Pendo.io, Inc. obtained a dismissal of Walkme Ltd.’s patent infringement suit in the Southern District of New York (Case No. 18cv7654), in a ruling that invalidated Walkme’s US Patent No. 9,922,008 under 35 U.S.C. § 101.
Walkme’s patent describes and claims a method of creating tutorial software to walk users through a webpage, where the software dynamically adapts to edits in the page or different formatting of the page. The Court ruled that the patent was directed to a patent-ineligible abstract idea under the Alice test, because it claimed no more than the goal of the software (dynamic adaptation) with general computing components.
Claim 1 of the ‘008 Patent was the focus of the Court’s analysis. It recites:
A method of creating a dynamically adaptable tutorial, comprising:
selecting a website comprising at least one web document having a plurality of separate graphical user interface (GUI) elements each adapted for receiving an input from a browsing user;
instructing a browser to present said at least one web document in parallel to a user interface for defining a tutorial session of a multistep process related to said website and receiving from said user interface a plurality of descriptive elements which define said tutorial session, each having a plurality of displayed features, said user interface is used for associating each one of said plurality of descriptive elements with one of said plurality of separate GUI elements in said at least one web document and with a condition;
identifying a plurality of GUI element features of said plurality of separate GUI elements; automatically generating a plurality of calling scripts each according to a respective said condition and one of said plurality of separate GUI elements;
embedding said plurality of calling scripts into a code for creating said at least one web document for sequentially presenting said plurality of descriptive elements on top of said at least one web document;
wherein said plurality of calling scripts are sequentially triggered by said browser user when said respective condition is met upon appropriate user interaction of said browser user with a respective GUI element from said plurality of separate GUI elements; and
wherein each one of said plurality of displayed features is automatically determined according to said plurality of GUI element features so that display of respective said plurality of descriptive elements display correspond with said plurality of separate GUI elements.
The Court found that much of the claim was “excess verbiage” describing typical computing operations (e.g. presenting a webpage, having tutorial descriptions associated with different webpage elements, etc.). The Court identified that the core of the invention is the association of descriptive (tutorial) elements with GUI elements via automatically generated calling scripts. However, absent from the claim are any method steps for actually creating the calling strips, or how they are automatically generated. At bottom, the Court determined claim1 to be directed to a patent-ineligible abstract idea, because it simply claimed “automatic generation of a computer code that creates an association between two objects,” which “is not an improvement in computer functionality, but rather a way of using a computer as a tool.”
Walkme’s arguments addressed by the Court on this first step of the Alice test appear to have been detrimental, if anything. Walkme argued that the benefits of making tutorial programming and maintenance less burdensome and less technically demanding supported eligibility. But the Court found these arguments consistent with the idea that the claim was merely directed to use of a computer as a tool.
As to the second part of the Alice test, the Court found that none of the features of the claim constituted enough to elevate the subject matter to more than a patent-ineligible abstract idea. The descriptions of general computing components were insufficient, as was efficiencies from automating the tutorial creation and maintenance tasks. Additionally, the Court found that the claimed benefits were not limited to a computing environment - that, e.g., updating a user manual for a new version of a consumer product presented the same problem as that addressed in the ‘008 Patent.
Lessons for Practice
Careful consideration should be given where a software patent, or an underlying disclosure, focuses on benefitting a user of the software, especially if the benefit is increased efficiency. Benefits to use and in the operation of the software should be clearly distinguishable in the disclosure, or through technical support to arguments in favor of patentability.