Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Date: February 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN WELL CORPORATION,
`Petitioner,
`v.
`TELADOC HEALTH, INC.,
`Patent Owner.
`
`IPR2021-00749
`Patent 10,471,588 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, KARA L. SZPONDOWSKI, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 22
`Date: February 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN WELL CORPORATION,
`Petitioner,
`v.
`TELADOC HEALTH, INC.,
`Patent Owner.
`
`IPR2021-00749
`Patent 10,471,588 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, KARA L. SZPONDOWSKI, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00749
`Patent 10,471,588 B2
`
`INTRODUCTION
`I.
`We authorized Petitioner American Well Corporation (“Petitioner”) to
`file a Motion to Submit Supplemental Information (Paper 13, “Motion”),
`Patent Owner TelaDoc Health, Inc. (“Patent Owner”) to file an Opposition
`(Paper 14, “Opp.”), and Petitioner to file a Reply (Paper 16, “Reply”).
`Petitioner seeks authorization to submit the Supplemental Declaration of Dr.
`Gregory S. Fischer as Exhibit 1021. Motion 1. Upon consideration of the
`documents and the parties’ arguments, and for the reasons stated below, the
`Motion is granted.
`
`II. BACKGROUND
`We instituted trial of all claims and on all grounds on September 29,
`2021. Paper 9 (“Inst. Dec.”). However, in order to provide the parties with
`insight into the Board’s analysis of all grounds, we determined that the
`Petition, supported by the preliminary record, had failed to persuade us of a
`reasonable likelihood of prevailing with respect to some of the asserted
`claims and grounds. In particular, we found that the Petition had not
`sufficiently shown, for purposes of institution, that the combination of
`Wang421 and Clements teaches claim 4. Inst. Dec. 54–58. Along with its
`Petition, Petitioner submitted the Declaration of Dr. Gregory S. Fischer
`(“Fischer Declaration”). Ex. 1003.
`Petitioner now seeks to submit the Supplemental Declaration of Dr.
`Gregory S. Fischer (Exhibit 1021) (“Supplemental Fischer Declaration”),
`which Petitioner contends “would resolve confusion stemming from an
`inadvertent reference to claim 11 of the ’588 Patent in the Petition and in Dr.
`Fischer’s original declaration.” Motion 1 (footnote omitted). Petitioner
`contends that “[t]he Board specifically cited to this confusion as the basis for
`
`2
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`IPR2021-00749
`Patent 10,471,588 B2
`why Petitioner had not demonstrated a reasonable likelihood that claim 4 is
`unpatentable,” and the proposed supplemental information is therefore
`relevant to that claim. Id. at 5. Petitioner further contends that submission
`of the Supplemental Fischer Declaration will neither prejudice Patent Owner
`nor delay the proceedings. Id. at 5–7.
`Patent Owner responds that Petitioner “attempts to change, not
`supplement, its arguments and evidence in order to correct the identified
`deficiency in the Petition that Petitioner could and should have addressed at
`the time the Petition was filed.” Opp. 1. Patent Owner argues that
`“[a]llowing Petitioner to change its arguments and evidence in this manner
`would not only violate the statutory particularity requirement of § 312(a)(3),
`but would also prejudice Patent Owner.” Id.
`III. ANALYSIS
`Petitioner bears the burden of proof to establish that it is entitled to the
`requested relief. 37 C.F.R. § 42.20. The requirements for submission of
`supplemental information under 37 C.F.R. § 42.123(a) are as follows:
`(a) Motion to submit supplemental information. Once a trial has
`been instituted, a party may file a motion to submit
`supplemental information in accordance with the following
`requirements:
`
`(1) A request for the authorization to file a motion to submit
`supplemental information is made within one month of the date
`the trial is instituted.
`
`(2) The supplemental information must be relevant to a claim
`for which the trial has been instituted.
