Ocado has filed several patent infringement suits against competitor AutoStore in Germany, taking the dispute to the next level. The new litigation follows the competitors taking turns suing each other in the UK and US. The companies are battling over patents for robot-assisted automation systems. The dispute is about the restoration of inventors’ rights, patent infringement and unfair competition.
30 March 2021 by Mathieu Klos
Ocado, a UK-based supplier of automated grocery warehouses, has filed patent infringement suits against AutoStore in Germany. Ocado is accusing three AutoStore companies of infringing its property rights.
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.”
In Germany, the UK company sued the Norwegian manufacturer of automated storage and retail systems on the basis of two utility models. Ocado filed two suits in Mannheim (case ID: 2 O 27/21 and 7 O 36/21). Two proceedings are also pending in Munich (case IDs 7 O 3904/21 and 7 O 3905/21). In both courts, the property rights are identical.
The two companies are unrelenting in their pursuit of the case. A simmering dispute between the two competitors escalated last October when AutoStore claimed that the Ocado Smart Platform (OSP) had infringed six patents at the UK High Court (case ID: HP 2020-000035). At the same time, AutoStore also filed a suit in the US.
A month later, AutoStore upped the ante by filing an entitlement action at the UKIPO. However, it is likely that UKIPO will transfer the claim to the UK High Court in London. AutoStore asked the court to confirm that it is the inventor and rightful owner of certain patents filed by Ocado in the UK.
AutoStore is accusing Ocado of using knowledge from previous business relationships and a know-how collaboration to build up its own property rights. Ocado has filed patents at the UKIPO and the European Patent Office since 2014. While the UKIPO has already granted the UK patents, Ocado is still waiting on confirmation from the EPO.
However, Ocado denied AutoStore’s accusations. Shortly afterwards, the Norwegian company went on the offensive. Then, before Christmas, the UK firm filed a defence in the UK High Court. The defence stated that Ocado does not infringe any of AutoStore’s patents, and claimed AutoStore’s patents are invalid.
Ocado, Tharsus Group and, as strawman, Munich patent attorney firm Abitz & Partner are conducting oppositions against patents EP 29 28 794, EP 29 62 962, EP 30 70 027, EP 31 57 847, EP 30 50 824 and EP 32 50 481 at the EPO.
In January 2021, Ocado filed a complaint against AutoStore in the US. This seeks to remedy AutoStore’s infringement of several of Ocado’s US patents. Then, a month later, Ocado filed an antitrust suit against its Norwegian competitor in the US District Court for the Eastern District of Virginia.
Ocado is accusing AutoStore of fraudulent conduct in the granting of a US patent for a central cavity robot. Ocado claims that the Norwegian company provided false information to the US Patent and Trademark Office, or deliberately withheld information, to prevent any competition. AutoStore denies the accusations. ITC proceedings are also pending in the USA.
According to business publications, both companies are vying to become the world’s leading provider of automated warehouses used by retailers for online deliveries to customers.
In the UK proceedings, the two manufacturers of such automation systems both claim to be the market leader. Both companies rely on some of the best-known litigation teams in the country.
Kirkland and Ellis is representing AutoStore in the US and UK proceedings. Autostore is a long-standing client of the firm.
Furthermore, London-based litigation boutique Bristows is also assisting AutoStore in EPO oppositions against Ocado patents. Bristows and AutoStore also enjoy a long-standing relationship, although the Norwegian company frequently files its patents at the EPO with Norwegian patent attorney firm Onsagers.
For the UK proceedings, Ocado is relying on Powell Gilbert which, alongside Bristows, is a leading litigation firm in the UK. However, Düsseldorf-based litigation firm Wildanger led by partner Soenke Fock is handling the German lawsuits for Ocado. The firm is also one of the market leaders in Germany.
Like other German patent litigation boutiques, it has a good but non-exclusive relationship with Powell Gilbert.
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.
Wildanger Kehrwald Graf v. Schwerin & Partner (Düsseldorf): Soenke Fock, Peter-Michael Weisse; associate: Alexander Wiese
Cohausz & Florack (Düsseldorf): Jochen Kapfenberger (patent attorney)
Powell Gilbert (London): Simon Ayrton, Zoe Butler, Tom Oliver
Keltie (London): Shakeel Ahmad (patent attorney)
In-house (Hatfield): Lucy Wojcik (head of IP)
Arnold Ruess (Düsseldorf): Bernhard Arnold; counsel: Marina Wehler; associate: Till Völger
Olbricht Buchhold Keulertz (Hamburg): Robin Keulertz, Karsten Rachow (both patent attorneys)
Kirkland & Ellis (London): Nicola Dagg, Steven Baldwin; associates: Peter Pereira, Sinclaire Marber Schäfer
Bristows (London): Myles Jelf; associate: Rachael Cartwright
Regional Court Mannheim, 2nd Civil Chamber
Holger Kircher (presiding judge)
Regional Court Mannheim, 7th Civil Chamber
Peter Tochtermann (presiding judge)
Regional Court Munich, 7th Civil Chamber
Matthias Zigann (presiding judge)
Update 23.12.2021: In a first oral hearing at the Mannheim Regional Court it became known that AutoStore is represented in the German cases by the Düsseldorf litigation firm Arnold Ruess and patent attorneys from Olbricht Buchhold Keulertz.