American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2021-00836
• Patent #: 10,483,007
• Filed: April 23, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Modular Telehealth Cart with Thermal Imaging and Touch Screen User Interface
• Brief Description: The ’007 patent describes a telemedicine system featuring a mobile cart for two-way audio/video conferencing between patients and remote healthcare providers. The purportedly novel feature is a mode of operation where video from the cart's camera is displayed on its touchscreen when the system is not in an active communication session with a remote device, a function Petitioner characterized as a well-known "preview" or "offline" mode.

3. Grounds for Unpatentability

Ground 1A: Claims 1 and 9-12 are obvious over Wang and Chaudhri

• Prior Art Relied Upon: Wang (Application # 2015/0127156) and Chaudhri (Application # 2017/0336958).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang disclosed a mobile telepresence robot (a "cart") with all the core hardware of independent claim 1, including a controller, camera system, and touchscreen display for video conferencing with a remote station over a network. However, Wang did not explicitly describe a user interface for controlling the conferencing functions. Chaudhri allegedly supplied this missing element by teaching a touch-screen electronic device (e.g., a smartphone) with a graphical user interface for a messaging application that includes a "live preview" mode. This preview mode allowed a user to view locally captured video on the screen before initiating a video call, i.e., "when the system is not in session." Chaudhri also disclosed a separate selectable option to initiate a video conference. Petitioner contended that implementing Chaudhri's user interface, including its preview mode, on Wang’s telepresence cart rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Chaudhri's intuitive touchscreen user interface with Wang's telepresence robot to improve the system's utility. This would provide patients, who may be ill or impaired, with an easy-to-use method for controlling the video conferencing functions and previewing their video signal before a consultation, which was a known technique to improve user experience.
  • Expectation of Success: Because both Wang and Chaudhri described similar video conferencing systems, a POSITA would have had a reasonable expectation of success in integrating Chaudhri's well-known UI features into Wang's system to achieve the predictable benefit of improved usability.

Ground 1B: Claims 2-6 and 8 are obvious over Wang, Chaudhri, and Szu

• Prior Art Relied Upon: Wang (Application # 2015/0127156), Chaudhri (Application # 2017/0336958), and Szu (Application # 2006/0097176).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Wang and Chaudhri by adding the teachings of Szu. Dependent claim 2 requires the camera system to include a thermal camera. Petitioner asserted that Szu disclosed the use of a thermal camera for telemedicine to "image a patient's self-emitted heat radiation" for screening and diagnostic purposes. The argument was that adding Szu's thermal camera to the base Wang/Chaudhri system was an obvious modification.
  • Motivation to Combine: A POSITA would be motivated to integrate Szu's thermal imaging capabilities into the Wang/Chaudhri telemedicine system to expand its diagnostic functions. This would enable physicians to remotely diagnose and monitor a wider range of conditions (e.g., cancers, as taught by Szu), thereby increasing the system's medical utility, reducing in-person visits, and saving costs.

Ground 1D: Claims 13-14 are obvious over Wang, Chaudhri, and Hamm

• Prior Art Relied Upon: Wang (Application # 2015/0127156), Chaudhri (Application # 2017/0336958), and Hamm (Application # 2013/0060576).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added the teachings of Hamm to the base Wang/Chaudhri combination. Claim 13 requires the user interface to display a plurality of selectable consultation types. Petitioner argued that Hamm taught a telemedicine system with a graphical user interface that allowed patients to search for physicians by "primary specialty" (a consultation type) and select a doctor from a displayed list to initiate a consultation.
  • Motivation to Combine: A POSITA would incorporate Hamm's physician lookup interface into the Wang/Chaudhri system to improve the quality of medical care. This would enable patients to search for and connect with physicians having the specific specialty required for their condition, a predictable improvement to the base system.

• Additional Grounds: Petitioner asserted additional obviousness challenges against the remaining claims based on the core Wang and Chaudhri combination in view of other tertiary references. These included: Parmanto (for touchscreen camera controls), Nusimow (for displaying a medical form), Lovhaugen (for prompting telephone number entry), Feng (for sending consultation requests via SMS with a URL), White (for adding a language translation service), and Galindo (for including a removable peripheral bay).

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued that discretionary denial under Fintiv was unwarranted. It asserted that the companion district court litigation was in a very early stage, with no substantive discovery or claim construction having occurred. With a trial date not set until August 2023, the Board’s Final Written Decision would issue months in advance. Petitioner also stated its intent to request a stay in the district court pending the IPR and stipulated it would not pursue the same invalidity grounds in court if the IPR was instituted.
• §325(d): Petitioner contended that denial under §325(d) was inappropriate because none of the prior art references relied upon in the petition were cited or considered by the examiner during the prosecution of the ’007 patent. Petitioner argued that its new combination of Wang and Chaudhri specifically taught the key limitation concerning the "preview" mode, which the applicant had used to overcome the examiner's rejections during prosecution. Therefore, the petition raised art and arguments that were not cumulative to those previously before the Office.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’007 patent as unpatentable.