`
`
`
`With respect to the first prong, Petitioner requested authorization to
`file a motion to submit supplemental information on October 21, 2021,
`
`3
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`IPR2021-00749
`Patent 10,471,588 B2
`which is less than one month after the date we entered our Institution
`Decision. See Mot. 8; Ex. 1022. Patent Owner does not dispute that the
`request for authorization was made within the one-month time period. See
`generally Opp. Thus, Petitioner’s request was timely under 37 C.F.R.
`§ 42.123(a)(1).
`As to the second prong, Petitioner contends the Supplemental Fischer
`Declaration “is relevant to the invalidity of claim 4 because it resolves
`confusion regarding Dr. Fischer’s reference to missing claim 111 of the ’588
`Patent.” Motion 5.
`The Board has allowed the submission of supplemental information
`where the information did not change the grounds of patentability authorized
`in the proceeding, and did not change the evidence initially presented in the
`petition in support of those grounds. See, e.g., DraftKings Inc., v.
`Interactive Games LLC, IPR2020-01110, Paper 16 at 9 (PTAB Mar. 11,
`2021) (granting entry of supplemental information that “simply correct[ed]
`typographical or clerical errors in the [original declaration], without adding
`any substantive information to what was intended to be included in the
`declaration, as reflected in the declaration itself”); Group III Int’l, Inc. v.
`Targus Int’l, LLC, IPR2021-00371, Paper 33 at 6 (PTAB Sept. 17, 2021)
`(granting entry of supplemental information where “the supplemental
`information . . . does not change the grounds of unpatentability authorized in
`this proceeding, nor does it change the evidence initially presented in the
`Petition to support those grounds of unpatentability”); MED-EL
`
`
`1 We note that the Petition and the Fischer Declaration refer to two claims
`that do not exist in the ’588 patent, namely claims 11 and 12. Pet. 53;
`Ex. 1003 ¶ 120.
`
`4
`
`
`
`IPR2021-00749
`Patent 10,471,588 B2
`Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics AG, IPR2020-
`00190, Paper 24 at 5 (PTAB Aug. 10, 2020) (granting motion to submit
`supplemental information where petitioner was “merely attempting to clarify
`arguments made in the Petition, not change its theories of unpatentability”);
`Pac. Mktg Int’l, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23 at 4
`(PTAB Dec. 2, 2014) (granting entry of supplemental testimony that “does
`not operate to change any grounds of unpatentability . . . nor does it change
`the type of evidence initially presented in the Petition to support those
`grounds of unpatentability”); Palo Alto Networks, Inc. v. Juniper Networks,
`Inc., IPR2013-00369, Paper 37 at 5 (PTAB Feb. 5, 2014) (granting entry of
`supplemental information confirming the public accessibility of the prior art,
`and where it did not change the grounds of unpatentability authorized in the
`proceeding or change the evidence initially presented in the petition to
`support the grounds of unpatentability).
`In contrast, the Board has denied such motions where the petitioner
`sought to use the supplemental information to refine or bolster challenges
`originally presented in the petition, based on information in the preliminary
`response or institution decision. See, e.g., Ooma, Inc. v. Deep Green
`Wireless LLC, IPR2017-01541, Paper 14 at 3–4 (PTAB Jan. 23, 2018)
`(denying entry of supplemental testimony regarding the level of ordinary
`skill in the art; “Supplemental information is not intended to provide a
`petitioner an advantageous ‘wait-and-see’ opportunity to use a patent
`owner’s preliminary response and our decision on institution in order to
`refine or bolster petitioner’s position”); Merck Sharp & Dohme Corp. v.
