view of Brun.

• Prior Art Relied Upon: Wang421 (Application # 2004/0143421), Clements (Application # 2006/0271400), Hampton (Patent 6,594,634), Brown (Patent 5,997,476), and Brun (WO 2007/009895).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claim 7, which specified that the "medical tool is a stroke evaluation." The ’588 patent itself identifies the National Institutes of Health Stroke Scale (NIHSS) as an example of such a tool. Petitioner asserted that Brun, which predates the patent’s critical date, explicitly disclosed using the NIHSS questionnaire for assessing the severity of intracerebral hemorrhage.
  • Motivation to Combine: Given that the ’588 patent highlights the system's utility for treating stroke patients, a POSITA would have been motivated to implement a known, standard-of-care stroke evaluation tool. A POSITA would logically incorporate the well-known NIHSS questionnaire from Brun into the script-based medical tool framework taught by Brown to create a system specifically tailored for stroke care, a predictable and highly desirable improvement.

4. Arguments Regarding Discretionary Denial

• Discretionary Denial under §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv was unwarranted. It asserted that the parallel district court litigation was in a very early stage, with no scheduling order entered, no discovery exchanged, and a motion to dismiss still pending. Petitioner contended that the Board’s Final Written Decision (FWD) would issue months before any potential trial date. Furthermore, Petitioner stated it would not pursue the same invalidity grounds in district court if the inter partes review (IPR) was instituted, thus avoiding overlap and conserving judicial resources.
• Discretionary Denial under §325(d): Petitioner argued that denial would be inappropriate because the core prior art was not substantively considered during prosecution. The key references of Hampton, Brown, and Brun were never presented to the Examiner. Although Wang421 and Clements were cited in an Information Disclosure Statement (IDS), the Examiner never relied on them in any rejection or discussed their teachings, meaning the specific combinations and arguments presented in the petition were being considered for the first time.

5. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-7 of the ’588 patent as unpatentable.