Ocado win in UK retail “robot wars” against AutoStore

In the fierce battle over robotic warehouse technology, Ocado has scored a recent success in the UK. Last week, the High Court found two AutoStore patents invalid and not infringed by Ocado. However, proceedings in Germany are still pending.

Automation is a key factor in warehouse management. AutoStore and Ocado have fought fiercely over the past few years in the UK, Germany, and at the EPO.

Since 2020, Ocado and AutoStore have been locked in a fierce battle over numerous patents in the US, UK and Germany. In the most recent development, the UK High Court has found two AutoStore patents invalid and not infringed. As well as questions of infringement and validity, claims of ownership also play a role in the overall dispute.

New success for Ocado

Norwegian technology company AutoStore is a global provider of warehouse automation systems. UK-based Ocado Group is an online retailer, which has also developed its own technology through its Ocado Smart Platform (OSP) that it licences out to other retailers. Ocado was also previously a customer of AutoStore. The Norwegian company accused the UK retailer of infringingEP 2 928 794andEP 3 070 027through its OSP.

Originally, the UK proceedings comprised six patents from three families. The European Patent Office has since revoked two patents in suit,EP 3 157 847andEP 2 962 962, in opposition proceedings. Here, Ocado was also one of the opponents. In the case of other patents,EP 3 050 824andEP 3 250 481, AutoStore withdrew the action in the UK.

In the most recent proceedings, Ocado rejected allegations of infringement of the remaining patents-in-suit, EP 794 and EP 027. However, the UK retailer also demanded a declaration of non-infringement for EP 824 and EP 481. The High Court has now ruled AutoStore’s two patents-in-suit as invalid and not infringed. Presiding judge Richard Hacon also granted the declaration of non-infringement for the two patents EP 824 and EP 481 (case ID: HP-2020-000035).

An international experience

In October 2020, AutoStore sued Ocado in the High Court for infringement. At the same time, the Norwegian company filed a suit over five of its US patents at the International Trade Commission (ITC), with the aim of blocking Ocado from importing its technology into the US.

Ocado responded by filing an infringement action over five of its own US patents against AutoStore at the District Court of New Hampshire at the beginning of 2021. A trial is expected in early 2024.

Ocado also launched lawsuits against two AutoStore companies from two of its own utility models in Mannheim (case IDs: 2 O 27/21 and 7 O 36/21) and Munich (case IDs: 7 O 3904/21 and 7 O 3904/21). Ocado’s German utility modelsDE 20 20 14 011 467andDE 20 20 14 011 468are based on Ocado’sEP 3 795 501. The patent covers a load-handling device for retrieving units from a storage system.

AutoStore filed an entitlement action at the UKIPO, where it sought confirmation that it is the inventor and rightful owner of Ocado’s patent EP 501. However, AutoStore has since abandoned the claim with Ocado de-designating the patent for the UK. The proceedings in Germany are currently suspended pending a German Patent and Trademark Office (DPMA) decision in an ongoing cancellation proceeding.

In US proceedings, at the end of 2021, the ITC held three of AutoStore’s patents invalid. A fourth patent was considered not to be infringed by Ocado. Shortly before trial, the Norwegian company withdrew its infringement allegations regarding the fifth US patent in suit. AutoStore has appealed this ITC decision to the US Court of Appeals for the Federal Circuit.

Hard blow for AutoStore

In a press release, AutoStore states, “AutoStore disagrees with the court’s decision, especially given that the Technical Boards of Appeal of the European Patent Office upheld one of the patents in issue as valid just a few weeks ago. This decision has no impact on AutoStore’s business or operations.”

Nevertheless, the current ruling is a bitter blow for the Norwegian company. According toBloomberg, AutoStore shares fell by as much as 11% on 31 March, following the High Court ruling being made public on 30 March. At the same time, Ocado shares gained by as much as 7.9%.

The patent dispute began when AutoStore private equity firm Thomas H. Lee Partners still owned the company. It was Norway’s first unicorn, before listing on the Oslo Stock Exchange in 2021. JUVE Patent is not yet aware whether AutoStore will appeal the ruling.