`Microspherix LLC, IPR2018-00393, Paper 21 at 3 (PTAB Sept. 10, 2018)
`(denying motion to submit supplemental information where petitioner
`
`5
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`IPR2021-00749
`Patent 10,471,588 B2
`seeking to bolster its petition by responding to issues raised in the patent
`owner’s preliminary response and issues raised in the institution decision,
`and where petitioner was further trying to modify the reason to combine the
`references disclosed in the petition); W. Digital Corp. v. Spex Techs., Inc.,
`IPR2018-00082, Paper 22 at 9 (PTAB July 23, 2018) (denying entry of
`supplemental information where the supplemental information “presents a
`new ground of unpatentability based on different disclosures of [the asserted
`prior art reference] in an attempt to correct a weakness of the Petition we
`noted in our Decision on Institution”); Laboratoire Francais Du
`Fractionnment et Des Biotechnologies S.A. v. Novo Nordisk Healthcare AG,
`IPR2017-00028, Paper 22 at 4–5 (PTAB June 13, 2017) (denying entry of
`supplemental information where petitioner sought to bolster its petition by
`introducing new prior art teachings in response to arguments presented in
`patent owner’s preliminary response”); Nissan N. Am. Inc., v. Diamond
`Coating Techs., LLC, IPR2014-01548, Paper 37 at 3–4 (PTAB July 15,
`2015) (denying entry of supplemental information where petitioner sought to
`submit an expert declaration that contained new opinions as to how a person
`of ordinary skill in the art would understand the disclosure in the
`references); ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00139,
`Paper 27 at 3 (PTAB July 30, 2013) (denying entry of supplemental
`information where petitioner submitted information in response to Board’s
`claim construction in the institution decision).
`With these guidelines in mind, we consider the supplemental
`information Petitioner seeks to submit, a supplemental declaration from
`Gregory S. Fischer. In the supplemental declaration, Mr. Fischer states that,
`in his prior declaration, he “inadvertently referred to ‘claim 11’ of the ‘588
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`6
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`IPR2021-00749
`Patent 10,471,588 B2
`patent (AW-1003, ¶120), which does not exist because the ‘588 patent has
`only seven claims.” Ex. 1021 ¶ 2. Mr. Fischer states further that what he
`“should have cited was claim 11 of the ‘588 patent’s parent patent (US
`8,179,418, [‘the ’418 patent]), which recites that ‘said graphical user
`interfaces provide said patient statistics, a medical tool and a patient
`management plan.’” Id. Mr. Fischer then shows how the statements he
`made in his prior declaration, which should have referenced the ’418 patent
`for support, are also supported by the ’588 patent because the ’418 patent is
`effectively identical to the ’588 patent except for the claims. Id. ¶¶ 3–6.
`The defect the supplemental information proposes to correct in this
`case is akin to a typographical error. If the reference to claims 11 and 12 on
`page 53 in lines 7–8 were removed from the Petition and the reference to
`claim 11 in the citation for that sentence was changed to reference claim 4,
`the only other correction required would be to update the citations to the
`’588 patent on pages 54–55 to identify where the language quoted appears in
`that patent as opposed to where it appears in the ’418 patent. No further
`correction of the Petition would be needed because the support for the
`challenge to claim 4 remains the same whether that support is identified in
`the specification of the ’588 patent or the ’418 patent, as these patents share
`the same specification. Pet. 53–56. The same is true of the Fischer
`Declaration. Ex. 1003 ¶¶ 120–123.
`As such, we find no prejudice to Patent Owner in allowing the
`submission of the supplemental information as the basis of the challenge to
`claim 4 is unchanged. We find the facts of this case to be similar to those in
`which the Board allowed the submission of supplemental information
`because the information does not change the grounds of patentability
`
`7
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`IPR2021-00749
`Patent 10,471,588 B2
`authorized in the proceeding, and essentially does not change the evidence
`initially presented in the petition in support of those grounds.
`A. Conclusion
`For the foregoing reasons, Petitioner has met its burden of proving it
`is entitled to the requested relief. Accordingly, Petitioner’s motion to submit
`supplemental information is granted.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information (Exhibit 1021) (Paper 12) is granted.
`.
`
`
`
`
`
`8
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`
`IPR2021-00749
`Patent 10,471,588 B2
`FOR PETITIONER:
`
`John Phillips
`phillips@fr.com
`
`Dan Smith
`dsmith@fr.com
`
`Sushil Iyer
`iyer@fr.com
`
`FOR PATENT OWNER:
`Michael Solomita
`Michael.solomita@nortonrosefulbright.com
`
`James Warriner
`Jim.warriner@nortonrosefulbright.com
`
`
`9
`
`
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