American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2021-00810
• Patent #: 8,849,680
• Filed: April 16, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-29

2. Patent Overview

• Title: Documentation Through a Remote Presence Robot
• Brief Description: The ’680 patent describes a robotic telepresence system primarily for use in medical facilities. The system's purported innovation involves a remote station controlling a robot to conduct a telepresence session, which results in the creation and storage of "session content data" that is non-image and non-audio, such as physician notes or diagnosis information.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-8, 11-17, and 20-27 by Wang-676

• Prior Art Relied Upon: Wang-676 (Application # 2006/0052676).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang-676, which describes a telepresence system for remote patient monitoring, discloses every element of the challenged claims. Wang-676 teaches a robotic system with a remote station capable of establishing a telepresence session. Critically, Petitioner asserted that Wang-676 discloses the generation of non-image and non-audio data during a session, such as EKG data from a coupled medical monitor or physician notes added to an electronic medical record (EMR). This data is stored on a server, directly teaching the key limitation that the Examiner relied upon for allowance of the ’680 patent. The petition further detailed how Wang-676 inherently teaches searchable, time-stamped data, as is standard for EMRs.

Ground 2: Obviousness of Claims 1-8, 11-17, 20-27, and 29 over Wang-676 in view of Ombrellaro

• Prior Art Relied Upon: Wang-676 (Application # 2006/0052676) and Ombrellaro (Application # 2005/0149364).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Wang-676 provides the foundational robotic telepresence system with basic EMR capabilities. Ombrellaro, which teaches a multifunction telemedicine system, was introduced for its more detailed disclosure of EMR features. Specifically, Ombrellaro explicitly teaches functionalities such as searching medical records across various data types (e.g., by doctor, exam date) and automatically time-stamping records upon saving. These teachings were mapped to dependent claims requiring searchable data and time stamps.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) reviewing the telemedicine system of Wang-676 would have been motivated to consult a reference like Ombrellaro to improve its EMR functionality. Both references operate in the same field of telemedicine and address the common need for robust medical record management. Combining Ombrellaro’s well-known EMR features with Wang-676’s robotic system was presented as a simple integration of known elements to achieve the predictable result of a more capable system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involved applying conventional database and EMR functionalities to an existing telepresence platform.

Ground 3: Obviousness of Billing Claims over Wang-676, Ombrellaro, and Rosenfeld

• Prior Art Relied Upon: Wang-676 (Application # 2006/0052676), Ombrellaro (Application # 2005/0149364), and Rosenfeld (Application # 2005/0203777).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims 9-10, 18-19, and 28, which add limitations related to generating a bill based on session content data. Petitioner argued that the combination of Wang-676 and Ombrellaro establishes the underlying telepresence EMR system. Rosenfeld was then added because it explicitly discloses a system for accounting and billing patients in a hospital environment. Rosenfeld teaches a "bill generator" (a server) that automatically creates a bill using session content data, including diagnosis codes (e.g., CPT codes) and other clinical information from an EMR.
  • Motivation to Combine: A POSITA would have been motivated to integrate the automated billing system of Rosenfeld with the telemedicine platform of Wang-676/Ombrellaro. This combination would address the ubiquitous need for medical billing and would automate a cumbersome, time-consuming, and costly manual process. Integrating billing with EMRs was a well-known method for improving efficiency in healthcare administration.
  • Expectation of Success: Given that integrated EMR and billing systems were common at the time, a POSITA would have readily understood how to combine these systems with a high expectation of success.
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 9-10, 18-19, and 28 based on Wang-676, Ombrellaro, and the general knowledge of a POSITA regarding medical billing systems.

4. Key Claim Construction Positions

• "session content data": Petitioner proposed this term be construed as "information regarding the substance of a session," explicitly distinguishing it from metadata like session start/end times. This construction supports the argument that prior art disclosing physician notes, diagnoses, or EKG data meets the limitation.
• "means for storing said session content data": Petitioner argued this is a means-plus-function term with the function of "storing said session content data." The corresponding structure disclosed in the ’680 patent was identified as the robot, the remote station, or a server. This construction allows Petitioner to map the limitation to servers and other storage devices disclosed in the prior art.

5. Arguments Regarding Discretionary Denial

• Discretionary Denial under §314(a) (Fintiv): Petitioner argued against discretionary denial, asserting that the parallel district court litigation was in a very early stage, with no substantive discovery or claim construction completed. It was contended that a Final Written Decision (FWD) from the Board would issue approximately ten months before the earliest possible trial date, and that a stay of the litigation pending IPR was likely.
• Discretionary Denial under §325(d): Petitioner argued that its grounds were not based on the same or substantially the same art or arguments previously presented to the USPTO. While Wang-676 was listed in an Information Disclosure Statement (IDS) during prosecution, it was one of over 100 references and was never used in a rejection or substantively discussed by the Examiner. The secondary references, Ombrellaro and Rosenfeld, were never before the Examiner. Therefore, Petitioner contended the petition raised new, non-cumulative issues that warranted review.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-29 of Patent 8,849,680 as unpatentable.