Teladoc Health, Inc.

Patent Trials and Appeals Board

Mar 10, 2022

IPR2021-00871 (P.T.A.B. Mar. 10, 2022)

Trials@uspto.gov Paper 14 571-272-7822 Date: March 10, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD AMERICAN WELL CORPORATION, Petitioner, v. TELADOC HEALTH, INC., Patent Owner. IPR2021-00871 Patent 10,059,000 B2 Before LYNNE H. BROWNE, PATRICK R. SCANLON, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION Denying Petitioner’s Request for Rehearing of Decision Denying Institution of Inter Partes Review 37 C.F.R. § 42.71(d) IPR2021-00871 Patent 10,059,000 B2 2 I. INTRODUCTION American Well Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1-19 of U.S. Patent No. 10,059,000 B2 (Ex. 1001, “the ’000 patent”). Teladoc Health, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). On November 15, 2021, we issued a Decision Denying Institution of Inter Partes Review. Paper 9 (“Decision” or “Dec.”). Petitioner requests rehearing of our Decision. Paper 11 (“Rehearing Request” or “Reh. Req.”). For the reasons set forth below, Petitioner’s Rehearing Request is denied. II. ANALYSIS A. Legal Standards The applicable requirements for a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex IPR2021-00871 Patent 10,059,000 B2 3 Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019) (quoting Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229 (1938)). “The substantial evidence standard asks ‘whether a reasonable fact finder could have arrived at the agency’s decision.’” OSI Pharm., 939 F.3d at 1381-82 (quoting Gartside, 203 F.3d at 1312). B. Background Independent claim 1 of the ’000 patent recites, in pertinent part, “a server that contains a database that defines a first subset of said plurality of robots as associated with a first customer identification (ID) and a second subset of said plurality of robots as associated with a second customer ID” (“the database limitation”). Ex. 1001, 9:66-10:34. Independent claim 15 similarly recites “a server that contains a database that defines a first subset of said plurality of robots and a second subset of said plurality of robots” and “associating . . . the first subset of said plurality of robots with a first customer identification (ID) and the second subset of said plurality of robots with a second customer ID.” Id. at 11:17-26. The Petition asserts that claims 1-8 and 10-19 are unpatentable under 35 U.S.C. § 103(a) based on Wang-I1 and Johnson.2 Pet. 9-51. Regarding the database limitation of claim 1, the Petition primarily relies on Johnson as disclosing using identifiers (i.e., UDLs) to remotely manage, access, and control devices over a network. Id. at 22-23 (citing Ex. 1005 ¶¶ 30-55). In the Decision, we determined that the Petition failed to establish sufficiently that the combination of Wang-I and Johnson discloses the database limitation. Dec. 13-16. 1 US 2004/0162637 A1, published Aug. 19, 2004 (Ex. 1004). 2 US 2008/0077425 A1, published Mar. 27, 2008 (Ex. 1005). IPR2021-00871 Patent 10,059,000 B2 4 C. Petitioner’s Arguments on Rehearing Petitioner argues that the Decision “adopted Patent Owner’s flawed assertions regarding the scope of [the database limitation], which improperly added non-existent limitations and applied an overly narrow construction in its analysis of Ground 1.” Reh. Req. 1 (citing Dec. 13-15); see also id. at 3 (The Decision “appears to have implicitly applied a construction of the challenged claims that is overly narrow and contradicted by the plain language of independent claims 1 and 15.”). More particularly, Petitioner argues that the Decision adopted Patent Owner’s misrepresentation of the claim language “as associated with,” which improperly changed the words “as associated with” from an adverbial phrase into a transitive verb (“associating”), thereby splitting this single claim element into a requirement that the database must perform two distinct actions (“[1] defining subsets (groups) of robots, and [2] associating subsets of robots with a customer identification”). Id. at 2. Petitioner also argues that, under the plain language of the database limitation, “the verb ‘defines’ applies to the adverbial phrase ‘as associated with,’ and not the ‘subset of said plurality of robots’ or the ‘customer identification.’” Id. at 4. According to Petitioner, the database limitation “simply requires a database to perform a single action that defines associations between (i) a customer identification and (ii) a subset of a plurality of robots” and “does not require two separate actions of ‘[1] defining subsets (groups) of robots, and [2] associating subsets of robots with a customer identification.’” Id. (citing Pet. 21-31; Prelim. Resp. 28- 29; Dec. 14-16). For these reasons, Petitioner asserts that the Decision “overlooked or misapprehended the scope of” the database limitation. Id. at 3. IPR2021-00871 Patent 10,059,000 B2 5 Petitioner’s arguments are not persuasive. First, we disagree with Petitioner’s contention that the Decision adopted an improper construction of the database limitation. On the contrary, we noted that the parties agreed that formal claim construction was not necessary, and we declined to construe any claim language explicitly. Dec. 7-8 (citing Pet. 3; Prelim. Resp. 16). Furthermore, Petitioner only broadly cites pages 13-16 of the Decision and does not point to any specific language in the Decision supporting its contention that we implicitly adopted a flawed construction based on Patent Owner’s assertions. See Reh. Req. 1, 4, 7. Petitioner may be referring to the portion of the Decision that quoted Patent Owner’s argument that “Johnson associates each device with a UDL by associating the unique identifier of that device with the UDL, which does not disclose any concept of defining subsets (groups) of devices, and associating such subsets with the UDL,” and then stated “[w]e agree with Patent Owner.” Dec. 14 (quoting Prelim. Resp. 29). This portion of the Decision, however, merely conveys that we were persuaded by Patent Owner’s argument that Johnson fails to teach a first subset of devices associated with a first customer ID and