DCT

1:20-cv-01149

AutoStore Technology As v. Ocado Operating Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-01149, E.D. Va., 10/01/2020
  • Venue Allegations: Venue is alleged based on Defendants maintaining a regular and established place of business within the district, committing acts of infringement in the district, and, for several defendants, their status as foreign corporations.
  • Core Dispute: Plaintiff alleges that Defendant’s Ocado Smart Platform, an automated warehouse fulfillment system, infringes five U.S. patents related to the design and operation of automated storage and retrieval system (AS/RS) robots and systems.
  • Technical Context: The technology at issue is automated storage and retrieval systems, which use fleets of robots operating on a grid to manage inventory in high-density cubic storage structures, a foundational technology for modern e-commerce and logistics.
  • Key Procedural History: The complaint alleges that Defendant Ocado was a former customer, having purchased an AutoStore system in 2012. It further alleges that in 2017, an Ocado subsidiary sued AutoStore in Norway to dispute inventorship of the patent family for the "Cavity Robot" technology, which includes three of the patents-in-suit, and that the Norwegian courts ruled in favor of AutoStore. Subsequent to the filing of this complaint, U.S. Patent No. 10,294,025 was the subject of an Inter Partes Review (IPR), which resulted in the cancellation of asserted claims 1, 18, and 19. U.S. Patent No. 10,474,140 was also subject to an IPR, which confirmed the patentability of asserted claims 1 and 15.

Case Timeline

Date Event
2012-12-10 Earliest Priority Date for '525, '239, '478 Patents
2014-06-19 Earliest Priority Date for '025 Patent
2015-01-28 Earliest Priority Date for '140 Patent
2012-01-01 Ocado purchases an AutoStore system
2015-01-01 First Ocado robots go into manufacture
2017-01-01 Ocado sues AutoStore in Norway over inventorship
2018-06-01 First Ocado-Kroger U.S. facility breaks ground
2018-10-09 '525 Patent Issued
2019-05-21 '025 Patent Issued
2019-11-12 '140 Patent Issued
2019-12-03 '239 Patent Issued
2020-06-30 '478 Patent Issued
2020-10-01 Complaint Filing Date
2022-09-30 IPR Certificate issues cancelling asserted claims of '025 Patent
2023-01-18 IPR Certificate issues confirming patentability of asserted claims of '140 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,093,525 - "Robot for Transporting Storage Bins," Issued October 9, 2018

The Invention Explained

  • Problem Addressed: The patent describes prior art AS/RS robots as suffering from several disadvantages, including high torque during lifting that creates instability, limits the weight of bins, and reduces operational efficiency (’525 Patent, col. 1:46-56).
  • The Patented Solution: The invention proposes a robot with a fundamentally different design: a central cavity within the robot’s body is used to receive and carry a storage bin. This design centralizes the bin’s mass, improving stability and allowing for a more compact robot by arranging at least one set of its wheels fully within the vehicle body, as opposed to externally. (’525 Patent, Abstract; col. 2:25-32).
  • Technical Importance: This central-cavity architecture allows robots to handle heavier loads more stably and to operate on a denser grid, increasing overall warehouse throughput and storage capacity (’525 Patent, col. 2:1-5).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶69).
  • Claim 1 requires:
    • A robot vehicle for transporting storage bins in a bin storage system.
    • A vehicle body.
    • A plurality of rolling members for travel.
    • A cavity arranged internally within the vehicle body for receiving a storage bin.
    • The claim also recites features of the bin storage system itself, including a three-dimensional structure of pillars and supporting rails.

U.S. Patent No. 10,294,025 - "Robot for Transporting Storage Bins," Issued May 21, 2019

The Invention Explained

  • Problem Addressed: Prior art systems are described as inefficient because each robot occupies the space of two storage columns, limiting the number of robots that can operate simultaneously on the grid (’025 Patent, col. 1:41-45). The patent also addresses the need for an effective mechanism for a robot to change its direction of travel on the grid.
  • The Patented Solution: The invention is a vehicle with a "displacement arrangement" that uses a motor and lever arms to lift one set of wheels (e.g., those for X-axis travel) off the supporting rails. This allows the robot to engage the other set of wheels (for Y-axis travel), enabling a 90-degree change in direction. The motor for this displacement is located in a plane above the robot's central cavity. (’025 Patent, Abstract; col. 2:1-24).
  • Technical Importance: This mechanism provides a discrete and rapid method for robots to switch between perpendicular tracks, which is a fundamental capability for navigating a two-dimensional grid to access any storage location.

