American Well Corp v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2022-00039
• Patent #: 10,471,588
• Filed: October 12, 2021
• Petitioner(s): American Well Corporation
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 4

2. Patent Overview

• Title: ROBOTIC BASED HEALTH CARE SYSTEM
• Brief Description: The ’588 patent describes a healthcare system where a mobile robot at a patient site establishes a videoconferencing session with a remote station. The allegedly novel aspect involves a computer at a nurse's station, separate from the robot, which allows a user to enter patient and medical data via a user interface for display at the remote station.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wang, Clements, and Hampton - Claim 4 is obvious over Wang421 in view of Clements and 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: Petitioner argued that the combination of these references teaches every limitation of the challenged claim. Wang421 was asserted to disclose the foundational robotic telepresence system, including a mobile robot at a patient site with a camera and monitor, and a remote control station for a physician, all connected via a network. Petitioner contended that Clements taught the key limitation added during prosecution: a separate computer at a patient clinic or nurse’s station. Clements’ system included “nurse computers or workstations” and patient-side computer carts for entering medical administration data, which were separate from but networked with the remote physician’s station. To address the user interface limitations, Petitioner argued Hampton disclosed a handheld computer for emergency responders with a user interface displaying a "narrative field" for patient information and a "detail field" for specific medical data like blood pressure. The dependent claim 4 limitation, "patient statistics," was allegedly disclosed by both Wang421 (storing "medical files") and Clements (storing "electronic medical records"). Petitioner asserted that, based on the ’588 patent’s figures and its parent patent, a POSITA would understand "patient statistics" to simply mean basic patient information like name, age, gender, and weight.
  • Motivation to Combine: Petitioner asserted multiple motivations for the combination. A person of ordinary skill in the art (POSITA) would combine Wang421 and Clements, as both address telepresence medicine. A POSITA would find it obvious to add Clements’ separate data-entry computer to Wang421’s robotic system to improve workflow efficiency, allowing a nurse to enter patient data without interrupting the robot's primary teleconferencing function. It would have been a simple and predictable modification to incorporate Hampton’s well-known user interface design—featuring distinct patient information and medical data fields—into the user interface of Clements’ computer to make data entry more organized and useful.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involves integrating known components (a robotic telepresence system, a standard networked computer for data entry, and a conventional graphical user interface) that would operate according to their established principles.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §314(a) (Fintiv factors) and §325(d) (Advanced Bionics framework). Regarding Fintiv, Petitioner asserted that the parallel district court litigation was in an early stage with minimal discovery exchanged and a trial date set far in the future (August 2023), ensuring a Final Written Decision would issue months prior. Petitioner contended that institution would simplify issues for trial and increase the likelihood of a stay. Regarding §325(d), Petitioner argued that the asserted ground was not the same or substantially the same as art or arguments previously presented to the Office. Although Wang421 and Clements were cited in an Information Disclosure Statement, they were never substantively applied by the Examiner in a rejection. Furthermore, the Hampton reference was never before the Examiner. Petitioner contended this new combination and argument directly addressed the specific limitations added to overcome prior art during prosecution, showing the Examiner erred in allowing the patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 4 of the ’588 patent as unpatentable.