Digital Health Law Update Vol. 1 Issue 4

Author:Ms Alexis Gilroy, Soleil E. Teubner, Cristiana Spontoni, Kevin D Lyles, Stephen E. Gillette, Maureen Bennett, Douglas H. Pearson, Gregory Castanias, David Paulson and Vishal V. Khatri
Profession:Jones Day
 
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Industry Insights

Are You Ready for Digital-Health Patent Disputes? Getting Strong Patents and Challenging Weak Ones in the Evolving Minefield of U.S. Patent Law

by Doug Pearson, Greg Castanias, Mark Paulson, and Vishal Khatri

With exponential growth occurring in the availability of telemedicine and other digital health products and services, patent disputes are sure to erupt. A recent example is the patent suit filed by American Well, a telemedicine provider, against Teladoc in June 2015, alleging infringement of American Well's patent by Teladoc's telehealth services. The suit was initiated after Teledoc filed an inter partes review ("IPR") petition with the U.S. Patent and Trademark Office ("USPTO") to challenge the validity of the American Well patent in March 2015. In pursuing the IPR proceeding, Teladoc is making use of changes to the U.S. patent law made possible by the America Invents Act, which became effective in 2012.

With the ability to challenge the validity of patents in both federal courts and the USPTO, the need for patent owners to acquire strong patents, and the need for challengers to understand likely areas of weakness, are more important than ever. The terrain is particularly treacherous for computer-implemented inventions (also called software inventions) in light of several recent court decisions addressing, among other things, the subject matter eligible for patenting (Alice Corporation Pty. Ltd. v. CLS Bank International, et al.), whether direct infringement must be attributable to a single entity (Akamai Techs., Inc. v. Limelight Networks, Inc.), and the effect on patent validity/scope of an unintended "means" interpretation (Williamson v. Citrix Online, LLC). While the challenges facing digital health patent holders can be significant given these recent court rulings, they can be overcome in many instances with an eye toward good claim drafting for new and pending patent applications and through possible use of the "reissue" process at the USPTO to correct patent claims before asserting the patent in litigation.

Abstract Ideas. In Alice Corporation Pty. Ltd. v. CLS Bank International, et al., the U.S. Supreme Court set out in June 2014 a two-part test for whether subject matter is eligible for patenting in the first place, which is different from the more commonly known hurdles of novelty and nonobviousness. The test has been applied with devastating effect by district courts and the USPTO to invalidate patents or reject patent claims on grounds that they claim no more than general computer implementations of abstract ideas. With little guidance from the upper courts on (i) what constitutes an "abstract idea" and (ii) what constitutes "significantly more" than the abstract idea under the two-part test, lower courts and the USPTO have struggled. As a practical matter, if the patent claims are not sufficiently technical and are not rooted in computer technology, and instead recite mere implementation of well-known concepts with a general-purpose computer, the claims are likely vulnerable under Alice. While this presents a challenge for those trying to get patent applications on software inventions granted by the USPTO, many issues can be overcome with careful claim drafting. Alice issues can be devastating, however, to patents that were granted before Alice and its recent predecessor cases, and these patents may be candidates for the "reissue" process at the USPTO to have patent claims corrected and reissued before assertion in litigation.

Divided Infringement. The Federal Circuit ruled in May 2015 in Akamai Techs., Inc. v. Limelight Networks, Inc. that direct infringement does not exist where...

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