DCT
1:23-cv-00227
WalkMe Ltd v. Whatfix Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: WalkMe Ltd. (Israel)
- Defendant: Whatfix Inc. (Delaware)
- Plaintiff’s Counsel: DLA Piper LLP (US)
- Case Identification: 1:23-cv-00227, D. Del., 05/30/2023
- Venue Allegations: Venue is alleged in the District of Delaware on the basis that Defendant is a Delaware corporation and is therefore deemed to reside in the district.
- Core Dispute: Plaintiff alleges that Defendant’s digital adoption platform and its associated chatbot services infringe three patents related to automating user tasks by programmatically manipulating a target software application’s graphical user interface, thereby bypassing the need for traditional Application Programming Interfaces (APIs).
- Technical Context: The technology operates within the Digital Adoption Platform (DAP) market, where software overlays provide on-screen guidance and task automation to simplify user experience and training on complex enterprise applications.
- Key Procedural History: The complaint notes that the asserted patents were prosecuted and issued between 2020 and 2023, years after the Supreme Court’s decision in Alice Corp. v. CLS Bank, a fact Plaintiff may use to preemptively counter arguments regarding patent-ineligible subject matter. The complaint also alleges that Plaintiff provided Defendant with actual notice of the patents-in-suit via a letter dated December 15, 2022.
Case Timeline
| Date | Event |
|---|---|
| 2017-11-05 | Earliest Priority Date for ’664, ’732, and ’317 Patents |
| 2019-03-19 | ’664 Patent Application Filed |
| 2020-09-21 | ’732 Patent Application Filed |
| 2020-10-27 | ’664 Patent Issued |
| 2022-01-18 | ’317 Patent Application Filed |
| 2022-02-22 | ’732 Patent Issued |
| 2022-12-15 | Plaintiff Allegedly Notified Defendant of Infringement |
| 2023-01-17 | ’317 Patent Issued |
| 2023-05-30 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,819,664 - "Chat-Based Application Interface for Automation", Issued October 27, 2020
The Invention Explained
- Problem Addressed: The patent describes the technical limitations of prior chatbot programs that relied on dedicated Application Programming Interfaces (APIs) to automate tasks in a target software system (Compl. ¶¶13-14). Exposing an API can be a "time-consuming task" and may not be feasible if the target system is owned by a third party unwilling to provide API access (’664 Patent, col. 11:4-12).
- The Patented Solution: The invention proposes using the target system’s existing Graphical User Interface (GUI) as a substitute for an API (Compl. ¶18; ’664 Patent, col. 11:9-10). The system uses a natural language interface (e.g., a chatbot) to receive a user’s instructions through a conversation, determines an appropriate automation process based on that conversation, and then executes the process by programmatically "utilizing the user interface of the computer program to input data thereto or execute functionality thereof" (’664 Patent, col. 1:49-53).
- Technical Importance: This approach enables the creation of software automations by non-programmers and allows automation to be performed on third-party systems without requiring the system vendor to develop or expose an API (Compl. ¶¶17-19).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 14, 19, and 29 (Compl. ¶56).
- Independent Claim 1 (Method) includes the following essential elements:
- Using a natural language interface to receive input from a user as part of a conversation that includes a first user input, feedback from the interface, and a second user input.
- Determining, based on the first and second inputs, an automation process configured to perform a sequence of interactions with a displayed user interface.
- Executing the automation process by utilizing the displayed user interface to perform the sequence of interactions.
- The complaint also asserts dependent claims 2-9, 20-23, 28, and 33 (Compl. ¶56).
U.S. Patent No. 11,258,732 - "Automation Process Definition for a Natural Language Interface", Issued February 22, 2022
The Invention Explained
- Problem Addressed: Prior methods for creating new chatbot functionalities were described as a "complicated task" that required computer developers to write code or modify dedicated APIs (’732 Patent, col. 1:43-46; Compl. ¶31).
- The Patented Solution: The patent discloses a method for defining an automation process to be invoked by a natural language interface, without requiring coding (’732 Patent, col. 5:62-6:10). The method involves three main steps: (1) defining a conversation flow (e.g., questions for a user) to obtain values for specific parameters; (2) associating that conversation with a parameterized automation process that utilizes the target system's GUI; and (3) publishing the conversation so it becomes accessible to end-users, who can then invoke the automation automatically (’732 Patent, col. 2:1-23).
