DCT

2:20-cv-00494

AutoStore Technology As v. O

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:20-cv-00494, E.D. Va., 10/01/2020
  • Venue Allegations: Plaintiff alleges venue is proper because certain Ocado defendants maintain a regular and established place of business in the district and have committed acts of infringement there. Other defendants are identified 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 robotic vehicles and systems for transporting storage bins.
  • Technical Context: The technology at issue is automated storage and retrieval systems (AS/RS), a key component in modern logistics and e-commerce for maximizing warehouse storage density and order fulfillment speed.
  • Key Procedural History: The complaint alleges that Ocado was previously a customer of AutoStore and that a UK-based Ocado subsidiary sued AutoStore in Norway in 2017 to dispute inventorship of the patent family covering the "Cavity Robot" design, which includes three of the patents-in-suit. The complaint states the Norwegian courts ruled in favor of AutoStore. Subsequent to their issuance, U.S. Patent Nos. 10,294,025 and 10,474,140 were subject to Inter Partes Review (IPR) proceedings. The IPR for the ’025 Patent resulted in the cancellation of asserted claims 1 and 18, while the IPR for the ’140 Patent confirmed the patentability of asserted claims 1 and 15.

Case Timeline

Date Event
2012-12-10 Priority Date for ’525, ’239, ’478 Patents
2014-06-19 Priority Date for ’025 Patent
2015-01-28 Priority Date for ’140 Patent
2015-01-01 Alleged manufacture date of first Ocado robots
2017-01-01 Ocado subsidiary allegedly sues AutoStore in Norway
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 Issued for ’025 Patent (cancelling claims 1, 18)
2023-01-18 IPR Certificate Issued for ’140 Patent (confirming patentability)

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 robots for AS/RS systems as suffering from potential instability and high torque when lifting and transporting storage bins from the side, which limits their handling weight and speed (’525 Patent, col. 1:50-58).
  • The Patented Solution: The invention proposes a robot with a "cavity arranged centrally within the vehicle body" to receive and carry a storage bin (’525 Patent, Abstract). This design, illustrated in figures such as Fig. 3, improves stability by centering the load, which "effectively remove[s] the undesired torque" (’525 Patent, col. 3:48-51). The design also places at least one set of wheels "fully within the vehicle body," creating a more compact and space-efficient vehicle (’525 Patent, col. 2:29-31).
  • Technical Importance: This central-cavity architecture aimed to create more stable and efficient robots, enabling faster operation and denser storage configurations in automated warehouses (’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 specific type of bin storage system.
    • The system has a three-dimensional structure of pillars and supporting rails defining storage columns and rolling tracks.
    • The robot vehicle itself comprises a vehicle body, a plurality of rolling members (wheels), and a cavity.
    • The cavity is "arranged internally within the vehicle body" and is arranged to receive a storage bin from a storage column.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,294,025 - “Robot for Transporting Storage Bins,” issued May 21, 2019

The Invention Explained

  • Problem Addressed: The patent background explains that prior art robotic vehicles often occupy the space of two adjacent storage columns, which "limit[s] the maximum number of simultaneously operating vehicles" (’025 Patent, col. 2:42-45). A separate challenge is efficiently changing the robot's direction of travel on the grid.
  • The Patented Solution: The invention describes a vehicle assembly with a displacement mechanism to change direction by lifting one set of wheels off the track while the other engages (’025 Patent, Abstract). A key aspect is placing the displacement motor "in a lateral plane above the cavity" to generate a "vertically directed pressure force" on the wheels (’025 Patent, col. 2:18-24). This configuration enables a robot footprint that occupies "at most the lateral cross sectional area of the storage column," allowing robots to pass each other more freely and increasing system density (’025 Patent, col. 4:26-34).
  • Technical Importance: By enabling a single-cell robot footprint, the invention allows for a significant increase in the density and throughput of robots operating on a storage grid (’025 Patent, col. 4:43-48).

Key Claims at a Glance

  • The complaint asserts at least independent claims 1 (a vehicle assembly) and 18 (a storage system) (Compl. ¶75).
  • Claim 1 requires:
    • A vehicle assembly for picking up storage bins.
    • A vehicle body with a cavity.
    • A lifting device.
    • Driving means including first and second sets of wheels.
    • A displacement arrangement with a motor "situated in a lateral plane above the cavity" that provides power to lift one set of wheels.
  • Claim 18 requires:
    • A storage system for bins.
    • The remotely operated vehicle assembly of claim 1.
    • A vehicle support with crossing supporting rails.
    • A bin storing structure with storage columns.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,474,140 - “Robot for Transporting Storage Bins,” issued November 12, 2019

  • Technology Synopsis: This patent addresses the problem of efficiently powering and controlling the robot's wheels. The solution places the driving means (e.g., an electric motor with permanent magnets) at least partially within the vehicle's rolling means (the wheels), creating an "in-wheel" motor design for a more compact and directly-driven system (’140 Patent, Abstract; col. 2:9-20). The patent also describes using sensors like rotary encoders for precise angular position feedback (’140 Patent, col. 2:47-51).
  • Asserted Claims: At least independent claims 1 (a vehicle) and 15 (a system) (Compl. ¶81).
  • Accused Features: The complaint alleges that the OSP bots used in the Ocado Smart Platform infringe (’140 Patent, ¶81).

