AutoStore filed an entitlement action against Ocado Group

AutoStorehas recently filed an entitlement action against Ocado Group (“Ocado”). The action was filed in the United Kingdom for confirming that it is the inventor and rightful owner of those certain patents which are filed by an online grocery retailer and technology company Ocado. AutoStore is the pioneer and global leader which deals in automated storage and retrieval systems (AS/RS).

This suit of action was filed in the Intellectual Property Office of the United Kingdom which is the standard procedure before transferring the action to the High Court of England & Wales. AutoStore filed separate patent infringement lawsuits as well against Ocado on October 1 in the United Kingdom and the United States. This action was taken to stop Ocado from further infringement of AutoStore’s existing patents. The entitlement action is an addition to it.

The claim is basically concerned with certain patents which are filed by Ocado since June 2014. Those patents are related to the methods, systems, and apparatus for controlling the movement of robots belonging to AS/RS systems such as the Ocado Smart Platform (OSP). To be specific, the patent is related:

• To optimizing the placement of product within an AS/RS,
• To certain safety features in such systems for bringing the robots to a halt.

Patent filings of Ocado covered substantial technical information, know-how, and materials that are essential for robotic technology and also included robotic storage and retrieval systems. AutoStore alleged of providing this information to Ocado in good faith in a couple of interactions that took place between 2011 and 2012. During that time period, Ocado became a customer of AutoStore.

Sneak peek into those interactions:

• AutoStore allowed the executives and engineers of Ocado to inspect an AutoStore system;
• AutoStore made certain software and hardware available to Ocado for the purpose of enabling Ocadoto to simulate the operation of an AutoStore system and perform factory testing;
• AutoStore also provided training days in the operation of AutoStore’s system.

During such interactions, Ocado fetched the relevant information about the technologies. Since then, Ocado filed patents covering those technologies stating that they were invented by numerous Ocado executives as inventors, including Chief Executive Tim Steiner. Whereas it is being alleged by AutoStoreto be the original inventor of such technologies.

The relevant patents have been granted in the UK in the year 2018/2019 but they are still having a status of pending patent applications in Europe. The technology covered by these patents includes the fundamental aspects of design in AS/RS systems such as the OSP. Such a system i.e., the OSP forms the basis of every partnership of Ocado with international retailers like Kroger in the US, Marks & Spencer, and Morrisons in the UK.

AutoStore is seeking the following orders apart from other things:

• Affirm the company to be the true owner of the patents,
• Assign the patents to AutoStore,
• 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.

Karl Johan Lier, CEO of AutoStore, said: “Ocado took advantage of being our customer and having access to AutoStore’s market-leading 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 recognized as the rightful owner of Ocado’s corresponding patents.”

It was founded in 1996 as Jakob Hattel and Logistics AS. It is a robotics technology company that invented and continues to pioneer Cube Storage Automation, the densest storage technology. Its focus is to combine software and hardware with human capabilities to further develop the future of efficient warehouses. With more than 500 installations in 30 countries, the company is represented in a variety of industries. Sales, designs, and installations are carried out by a network of qualified integrators who are its partners. Its headquarters are in Nedre Vats, Norway, and it has offices, warehouses, and/or manufacturing sites in the USA, UK, Poland, Germany, France, Korea, and Japan.