AutoStore, the pioneer and global leader in automated storage and retrieval systems (AS/RS), has filed an entitlement action in the UK to confirm that it is the inventor and rightful owner of certain patents filed by online grocery retailer and technology company Ocado Group.
The action was filed in the Intellectual Property Office of the UK, the standard procedure before transfer to the High Court of England & Wales.
The claim concerns certain patents filed by Ocado since June 2014 relating to the methods, systems and apparatus for controlling the movement of robots in AS/RS systems such as the Ocado Smart Platform (OSP). Specifically, the patents relate to optimizing the placement of product within an AS/RS and to certain safety features in such systems for bringing the robots to a halt.
Ocado’s patent filings included substantial technical information, know-how and materials relating to robotic technology, including robotic storage and retrieval systems. AutoStore provided this information to Ocado in good faith in a series of interactions between 2011 and 2012 when Ocado became an AutoStore customer.
These 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.
Since then, Ocado has filed patents covering technologies in fact invented by AutoStore and claiming numerous Ocado executives as “inventors,” including Chief Executive Tim Steiner, AutoStore says.
The relevant patents have been granted in the UK in 2018–2019 but are still pending patent applications in Europe.
The technology covered by these patents includes fundamental aspects of design in AS/RS systems like the OSP, which forms the basis of Ocado’s partnerships with international retailers including Kroger in the U.S. and Marks & Spencer and Morrisons in the UK.
AutoStore 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.
This action follows, and is an addition to, the separate patent infringement lawsuits filed by AutoStore against Ocado on Oct. 1 in the UK and U.S. to prevent Ocado from continuing to infringe AutoStore’s existing patents.
“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,” Karl Johan Lier, CEO of AutoStore, said.