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

  • Technology Synopsis: This patent claims the automated storage system as a whole, integrating the central-cavity robot design with the grid structure. The problem is creating an efficient overall system. The solution is a system comprising a grid with storage columns and a plurality of robots, where the robots feature an internal cavity to receive bins and wheels for moving along the grid's tracks (’239 Patent, Abstract; Claim 1).
  • Asserted Claims: At least independent claims 1 (a system) and 10 (a robot vehicle) (Compl. ¶87).
  • Accused Features: The complaint alleges the overall OSP infringes the system claims and the OSP bot infringes the robot claims (Compl. ¶87).

U.S. Patent No. 10,696,478 - “Automated Storage System,” issued June 30, 2020

  • Technology Synopsis: This patent claims methods of operating a bin storage system and the robot vehicle itself. The invention focuses on the operational efficiency gained by using a central-cavity robot. The solution involves a method where the robot moves along the grid prior to its lifting device coming to a complete stop in the end position within the cavity, increasing operational speed (’478 Patent, Claim 1).
  • Asserted Claims: At least independent claim 19 (a system) (Compl. ¶93).
  • Accused Features: The complaint alleges the OSP bot and system infringe this patent (Compl. ¶93).

III. The Accused Instrumentality

Product Identification

The Accused Products are the "Ocado Smart Platform ('OSP')," which is described as a suite of solutions for online grocery fulfillment, and its components, including the robotic vehicles ("OSP bots") (Compl. ¶3, ¶69).

Functionality and Market Context

  • The OSP is an end-to-end system that includes a physical automated storage and retrieval solution (Compl. ¶3). This physical solution comprises a "cubic storage grid housing goods kept in bins, as well as wirelessly controlled robots used to place and retrieve the stored bins" (Compl. ¶41). The complaint includes a photograph of the accused system in operation, showing numerous bots moving across a grid structure filled with bins (Compl. p. 20, "Robots in Ocado's AS/RS System in Andover, U.K.").
  • The complaint alleges the OSP is sold as a "fully integrated service" to major grocery retailers worldwide (Compl. ¶44). In the U.S., Ocado has a significant partnership with Kroger Co. to deploy up to 20 "Customer Fulfillment Centers," with the first having broken ground in June 2018 (Compl. ¶46-47).

IV. Analysis of Infringement Allegations

’525 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A robot vehicle for transporting storage bins in a bin storage system, comprising... a three-dimensional storage structure comprising... supporting rails arranged in a two-dimensional matrix on top of the pillars, said supporting rails defining rolling tracks... and... openings for the storage columns The OSP is a bin storage system that includes a grid structure with supporting rails on which the OSP bots travel. ¶40, ¶41 col. 14:1-12
a vehicle body The physical chassis of the OSP bot. ¶40, ¶69 col. 2:11
a plurality of rolling members attached to the vehicle body, arranged for traveling in a first and second directions along a plurality of rolling tracks of the bin storage system The wheels of the OSP bots, which are used to travel along the tracks of the OSP grid. The complaint alleges these wheels are driven by motors from Printed Motor Works Ltd. ¶40, ¶43 col. 2:17-24
a cavity arranged internally within the vehicle body arranged to receive a storage bin from a storage column The complaint alleges that Ocado has a "Cavity Robot Family" and that the OSP bots are designed to hold bins within the robot's main body. ¶66, ¶69 col. 2:25-29

Identified Points of Contention

  • Scope Questions: The central dispute may turn on the scope of the term "cavity arranged centrally". Questions may arise as to whether the specific internal configuration of the OSP bot meets the "central" limitation as defined by the patent's specification and prosecution history.
  • Technical Questions: While the complaint alleges the OSP bot has an internal cavity, it does not provide detailed schematics. The actual design, dimensions, and functionality of the OSP bot's bin-holding mechanism will be a key factual question for discovery. The complaint includes a photograph of an Ocado robot, which appears to hold a bin within its frame, providing some visual support for the allegation (Compl. p. 14, "Illustration of transparent B1 robot holding a bin in its cavity," which Plaintiff alleges Ocado copied).

