No Supplemental Information Permitted To Fix Petition Faults

On February 28, 2022, in American Well Corporation v. Teladoc Health, Inc. IPR2021-00748, the PTAB denied a motion to submit supplemental information. In this matter, the Board instituted a trial of all claims and all requested grounds. In the Institution Decision, the Board stated that the petition failed to be persuasive as to providing a reasonable likelihood of prevailing with respect to some of the asserted claims and grounds. Responsive to these statements by the board, the Petitioner American Well Corporation requested and was authorized to submit supplemental information, namely a supplemental expert declaration.

Here, the Petitioner contended that the supplemental expert declaration addressed errors and omissions that the Board itself identified in its Institution Decision as bearing on the patentability certain claims. In response, the Patent Owner argued that the Petitioner attempted to change, not supplement, its arguments and evidence in order to