- Technical Importance: This invention enables non-programmers to define complex, parameterized automation flows for chatbots using tools like a "point and click editor," thereby lowering the technical barrier for creating such tools (Compl. ¶32; ’732 Patent, col. 6:7-10).
Key Claims at a Glance
- The complaint asserts infringement of independent claims 1, 11, and 18 (Compl. ¶73).
- Independent Claim 1 (Method) includes the following essential elements:
- Defining a conversation to be implemented by a natural language interface, where the conversation is configured to obtain values for parameters from a user.
- Associating the conversation with an automation process that is configured to utilize a displayed user interface to simulate interactions.
- Publishing the conversation to be accessible to a user, whereby the automation process is invoked automatically by the interface.
- The complaint also asserts dependent claims 9 and 10 (Compl. ¶73).
U.S. Patent No. 11,558,317 - "Invoking an Automatic Process in a Web-Based Target System using a Chat-Bot", Issued January 17, 2023
- Patent Identification: U.S. Patent No. 11,558,317, "Invoking an Automatic Process in a Web-Based Target System using a Chat-Bot," Issued January 17, 2023 (Compl. ¶37).
- Technology Synopsis: The patent claims a method for using a chatbot to automate tasks on a web-based system. It addresses the technical problem of chatbot systems being reliant on dedicated APIs by claiming a process where a user instruction received through a natural language interface triggers an automation that interacts directly with the GUI of the web-based target system (Compl. ¶¶39, 41). This allows the system to perform functions like filling a text input field or interacting with a widget without needing an API (Compl. ¶41).
- Asserted Claims: Independent claim 1 and dependent claims 2, 8, 10, 15, and 20 (Compl. ¶95).
- Accused Features: The complaint alleges that Whatfix's chatbot feature receives user instructions, selects an automation process called a "Flow," and then provides "Flows that simulate user interactions with a Graphical User Interface (GUI) by simulating user input to the GUI (e.g., by clicking, hovering, or selecting)" without relying on an API (Compl. ¶¶96-99).
III. The Accused Instrumentality
Product Identification
Defendant Whatfix’s "web-based platform and Chatbot feature" (Compl. ¶48).
Functionality and Market Context
The accused instrumentality is described as a "Chatbot service" that integrates with other applications to help users complete tasks (Compl. ¶¶46-47). According to the complaint, users interact with the Whatfix bot through a conversational interface; based on user inputs, the bot presents relevant "Flows" (Compl. ¶47). A "Flow" is described as an automation process that, once selected, "is automatically completed for them" (Compl. ¶47). The complaint alleges these Flows operate by simulating direct user interactions with the target application’s GUI, such as "clicking, hovering, and selecting," to input data or execute functions (Compl. ¶59). A screenshot provided in the complaint shows a Whatfix menu with options for "Auto Click," "Auto Hover," and "Auto Input," which allegedly correspond to these simulated interactions (Compl. p. 19).
IV. Analysis of Infringement Allegations
’664 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| using a natural language interface, receiving input from a user as part of a natural language conversation between the natural language interface and the user, wherein the natural language conversation comprises a first natural language input from the user, a natural language feedback... and a second natural language input from the user... | Whatfix offers a chatbot using a natural language interface that receives input from a user through a conversation, which allegedly includes multiple inputs and feedback. A provided screenshot depicts a multi-step chat conversation for creating a contact. | ¶57, ¶58 | col. 25:12-23 |
| determining, based on the first and second natural language inputs from the user, an automation process configured to perform an automation of a sequence of interactions with a displayed user interface... | Whatfix selects an "automation process" called a "Flow" based on the natural language input from the user's conversation. | ¶59 | col. 25:24-34 |
| executing the automation process, wherein said executing comprises utilizing the displayed user interface of the computer program to perform the sequence of interactions. | Whatfix "Flows" simulate user interactions with the target application’s GUI, including inputting data and executing functions such as clicking, hovering, or selecting elements. | ¶59 | col. 25:35-41 |
Identified Points of Contention
- Scope Questions: A potential issue for litigation is whether the accused conversational flow meets the specific claim requirement of a "first... input," "feedback," and a "second... input," and whether the "determining" step is based on both inputs as claimed.
- Technical Questions: Does the complaint provide sufficient technical evidence that Whatfix's system simulates user interaction by "utilizing the displayed user interface" in the manner disclosed in the patent, or could it be operating through a different, non-infringing mechanism?
