AutoStore has withdrawn two of three patent families which formed the basis of imminent infringement proceedings against Ocado in the UK. However, it has also asserted two further patents against the retail group. In Germany, the Munich and Mannheim courts have suspended proceedings between the feuding companies as they await the outcome of DPMA proceedings.
24 February 2022 by Amy Sandys
The bitter battle between UK online retailer Ocado and warehouse automation system manufacturer AutoStore rages on. However, the Trial A proceedings which begin in March now involve fewer patents, since AutoStore has recently withdrawn three of six patents involved in the infringement suits.
In parallel proceedings in Germany, three panels across the Munich and Mannheim courts have stayed proceedings pending validity outcomes at the German Patent and Trademark Office (DPMA). The parties are also seeing some developments in the dispute at the US International Trade Commission (ITC).
AutoStore uses “cube-storage automation” that involves storage bins stacked vertically in a grid, allowing robots positioned at the top to retrieve the bins when needed. Ocado has developed a system where robots move around a vertical grid, which it calls a “Smart Platform.”
The companies are battling over patents for these robot-assisted automation systems, in a dispute covering inventors’ rights, patent infringement and unfair competition. In October 2020, AutoStore first filed patent infringement suits against Ocado in the US and UK (case ID: HP 2020-000035). The UK retailer counterclaimed in the US and Germany.
AutoStore also filed an entitlement action at the UKIPO, where it sought confirmation that it is the inventor and rightful owner of Ocado patent EP 37 95 501. However, AutoStore has since abandoned the claim and Ocado has de-designated the patent for the UK.
Ocado recently published a press release reporting that AutoStore has retracted two-thirds of its pending patent infringement suits against the UK retailer, calling the proceedings “a monumental waste of time and money by AutoStore”. However, JUVE Patent is aware that AutoStore has in fact dropped suits against two of the patent families, with suits against the third still remaining.
Thus, of the original six patents at issue in the UK courts, three remain the subject of infringement disputes. The case, which commences on 29 March 2022, is due to be heard by deputy High Court judge Richard Hacon. The patents still at issue are EP 29 28 794, EP 29 62 962 and EP 30 70 027, with Ocado counterclaiming for revocation of all three patents.
The UK court has also scheduled a second trial, Trial B, for April 2023 over two AutoStore patents EP 35 35 633 and EP 33 72 534. The case will cover a technology recently launched by Ocado for a range of robots which transport storage bins.
All six original patents are also subject to opposition division proceedings at the European Patent Office. While the EPO upheld the validity of AutoStore’s parent patent EP 027 and upheld in amended form EP 794, it revoked EP 962, EP 31 57 847 and EP3250481.
Parties await a final hearing over EP 30 50 824, which is scheduled for 22 November 2022.
In Germany, invalidity proceedings are developing between the two companies. In 2021, Ocado sued AutoStore’s Norwegian, German and Polish companies for infringement of two utility models. It filed two suits in Mannheim (case ID: 2 O 27/21 and 7 O 36/21), with two proceedings also filed in Munich (case IDs 7 O 3904/21 and 7 O 3905/21). In both courts, the property rights are identical.
However, the courts have now stayed proceedings in all four cases, pending the outcome of a decision on validity by the DPMA. The parties must await confirmation of Ocado’s utility model right before the German case can continue.
In early 2021, Ocado filed infringement and antitrust actions against AutoStore at the US District Court for the District of New Hampshire and the United States District Court for the Eastern District of Virginia, respectively.
In December 2021, a judge in an ITC trial ruled three AutoStore patents invalid and the fourth valid but not infringed.
According to Reuters, AutoStore’s claim over a fifth patent was abandoned the night before the trial. AutoStore has challenged the initial decision. The outcome of a tribunal to review parts of the decision will be made available on 14 April 2022.
The London office of US firm Kirkland and Ellis is representing AutoStore in the US and UK proceedings. AutoStore is a long-standing client of the firm.
London-based litigation boutique Bristows is also assisting AutoStore in EPO opposition proceedings.
On the other hand, Ocado is relying on Powell Gilbert in the UK, with the team led by one of the firm’s founding partners Simon Ayrton. In Germany, the retail group relies on Düsseldorf-based litigation firm Wildanger, with a team led by partner Soenke Fock.
In the US, Sullivan & Cromwell represents the UK company. Ocado fought the AutoStore patents at the EPO with the help of UK firm Keltie, although the company files patents at the EPO either through its own IP department, or with UK firm Abel & Imray.
Powell Gilbert (London): Simon Ayrton, Zoe Butler, Tom Oliver (partners)
Keltie (London): Shakeel Ahmad (partner, patent attorney)
Wildanger Kehrwald Graf v. Schwerin & Partner (Düsseldorf): Soenke Fock, Peter-Michael Weisse (partners); associate: Alexander Wiese
Cohausz & Florack (Düsseldorf): Jochen Kapfenberger (partner, patent attorney)
In-house (Hatfield): Lucy Wojcik (head of IP)
Kirkland & Ellis (London): Nicola Dagg, Steven Baldwin, Peter Pereira (partners); associates: Sinclaire Marber Schäfer, Rory Clarke, William Jensen (of counsel), Nessa Khandaker, Carissa Wilson
Bristows (London): Myles Jelf (partner); associate: Rachael Cartwright
Arnold Ruess (Düsseldorf): Bernhard Arnold (partner); associates: Marina Wehler (counsel), Till Völger
Olbricht Buchhold Keulertz (Hamburg): Robin Keulertz (partner); Karsten Rachow (both patent attorneys)