Key Claims at a Glance

  • The complaint asserts at least independent claims 1 and 18 (Compl. ¶75).
  • NOTE: Subsequent to the complaint's filing, claims 1, 18, and 19 were cancelled in IPR proceeding IPR2021-00274, with a certificate issued September 30, 2022.
  • Claim 1 (Cancelled) required:
    • A vehicle assembly with a body, cavity, and lifting device.
    • Driving means with first and second sets of vehicle wheels.
    • A displacement arrangement with a displacement motor to lift one set of wheels off the underlying system.
    • The displacement motor is situated in a lateral plane above the cavity.
  • Claim 18 (Cancelled) recited a storage system incorporating the vehicle assembly of claim 1.

U.S. Patent No. 10,474,140 - "Robot for Transporting Storage Bins," Issued November 12, 2019

  • Patent Identification: U.S. Patent No. 10,474,140, "Robot for Transporting Storage Bins," issued November 12, 2019 (Compl. ¶56).
  • Technology Synopsis: This patent discloses a robot with a highly integrated drive system. To create a more compact and efficient design, the driving means (e.g., an electric motor) is located at least partly within the vehicle's wheels (the "rolling means"), providing wheel-specific power. (’140 Patent, Abstract; col. 2:9-20).
  • Asserted Claims: At least independent claims 1 and 15 (Compl. ¶81).
  • Accused Features: The motors and wheel assemblies of the Ocado bots used in the OSP (Compl. ¶81).

U.S. Patent No. 10,494,239 - "Automated Storage System and Robot for Transporting Storage Bins," Issued December 3, 2019

  • Patent Identification: U.S. Patent No. 10,494,239, "Automated Storage System and Robot for Transporting Storage Bins," issued December 3, 2019 (Compl. ¶59).
  • Technology Synopsis: This patent claims an entire automated storage system. The invention combines a robot designed with an internal cavity (as in the '525 patent) with the specific structure of the storage grid on which it operates, defining the relationship between the robot and the grid's rails and openings. (’239 Patent, Abstract).
  • Asserted Claims: At least independent claims 1 and 10 (Compl. ¶87).
  • Accused Features: The integrated Ocado Smart Platform, including the OSP bots and the associated grid structure (Compl. ¶87).

U.S. Patent No. 10,696,478 - "Automated Storage System," Issued June 30, 2020

  • Patent Identification: U.S. Patent No. 10,696,478, "Automated Storage System," issued June 30, 2020 (Compl. ¶62).
  • Technology Synopsis: This patent claims a method for operating an automated storage system to improve efficiency. It describes a process where a robot positions itself over a storage column, begins lifting a bin, and then starts moving along the grid to its next destination before the bin has been fully lifted into its end position within the robot's cavity. (’478 Patent, cl. 10).
  • Asserted Claims: At least claim 19 (Compl. ¶93).
  • Accused Features: The operational methods of the OSP bots as they transport bins within the OSP system (Compl. ¶93).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is the Ocado Smart Platform ("OSP") (Compl. ¶3). This platform is a comprehensive solution for operating an online grocery business that includes software and a "physical fulfillment asset solution" comprising robotic vehicles ("OSP bots"), a cubic storage grid, and storage bins (Compl. ¶¶3, 39-41). A schematic shows the various software and hardware components of the accused Ocado Smart Platform, including the "Fulfilment MHE" (Material Handling Equipment) (Compl. ¶40, Figure on p. 19).

Functionality and Market Context

The OSP is a grid-based AS/RS system where wirelessly controlled robots travel on a grid structure to retrieve and store goods held in bins (Compl. ¶¶40-41). A photograph shows the accused Ocado robots operating on the grid in a UK fulfillment center (Compl. ¶41, Figure on p. 20). The complaint alleges the OSP is based on technology pioneered by AutoStore (Compl. ¶41). The OSP is marketed as a managed service to major grocery retailers worldwide, including a partnership with Kroger in the United States to deploy up to 20 "Customer Fulfillment Centers" at a reported cost of $55 million each (Compl. ¶¶44, 46).

