Ocado Group PLC v. AutoStore Technology As

1. Case Identification

• Case #: IPR2021-00412
• Patent #: 10,494,239
• Filed: January 11, 2021
• Petitioner(s): Ocado Group PLC
• Patent Owner(s): AutoStore Technology AS
• Challenged Claims: 1-2, 5-15

2. Patent Overview

• Title: Automated Storage System and Robot for Transporting Storage Bins
• Brief Description: The ’239 patent discloses an automated storage system comprising a three-dimensional grid structure for storing stacked bins. Remotely controlled robot vehicles travel on rails atop the grid to lift, transport, and place bins within the storage columns. The patent describes a robot with an internal cavity for holding a bin during transport as an improvement over prior art cantilever-style robots, which were allegedly prone to instability.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over WO/055 - Claims 1-2 and 5-15

• Prior Art Relied Upon: Lindbo (International Publication No. WO 2015/019055, “WO/055”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that WO/055, which is only available as prior art if the ’239 patent is subject to post-AIA law, discloses every limitation of the challenged claims. WO/055 describes an automated storage system with a three-dimensional frame structure, stacked bins, and a grid of rails on top for robot travel. The robots in WO/055 are described as having an internal cavity to receive a container, a lifting mechanism to pull the container into the cavity, and two sets of wheels for movement in orthogonal directions. Petitioner asserted that WO/055 explicitly teaches a "single-space robot" that occupies the footprint of a single grid space, directly mapping to the limitations of claims 6 and 15 as construed by the Patent Owner.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued it would have been obvious to a person of ordinary skill in the art (POSITA) to use the robot described in WO/055 in the disclosed storage system. WO/055 itself explains that its cavity-based robot design offers improved stability and load-handling capacity compared to prior art cantilever robots, providing a clear reason for its adoption.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as WO/055 teaches a complete, integrated system designed to solve the known stability problems of earlier systems.

Ground 2: Obviousness over NO/366, AutoStore Presentation, and Additional References - Claims 1-2 and 5-11

• Prior Art Relied Upon: Hognaland (Norwegian Patent No. NO317366, “NO/366”), the AutoStore Logistic-Technical Presentation (“AutoStore Presentation”), and one of Oshima (Japanese Patent Appl. Pub. No. JPH10-203647, “JP/647”), Ten Hompel (German Patent Appl. Pub. No. DE102009017241, “DE/241”), or Hognaland (Patent 6,654,662, “the ’662 patent”).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that NO/366, in view of the AutoStore Presentation, discloses a storage system and robot that meets nearly all claim limitations. NO/366 teaches a grid storage system with remotely controlled, cantilever-style robots that travel on orthogonal rails. The AutoStore Presentation, a video created by the Patent Owner, illustrates the operation of the NO/366 system. The primary element not disclosed by this combination is a robot with an internal cavity for receiving bins. Petitioner asserted that this feature was well-known and that each of the secondary references (JP/647, DE/241, and the ’662 patent) explicitly discloses a robot for a grid storage system that uses an internal cavity to hold a storage container.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the cantilever robot of NO/366 with the internal cavity design from JP/647, DE/241, or the ’662 patent to solve the known and well-documented stability problems associated with cantilevered loads. Suspending a load between wheel sets, as taught by the internal cavity design, was a known solution to prevent tipping and increase load capacity. Patent Owner itself allegedly admitted during prosecution of a related application that combining NO/366 with DE/241 would be obvious.
  • Expectation of Success (for §103 grounds): A POSITA would expect success because combining these elements involved applying a known solution (internal cavity) to a known problem (cantilever instability) using predictable mechanical principles.

• Additional Grounds: Petitioner asserted functionally identical obviousness challenges by individually combining the base reference of NO/366 and the AutoStore Presentation with DE/241 and the ’662 patent, respectively. In each case, the secondary reference was argued to supply the same missing teaching of an internal-cavity robot to solve the stability problems inherent in NO/366’s cantilever design.

4. Key Claim Construction Positions

• Petitioner adopted, for purposes of the IPR only, the Patent Owner's alleged claim construction from a parallel ITC proceeding. Petitioner disagreed with this construction but used it to frame its invalidity arguments.
• The key disputed construction relates to whether the claims encompass a "single-space robot" (i.e., a robot occupying a single grid space in both lateral directions) that does not have any wheels arranged "fully within the vehicle body."
• Petitioner's underlying position was that the ’239 patent's specification uniformly describes the invention as requiring at least one set of wheels fully inside the vehicle body, which necessarily makes the robot's body larger than a single grid space in at least one direction.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention was that the ’239 patent is not entitled to its claimed priority date of December 10, 2012, under the Patent Owner's own broad claim construction.
• Petitioner argued that the priority application (NO/488) lacks written description support for a "single-space robot" with no wheels inside the vehicle body. Because this subject matter was allegedly not disclosed until a later application filed on November 21, 2017, the challenged claims should have this later effective filing date.
• This later filing date is critical because it makes the ’239 patent subject to post-AIA law and renders the WO/055 reference available as prior art for Ground 1.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d) because the key prior art references (e.g., NO/366) were merely listed in the ’239 patent's specification but were never substantively considered or applied by the Examiner during prosecution.
• Petitioner also argued against discretionary denial under Fintiv based on a parallel ITC proceeding. It contended that the ITC case was in its nascent stages, an IPR would be more efficient, and the Board can cancel claims whereas the ITC cannot. Petitioner asserted that the petition was filed expeditiously after the ITC complaint and that the strength of the invalidity arguments weighed heavily in favor of institution.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-2 and 5-15 of the ’239 patent as unpatentable.