Jessica Karmasek Sep. 18, 2015, 1:04pm


WASHINGTON (Legal Newsline) - This week, the U.S. Patent and Trademark Office agreed to move forward with a Texas-based telehealth company’s case to invalidate a patent held by its competitor, American Well.

The PTO’s order, issued Monday, said Teladoc has a “reasonable likelihood” of prevailing when the final ruling comes down in 2016.

“As the pioneer and leader in telehealth, Teladoc has the responsibility to protect consumers’ access to health innovations like telehealth,” Teladoc CEO Jason Gorevic said in a statement.

“We’re proud to stand up for telehealth and can’t allow those who would suppress competition to take away access to the benefits of a safe, convenient and affordable health-care option. We are pleased that the PTO has acknowledged the strength of our petition and its likelihood of success.”

In March, Dallas-based Teladoc requested the PTO review and invalidate a patent held by American Well relating to the practice of telemedicine.

Both companies connect patients with board-certified physicians and other medical professionals for live, on-demand video consultations via mobile phones, tablets, computers and kiosks.

Teladoc maintains that American Well’s claims of being “first-to-market” are false due to the fact that Teladoc and others were providing telehealth services long before American Well was even formed as a company.

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

In addition, Teladoc has noted in previous filings that “the patents in question are impermissibly broad and cover matters that are too obvious to be patented.”

In June, American Well filed a lawsuit against Teladoc in the U.S. District Court for the District of Massachusetts over U.S. Patent No. 7,590,550 entitled, “Connecting consumers with service providers.”

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

American Well contends Teladoc is “well aware” that it has been engaging in and continues to engage in the unauthorized practice of American Well’s 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,” American Well’s 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 PTO. The procedure, which allows third parties to challenge bad patents, is conducted by the PTAB.

American Well said in June 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,” the company wrote in its federal complaint. “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.

Gorevic said American Well’s June action is a direct response to his company’s petition with the PTO, and the office’s order this week “gives new momentum” to Teladoc’s case to invalidate the patent infringement charges.

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

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