American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2021-00933
• Patent #: 7,761,185
• Filed: May 13, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Remote Presence Display Through Remotely Controlled Robot
• Brief Description: The ’185 patent describes a medical system for remote patient consultation. The system includes a mobile robot deployed in a patient's environment and a remote station for a healthcare practitioner, enabling two-way videoconferencing and allowing the practitioner to view both the patient and a separate patient monitor via the robot's camera.

3. Grounds for Unpatentability

Ground 1: Anticipation over Wang438 - Claims 1-5 are anticipated by Wang438 under 35 U.S.C. §102.

• Prior Art Relied Upon: Wang438 (Application # 2005/0204438).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang438, which discloses a robotic telepresence system nearly identical to that of the ’185 patent, teaches every limitation of claims 1-5. The central contention was that the "patient monitor" limitation, which the patent owner relied upon for allowance, is expressly disclosed in Wang438. Petitioner asserted that while the examiner incorrectly focused on Wang438's display user interface, the true corresponding element is Wang438’s "medical monitoring device 50" (e.g., a pulse oximeter or EKG monitor), which is physically separate from the robot and displays patient information. Wang438 also disclosed the mobile robot with camera, the remote station, and a server coupled to both, meeting the remaining claim limitations.

Ground 2: Anticipation over Wang128 - Claims 1 and 3-6 are anticipated by Wang128 under 35 U.S.C. §102.

• Prior Art Relied Upon: Wang128 (Application # 2007/0291128).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang128, which also discloses a robotic telepresence system, anticipates the challenged claims. In this ground, the claimed "patient monitor" was mapped to Wang128’s "electronic device 72," such as a laptop or digital camera, which can be connected to the robot's I/O ports to transmit images or video. Petitioner contended this device displays patient information (e.g., medical images). Wang128 further taught the mobile robot with a monitor and cameras, a remote station with its own monitor and camera for videoconferencing, and a broadband network connecting them, thereby meeting all limitations of the challenged claims.

Ground 3: Obviousness over multiple references - Claims 1-13 are obvious over Wang438, David, and Reeder under 35 U.S.C. §103.

• Prior Art Relied Upon: Wang438 (Application # 2005/0204438), David (Patent 5,544,649), and Reeder (Application # 2002/0044059).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that a person of ordinary skill in the art (POSITA) would have combined the teachings of the references to arrive at the claimed invention. The combination started with the telepresence robot system of Wang438. Reeder was introduced as teaching a more sophisticated patient monitor—its "computer system 10"—which provides improved data access, electronic charting, and patient education tools. David was cited for its teaching of a remote healthcare system where a camera is explicitly oriented to view both the patient and the screen of the patient monitor.
  • Motivation to Combine: A POSITA would combine Wang438 and Reeder by substituting Reeder's advanced patient monitoring system for Wang438’s basic one to gain the predictable benefits of improved data access and functionality; Wang438 itself taught coupling its robot to medical monitoring devices. A POSITA would have been further motivated to incorporate David's teaching of aiming the robot's camera at the patient monitor to serve as a useful backup for viewing patient data if the direct digital transmission from the monitor was interrupted or failed, a known problem-solving technique.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved the simple substitution of one known type of patient monitor (Reeder) for another (Wang438's device 50) and the application of a known technique (viewing a monitor with a camera per David) to a known system (Wang438's robot) to achieve predictable results.
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) based on the combination of Wang438 and David.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under either 35 U.S.C. §314(a) (Fintiv) or §325(d).
• Fintiv Factors: Petitioner contended that denial under Fintiv was unwarranted because the parallel district court litigation was in a very early stage, with no claim construction or significant discovery completed. A final written decision in the inter partes review (IPR) would issue approximately nine months before the earliest possible trial date, favoring institution and promoting judicial efficiency.
• §325(d) Factors: Petitioner argued against denial under §325(d), stating that the primary prior art combinations and arguments were not previously considered by the USPTO. Specifically, neither Wang128 nor Reeder was before the examiner. Furthermore, Petitioner argued the examiner committed a material error in allowing the patent by failing to recognize that Wang438's "medical monitoring device 50" was the claimed "patient monitor," which was the very element asserted to be missing from the prior art during prosecution.

5. Relief Requested

• Petitioner requested the institution of an IPR and cancellation of claims 1-13 of the ’185 patent as unpatentable.