American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2021-00871
• Patent #: 10,059,000
• Filed: May 4, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): John Cody Herzog, et al. (Teladoc Health)
• Challenged Claims: 1-19

2. Patent Overview

• Title: Server Connectivity Control for a Tele-presence Robot
• Brief Description: The ’000 patent describes a telepresence system comprising a plurality of remote-controlled robots and a plurality of remote control stations. The purported innovation is a central server containing a database that manages connectivity between stations and robots by associating subsets of robots with specific customer identifications.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang-I and Johnson - Claims 1-8 and 10-19 are obvious over Wang-I in view of Johnson.

• Prior Art Relied Upon: Wang-I (Application # 2004/0162637) and Johnson (Application # 2008/0077425).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang-I, by the same inventors as the ’000 patent, disclosed nearly all elements of the claimed system, including a plurality of telepresence robots, remote stations, and a server-like "arbitrator" for managing connections. However, Wang-I did not explicitly teach using a database to associate subsets of robots with different customer IDs or a manager station to edit these associations. Petitioner contended that Johnson supplied these missing elements. Johnson taught a server system for managing networked devices (e.g., cameras) that used a database to associate groups of devices with unique identifiers ("UDLs," equivalent to customer IDs). Johnson also disclosed that a user at a remote computer (a manager control station) could access the server to configure, update, and edit these device-to-ID associations.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Johnson's advanced, server-based device management system with Wang-I's telepresence robot system. The motivation was to apply known techniques for network device management to improve the functionality of a known telepresence system, yielding predictable benefits such as improved access control, security, and user convenience in managing a fleet of robots for different customers. This combination represented the application of a known technique to a known system to achieve predictable results.
  • Expectation of Success: A POSITA would have a high expectation of success, as Johnson’s teachings were applicable to any network-accessible device, like the robots in Wang-I, and involved standard server and database technologies.

Ground 2: Obviousness over Wang-I, Johnson, and Wang-II - Claims 5, 6, and 18 are obvious over Wang-I, Johnson, and Wang-II.

• Prior Art Relied Upon: Wang-I (Application # 2004/0162637), Johnson (Application # 2008/0077425), and Wang-II (Application # 2005/0122390).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Wang-I and Johnson by adding Wang-II to address specific privilege-related claims. Petitioner asserted that Wang-II taught a privilege system where a remote user must send an "access request" to a robot to view video or hear audio, which can then be granted by a person at the robot's location. This addressed claim limitations related to privileges for viewing video (claim 5) and hearing audio (claim 6) from the robot.
  • Motivation to Combine: A POSITA would integrate the specific privacy-enhancing privilege features of Wang-II into the broader robot management system of Wang-I and Johnson. The motivation was to address the known need for patient privacy in a telepresence context by providing a mechanism for the patient to control the initiation of audio/video communication, a well-understood problem with a known solution.

Ground 3: Obviousness over Wang-I, Johnson, and VanKommer - Claims 2-8, 10, and 16-19 are obvious over Wang-I, Johnson, and VanKommer.

• Prior Art Relied Upon: Wang-I (Application # 2004/0162637), Johnson (Application # 2008/0077425), and VanKommer (Patent 6,584,376).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented the core combination with VanKommer to strengthen the teachings related to a plurality of specific user privileges. Petitioner argued that VanKommer explicitly disclosed a mobile robot with a "user data bank" (database) that stores specific "rights and privileges" for each user. These privileges included the right to move the robot, to communicate through it, and to administer the robot (e.g., grant rights to others), directly mapping to the privilege limitations in claims 2-8, 10, and 16-19.
  • Motivation to Combine: A POSITA would incorporate the explicit and granular privilege management system from VanKommer into the Wang-I/Johnson system. The motivation was to provide more precise and detailed control over individual user access to the robots, which is a natural and obvious improvement for a multi-user, multi-robot system.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Wang-III (Application # 2004/0167666) for its teachings on "observational mode" privileges and Wang-IV (Application # 2007/0291109) for its teachings on privileges related to accessing auxiliary devices connected to the robot.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was not warranted. The parallel district court litigation was in a very early stage, with a trial date set more than two years out, ensuring a Final Written Decision (FWD) from the Board would issue well in advance. Petitioner’s investment in the inter partes review (IPR) was asserted to be more substantial than the parties' minimal investment in the nascent litigation.
• Petitioner also argued against denial under 35 U.S.C. §325(d). Although several "Wang" references were submitted to the USPTO during prosecution, they were part of a submission of over 1,100 references that effectively buried their relevance. Critically, the Johnson reference, which was central to every ground, was never considered by the Examiner. Therefore, the combinations and arguments in the petition were new and substantively different from what the Examiner considered.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-19 of the ’000 patent as unpatentable.