American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2022-00038
• Patent #: 8,179,418
• Filed: October 13, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 6-7 and 9-24

2. Patent Overview

• Title: Robotic Based Health Care System
• Brief Description: The ’418 patent discloses a telemedicine system where a mobile robot at a patient site establishes a videoconferencing session with a clinician at a remote station. The system includes a user interface at the robot site for entering medical information.

3. Grounds for Unpatentability

Ground 1: Claims 9 and 10 are obvious over Wang421 in view of Clements.

• Prior Art Relied Upon: Wang421 (Application # 2004/0143421) and Clements (Application # 2006/0271400).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang421 taught a complete robotic telepresence system with a mobile robot at a "robot site" and a remote station for control and videoconferencing, meeting most limitations of independent claim 1. However, Petitioner contended the key limitation added during prosecution—a user interface located at the robot site for entering medical information—was taught by Clements. Clements disclosed medical carts at a patient site with computers and user interfaces for nurses to enter patient data into a remote medical records system.
  • Motivation to Combine: A POSITA would combine Wang421 and Clements to improve clinical workflow. Adding the data entry computer from Clements to the robot site of Wang421 would allow a nurse to enter patient information without occupying the mobile robot’s interface, freeing the robot for its primary teleconferencing function with the remote physician. This separation of tasks would be a predictable and efficient design choice.
  • Expectation of Success: Success would be expected because both systems relied on conventional network technology to connect local devices (robots, computers) to remote stations and servers, making integration straightforward.

Ground 2: Claims 6 and 11-20 are obvious over Wang421 and Clements in view of Hampton.

• Prior Art Relied Upon: Wang421 (Application # 2004/0143421), Clements (Application # 2006/0271400), and Hampton (Patent 6,594,634).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Wang421 and Clements and added Hampton to teach the limitations of a "patient management plan" and "medical tool" recited in independent claim 11 and dependent claim 6. Hampton disclosed a handheld computer for emergency medical technicians with a GUI that included structured tools for patient care. Specifically, Hampton taught a drug guideline window with a dosage calculator, which Petitioner argued met the "patient management plan" limitation.
  • Motivation to Combine: A POSITA would be motivated to incorporate Hampton's GUI features into the user interface of the Wang421/Clements system. Clements taught the importance of managing medication dosages, and Hampton provided a well-defined GUI tool for that exact purpose. Integrating Hampton’s dosage calculator would be a simple modification to improve the functionality and safety of the patient-side data entry system, making it more useful in critical care situations like stroke treatment, a focus of the ’418 patent.
  • Expectation of Success: A POSITA would reasonably expect success in adding Hampton's software features to the computer-based system of Clements, as it was a conventional software modification.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 7, 21, and 22-24 by adding Brown (Patent 5,997,476) and Brun (WO 2007/009895) to the primary combination. Brown was cited for its teaching of remote patient monitoring systems with script-based questionnaires (a "medical tool"), and Brun was cited for disclosing the well-known NIH Stroke Scale (NIHSS) questionnaire, thereby teaching a "stroke evaluation" tool.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in a very early stage with minimal discovery exchanged and a trial date set for August 2023. Petitioner contended the Board's Final Written Decision (FWD) would issue in April 2023, well in advance of the trial, thereby promoting judicial efficiency.
• §325(d) (Same or Substantially Same Art): Petitioner argued that denial under §325(d) was inappropriate. While Wang421 and Clements were cited in an Information Disclosure Statement (IDS) during prosecution, they were never substantively considered or used in a rejection by the Examiner. The other references (Hampton, Brown, Brun) were not before the Examiner at all. Petitioner asserted that its proposed combinations were not cumulative over the art the Examiner did rely on and that they teach the very limitations the applicant added to secure allowance.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 6-7 and 9-24 of the ’418 patent as unpatentable.