Jessica M. Karmasek Jun. 11, 2015, 9:30am



BOSTON (Legal Newsline) - Telehealth company American Well this week filed a lawsuit in federal court against competitor Teladoc for patent infringement.




American Well filed its lawsuit in the U.S. District Court for the District of Massachusetts Monday.




 




The company connects patients with board-certified physicians and other medical professionals for live, on-demand video consultations via mobile phones, tablets, computers and telehealth kiosks.




 




Basically, patients create an account online. Then, using the Internet or one of the company’s mobile apps -- which can be downloaded from the App Store or Google Play -- they can see and speak with a doctor over live video.




 




At issue in this case is American Well’s U.S. Patent No. 7,590,550 entitled “Connecting consumers with service providers.”




 




The Boston-based American Well, in its 10-page complaint, argues that Teladoc’s system relies on its patented technology, but Teladoc is not authorized to practice any of its patent claims.




 




American Well also contends that Dallas-based Teladoc is “well aware” that it has been engaging in and continues to engage in the unauthorized practice of its patented inventions.




 




“Although Teladoc publicly states, ‘we do not believe our business is dependent to a material degree on trademarks, patents, copyrights or trade secrets,’ Teladoc recently sought to obtain a license to American Well’s patents. American Well rejected Teladoc’s request,” the complaint states. “However, Teladoc has chosen to continue making, using, offering to sell and/or selling the Teladoc System.




 




“Moreover, in March of this year, Teladoc filed a request for the Patent Trial and Appeals Board to conduct an inter partes review of four claims within American Well’s ‘550 patent.”




 




IPR is a procedure for challenging the validity of a patent before the U.S. Patent and Trademark Office. The procedure, which allows third parties to challenge bad patents, is conducted by the PTAB.




 




According to American Well’s complaint, the PTAB has not decided whether to institute the IPR and American Well has not yet had the opportunity to respond. The company said it believes Teladoc’s “limited attack” on four claims will not be successful.




 




“Teladoc’s filing of the IPR request, however, shows that it was aware of American Well’s ‘550 patent before March 2015 and that Teladoc was concerned that it infringed the ‘550 patent,” American Well wrote in its lawsuit. “Meanwhile, Teladoc has chosen to continue making, using, offering to sell and/or selling the Teladoc System.”




 




American Well is seeking a judgment against Teladoc, an injunction, compensatory damages plus interest and costs, a judgment declaring the infringement “willful and deliberate,” treble damages and prejudgment interest, a judgment declaring the infringement “exceptional,” and expenses, costs and attorneys’ fees.




 




“Teladoc has infringed American Well's intellectual property,” said Ido Schoenberg, CEO of American Well. “While a transparent and competitive landscape is an imperative for innovation, Teladoc has unfairly disregarded American Well’s ownership rights to advance its business.




 




“We developed and patented these innovations and we owe it to our clients, partners and shareholders to protect them.”




 




According to its website, American Well has created an intellectual property portfolio that includes 26 U.S. patents, with another 25 applications pending.




 




Jason Gorevic, CEO of Teladoc, said in an emailed statement that American Well’s action is a direct response to Teladoc’s March 24 petition with the PTO to invalidate certain American Well patents.




 




“We very strongly believe that those patents are invalid,” he said. “For one, American Well’s claims of being ‘first-to-market’ are demonstrably false due to the fact that Teladoc and others were providing telehealth long before American Well was even formed as a company.”




 




Teladoc was founded in 2002; American Well was founded in 2006.




 




“Second, the patents in question are impermissibly broad and cover matters that are too obvious to be patented,” Gorevic said. “We will continue to pursue our petition to have American Well’s patents invalidated.




 




“As for today’s action by American Well, Teladoc will vigorously defend itself as it would in any other non-meritorious, ordinary-course litigation.”




 




IP law firm Fish & Richardson PC is representing American Well in the lawsuit.




 




According to the docket, Judge Indira Talwani has been assigned to case.




 




From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.


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