Norwegian automated storage and retrieval systems (ASRS) developer AutoStore has begun a second legal action in the UK against British online grocery technology company Ocado.
Whereas the previous claims relate to Ocado’s alleged infringement of AutoStore’s existing patents, the new entitlement action is to confirm that AutoStore is the inventor and rightful owner of certain patents that have been filed by Ocado.
In a statement, Ocado rebuked the latest claim and said it was confident in the strength of its intellectual property. “We note the additional claims from AutoStore. Any suggestion that we have taken their IP is absurd. These inventions are ours and we will continue to defend our intellectual property by whatever means necessary.
“Ocado is entirely confident in the integrity of its Intellectual Property portfolio and the disciplined approach we have taken to building our capabilities and the Ocado Smart Platform over the past 20 years.”
The action was filed in the Intellectual Property Office, the standard procedure before transfer to the High Court of England & Wales.
The claim concerns certain patents allegedly filed by Ocado since June 2014 relating to the methods, systems and apparatus for controlling the movement of robots in ASRS systems such as the Ocado Smart Platform (OSP).
Specifically, the patents relate to optimising the placement of product within an ASRS, and to certain safety features in such systems for bringing the robots to a halt.
According to AutoStore, Ocado’s patent filings included “substantial technical information, know-how and materials relating to robotic technology, including robotic storage and retrieval systems”.
AutoStore said it provided this information to Ocado “in good faith” in a series of interactions between 2011 and 2012 when Ocado reportedly became an AutoStore customer.
The alleged interactions included AutoStore allowing Ocado executives and engineers to inspect an AutoStore system; AutoStore making available to Ocado certain software and hardware to enable Ocado to simulate the operation of an AutoStore system and perform factory testing; and AutoStore providing training days in the operation of AutoStore’s system.
AutoStore has claimed that, since then, Ocado has filed patents covering technologies said to be invented by AutoStore and claimed numerous Ocado executives as inventors, including chief executive Tim Steiner.
According to AutoStore, the relevant patents were granted in the UK in 2018/2019 but are reportedly still pending patent applications in Europe.
AutoStore has alleged that the technology covered by these patents includes fundamental aspects of design in ASRS systems like the OSP, which it argued forms the basis of Ocado’s partnerships with international retailers including Kroger in the USA and Marks & Spencer and Morrisons in the UK.
AutoStore said it is seeking orders that, among other things, affirm it is the true owner of the patents, assign the patents to AutoStore, and declare that none of the Ocado personnel named as inventors within the patents was in fact the inventor or has the right to be named as such.
The action follows, and is an addition to, separate patent infringement lawsuits filed by AutoStore against Ocado on 01 October 2020 in the UK and USA to prevent Ocado and its partner, Tharsus Group, from manufacturing, importing, using and selling technology that infringes AutoStore’s patents, as well as monetary damages.
Karl Johan Lier, CEO of AutoStore, said: “Ocado took advantage of being our customer and having access to AutoStore’s technology and then attempted to assert ownership over what it had learned from AutoStore by filing its own patents.
“In addition to the action we’ve already taken to protect and assert our existing patents, this action will establish that AutoStore invented these technologies and should therefore be recognised as the rightful owner of Ocado’s corresponding patents.”
