Maplebear Inc v. ConsumeRon LLC

1. Case Identification

• Case #: IPR2023-00865
• Patent #: 11,238,465
• Filed: May 10, 2023
• Petitioner(s): Maplebear Inc. d/b/a Instacart
• Patent Owner(s): Consumeron, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Remote Acquisition and Delivery of Goods
• Brief Description: The ’465 patent describes a system and method for remote shopping where a delivery agent, upon failing to locate a customer's ordered item, uses a mobile device to transmit information about a replacement product to the customer for approval.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carr and Lauka - Claims 1, 4-5, 8-9, 11-12, 14, 16-17 are obvious over Carr in view of Lauka.

• Prior Art Relied Upon: Carr (Application # 2016/0148302) and Lauka (Patent 10,592,962).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carr taught a nearly identical method for online order fulfillment where, if an item is unavailable, a store "assembler" using a handheld device scans potential substitutes to generate a list with images for the customer to choose from. Carr disclosed all core steps of claim 1, including receiving an order, failing to locate an item, transmitting information on a replacement product, and acquiring the approved substitute. Lauka, which also addressed online order fulfillment, taught using a smartphone's existing camera as a barcode scanner, rather than a dedicated device.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the analogous arts of Carr and Lauka to gain the benefits of using a ubiquitous, multi-function device (a smartphone) over a dedicated handheld scanner. This would increase portability and reduce costs, as an agent could use their own phone instead of store-provided hardware. Lauka explicitly motivated this by stating its method eliminates the need for a "dedicated handheld electronic device."
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved substituting one known type of scanner (Carr's dedicated device) with another (Lauka's smartphone camera) to perform the same function (barcode scanning) in the same context (remote shopping), which was a predictable and well-known application for smartphones.

Ground 2: Obviousness over Carr, Lauka, and Yee - Claims 2-3, 10, and 15 are obvious over Carr in view of Lauka and further in view of Yee.

• Prior Art Relied Upon: Carr (Application # 2016/0148302), Lauka (Patent 10,592,962), and Yee (Application # 2021/0182930).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the base combination of Carr and Lauka taught the primary method. The additional limitations in the challenged claims related to using a Global Positioning System (GPS) to track the agent and send location-based alerts to the customer. Yee was cited to teach exactly this: a remote shopping system where a shopping assistant is tracked via GPS, and the system sends "periodic alerts" to the remote customer about the assistant's location (e.g., which aisle they are in).
  • Motivation to Combine: A POSITA would be motivated to add Yee's features to the Carr/Lauka system to enhance the customer experience by providing additional interactivity and real-time updates, which Yee taught provides an "experience of shopping in real-time."

Ground 3: Obviousness over Carr, Lauka, and Cincotta - Claims 6-7 are obvious over Carr in view of Lauka and further in view of Cincotta.

• Prior Art Relied Upon: Carr (Application # 2016/0148302), Lauka (Patent 10,592,962), and Cincotta (Application # 2013/0085807).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued the challenged claims added functionality for checking for digital coupons and generating product reviews. Cincotta was cited to teach these features in the context of online shopping. Cincotta disclosed a system that crawls the internet to automatically find and apply promotional codes to items in a shopping cart and also provides a platform for users to read and add product reviews.
  • Motivation to Combine: A POSITA would incorporate Cincotta's teachings to attract and retain customers by offering automated discounts and providing user reviews to inform purchasing decisions, both of which were known methods to drive traffic and increase sales for online merchants.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 13 is obvious over Carr, Lauka, and Argue (Application # 2014/0149160) for teaching the creation of a shopping list by scanning barcodes of existing products. Further, claims 18-19 were challenged as obvious over Carr, Lauka, and Dearing (Patent 10,510,084) for explicitly teaching the use of a scanned barcode to query a remote database that links the barcode to a corresponding product image.

4. Key Claim Construction Positions

• Petitioner argued that claim terms should be given their ordinary and customary meaning.
• For the term “mobile agent system,” Petitioner noted that a district court construed it in related litigation as “a mobile system that includes at least a device to capture video or still images and a device set up to communicate with a remote server.” Petitioner contended that adopting this construction was unnecessary because the independent claims already explicitly recited these features.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: A central argument of the petition was that the ’465 patent was not entitled to its claimed priority date of 2009 and that its effective filing date was April 20, 2020. Petitioner argued that the parent (’848) application failed to provide written description support for two key limitations added during prosecution: (1) the entire workflow "upon failing to locate an identified product," and (2) "determining the information from the bar or QR code, wherein the information includes at least one image of the replacement product." Petitioner asserted the parent application presumed the ordered product was always available for inspection and treated barcodes and images as separate, alternative data types, never disclosing the use of a barcode to retrieve an image. This later effective filing date makes the asserted prior art, including Carr, available under 35 U.S.C. §102.

6. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial because the ’465 patent had not been challenged in any prior petition and was not the subject of parallel litigation.
• §325(d): Petitioner contended denial would be inappropriate because none of the asserted prior art references were applied by the examiner during prosecution. Furthermore, Petitioner argued the examiner erred by allowing amendments that introduced subject matter lacking written description support in the specification. The petition asserted there was no evidence the examiner ever considered the written description issue for the key limitations, distinguishing this case from others where denial was granted.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’465 patent as unpatentable.