American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2021-00833
• Patent #: 8,670,017
• Filed: April 23, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Remote Presence System Including a Cart That Supports a Robot Face and an Overhead Camera
• Brief Description: The ’017 patent discloses a telepresence system featuring a mobile cart equipped with a "robot face" (comprising a monitor, camera, microphone, and speaker) and a distinct, separately controllable overhead camera. The system is designed for a user at a remote station to interact with and observe a local environment, such as a medical operating room.

3. Grounds for Unpatentability

Ground 1: Anticipation by Wang128 - Claims 1-2, 4-7, 10, 16-17, 20-22, 25-26, and 29 are anticipated by Wang128.

• Prior Art Relied Upon: Wang128 (Application # 2007/0291128).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang128 discloses every element of the challenged claims. Wang128 teaches a telepresence system on a mobile cart (robot 12) that includes a "robot face" comprising a robot monitor (44), a first robot camera (40), a speaker (48), and a microphone (46). Crucially, Wang128 also discloses a second camera (42) with a zoom lens, which Petitioner asserted constitutes the claimed "overhead camera distinct from said robot camera" under the Patent Owner's apparent construction. The system further includes a remote station capable of controlling both cameras and displaying their video feeds.

Ground 2: Obviousness over Wang128 and Remy - Claims 1-7, 10-13, 16-18, 21-22, and 25-29 are obvious over Wang128 in view of Remy.

• Prior Art Relied Upon: Wang128 (Application # 2007/0291128) and Remy (Application # 2005/0052527).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Wang128 provides the base telepresence system with a mobile cart and robot face. Remy, which discloses a mobile communication system for surgical imaging, teaches the key missing element: a fully articulating, telescoping boom with an overhead camera (10A) specifically designed to provide top-down views of a medical procedure. The combination of Wang128's telepresence functionality with Remy's specialized overhead camera boom would result in the claimed system.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Remy’s boom-mounted overhead camera with Wang128’s system to address a known deficiency. Wang128's front-facing cameras are not ideal for medical procedures requiring a top-down view of an operating site. Remy explicitly provides a solution for this exact problem, and a POSITA would be motivated to integrate it to improve the utility of the telepresence system in a surgical environment.
  • Expectation of Success: A POSITA would have a high expectation of success because adding a boom-mounted camera to a mobile medical cart was a well-known technique. The integration would involve combining known elements, each performing its predictable function, to achieve a predictable result.

Ground 3: Obviousness over Wang128, Remy, and Buckler - Claims 4, 7-8, 19, 22, and 23 are obvious over Wang128 in view of Remy and Buckler.

• Prior Art Relied Upon: Wang128 (Application # 2007/0291128), Remy (Application # 2005/0052527), and Buckler (Application # 2008/0218582).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Wang128 and Remy. Buckler was introduced for its teaching of a video conferencing system that automatically determines an "optimal view" by identifying active speakers and selecting the camera best positioned to capture them. This functionality is mapped to claim limitations requiring the remote station to determine and display an optimal view.
  • Motivation to Combine: A POSITA would be motivated to incorporate Buckler's automatic camera selection technology into the Wang128/Remy system to enhance its usability. For a remote surgeon assisting in a procedure, this would automate the process of focusing on the active participant, freeing the surgeon from the distraction of manually controlling cameras and allowing them to focus on the medical task.
  • Expectation of Success: The proposed combination would be a mere application of a known technique (automatic camera selection) to an existing system (multi-camera telepresence) to improve its function, which was well within the skill of a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Collins (for automatic camera tracking of a moving person), Julstrom (for automatic microphone switching), Ereso (for adding a laser pointer to the boom), and Yamada (for adding a detachable, sterilizable handle to the boom). A separate anticipation ground was asserted based on Marar (Application # 2008/0161672).

4. Key Claim Construction Positions

• Petitioner argued that for most grounds, claim terms should be given their ordinary and customary meaning.
• However, for the anticipation argument in Ground 1, Petitioner addressed the Patent Owner's apparent construction of "an overhead camera distinct from said robot camera" from co-pending litigation. Petitioner contended that even under this construction (implying a camera physically above a monitor or a patient's head), Wang128's second camera (42) meets the limitation, thereby anticipating the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) would be inappropriate, asserting that the Fintiv factors strongly favor institution.
• The parallel district court litigation was in a very early stage, with the trial scheduled for August 2023, more than ten months after a Final Written Decision (FWD) would issue from the PTAB. Petitioner argued this timeline and the early stage of litigation make a district court stay highly probable upon institution.
• Petitioner also contended that denial under §325(d) was unwarranted because the primary prior art references, though part of the prosecution record, were never substantively considered or applied in a rejection by the examiner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of Patent 8,670,017 as unpatentable.