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. The claims focus on a process where a delivery agent, upon failing to locate a customer's ordered item, uses a mobile device to transmit information about a potential replacement product, including an image obtained by scanning a barcode or QR code, to the customer for approval.

3. Grounds for Unpatentability

Ground 1: Obviousness over Carr in view of 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 grocery fulfillment. Carr disclosed a system where if an item is unavailable, an "assembler" (agent) uses a handheld device with a UPC scanner to establish a list of substitute goods. This list, including associated images retrieved from a database, is then sent to the customer for approval. Petitioner asserted this taught all key limitations of independent claims 1 and 14, except for explicitly identifying the scanner as a digital image capture device. Lauka, which also described an order fulfillment system with "pickers," was alleged to supply this missing element by teaching the use of a smartphone's existing camera to provide the functionality of a barcode scanner.
  • Motivation to Combine: A POSITA would combine Lauka's use of a smartphone camera for scanning with Carr's system to improve its functionality. Lauka provided an explicit reason for this combination: it eliminated the need for a dedicated, less portable handheld scanner. This would predictably increase the mobility and efficiency of Carr's assemblers who must traverse a store.
  • Expectation of Success: Petitioner contended there was a high expectation of success, as both references addressed the same field of e-commerce fulfillment. The combination amounted to a simple substitution of one known element (a smartphone scanner) for another (a dedicated scanner) to yield the predictable benefit of improved portability.

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: This ground built upon the Carr/Lauka combination to add features related to location tracking. Yee described a remote shopping system where a shopping assistant was equipped with GPS to provide the customer with real-time location information. Petitioner asserted Yee taught sending "periodic alerts" to the remote shopper about the assistant's location within the store (e.g., which aisle they are in), which mapped to the claim limitations requiring a GPS and sending location information to the customer.
  • Motivation to Combine: A POSITA would combine Yee with the Carr/Lauka system to enhance the customer experience by providing greater interactivity and real-time shopping updates. This would create the "experience of shopping in real-time" that Yee described as a benefit of its system.
  • Expectation of Success: Petitioner argued success would be expected, as adding GPS tracking and location-based alerts to a mobile application (the agent's smartphone) was a well-understood and routine task for a person of ordinary skill.

Ground 5: Obviousness over Carr, Lauka, and Dearing - Claims 18-19 are obvious over Carr in view of Lauka and further in view of Dearing.

• Prior Art Relied Upon: Carr (Application # 2016/0148302), Lauka (Patent 10,592,962), and Dearing (Patent 10,510,084).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims 18 and 19, which required that an image be obtained from a remote server database that "links bar or QR codes with images." While Carr disclosed a database storing both UPC codes and associated images, Petitioner argued that Dearing provided more explicit teachings. Dearing described a system where scanning a barcode on an item was used to query a database and retrieve associated content, such as media files.
  • Motivation to Combine: A POSITA would look to Dearing to provide a well-known and explicit implementation for the database functionality described in Carr. Dearing's method of using barcode data to query a database for linked content represented an obvious way to build the system Carr envisioned.
  • Expectation of Success: Success was predictable because the combination did not change Carr's core functionality. It merely provided implementation details for retrieving images from a database using a scanned barcode, which was a well-known technique.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Carr and Lauka in view of Cincotta (for adding coupons and product reviews) and Argue (for creating a shopping list by scanning items the customer wants replaced).

4. Key Claim Construction Positions

• "mobile agent system": Petitioner noted that while a formal construction was unnecessary, a district court in related litigation construed the term 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 argued this construction was consistent with the explicit claim language.

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority Date Entitlement: A central argument of the petition was that the ’465 patent was not entitled to its claimed priority date, making its effective filing date April 20, 2020. Petitioner argued that the parent applications failed to provide written description support for two key limitations added during prosecution: (1) the concept of "failing to locate an identified product," as the parent specification only contemplated scenarios where the product was found; and (2) the concept of using a barcode scan to determine or retrieve image information, as the parent specification allegedly treated barcodes and images as separate, alternative forms of data. This later priority date was critical for establishing the asserted references as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
  • Under §314(a): Denial was argued to be improper because the ’465 patent had not been challenged in a prior petition and was not the subject of parallel litigation.
  • Under §325(d): Denial was argued to be inappropriate because the asserted prior art and arguments were not previously considered during prosecution. Petitioner contended the examiner never considered the critical written description and priority date issues, as evidenced by the prosecution history, which lacked any substantive discussion of specification support for the key claim amendments.

7. Relief Requested

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