PTAB

IPR2022-00445

Avail Medsystems Inc v. Teladoc Health Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Remote Controlled Robot System That Provides Medical Images
  • Brief Description: The ’679 patent discloses a telemedicine system featuring a remote-controlled robot at a patient site and a remote control station for a medical professional. The system facilitates a video conference while simultaneously displaying images of the patient, the remote professional, and a medical image from a device connected to the robot via an auxiliary port.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hennion, Remy, and Akihiro - Claims 1, 2, 4-6, and 8-10 are obvious over Hennion in view of Remy and Akihiro.

  • Prior Art Relied Upon: Hennion (Application # 2003/0144768), Remy (Application # 2005/0052527), and Akihiro (Japanese Patent No. 2004-187126).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hennion disclosed the core elements of the claimed telemedicine system, including a robotic tele-echography system with a patient-side robot (camera, monitor, microphone, speaker) and a remote station for a doctor to control a probe and view images. However, Hennion did not explicitly disclose connecting its echographic probe via an auxiliary port or displaying the remote doctor’s own image at the remote station. Petitioner contended that Remy, which taught a mobile medical video system, supplied the missing "auxiliary video port" for connecting various medical imaging devices. Further, Petitioner asserted that Akihiro taught a videoconferencing user interface for medical services that simultaneously displayed images of both the doctor and the patient, fulfilling the claimed multi-view display limitation.
    • Motivation to Combine: A POSITA would combine these references to enhance Hennion's system. Incorporating Remy's auxiliary port would add flexibility, allowing for the use of various or upgraded medical imaging devices. Adding Akihiro’s user interface design would improve the video conference by providing the remote doctor with a "confidence monitor" to ensure their own video feed was clear, a well-known benefit in videoconferencing.
    • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success, as combining these known elements involved straightforward engineering integrations to achieve predictable benefits in the established field of telemedicine.

Ground 2: Obviousness over Wang and Remy - Claims 1, 5, 6, 8, and 10 are obvious over Wang in view of Remy.

  • Prior Art Relied Upon: Wang (Application # 2005/0204438) and Remy (Application # 2005/0052527).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Wang, an abandoned application from the same original assignee as the ’679 patent, disclosed a nearly identical system. Wang taught a remote-controlled robot system with a patient-side robot (camera, monitor, microphone, speaker) and a remote station where a doctor could view multiple video feeds simultaneously, including a "robot view field" and a "station view field." Wang even disclosed splitting a view field to display both a video image and an electronic medical record, effectively teaching the three-way display. The only key element Petitioner argued was missing from Wang was the explicit disclosure of an "auxiliary video port." Remy, as in Ground 1, supplied this teaching with its disclosure of a mobile platform having a plurality of auxiliary inputs for connecting medical imaging devices like endoscopes.
    • Motivation to Combine: A POSITA would combine Wang and Remy to gain the known benefits of modularity and expanded functionality. Adding Remy's auxiliary port to Wang's already sophisticated system would allow for the connection of various diagnostic tools beyond the fixed monitoring devices disclosed in Wang, thereby increasing the system's clinical utility and future-proofing the design.
    • Expectation of Success: Success would be expected because Wang's robot already included an I/O port and ran on standard operating systems (e.g., LINUX) capable of supporting auxiliary inputs. Integrating Remy's concept would be a simple and predictable modification.

  • Additional Grounds: Petitioner asserted additional obviousness challenges that built upon these two core combinations. Grounds added Simmons (Patent 5,701,904) to teach using a specific medical device (a video otoscope) with the auxiliary port for claim 3. Other grounds added Taubman (Patent 7,889,791) to teach allocating more network bandwidth or a higher frame rate to the medical image stream than the patient image stream for claims 7 and 11.

4. Arguments Regarding Discretionary Denial

  • §325(d) Denial: Petitioner argued against discretionary denial under §325(d), asserting that the core prior art and arguments were not previously presented to the Office. Hennion, the primary reference in the first set of grounds, was never cited or considered during prosecution. While Wang was cited in a large Information Disclosure Statement (IDS) with over 300 other references, the examiner never discussed it or provided any indication of substantive review. Petitioner contended this lack of discussion, especially given Wang's extreme similarity to the ’679 patent, constituted a material examiner error.
  • Fintiv Factors: Petitioner argued that the Fintiv factors strongly favored institution. The parallel district court litigation was in its earliest stages, with a trial date scheduled for October 2023, nearly two years after the petition filing and well after the statutory deadline for a Final Written Decision (FWD). Investment in the litigation was described as minimal, with no infringement or invalidity contentions yet served. Petitioner also highlighted the strong merits of the petition as a factor favoring institution.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and cancellation of claims 1-11 of Patent 8,849,679 as unpatentable under 35 U.S.C. §103.