PTAB

IPR2021-00274

Ocado Group PLC v. AutoStore Technology As

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1. Case Identification

2. Patent Overview

  • Title: Robot for Transporting Storage Bins
  • Brief Description: The ’025 patent relates to remotely operated robotic vehicles used in automated material handling systems. Specifically, the patent describes robots for accessing and transporting storage bins within a three-dimensional grid of stacked bins, such as in a warehouse.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over a Single Reference - Claims 1 and 18-20 are anticipated by or obvious over the ’178 Patent.

  • Prior Art Relied Upon: Lindbo (Patent 10,577,178), referred to as the ’178 patent.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’178 patent, which is prior art under 35 U.S.C. §102(a)(2), disclosed every element of the challenged claims. For independent claim 1, the ’178 patent allegedly disclosed a robotic vehicle with a central cavity for receiving a bin, a lifting device, two perpendicular sets of wheels for movement in orthogonal directions, and a "wheel positioning mechanism" including a motor coupled to a lever arm to raise or lower one set of wheels. Critically, Petitioner asserted that the ’178 patent disclosed this displacement motor being located in a lateral plane above the cavity. For dependent claims 19 and 20, Petitioner contended the figures in the ’178 patent clearly show a "double track" rail system and a robot with a footprint occupying only a single grid space, respectively.
    • Motivation to Combine (for §103 grounds): This ground was primarily asserted as anticipation. The alternative obviousness argument posited that to the extent any minor difference existed, it would have been an obvious modification to a Person of Ordinary Skill in the Art (POSITA).
    • Expectation of Success (for §103 grounds): Not applicable for the primary anticipation argument.

Ground 2: Obviousness over Lindbo and its Counterpart - Claim 19 is obvious over the ’178 Patent in view of GB/104.

  • Prior Art Relied Upon: The ’178 patent and Lindbo (Great Britain Published Patent Application No. GB2520104), referred to as GB/104.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’178 patent taught all elements of claims 1 and 18, upon which claim 19 depends. The primary contribution of GB/104, a counterpart publication to the ’178 patent, was its higher-resolution figures. Petitioner contended that these clearer images more explicitly disclosed the "double track" rail structure recited in claim 19, including the centerline dividing each rail element.
    • Motivation to Combine: A POSITA, seeking to implement the efficient single-space robots disclosed in the ’178 patent, would be motivated to reduce the likelihood of robots obstructing each other. To better understand the rail structure shown in the ’178 patent's figures, the POSITA would consult GB/104, a publicly available counterpart, and its higher-resolution images would confirm the advantageous double-track design.
    • Expectation of Success: A POSITA would have a high expectation of success, as GB/104 was not teaching a new system but was merely providing a clearer depiction of the same system disclosed in the ’178 patent.

Ground 3: Obviousness over Combined Warehouse Systems - Claims 1 and 18-20 are obvious over WO/901 in view of WO/789.

  • Prior Art Relied Upon: Lindbo (WO 2014/195901), referred to as WO/901, and Bianco (WO 2005/077789), referred to as WO/789.

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued WO/901 disclosed a robotic storage system with an overhead "load handler" that retrieves containers from a grid, uses two sets of perpendicular wheels, and includes a generic "lifter or other mechanism" to switch between wheel sets. WO/789 was argued to supply the specific implementation of this mechanism, disclosing an electric motor connected to lever mechanisms for the vertical displacement of wheel sets. Petitioner contended the only element not expressly disclosed by the combination was the displacement motor's location above the cavity.
    • Motivation to Combine: A POSITA would combine these references because both address remote-controlled vehicles for warehouse storage. The POSITA would look to WO/789's established motor-and-lever system to implement the more general "lifter mechanism" of WO/901. The placement of the motor was presented as an "obvious to try" problem with a finite number of predictable solutions (in, beside, or above the cavity). Placing it above the cavity was the most logical choice to avoid interfering with the bin-lifting mechanism and to maintain a single-grid-space footprint.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the known motor mechanism of WO/789 with the system of WO/901. The choice of motor location was a simple design choice with a clear, most-likely-to-succeed option.

  • Additional Grounds: Petitioner asserted anticipation and obviousness challenges against claims 19-20 based on GB/313 (Great Britain Published Patent Application No. GB1314313), the priority document for the ’178 patent.

4. Key Claim Construction Positions

  • "driving means": Petitioner argued that the term "driving means" in claim 1, while using the word "means," should not be construed under 35 U.S.C. §112(f). Petitioner asserted that the claim itself recites sufficient, definite structure to overcome the means-plus-function presumption, specifically by describing "a first set of vehicle wheels connected to the vehicle body... and a second set of vehicle wheels connected to the vehicle body..., the second set being perpendicular to the first."

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Challenge: A central contention was that claims 19 and 20 of the ’025 patent were not entitled to their claimed priority date of June 19, 2014. Petitioner argued that the priority application, NO/773, failed to disclose the key limitations of these claims: the "double track" rails (claim 19) and a robot occupying at most a single grid space (claim 20). This argument, if successful, establishes a later effective filing date for these claims, allowing references like GB/313 and GB/104 to qualify as prior art against them.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under either §325(d) or §314(a) (based on Fintiv factors).
    • Against §325(d) Denial: Petitioner contended that the asserted prior art was not substantively considered by the Examiner during prosecution. The parent of the primary reference (’178 patent) was cited but never applied in a rejection, and another key reference (WO/789) was merely listed in an Information Disclosure Statement (IDS) without analysis.
    • Against Fintiv Denial: Petitioner argued against denial based on a parallel, recently initiated ITC investigation. The arguments centered on the nascent stage of the ITC case, the different legal standards for invalidity (preponderance of the evidence in IPR vs. clear and convincing at the ITC), and the strong merits of the petition, asserting that instituting the IPR would serve judicial efficiency.

7. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1 and 18-20 of Patent 10,294,025 as unpatentable.