Ocado Group PLC v. AutoStore Technology As

1. Case Identification

• Case #: IPR2021-00311
• Patent #: 10,474,140
• Filed: December 11, 2020
• Petitioner(s): Ocado Group PLC
• Patent Owner(s): AutoStore Technology AS
• Challenged Claims: 1-4 and 11-15

2. Patent Overview

• Title: Robot for Transporting Storage Bins
• Brief Description: The ’140 patent discloses a remotely operated robotic vehicle for picking up and transporting storage bins within a three-dimensional grid storage system. The key purported innovation is a vehicle dimensioned to occupy only a single grid space, which allows for a higher density of robots and greater system efficiency compared to prior art robots that occupied multiple spaces.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over WO/055 - Claims 1, 11, and 15 are anticipated by, or in the alternative obvious over, WO/055.

• Prior Art Relied Upon: WO/055 (PCT Application # WO2015/019055).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that WO/055, which relates to the same field of automated grid-based storage systems, discloses every limitation of claims 1, 11, and 15. Petitioner asserted that WO/055 explicitly teaches a "single-space" robot with a central cavity for lifting a bin, two sets of perpendicular rolling means for X-Y movement, and the use of in-wheel "motorised hub wheels." Regarding the final limitation of claim 1—"motor control electronics arranged within the volume between two of the wheels"—Petitioner contended WO/055 discloses placing batteries "within side walls" of the robot's housing, a location that falls within the claimed volume. A POSITA would understand that such batteries are part of the motor control electronics needed to power the motors.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued it would have been an obvious design choice to place all motor control electronics in the location disclosed for the batteries in WO/055. The motivation would be to take advantage of the benefits WO/055 itself discloses for that location: lowering the robot's center of gravity, increasing stability, and allowing for a more compact design.

Ground 2: Obviousness over WO/055, EP/052, and Christensen - Claims 1-4 and 11-15 are obvious over WO/055 in view of EP/052 and Christensen.

• Prior Art Relied Upon: WO/055 (PCT Application # WO2015/019055), EP/052 (European Publication # EP2479052), and Christensen (a 2014 article in MACHINE DESIGN).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner relied on WO/055 as the primary reference disclosing the fundamental single-space storage robot. To the extent WO/055's disclosure of placing batteries between the wheels was deemed insufficient to teach the corresponding limitation of claim 1, Petitioner cited EP/052. EP/052 discloses a general-purpose robotic vehicle with in-wheel hub motors and explicitly teaches placing the "electric control units" entirely within the volume between the wheels to reduce vehicle size. For the dependent claims, Petitioner cited Christensen, which details the design of brushless DC in-hub motors. Petitioner argued Christensen teaches the specific "outer-rotation" motor configuration recited in the claims, including having rotor magnets on the inner surface of the wheel's outer periphery (claim 2), using permanent magnets (claim 3), and arranging the stator within the same rotational plane as the wheel (claim 4).
  • Motivation to Combine: A POSITA would combine these references to create a more compact and efficient storage robot, a well-known goal in the art. A POSITA starting with the WO/055 robot would be motivated to incorporate the space-saving electronic packaging solution from EP/052. To implement the in-wheel motors, a POSITA would naturally consult a reference like Christensen, which describes such motors as highly "attractive" for "autonomous or guided carts used to move supplies." Christensen recommends the claimed outer-rotation design as simpler, cheaper, and more compact.
  • Expectation of Success: A POSITA would have a high expectation of success in this combination. It involved applying a known motor configuration (Christensen) and a known component packaging strategy (EP/052) to a known type of vehicle (WO/055) to achieve the predictable benefits of improved compactness and efficiency.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-4 and 11-15 based on WO/055, EP/052, and Farag (a 2013 article on in-wheel motors), which provided similar teachings to Christensen regarding outer-rotor motor design.

4. Key Claim Construction Positions

• "vehicle": Petitioner argued this term, as used in claim 1, should be construed to mean "a vehicle that occupies only a single grid space." This construction was asserted to be required by the specification, which repeatedly characterizes the "inventive vehicle" with this single-space feature as the key distinction over prior art systems.
• "driving means": Petitioner contended this means-plus-function term should be construed to have the function of "providing rolling set specific driving force to the vehicle" and the corresponding structure of "an 'in-wheel' or 'wheel hub' electric motor." This was based on the specification disclosing only this structure to perform the claimed function.
• "motor control electronics": Petitioner proposed this term be construed as "circuits or devices using transistors, microchips, and other components to supply electric power to, and/or transmit communication signals to control, a motor."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate. The petition was filed just five weeks after the institution of a parallel ITC investigation, which Petitioner contended was expeditious. Petitioner argued that because the ITC proceeding was in its earliest stages—with a merits hearing many months away—the Board's review would not be inefficient and could resolve invalidity issues before the ITC reached its final determination. Finally, Petitioner asserted that the merits of its invalidity arguments were particularly strong, a factor that weighs heavily in favor of institution.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 11-15 of the ’140 patent as unpatentable.