Avail Medsystems Inc v. Teladoc Health Inc

1. Case Identification

• Case #: IPR2022-00554
• Patent #: 9,160,783
• Filed: February 7, 2022
• Petitioner(s): Avail Medsystems, Inc.
• Patent Owner(s): Teladoc Health, Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Robot System That Operates Through a Network Firewall
• Brief Description: The ’783 patent discloses systems for remotely controlling a robot, equipped with a camera and monitor, through a communication network that often traverses a firewall. The invention focuses on network-level control features, such as establishing communication for a designated time period, using specific IP address connection strategies, and instructing peer-to-peer connections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Perry/Hennion - Claims 1, 3, 5, 8, 10-14, and 17 are obvious over Perry in view of Hennion.

• Prior Art Relied Upon: Perry (Application # 2006/0064440), Hennion (Application # 2003/0144768).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Perry, which discloses a system for remotely operating semiconductor manufacturing tools behind firewalls, teaches the core elements of independent claims 1 and 8. Specifically, Perry’s use of "sessions" managed by an administrator with a defined "Session Start Time" and "Session Stop Time" was alleged to disclose a communication server establishing communication for a "designated time period that defines an entire allowable time interval." For limitations requiring the transmission of control commands and responsive robot movement, Petitioner cited Hennion. Hennion explicitly taught transmitting data related to position and force over a network to control a remote echographic probe, which would be recognized as a form of robot control command.
  • Motivation to Combine: A POSITA would combine Hennion’s explicit teaching of control commands with Perry’s remote operation system as a known and necessary method to effectuate the remote control that Perry already disclosed. This combination would simply apply a conventional technique to an existing system.
  • Expectation of Success: This combination would have a high expectation of success, as it involved implementing a well-understood method (transmitting control commands) to achieve a predictable result (remote operation of a tool).

Ground 2: Obviousness over Perry/Hennion/Chaturvedi - Claims 18, 19, 21, and 22 are obvious over Perry and Hennion in further view of Chaturvedi.

• Prior Art Relied Upon: Perry (Application # 2006/0064440), Hennion (Application # 2003/0144768), and Chaturvedi (Patent 7,778,187).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built on the Perry/Hennion combination to address independent claim 18, which recites a server instructing a remote station and robot to establish a peer-to-peer (P2P) connection through firewalls. Petitioner contended that Chaturvedi taught a conventional hybrid P2P network where an "access server" provides routing information to endpoints, enabling them to communicate directly. Petitioner mapped this teaching directly to claim 18’s limitation of a server instructing endpoints to "essentially simultaneously send peer to peer packets to each other."
  • Motivation to Combine: A POSITA would combine Chaturvedi’s P2P architecture with the Perry/Hennion system to gain the known benefits of P2P networking, such as direct communication and reduced load on a central server, while using the server for connection setup and firewall traversal.
  • Expectation of Success: Implementing a well-known hybrid P2P connection method within Perry's existing networked system would have been a straightforward modification yielding the predictable result of direct endpoint communication.

Ground 3: Obviousness over Wang/Yuko/Chaddha - Claims 1, 3, 5, and 8-11 are obvious over Wang in view of Yuko and Chaddha.

• Prior Art Relied Upon: Wang (Application # 2006/0052676), Yuko (Japanese Patent No. 2004-242244), and Chaddha (Patent 8,612,590).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented this as an alternative invalidity theory based on different primary art. Wang, an abandoned application from the same inventor with a specification similar to the ’783 patent, disclosed a basic remote-controlled robot system. Yuko was added for its teaching of using an intermediary server to receive control commands from a mobile terminal and relay them to a robot, which periodically polls the server for instructions. Chaddha was cited for its disclosure of managing "scheduled access" to network resources (including servers) with defined "start time" and "end time" controls, fulfilling the "designated time period" limitation.
  • Motivation to Combine: A POSITA would combine Yuko’s server-based architecture with Wang’s system to add the benefits of centralized control, authentication, and scalability. Subsequently, a POSITA would incorporate Chaddha’s scheduled access management to manage control of the robot among multiple users, thereby preventing conflicts and ensuring orderly operation, a known problem in multi-user systems.
  • Expectation of Success: Combining these known network control and access management techniques was conventional and would predictably result in a more robust, scalable, and manageable remote robotic system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the Perry/Hennion and Wang/Yuko/Chaddha combinations, supplemented with references like Vu (for network polling and random port usage), Crosskey (for time-based billing), and Derby (for closed-loop motion control).

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued that discretionary denial under §325(d) was unwarranted because the petition relied on art and arguments not previously considered by the USPTO. The core references—Perry, Hennion, Chaturvedi, Yuko, and Chaddha—were neither cited nor discussed during prosecution. Although Wang was cited in an IDS, it was never applied by the examiner.
• Fintiv Factors: Petitioner contended that the Fintiv factors weighed strongly in favor of institution. The parallel district court trial was scheduled for October 2, 2023, more than a year and a half from the petition filing date and well after the statutory deadline for a Final Written Decision (FWD). Furthermore, investment in the parallel litigation was minimal, with the case being in its earliest stages with no infringement or invalidity contentions served.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-22 of Patent 9,160,783 as unpatentable.