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): Teladoc Health
• Challenged Claims: 1-7

2. Patent Overview

• Title: Robotic Based Health Care System
• Brief Description: The ’588 patent describes a patient treatment system where a mobile robot at a patient site establishes a videoconferencing session with a remote station. A key limitation, added during prosecution to secure allowance, is the inclusion of a computer at a nurses station that is separate from the robot and provides a user interface with data fields for a user to enter patient and medical information.

3. Grounds for Unpatentability

Ground 1: 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 discloses the foundational telepresence system, including a mobile robot at a patient site and a remote control station. However, Wang421 lacks the claimed separate computer at a nurses station for data entry. Clements was alleged to supply this missing element by teaching a healthcare system with "nurse computers or workstations" at a patient site that are used to enter patient administration data and are separate from the primary patient-physician communication device. To meet the final limitations of claim 1, Petitioner asserted that Hampton discloses the specific user interface features allegedly missing from the combination of Wang421 and Clements, namely a GUI displaying a plurality of data fields including at least one patient information field (e.g., Hampton’s "Narrative Story" window) and at least one medical data field (e.g., Hampton’s blood pressure detail field).
  • Motivation to Combine: A POSITA would combine Wang421 and Clements to add the known and beneficial capability of separate data entry to a robotic telepresence system. Petitioner argued that it would be a simple and obvious modification to then incorporate Hampton’s well-understood UI design for data fields into the user interface of the Clements computer to improve its functionality for entering patient and medical information.
  • Expectation of Success: A POSITA would have a high expectation of success as the combination involves integrating known network-connected computers and applying conventional user interface design principles, which are predictable arts.

Ground 2: Claim 5 is obvious over Wang421, Clements, Hampton, and 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 builds upon the combination in Ground 1 to further address claim 5, which adds the limitation that the remote station provides a "medical tool." Petitioner contended that Brown discloses this element. Brown describes a networked monitoring system where a "script entry screen" is used at a workstation to generate script programs with queries (e.g., about a patient's diabetes) to determine a patient's medical condition. Petitioner argued this script generation and execution system functions as the claimed "medical tool."
  • Motivation to Combine: A POSITA would be motivated to add Brown's script-based query system to the base combination to enhance the system's diagnostic capabilities, allowing a remote physician to not only see the patient but also to actively query them about their condition in a structured way.
  • Expectation of Success: Integrating Brown's software-based medical tool into the remote station of the combined system would be a predictable modification for a POSITA.

Ground 3: Claim 7 is obvious over Wang421, Clements, Hampton, Brown, and 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 builds on the combination in Ground 2 to address claim 7, which specifies that the "medical tool" is a "stroke evaluation." Petitioner asserted that Brun, which describes using the National Institutes of Health Stroke Scale (NIHSS) for assessing intracerebral hemorrhage, provides the motivation to adapt Brown's general medical tool for this specific purpose. The NIHSS is a well-known questionnaire-based tool for stroke evaluation.
  • Motivation to Combine: A POSITA would be motivated to adapt Brown's general-purpose medical tool for a specific, high-value application like stroke assessment, for which time-critical evaluation is paramount in a telepresence context. Using the well-known and standardized NIHSS questionnaire from Brun would be an obvious choice for implementing this functionality.
  • Expectation of Success: A POSITA would reasonably expect to successfully modify Brown’s script program generator to encode the series of questions from the NIHSS, as this is a routine software implementation task.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in a very early stage with no trial date set, discovery had not begun, and key deadlines had not passed. It contended that a Final Written Decision (FWD) from the Board would issue well in advance of any potential trial, and that instituting the IPR would simplify issues and promote judicial efficiency.
• §325(d) (Advanced Bionics Factors): Petitioner argued that its challenge was not based on the same or substantially the same art or arguments previously presented to the Office. It highlighted that the key secondary references—Hampton, Brown, and Brun—were never considered by the Examiner during prosecution. While Wang421 and Clements were cited in an Information Disclosure Statement (IDS), they were not substantively applied in any rejection, meaning the specific combinations and arguments presented in the petition were being considered for the first time.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’588 patent as unpatentable.