Ocado and Powell Gilbert win in UK retail “robot wars” against AutoStore

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 infringing EP 2 928 794 and EP 3 070 027 through its OSP.

Originally, the UK proceedings comprised six patents from three families. The European Patent Office has since revoked two patents in suit, EP 3 157 847 and EP 2 962 962, in opposition proceedings. Here, Ocado was also one of the opponents. In the case of other patents, EP 3 050 824 and EP 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 models DE 20 20 14 011 467 and DE 20 20 14 011 468 are based on Ocado’s EP 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 and Ocado has de-designated 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.

Simon Ayrton

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 to Bloomberg, 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.

US firm vs. UK boutique

Steven Baldwin

The plaintiff relies on US firm Kirkland & Ellis, in both the US and UK proceedings. AutoStore is a long-standing client of the firm. The trial was split between foreign law and technical issues, with Peter Pereira leading on foreign law, while Steven Baldwin steered the technical side of the case. In Germany, AutoStore retained Düsseldorf IP boutique Arnold Ruess.

Oslo-based patent attorney firm Onsagers filed all patents-in-suit and also represented AutoStore in the opposition proceedings.

Ocado is a long-standing client of Powell Gilbert. London partner Simon Ayrton advised the company from the beginning of the litigation series, which the team is also coordinating internationally.

The firm works closely with representatives in other countries, for example in Germany with Wildanger Kehrwald Graf v. Schwerin and in the US with Sullivan & Cromwell. London-based patent law firm Keltie led EPO oppositions for the Ocado side.

In addition to Keltie partner Shakeel Ahmad, opponents to AutoStore’s patents included Beck Greener for Tharsus Group, and Abel & Imray for Abitz & Partner.

Peter Pereira

For Autostore
Brick Court Chambers (London): Vernon Flynn, Nicholas Saunders, Georgina Petrova
8 New Square (London): Adrian Speck
11 South Square (London): Kathryn Pickard
Three New Square (London): Miles Copeland, Thomas Lunt
Kirkland & Ellis (London): Steven Baldwin, Nicola Dagg, Peter Pereira (all partners); Associates: Rory Clarke, Nessa Khandaker

For Ocado
11 South Square (London): Iain Purvis, Piers Acland, Tom Alkin
Blackstone (London): James Segan
Powell Gilbert (London): Simon Ayrton, Zoe Butler, Tom Oliver, Tess Waldron, Joel Coles (all partners); associates: Peter FitzPatrick, Claire Robinson, Anna Matthew, Daniel Down, Jess Rosethorn

High Court of England and Wales, London
Richard Hacon (presiding judge)