’025 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A remotely operated vehicle assembly... comprising... a vehicle body displaying a cavity The OSP bot, which the complaint alleges is a vehicle assembly with an internal cavity for holding bins. ¶66, ¶75 col. 12:1-4
a displacement arrangement coupled to the driving means comprising a displacement motor configured to provide power to displace at least one of the first set of vehicle wheels and the second set of vehicle wheels The complaint alleges the OSP bot infringes claim 1, which requires this feature, but does not specify how the OSP bot's wheel-lifting mechanism operates. ¶75 col. 12:12-24
wherein the displacement motor is situated in a lateral plane above the cavity The complaint does not provide specific factual allegations about the location of the displacement motor in the OSP bot. ¶75 col. 12:25-30

Identified Points of Contention

  • Validity Questions: The IPR Certificate for the ’025 Patent indicates that claims 1 and 18 have been cancelled (’025 Patent, p. 29). This presents a significant, likely insurmountable, barrier to asserting these specific claims in litigation.
  • Technical Questions: Assuming other claims were asserted, a primary factual question would be the specific design and location of the OSP bot's wheel displacement mechanism. The complaint lacks any detail on this point, making it a critical area for discovery to determine if it operates in the manner claimed by the patent.

V. Key Claim Terms for Construction

For the ’525 Patent

  • The Term: "cavity arranged centrally within the vehicle body" (Claim 1)
  • Context and Importance: The concept of a central cavity is the core of the asserted invention in the ’525 patent. The definition of "centrally" will be critical to the infringement analysis, as it dictates how much deviation from a perfect geometric center is permissible. Practitioners may focus on this term because it is a potential point of non-infringement if Ocado's design is shown to be asymmetric or otherwise not "central."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not impose a strict geometric symmetry requirement. The specification's stated purpose is to "remove the undesired torque" and "improv[e] the stability," which could arguably be achieved by an arrangement that is substantially, but not perfectly, central (’525 Patent, col. 3:48-51).
    • Evidence for a Narrower Interpretation: The figures in the patent, such as Fig. 3, consistently depict a cavity that is perfectly symmetrical within the rectangular framework of the robot body. A defendant could argue these embodiments define the term and limit it to a strictly symmetrical configuration.

For the ’025 Patent

  • The Term: "displacement motor is situated in a lateral plane above the cavity" (Claim 1)
  • Context and Importance: This term is highly specific and recites a precise spatial relationship between two key components. Infringement of this limitation will depend entirely on the physical layout of the accused OSP bot. Given the IPR cancellation of this claim, its construction is moot for this case, but in a hypothetical scenario, it would be a dispositive issue.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: "Above the cavity" could be interpreted broadly to mean any position with a Z-axis coordinate greater than the top opening of the cavity, without being directly over it in the X-Y plane.
    • Evidence for a Narrower Interpretation: The patent's embodiment in Fig. 6 shows the displacement motor (25) and its associated lever arm (23) located in the upper portion of the vehicle framework (4u), directly over the space where the cavity is formed. A defendant could argue this specific arrangement limits the claim's scope.

VI. Other Allegations

Indirect Infringement

For each asserted patent, the complaint alleges both induced and contributory infringement (e.g., Compl. ¶71-72, ¶77-78). Inducement is alleged based on Defendants providing the OSP system along with "instructions and guidance on the use of OSP and OSP bots" to its partners, such as Kroger, with the specific intent to cause infringement (Compl. ¶71). Contributory infringement is based on the allegation that the OSP bots are a material part of the inventions, are "especially made and/or adapted for infringing," and are not staple articles of commerce (Compl. ¶72).

Willful Infringement

The complaint alleges willful infringement based on both pre- and post-suit knowledge (Compl. ¶65, ¶70). The basis for pre-suit knowledge is particularly detailed, alleging that Ocado was a former customer of AutoStore, received technical documentation and training on AutoStore's system, and previously initiated litigation in Norway over the inventorship of the "Cavity Robot Family" of patents, which includes the ’525, ’239, and ’478 patents-in-suit (Compl. ¶36-37, ¶66).

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

  • A central issue will be the impact of post-issuance proceedings: The cancellation of asserted claims 1 and 18 of the ’025 Patent during IPR will likely remove that patent from the dispute, while the confirmation of the ’140 Patent's claims strengthens its standing. The case will likely narrow to focus on the remaining four patents.
  • The dispute will raise a core question of definitional scope: Can the term "cavity arranged centrally" in the ’525 patent be construed to read on the specific design of the OSP bot? The outcome of this construction could be dispositive for a significant portion of the infringement case.
  • A key evidentiary question will be one of technical proof: The complaint alleges infringement of highly specific mechanical features, such as the in-wheel motors of the ’140 patent. The case will depend on what discovery reveals about the internal design and operation of the OSP bots and whether they practice these claimed technologies.
  • Finally, the question of willfulness will be prominent. Given the extensive history alleged between the parties, including a prior customer relationship and litigation over inventorship, a finding of infringement would likely be accompanied by a significant dispute over whether the conduct was willful, which could expose Defendants to enhanced damages.