AutoStore fails in conduct defence against Ocado
AutoStore’s claim that an Ocado robotics patent was obtained through inequitable conduct is “too vague” to stand, a US judge has ruled.
In a memorandum order submitted on December 30, 2021, the US District Court for the District of New Hampshire struck out AutoStore’s inequitable conduct defence, claiming that the defence should only be proveable in “egregious” circumstances.
AutoStore alleged that Ocado had failed to disclose specific material to the US Patent and Trademark Office in order to “deceive” the office into issuing it a robotics patent which AutoStore claims infringe its own patents
Writing for the court, district court judge Joseph Laplante referred to the inequitable conduct defence as the “atomic bomb of patent law”, due to its tendency to render entire patents unenforceable if proven.
Judge Laplante said: “After consideration of the parties’ written submissions, the court grants the motion and strikes the defence without prejudice.
“While AutoStore’s allegations supporting the defence appear to be quite detailed, the substance of the relevant allegations are simply too vague or conclusory to meet the heightened pleading standard applicable to inequitable conduct defences”.
Ocado had argued that AutoStore had not alleged sufficient facts to support its defence and asked the court to strike without prejudice.
As part of its objection to Ocado’s motion, AutoStore requested leave to amend its answer and submitted a proposed amended answer.
Federal Precedent
Despite the amendments, the district court ruled that AutoStore had failed to satisfy the heightened standards for inequitable conduct defences under Federal Circuit precedent in Therasense, Inc v Becton, Dickinson (2011).
To prove the defence, AutoStore had to establish materiality for its claims under Therasense. This required the company to answer two questions, referred to as the “what” and the “where”.
According to Laplante, AutoStore failed to satisfy the “where” requirement as it failed to identify an actual undisclosed “reference” or document, instead broadly referring to the undisclosed information as “route-planning functionality”.
“The court cannot accept AutoStore’s vague and conclusory suggestion that the ‘route-planning functionality’—as a whole—is the material information. This type of generality necessarily dooms AutoStore’s inequitable conduct defence”.
Ocado and AutoStore represent two of the largest players in the emerging automated storage and retrieval market. Currently, the two are embroiled in patent infringement lawsuits across the UK, US and Germany.
In December, Ocado revealed that it had prevailed in one of its disputes with AutoStore before the US International Trade Commission, which held that Ocado’s robotics products did not infringe any valid AutoStore patents.
AutoStore and Ocado have brought disputes to the US Patent Trial and Appeal Board and the English High Court over the past few months as the companies seek to invalidate each others' warehouse robotics patents.
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