Ocado wins robot patent battle in UK’s High Court
Grocery delivery company’s fierce dispute with Norwegian company sees major win in London | Litigation was a ‘complete waste of time’ | Ocado | AutoStore | Powell Gilbert.
Ocado, the UK-based online grocery retailer, has won a patent infringement case in London brought by a Norwegian robotic warehousing technology provider.
The decision—handed down yesterday, March 30, in the English High Court—is the latest in a multi-pronged patent war between the two parties, with related litigation ongoing in the US and Germany.
In the UK litigation, AutoStore originally asserted six patents. Two were invalidated by the European Patent Office (EPO), and the Norwegian-headquartered firm withdrew its claims in relation to another two.
In the court yesterday, Judge Hacon invalidated two of AutoStore’s remaining patents, and ruled that, in any event, Ocado had not infringed them.
Ocado said that the action taken by AutoStore was “misguided” and a “complete waste of time”.
“As we have said consistently since the day the action was launched, we did not infringe any valid AutoStore patents,” it said in a statement.
“Once again a judge has proved we are right. And we have been proved right by courts both in the US and the UK.
Warehouse ‘bots’
The disputed patents concern robots, or ‘bots’, used in warehouse automation.
AutoStore’s patents cover an automated system for storing and retrieving containers in a warehouse, called the ‘AutoStore ASRS’ (Automated Storage and Retrieval System).
This system comprises rails forming a grid, which are installed at the top of a warehouse. Robots travel along the rails, in different directions. They park and retrieve containers which are stacked below the rails in vertical piles.
Ocado, meanwhile, develops automated systems for use by large-scale grocery businesses, under its technology arm Ocado Solutions.
Ocado was formerly a customer of AutoStore, purchasing a bot from the company in 2012. It has since developed its own system, known as the Ocado Smart Platform (OSP), and the bots it uses were alleged by AutoStore to infringe the two of its principal patents in suit—EP (UK) 2 928 794 and EP (UK) 3 070 027.
According to Ocado, it has invested more than $1 billion in its proprietary technology to date.
ITC beginnings
The dispute began in October 2020, when AutoStore sued Ocado at the US International Trade Commission (ITC). It asserted five patents, seeking to block the import of Ocado’s warehouse robot technology into the US. On the same day, the company asserted the aforementioned six patents in the High Court.
In March 2022, the ITC rejected AutoStore’s complaint, reinforcing a prior administration law judge’s (ALJ) ruling in December 2021 that Ocado had not infringed four of AutoStore’s patents and that three were invalid.
Meanwhile, Ocado’s infringement claims against AutoStore are continuing in Germany and the US, where injunctions are being sought against AutoStore.
Prior disclosures in Russia
Judge Hacon invalidated the two remaining AutoStore patents in the UK trial based on prior disclosures in Russia, made by AutoStore while doing business with the Central Bank of Russia in 2010–11.
Simon Ayrton, partner at Powell Gilbert and lead counsel for Ocado, said that this was a “particular point of interest” in the decision, and highlighted the significance of documentary evidence and foreign law.
“Key to this outcome was the judge’s finding that whether or not the disclosure in Russia was confidential turned on the question of what law governed the disclosure. The judge found that Russian law governed the disclosure and, having heard extensive testimony from experts on Russian law, he determined that the disclosures were not confidential.
He added: “Interestingly, the EPO had earlier reached a different decision on a similar issue, but without the benefit of the documents and evidence before the English court.
“This underlines the advantage of litigating such issues in jurisdictions which offer documentary discovery and the ability to determine complex questions of foreign law with input from experts in the field.”
Ayrton said the decision “severely undermines” the value of AutoStore’s IP, adding that AutoStore’s business “remains at risk of being injuncted in Germany and the US, where Ocado is continuing with its infringement suits against AutoStore.”
‘Misguided’ and a ‘waste of time’
In a statement, AutoStore—which has a presence in Europe, the UK, the US and Japan—said: “This decision has no impact on AutoStore’s business or operations.
“AutoStore disagrees with the court’s decision, especially given that the Technical Boards of Appeal of the EPO upheld one of the patents in issue as valid just a few weeks ago.”
Ocado said it will seek costs against its rival.
“Autostore’s decision to sue us has been a complete waste of time—for us and them—and will now also be a further waste of money for them as we intend to seek a significant costs order against them,” said Ocado.
“This entire misguided exercise by AutoStore has simply served to show that it is Ocado that is the innovation factory with robust processes in place to protect and respect IP. Our fulfilment centres can freely operate in light of this judgment.
“And although AutoStore presented this litigation to the market as a one-way bet—either they would win or ‘the status quo would be maintained’—the actual outcome of the litigation is that a significant number of their patent assets are being invalidated, their patent portfolio has been reduced and their IP has been weakened.”
WIPR contacted AutoStore’s counsel, without immediate response.
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