UPC sees first settlement after Ocado and AutoStore end global dispute
Ocado and AutoStore have settled their global dispute over robot-assisted automation systems for warehouses. As such, the Unified Patent Court is experiencing its first settlement before it has even heard an infringement case. Ocado had sued its competitor in June before the local chambers in Düsseldorf, Milan and the Nordic-Baltic regional division in Stockholm.
24 July 2023 by Mathieu Klos
On 22 July, AutoStore and Ocado announced a complete settlement of all claims between the companies in their global patent dispute, avoiding further litigation and associated costs. JUVE Patent is not aware of the conditions which made the settlement possible but, in recent months, the dispute had come to a head in Germany, the UK and at the UPC.
Ocado and AutoStore reach settlement
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), which it licenses out to other retailers. The two competitors in robot-assisted warehouse automation systems recently faced off in the US, the UK and in Germany, and had three cases pending at the UPC.
In addition to ending all legal disputes, the settlement also includes a cross-licence of each company’s pre-2020 patents. Both companies can continue to use and market all their own existing products without challenge. However, Ocado retains exclusive rights to the Single Space Robot. According to the press release, AutoStore will pay £200 million to Ocado in instalments over a two-year period.
Whilst the agreement gives both companies access to parts of each other’s patent portfolios to use or develop their own products, it does not provide for collaboration or technology assistance between the companies. It also does not extend to access to each company’s actual products. The other terms of the agreement remain confidential.
Dispute comes to a head
A simmering dispute between the two competitors escalated in October 2020, when AutoStore went to the UK High Court, claiming that the OSP infringed six of its patents. However, the company later withdrew the actions regarding two of the patents.
At the end of March 2023, the UK High Court found two AutoStore patents invalid and not infringed by Ocado.
In the UK cases, AutoStore was represented by Kirkland & Ellis, as well as several barrister sets. London-based litigation boutique Bristows is also assisting AutoStore in EPO opposition proceedings. Ocado defended itself in the UK with Powell Gilbert and two barrister sets.
Across the ocean
At a very early stage, the dispute escalated in the US after AutoStore filed a suit over five of its US patents at the International Trade Commission (ITC) in October 2020. 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. Ocado also filed an antitrust suit against its Norwegian competitor in the US District Court for the Eastern District of Virginia.
In the US proceedings, Sullivan & Cromwell represented Ocado. Kirkland & Ellis was again active for AutoStore.
Three months later, Ocado also went on the offensive in Germany. The company filed four infringement suits against AutoStore, taking the dispute to the next level. The UK company sued the Norwegian manufacturer on the basis of two utility models, filing two suits in Mannheim. Two proceedings were also pending in Munich. In both courts, the property rights were identical.
In May 2023, the opposition division of the German Patent and Trademark Office (DPMA) in Munich confirmed two of Ocado’s utility models, according to information from JUVE Patent. The English company had filed an action against these patents at the regional courts in Mannheim and Munich.
In addition, Ocado had increased the pressure on AutoStore at the beginning of June with three UPC lawsuits.
… and into the UPC
In Düsseldorf, Wildanger Kehrwald & Graf von Schwerin advised Ocado in its UPC claim against AutoStore over EP 3 795 501 (case ID: ACT_459760/2023). The Düsseldorf-based IP firm also represented Ocado in the national German proceedings. Arnold Ruess represented AutoStore in the national proceedings as well as in the UPC case in Düsseldorf.
In German proceedings, AutoStore also relied on patent attorneys from German IP firm Olbricht Buchhold Keulertz. Düsseldorf-based patent attorney firm Cohausz & Florack assisted Ocado.
Firms in Europe
The case filed by Ocado and Italian law firm Bonelli Erede at the Milan local division concerned EP 1 612 910 (case ID: ACT_463658/2023). AutoStore defended itself in Milan with IP Boutique Trevisan & Cuonzo.
The case at the Nordic-Baltic regional division in Stockholm concerned EP 3 653 540 (case ID: ACT_459791/2023). Ocado’s lawyers in this case was Stockholm-based law firm, Sandart & Partners. JUVE Patent is not aware of the firm which defended AutoStore in this case. According to JUVE Patent information, London-based IP firm Powell Gilbert was not only active for Ocado in the national UK proceedings but also acted as co-ordinator for the global litigation. In the UPC cases the London based firm acted through it’s newly opened Dublin office, in cooperation with the above mentioned local counsels.
Currently, around 25 UPC cases are publicly known. Of these, three cases have now ended in one fell swoop, thanks to the settlement between Ocado and AutoStore. So far, since the UPC opened on 1 June, it has not heard any infringement cases.
For more information on the lawyers and European law firms behind the Ocado vs. AutoStore case, visit the relevant news stories to the right of this article, or search under the ‘Automation and robotics’ tag.
