PTAB

IPR2023-01368

Whatfix Inc v. WalkMe Ltd

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Method, Apparatus and Product for Chat-Based Application Interface for Automation
  • Brief Description: The ’664 patent relates to a method and system that uses a natural language conversation with a user to collect information, and then automatically executes an automation process that simulates user interactions with a displayed user interface (UI).

3. Grounds for Unpatentability

Ground 1: Obviousness over Symons and Williams - Claims 1-8, 12, 13, 16, 19-23, 26, 29, and 31 are obvious over Symons in view of Williams.

  • Prior Art Relied Upon: Symons (a 2017 article and video) and Williams (a 2017 IBM white paper).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Symons disclosed the core limitations of independent claim 1. Symons described a chatbot that engaged in a "friendly, interactive manner" with a user to collect information (name, role, email) via a natural language conversation. This chatbot then triggered a Robotic Process Automation (RPA) bot. The RPA bot performed an automation sequence that "mimic[ked] the users' actions" by automatically opening a browser, entering the collected details into UI input fields, and clicking UI buttons to generate an email signature, thereby simulating interactions with a displayed UI.
    • Motivation to Combine: Petitioner contended that while Symons taught a single-purpose system, Williams taught a more advanced chatbot that could "discern...the nature of the call" to handle multiple, different user requests. A POSITA would combine Williams' intent-discerning capability with Symons' system to expand its flexibility and handle various automated tasks, such as generating an electronic letterhead or invoice. This combination would improve efficiency and exploit the full capabilities of RPA technology.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both references disclosed integrated chatbot-RPA systems, making the proposed combination a natural extension of known and complementary technologies.

Ground 2: Obviousness over Allen - Claims 1-8, 12-16, 18-23, 25, 26, 28-31, and 33 are obvious over Allen.

  • Prior Art Relied Upon: Allen (Patent 7,983,997).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Allen, by itself, rendered the claims obvious. Allen disclosed an interactive method where a non-programmer user could teach a system to perform complex tasks. The system used a "natural dialog-based interface" to receive user inputs (e.g., the user says, "I want to buy a book," and the system replies, "What is the title of the book?"). The user also demonstrated the required actions on a GUI. Allen's system observed this sequence of UI interactions (e.g., navigating to a website, inputting the book title, and filling a purchase form), learned the steps, and could later automatically execute the entire task upon request. This process was argued to directly map to the claimed method of using a natural language conversation to determine and execute an automation process that simulates UI interactions.

Ground 3: Obviousness over Krishnan and Radhakrishnan - Claims 1-8, 12-14, 16, 18-23, 26, 28, 29, 31, and 33 are obvious over Krishnan in view of Radhakrishnan.

  • Prior Art Relied Upon: Krishnan (Patent 10,839,798) and Radhakrishnan (Patent 10,503,627).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Krishnan taught the front-end conversational element, disclosing a chatbot for engaging with customers for service requests (e.g., booking a flight) via a natural language conversation. Radhakrishnan taught the back-end automation element, disclosing an RPA module trained to "mimic user activity directly with a UI" to generate operation records. The combination provided a chatbot for receiving user requests (Krishnan) and an RPA bot for executing those requests by simulating interactions on a displayed UI (Radhakrishnan).
    • Motivation to Combine: A POSITA would combine Krishnan's customer service chatbot with Radhakrishnan's UI automation technology to create a more efficient and robust system. Automating the fulfillment of customer service requests, particularly more complicated tasks that require interaction with legacy systems via a UI, was a known goal. Using an RPA bot as taught by Radhakrishnan would lower operational costs and improve process efficiency.
    • Expectation of Success: Success was expected because the references taught complementary and commonly integrated technologies—a conversational front-end and a UI automation back-end—to achieve the well-known goal of business process automation.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 9 based on Allen in view of Dayanandan (Patent 10,838,699), which taught identifying UI elements by computing a similarity score based on a plurality of parameters.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, stating that a Final Written Decision would likely issue before any trial date in the parallel district court litigation. Petitioner further noted the strong merits of the petition and stipulated that it would not pursue the same grounds in district court if the IPR is instituted.
  • Petitioner also argued against denial under §325(d), asserting that the prior art references relied upon were not previously cited or substantively discussed by the Examiner during prosecution. These references allegedly teach the key limitations that the Applicant added to overcome the Examiner's rejections and are therefore not cumulative.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 12-16, 18-23, 25, 26, 28-31, and 33 of Patent 10,819,664 as unpatentable.