’732 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| defining a conversation to be implemented by a natural language interface, wherein the conversation is configured to obtain from the user one or more values to one or more parameters associated with the automation process; | Whatfix instructs users on how to define a conversation where its chatbot can "ask questions in a conversational manner" and use the "inputs thus garnered" to complete a task, thereby obtaining values for parameters. | ¶75 | col. 21:1-8 |
| associating the conversation with the automation process, wherein the automation process is configured to utilize a displayed user interface... | Whatfix's platform allegedly associates a conversation with an automation process by providing a "Flow URL" in the bot's response, which causes the execution of the automated "Flow." A screenshot shows a UI for linking a "Flow URL" to a bot response. | ¶76 | col. 21:9-16 |
| publishing the conversation to be accessible to a user via the natural language interface... whereby the parameterized automation process is invoked automatically... | Whatfix allegedly allows users to "Activate the topic using the Active toggle button," which publishes the conversation and makes it accessible to end-users via the natural language interface for automatic invocation. | ¶79 | col. 21:17-23 |
Identified Points of Contention
- Scope Questions: It raises the question of whether Whatfix's method of inserting a "Flow URL" into a bot response constitutes "associating the conversation with the automation process" as required by the claim language.
- Technical Questions: What evidence does the complaint provide that the act of toggling a conversation to "Active" performs the claim step of "publishing" in a manner that enables the automatic invocation of a parameterized process?
V. Key Claim Terms for Construction
"utilizing the displayed user interface" (’664 Patent, Claim 1)
- Context and Importance: This term is central to the core novelty asserted by the patent family—bypassing APIs. The infringement analysis will likely depend on whether Whatfix’s method of GUI interaction is coextensive with the patent's definition of this term. Practitioners may focus on this term because it distinguishes the claimed invention from prior art API-based systems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the process "manipulates the GUI of the target system, in a similar manner to the manner in which the user operates" (’664 Patent, col. 9:1-4), which could be argued to cover any form of GUI automation that mimics user behavior.
- Evidence for a Narrower Interpretation: The specification repeatedly frames this concept as using the GUI as an "API-substitute" (’664 Patent, col. 11:10). This could support a narrower construction limited to automation techniques that directly replicate the function of an API call by manipulating specific GUI elements like buttons and input fields.
"defining a conversation" (’732 Patent, Claim 1)
- Context and Importance: The patentability of the ’732 Patent's method claims hinges on this active step. The dispute may turn on whether Whatfix’s tools for building bot interactions meet the specific requirements of "defining a conversation" that is "configured to obtain... values to... parameters."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the parameters and flow of the conversation "may be defined using a point and click editor, or other user interface that can be used by any non-programmer users" (’732 Patent, col. 6:7-10), potentially broadening the term to include various no-code interfaces.
- Evidence for a Narrower Interpretation: The patent’s figures illustrate a structured "Conversation Flow" editor with discrete elements for "ADD MESSAGE," "ADD QUESTION," and "ADD CONDITION" (’732 Patent, Fig. 5B). A defendant could argue this implies a structured, sequential definition process is required, not merely linking pre-built "Flows" to user queries.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement based on Whatfix’s instructions and marketing materials, which allegedly instruct customers on how to use the accused Chatbot feature to perform the claimed methods (Compl. ¶¶62, 81, 101).
Willful Infringement
The claim for willfulness is based on alleged pre-suit knowledge. The complaint alleges that Whatfix received actual notice of the ’664 and ’732 patents, and the allowed claims of the application that became the ’317 Patent, via a letter sent on December 15, 2022 (Compl. ¶¶49, 68, 87, 107).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim term "utilizing the displayed user interface," which is foundational to the patents' asserted novelty over API-based systems, be construed to read on the specific technical implementation of Whatfix's "Flows"? The case may turn on whether Whatfix's automation technology functions as a true "API-substitute" as described in the patents.
- A second central question will be one of process equivalence: does the accused platform's user interface for creating bot interactions and linking them to "Flows" satisfy the specific, multi-part method steps required by the claims for "defining a conversation" and "associating" it with an automation process, or is there a fundamental mismatch in the operational sequence?
- Finally, an evidentiary question will be one of claim element mapping: does the complaint provide sufficient factual support to show that the accused system's conversational logic meets the specific sequence of "first input," "feedback," and "second input" required by claims like Claim 1 of the ’664 Patent, and that the subsequent automation is determined based on that complete sequence?