The Software IP Report

PTAB Invalidates Telehealth Patent as Anticipated, Rejects Indefiniteness Challenges, in PG Review

By Bryan Hart

Categories: The Software IP Report

The Patent Trial and Appeal Board recently invalidated a patent related to remote optometry in a Post-Grant Review proceeding.  20_20 Vision Center, LLC v. DigitalOptometrics LLC, PGR2018-00100 (April 15, 2020). The PTAB invalidated the patent as anticipated by an earlier remote-optometry patent, but the challenges for indefiniteness and lack of enablement were rejected.

The petition for review by the PTAB was brought by 20/20 Vision Center against U.S. Patent No. 9,980,644, held by competitor DigitalOptometrics. Both companies provide optometrist appointments in which the optometrist can be in a separate facility from the patient. Here is independent claim 12, which is representative of the other challenged dependent claims:

12. A system for providing eye health and vision examinations, comprising:

a diagnostic center including ophthalmic equipment comprising a set of instruments that are utilized in administering eye examinations and being coupled to an equipment controller that is configured to receive instructions for controlling the ophthalmic equipment, wherein the diagnostic center is configured to:

in response to receiving a first request from the diagnostic center, select a subset of remote technicians to administer an eye examination based, at least in part, on analyzing availability data to identify at least one remote technician who is logged into the web-based platform and not currently providing real-time eye examinations;

transmit a second request over a network to a select remote technician to administer the eye examination in real-time for a patient located at the diagnostic center;

receive first instructions over the network to permit the select remote technician to control operation of the ophthalmic equipment at the diagnostic center from a first remote location in order to administer at least one test pertaining to the eye examination;

generate patient examination data pertaining to the at least one test administered using the ophthalmic equipment;

in response to receiving a third request from the diagnostic center, select a subset of eyecare doctors to review the eye examinations based, at least in part, on analyzing the availability data to identify at least one eyecare doctor who is logged into the web-based platform and not currently providing real-time eye examinations;

transmit a fourth request over the network to a select eyecare doctor to review the eye examination in real-time for the patient located at the diagnostic center;

receive second instructions over the network to permit the select eyecare doctor to control operation of the ophthalmic equipment at the diagnostic center from a second remote location in order to review the at least one test pertaining to the eye examination; and

review the patient examination data pertaining to the at least one test administered using the ophthalmic equipment;

wherein the eyecare doctor, the remote technician and the patient are in different locations.

20/20 first argued that some terms in the claim were indefinite, namely “diagnostic center” and “different location.” For both terms, the PTAB determined that the patent provided sufficient context to render the terms clear to a person of ordinary skill in the art. A “diagnostic center” must include equipment and cannot be merely a room because of the importance of the equipment to performing the diagnosis ascribed to the diagnostic center. “Different locations” cannot merely be different spots in the same room because the patent consistently discusses videoconferencing or other electronic communication.

The PTAB also rejected 20/20’s argument that claim 12 was not enabled. 20/20 contended that the patent failed to provide an explanation for how the diagnostic center can “review,” as stated in the claim, because a human operator would need to perform some of the necessary tasks. The PTAB criticized 20/20 for failing to discuss the factors from In re Wands, the controlling precedent. Moreover, claim 12 does not exclude a human from performing some of the tasks of the review.

Despite the failures under § 112, 20/20 ended up prevailing, as the PTAB invalidated the claims as anticipated by U.S. Patent No. 9,230,062 to Seriani, a patent held by 20/20. DigitalOptometrics argued that Seriani did not distinctly disclose both the second request to the remote technician and the fourth request to the eyecare doctor, but the PTAB found statements in Seriani about multiple disclosures to technicians and/or optometrists. Similarly, DigitalOptometrics argued that that Seriani did not distinctly disclose both the first instructions related to the remote technician and the second instructions from the eyecare doctor, but again the PTAB found statements that multiple operators can be granted access. For both arguments, DigitalOptometrics contended that Seriani did not describe how to resolve conflicting demands from different remote users, which would be necessary for multiple operators to use the same equipment. The PTAB considered such conflict-resolution outside the scope of claim 12. Thus, claim 12 was invalidated. DigitalOptometrics did not provide much separate support for the dependent claims, so those were likewise invalidated.

Lessons for Practice

This case shows the importance of a full description in the specification. The description for the patent sufficiently provided the context for terms like “diagnostic center” and “different location,” saving the claims from indefiniteness despite those terms being facially quite broad.

What is also important is translating the description into dependent claims. Had the dependent claims included some directed to conflict resolution between multiple operators, DigitalOptometrics may have had some dependent claims survive the review. Instead, the dependent claims were directed to multiple optometric tests, which provided little help in this case.