Maplebear Inc v. Consumeron LLC

1. Case Identification

• Case #: IPR2022-01357
• Patent #: 10,628,835
• Filed: August 5, 2022
• Petitioner(s): Maplebear Inc. d/b/a Instacart
• Patent Owner(s): Consumeron, LLC
• Challenged Claims: 1-2, 4, 6, 9-10, 14-17, 21-22, 24-26

2. Patent Overview

• Title: Remote Acquisition and Delivery of Goods
• Brief Description: The ’835 patent discloses a system and method for remote online shopping. The system allows a customer to place an order, have a mobile delivery agent acquire the product, and electronically transmit real-time information, including images of the specific product, to the customer for inspection and approval prior to purchase and delivery.

3. Grounds for Unpatentability

Ground 1: Obviousness over Park in view of Kim - Claims 1-2, 6, 9-10, 14-15, 21, 24, and 26 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 taught a real-time, network-based system for ordering and delivering goods, including perishable items, within an hour. Park’s system included a "pool" of delivery agents with mobile computing devices equipped with GPS and a digital camera to provide customers a "live video feed" and real-time location tracking. However, Park was silent on allowing a customer to confirm a specific product before delivery. Petitioner asserted that Kim remedied this deficiency by teaching a system where a delivery agent uses a mobile terminal with a digital camera to capture and send an image of the ordered product to the customer for real-time confirmation. This process was intended to "enhance the reliability of the delivery" by ensuring the customer receives the correct item. The combination of Park's delivery framework and Kim's product confirmation feature allegedly rendered the independent claims obvious.
  • Motivation to Combine: A POSITA would combine Park and Kim to solve a well-known problem in e-commerce, particularly for perishable or "high-touch" items like groceries, where the item delivered may not match the customer's expectation based on a website photo. Kim’s confirmation step directly addressed this issue, which was inherent in Park’s system, thereby increasing customer satisfaction and reliability.
  • Expectation of Success: A POSITA would have a high expectation of success because both references operated in the same field of e-commerce delivery. The combination would use components (mobile devices with cameras) that Park’s agents already carried, requiring only routine software modifications to implement Kim’s confirmation logic.

Ground 2: Obviousness over Park, Kim, and Hileman - Claim 4 is obvious over Park in view of Kim and further in view of Hileman.

• Prior Art Relied Upon: Park, Kim, and Hileman (Application # 2003/0040944).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Park/Kim combination to address dependent claim 4, which requires that information sent to the customer includes an "availability status of the plurality of agents." Petitioner contended that while Park’s system internally determined agent availability, it did not explicitly provide this status to the customer. Hileman was argued to supply this missing element by disclosing a system where a server notifies a user of transportation options, including available routes and associated charges, based on vehicle availability.
  • Motivation to Combine: A POSITA would incorporate Hileman's teachings to provide the Park/Kim system with additional flexibility and customer choice. Offering options based on agent availability and price would allow the service to cater to both price-conscious and time-sensitive customers, expanding its market appeal.

Ground 3: Obviousness over Park, Kim, and Pugliese - Claims 16-17 and 25 are obvious over Park in view of Kim and further in view of Pugliese.

• Prior Art Relied Upon: Park, Kim, and Pugliese (Application # 2002/0072974).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 16-17 (requiring "visual and audio communication" via a "smartphone") and claim 25 (information obtained from "bar codes"). Petitioner argued that Pugliese taught an "e-sales call" with a live person using "live interactive audio, video and data link in real time" to demonstrate products. This supplied the two-way audio communication element. Pugliese also taught that its video stations could obtain product information from bar codes.
  • Motivation to Combine: A POSITA would integrate Pugliese’s conversational mode to enhance the interactivity of the Park/Kim system. This would allow a customer to direct the agent during product inspection (e.g., "show me the other side"), providing a more robust confirmation process than the static image taught by Kim.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 22 over Park in view of Kim and further in view of Mault (Application # 2002/0027164). This ground argued Mault taught establishing an order by taking an image of a product (e.g., an empty box), supplying the limitation of creating an acquisition request "in the form of images or video."

4. Key Claim Construction Positions

• For the purposes of the IPR, Petitioner adopted the Patent Owner's proposed construction of "mobile agent system" from the parallel district court litigation.
• The proposed construction was: "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 that discretionary denial under Fintiv would be inappropriate because the parallel district court litigation was at a very early stage. Key milestones, including a claim construction hearing and fact discovery, had not yet occurred, and the trial date was uncertain.
• Petitioner asserted it filed the IPR petition promptly after receiving infringement contentions. Furthermore, it argued the petition presented compelling evidence that the claims recite only well-known e-commerce techniques, which should weigh heavily against denial.
• Denial under 35 U.S.C. § 325(d) was argued to be inappropriate because four of the five primary prior art references were never considered by the Examiner during prosecution, meaning the petition raised arguments materially different from those previously considered.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 4, 6, 9-10, 14-17, 21-22, and 24-26 of the ’835 patent as unpatentable.