a second subset of devices associated with a second customer ID. It does not indicate that we construed the database limitation in the manner Petitioner is now asserting. Also, the Decision did not turn on finding that the combination of Wang-I and Johnson failed to disclose a database that defined subsets of devices and associated the subsets with customer IDs as two separate actions. Instead, we determined that Petitioner, did “not explain sufficiently how one of ordinary skill in the art would have understood Johnson to teach that [the] multiple devices are divided into one subset associated with a first customer ID and another subset associated with a second customer ID.” Dec. 14-15. IPR2021-00871 Patent 10,059,000 B2 6 Second, we disagree with Petitioner’s contention that the database limitation “simply requires a database to perform a single action that defines associations between (i) a customer identification and (ii) a subset of a plurality of robots” as opposed to “two separate actions of ‘[1] defining subsets (groups) of robots, and [2] associating subsets of robots with a customer identification.’” See Reh. Req. 4. As noted above, the database limitation recites “a database that defines a first subset of said plurality of robots as associated with a first customer identification (ID) and a second subset of said plurality of robots as associated with a second customer ID.” Ex. 1001, 9:66-10:34. The ordinary and customary meaning of this language is that the database defines a first subset of robots that is associated with a first customer ID and a second subset of robots that is associated with a second customer ID-not that the database defines only associations between the subsets of robots and the customer IDs. It is important to note that, contrary to Petitioner’s assertion, we do not determine that the ordinary and customary meaning of the database limitation requires two distinct actions of first defining the subsets of robots and then separately associating the subsets with a customer IDs. Petitioner concedes that the Petition did not state expressly that the database limitation requires the database to perform the single action of defining associations between the subsets of robots and the customer IDs, but argues that this position was “reflected in both the Petition and the supporting expert declaration.” Reh. Req. 5. By way of example, Petitioner notes that the Petition asserts that one of ordinary skill in the art would have been prompted to modify Wang-I’s server to incorporate a database that associates the robots 12 with customer IDs, including a first subset of the robots 12 associated with a first customer identification and a second subset of the IPR2021-00871 Patent 10,059,000 B2 7 robots 12 associated with a second customer ID, as taught by Johnson. Id. (quoting Pet. 28). This passage from the Petition, however, does not support the position that the database performs the action of defining associations between the subsets of robots and the customer IDs. Instead, it indicates that the database performs the action of associating the robots with customer IDs, which is actually the second part of what Petitioner now alleges to be Patent Owner’s flawed construction. Indeed, the Petition contains several instances of referring to associating robots with identifiers rather than merely defining associations. See, e.g. Pet. 24 (“Johnson additionally teaches that subsets of devices can be associated with different UDL identifiers.”), 25 (“Johnson’s disclosure of UDLs representing various individuals or entities, and of devices being associated with each UDL . . . , teaches a first subset of devices associated with a first customer ID and a second subset of devices as associated with a second customer ID.”), 28 (“Johnson teaches that ‘[b]y associating the device 502 with at least one UDL 512, a user (e.g. owner, etc.) associated with the UDL 512 may access the device 502 over the network 506.’”). Petitioner also appears to contradict its own arguments by asserting in the Rehearing Request that “the Petition and supporting expert declaration (AW-1003) are replete with discussion of how the Johnson reference teaches defining subsets of devices associated with customer IDs.” Reh. Req. 7-8 (emphasis added). This statement is inconsistent with argument that the database limitation requires defining associations as opposed to defining subsets that are associated with customer IDs. Furthermore, Petitioner’s arguments do not appear to address the fact that independent claim 15 recites accessing a server that contains a database IPR2021-00871 Patent 10,059,000 B2 8 that defines first and second subsets of robots and a separate step of associating the first subset with a first customer ID and the second subset with a second customer ID. Ex. 1001, 11:17-26. The Petition, however, merely asserts that these claim 15 limitations are satisfied by the combination of Wang-I and Johnson for the same reasons asserted in connection with claim 1. Pet. 49. The Rehearing Request does not explain how the contention that the database only performs the single action of defining associations applies to the separate method steps of claim 15. In addition, we disagree with Petitioner’s argument that the supporting declaration was overlooked or misapprehended in the Decision. See Reh. Req. 8-10. On the contrary, we did consider the expert testimony but did not credit it because we found the testimony to merely repeat the Petition’s assertions. Dec. 15-16. For the above reasons, we determine Petitioner has not carried its burden of showing that we misapprehended or overlooked any matter or that the Decision denying institution of inter partes review was an abuse of discretion. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Rehearing Request is denied. IPR2021-00871 Patent 10,059,000 B2 9 FOR PETITIONER: John C. Phillips Christopher C. Hoff FISH & RICHARDSON P.C. phillips@fr.com hoff@fr.com FOR PATENT OWNER: Michael Solomita Jaime L. Stark NORTON ROSE FULBRIGHT US LLP michael.solomita@nortonrosefulbright.com jaime.stark@nortonrosefulbright.com