Maplebear Inc v. Consumeron LLC

1. Case Identification

• Case #: IPR2022-01356
• Patent #: 8,244,594
• Filed: August 5, 2022
• Petitioner(s): Maplebear Inc. d/b/a Instacart
• Patent Owner(s): Consumeron, LLC
• Challenged Claims: 1, 4-5, 8-9, 13-17

2. Patent Overview

• Title: System and Method for Remote Acquisition and Delivery of Goods
• Brief Description: The ’594 patent discloses a system for customers to order goods online for remote acquisition and delivery. The system includes a central server that communicates with a customer’s computer and a plurality of mobile delivery agent systems, which are equipped with real-time video devices, global positioning systems (GPS), and communication devices to allow for customer inspection of products and real-time tracking of deliveries.

3. Grounds for Unpatentability

Ground 1: Obviousness over Park and Kim - Claims 1, 8, 9, 13-15 are obvious over Park in view of Kim.

• Prior Art Relied Upon: Park (WO 01/11523) and Kim (KR2003-0085802).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Park discloses a real-time, network-based system for ordering and delivering goods, including perishable items, within an hour. Park’s system uses a pool of delivery agents with mobile computing devices equipped with GPS for location tracking and digital cameras to provide customers a "live video feed" of the delivery process. Petitioner contended that this combination teaches most limitations of the independent claims. To meet the limitation of electronically transferring an image of the goods for customer confirmation, Petitioner relied on Kim, which explicitly teaches a delivery agent using a mobile terminal’s digital camera to capture and send real-time images of an ordered product to the customer for confirmation.
  • Motivation to Combine: A POSITA would combine Kim’s product confirmation feature with Park’s delivery system to solve a well-known problem in e-commerce: customers receiving products that do not match the online images, an issue particularly acute for perishable goods like groceries where visual inspection is important. This combination would enhance the reliability of Park’s delivery service and increase customer satisfaction, providing an obvious solution to a known problem.
  • Expectation of Success: A POSITA would have had a high expectation of success, as both references operate in the same e-commerce delivery field and the combination integrates a known technique into a system ready for improvement. The hardware required by Kim (mobile device with a camera) was already present in the delivery agent systems described by Park.

Ground 2: Obviousness over Park, Kim, and Hileman - Claims 5, 16, and 17 are obvious over Park in view of Kim and further in view of Hileman.

• Prior Art Relied Upon: Park (WO 01/11523), Kim (KR2003-0085802), and Hileman (Application # 2003/0040944).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Park and Kim combination to address dependent claims related to price estimates and customer selection of delivery options. Petitioner asserted that Hileman teaches a package delivery system where a server provides a user with various transportation options, including available routes and associated charges (a price estimate, claim 5). Hileman further discloses that the user can select one of the transportation options (selection of a delivery agent, claim 16) based on factors like vehicle availability information (availability status, claim 17).
  • Motivation to Combine: A POSITA would combine Hileman’s teachings to provide additional flexibility and information to customers of the Park/Kim system. Incorporating price estimates and selectable delivery options based on cost or speed would appeal to a broader, more price-conscious customer base and improve the overall interactivity and utility of the service, aligning with Park’s stated goals.
  • Expectation of Success: Success would be expected and predictable. Adding features for displaying price options and processing user selections would be a straightforward and advantageous modification for an e-commerce platform, requiring only routine software programming.

Ground 3: Obviousness over Park, Kim, and Pugliese - Claim 4 is obvious over Park in view of Kim and further in view of Pugliese.

• Prior Art Relied Upon: Park (WO 01/11523), Kim (KR2003-0085802), and Pugliese (Application # 2002/0072974).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claim 4, which requires receiving instructions from the customer to remotely inspect the goods. While the Park/Kim combination provides for an image transfer, Petitioner argued Pugliese teaches the specific "customer instruction" element. Pugliese describes an "e-sales call" where a customer interacts with a live salesperson and provides explicit instructions to demonstrate or display a product in real-time via networked cameras.
  • Motivation to Combine: A POSITA would be motivated to add Pugliese’s customer-instruction feature to enhance the interactivity of the Park/Kim system. This would allow a customer to request inspection on a per-product basis, rather than receiving an image for every order automatically. This is particularly useful for multi-item orders where only specific items (e.g., perishables) warrant inspection, saving time for both the customer and the delivery agent.
  • Expectation of Success: A POSITA would have expected success in implementing this feature, as it leverages the same network and camera components already disclosed in Park and represents a predictable enhancement to the user interface.

4. Key Claim Construction Positions

• Petitioner argued that the term “mobile delivery agent system” requires construction as it is a coined term.
• For the purposes of the IPR, Petitioner adopted the construction proposed by the Patent Owner in parallel district court litigation to enhance judicial efficiency.
• The adopted construction is: “one or more mobile computing devices having image capturing and communications capability which can (1) receive product data over the Internet from a remote server, where the product data corresponds to a customer request, and (2) provide to the customer an image of a product in real-time as well as acquisition and delivery information of the product.”

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv factors) and §325(d).
• Fintiv Factors: Petitioner contended that the parallel district court case is in its early stages, with minimal investment, an uncertain trial date, and no claim construction hearing having occurred. Petitioner asserted it filed the IPR petition expeditiously after infringement contentions were served, weighing against denial.
• §325(d) Factors: Petitioner argued the challenges are not cumulative because three of the four primary references (Park, Kim, Hileman) were never considered during prosecution. The fourth reference, Pugliese, was cited by the Examiner but its relevance to dependent claim 4 was never substantively examined or argued, making the prosecution record underdeveloped on that point.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-5, 8-9, and 13-17 of the ’594 patent as unpatentable.