Ocado checks out of global robot patent dispute with £200m deal
Norwegian robotics firm AutoStore will pay instalments over two years | Agreement ends multi-pronged IP battle | Companies will continue to use all existing products.
Ocado and AutoStore have settled their global patent dispute, with a deal announced on Saturday (July 22) that will see the Norwegian robotics firm pay £200 million ($256 million) to its UK rival.
Following the agreement, all patent litigation claims between the firms will be withdrawn, concluding a multi-jurisdictional IP battle across the US, UK and Germany. The dispute involves warehouse robotics technology, which both companies license to various retailers across the world.
AutoStore will pay £200 million to Ocado in instalments over two years, with no reason given for the agreed payment.
The deal will also allow the firms to cross-license each other’s pre-2020 patents and gives “both companies access to parts of each other’s patent portfolios for them to use or develop their own products”.
However, it does not provide for “collaboration or technology assistance between the companies or access to actual products”.
The firms will continue to use and market all their own existing products without challenge, and Ocado will retain the exclusive rights to its Single Space Robot, meaning AutoStore is not permitted to make or use a single-space cavity robot in any jurisdiction where Ocado has patent protection.
The other terms of the agreement remain confidential.
Commenting on the deal, Tim Steiner, CEO of Ocado, said: “I am pleased we have been able to settle the disputes in a constructive and collaborative manner. We can now each move forward and concentrate on providing our partners with world-beating technology.”
Mats Hovland Vikse, CEO of AutoStore, said: “We are glad to have achieved a resolution that gives both companies opportunity and freedom to commercialise our extensive patent portfolios. This settlement resolves our differences and allows us to continue focusing on our respective business goals.”
Robot wars
AutoStore’s patents cover an automated system for storing and retrieving containers in a warehouse, the AutoStore ASRS (Automated Storage and Retrieval System). Ocado has its own system, the Ocado Smart Platform (OSP).
The dispute began in October 2020, when AutoStore sued Ocado at the US International Trade Commission (ITC) in a suit that alleged infringement of five patents and sought to block the import of Ocado’s warehouse robot technology into the US. At the same time, AutoStore asserted six patents at the High Court of England and Wales.
In March 2022, the ITC rejected AutoStore’s complaint and upheld a previous judgment that Ocado had not infringed four of AutoStore’s patents and that a further three were invalid.
Ocado also secured a victory in London, with the High Court invalidating two AutoStore patents and determining no infringement in any case. The other four patents were either invalidated by the European Patent Office (EPO) or withdrawn.
Following the High Court decision, Ocado said it would seek costs against AutoStore. In a statement at the time, AutoStore said it disagreed 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 counsel praises 'constructive and collaborative approach'
Powell Gilbert co-ordinated Ocado’s global litigation strategy and acted on its behalf in the UK case.
In addition, together with local counsel, the firm represented Ocado in three pending cases Ocado had brought in the Unified Patent Court through the firm’s Dublin office.
Simon Ayrton, Powell Gilbert's lead partner in the case, said: “This settlement, welcomed by both parties, represents a constructive and collaborative approach which will allow them to continue developing their respective technologies in what is a commercially important and highly innovative field.
“We are extremely grateful to the Ocado IP team, as well as to our counsel partners in the US and Europe, for their work over the past three years, both in and out of court, which has helped to deliver this landmark result.”
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