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,093,525 Infringement Allegations

The complaint alleges that the OSP bots directly infringe at least claim 1 of the ’525 patent and references an external exhibit (not provided) containing a detailed claim chart (Compl. ¶69). The narrative theory of infringement is based on the allegation that the OSP bots, like AutoStore's own "cavity" robots, incorporate the claimed features. An illustration depicts AutoStore's B1 robot with a transparent view of a storage bin held within its central cavity, which the complaint alleges is a technology replicated by Ocado (Compl. ¶32, Figure on p. 14). Based on descriptions in the complaint and patent, a potential mapping for a key claim element is as follows:

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A cavity arranged internally within the vehicle body arranged to receive a storage bin from a storage column. The accused OSP bots are part of a cubic AS/RS system and allegedly feature a design, based on AutoStore's technology, where the robotic vehicle houses the storage bin within its body for transport. ¶¶32, 41, 69 col. 2:25-27

U.S. Patent No. 10,294,025 Infringement Allegations

The complaint alleges infringement of at least claims 1 and 18 of the ’025 patent and references an external exhibit (not provided) for the detailed mapping (Compl. ¶75). However, the complaint does not provide sufficient detail for analysis of the alleged infringement. Specifically, it does not describe the mechanical means by which the accused OSP bots change their direction of travel, which is the focus of the asserted claims. A central allegation would require showing that the OSP bots use a "displacement arrangement" with a motor situated "above the cavity" to lift one set of wheels, but no facts are pleaded to support this specific structural configuration.

Identified Points of Contention

  • Factual/Technical Mismatch ('525 Patent): A primary point of contention will be whether the physical design of the Ocado OSP bot meets the limitations of the '525 patent's claims. Discovery will focus on the precise structure of the OSP bot and whether its bin-carrying mechanism constitutes a "cavity arranged internally within the vehicle body" as that term would be construed.
  • Evidentiary Gaps ('025 Patent): The complaint's allegations regarding the ’025 patent lack specific factual support for the claimed "displacement arrangement." A key question would be whether the OSP bots contain such a mechanism at all, and if so, whether it functions in the manner claimed. This is now largely a moot point for the asserted claims, as their cancellation in a subsequent IPR proceeding presents a dispositive defense against their enforcement.

V. Key Claim Terms for Construction

  • The Term: "cavity arranged internally within the vehicle body" (from '525 Patent, claim 1)
  • Context and Importance: This term is the central feature of the '525 patent's invention, distinguishing it from prior art designs where bins were gripped externally. The definition of "cavity" and "internally" will be critical to the infringement analysis. Practitioners may focus on this term because its scope will determine whether the OSP bot's method of holding a bin reads on the claim, or if it represents a different, non-infringing design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the cavity functionally as a "second section for receiving any storage bin" (’525 Patent, col. 2:13-15). This language could support a construction that does not require a high degree of enclosure, as long as the section receives the bin.
    • Evidence for a Narrower Interpretation: The patent repeatedly refers to the cavity as "central" and describes the bin's "easy entrance... into the central cavity" (’525 Patent, col. 2:31-33). Figures and the abstract depict the bin being lifted up into the robot's framework, suggesting a more defined and enclosed space rather than an open-sided grip. This may support a narrower construction requiring the bin to be substantially surrounded by the vehicle body.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants induce infringement by providing the OSP system to partners like Kroger, along with "instructions and guidance on the use of OSP and OSP bots" (Compl. ¶¶ 71, 77, 83, 89, 95). It also alleges contributory infringement, stating the OSP bots are a material part of the inventions, are specially made for this use, and are not staple articles of commerce (Compl. ¶¶ 72, 78, 84, 90, 96).

Willful Infringement

The complaint alleges willfulness based on knowledge acquired at least from the filing of the lawsuit (Compl. ¶65). For the '525, '239, and '478 patents, it further alleges willful blindness based on a 2017 lawsuit in Norway where Ocado unsuccessfully challenged AutoStore's inventorship of the same "Cavity Robot Family" of technology (Compl. ¶¶ 70, 88, 94).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A key evidentiary question will be one of technical implementation: Does the accused Ocado robot's design meet the '525 patent's core limitation of a "cavity arranged internally within the vehicle body," or does it use a sufficiently different mechanism for holding and transporting bins? The resolution will depend on a factual comparison of the accused product to the claim language as construed by the court.
  • A central issue for intent and potential damages will be one of willfulness: Can AutoStore establish that Ocado had pre-suit knowledge of the patents or was willfully blind to its infringement? The prior litigation between the parties in Norway concerning the inventorship of the very same "Cavity Robot" technology will likely be a focal point in arguments over whether any infringement was willful.
  • A threshold procedural question will be the impact of post-filing IPRs: How does the cancellation of asserted claims from the '025 patent affect the trajectory of the case? This development will force the litigation to focus on the viability of the infringement theories for the remaining patents and their asserted claims.