‘Robot wars’ ceasefire as AutoStore agrees to pay Ocado $250m

Success for Ocado’s global litigation strategy advisers Powell Gilbert as agreement reached over robotic technology patent dispute

Ocado and its Norwegian rival reach settlement in patent dispute over robotic technology Shutterstock

Technology storage company AutoStore has agreed to pay online grocery story Ocado more than $250m in order to settle a three-year IP dispute over robotic warehouse technology.

The two parties have settled all pending litigation and have agreed a complete settlement of all claims in the dispute, which dates back to 2020 when the Norwegian company brought proceedings against UK-headquartered Ocado in the US and UK.

Ocado’s global litigation strategy was coordinated by London-based IP firm Powell Gilbert.

Under the settlement, announced on 22 July, the $250m will be paid back over two years in instalments. Ocado retains exclusive rights to its “Single Space Robot” and certain other technology. Each party will cross-license each other’s pre-2020 patents and both companies can continue to use and market all their own existing products without challenge.

AutoStore is not permitted to make or use a single-space cavity robot in any jurisdiction where Ocado has patent protection.

Ocado notes that while the agreement gives both companies access to parts of each other’s patent portfolios for them to use or develop their own products, it does not provide for collaboration or technology assistance between the companies or access to actual products. The other terms of the agreement remain confidential.

The US litigation was triggered when Ocado announced an exclusive deal with the Kroger Company to build automated grocery warehouses in the US. Soon after that AutoStore sued Ocado alleging patent infringement.

In March of this year, the UK High Court issued its judgment in the UK case, finding in favour of Ocado on all counts. The US International Trade Commission also found for Ocado on all all 20 asserted patent claims across four patents.

Commenting on the settlement, CEO of Ocado, Tim Steiner, said: “I am pleased we have been able to settle the disputes in a constructive and collaborative manner. We can now each move forward and concentrate on providing our partners with world-beating technology.”

Mats Hovland Vikse, CEO of AutoStore, also welcomed the agreement, saying: “We are glad to have achieved a resolution that gives both companies opportunity and freedom to commercialise our extensive patent portfolios. This settlement resolves our differences and allows us to continue focusing on our respective business goals.”

As well as coordinating Ocado’s global litigation strategy, Powell Gilbert acted on its behalf in the UK case. In addition, together with local counsel, it represented Ocado in three pending cases Ocado had brought in the newly operational Unified Patent Court (UPC) through the firm’s Dublin office, which it opened in June.

The partners acting on the matter were Simon Ayrton, Zoe Butler, Tom Oliver, Joel Coles and Tess Waldron.

Ocado also had cases pending against AutoStore in the US and Germany. Sullivan & Cromwell represented Ocado in the US, and AutoServe was represented by Kirkland & Ellis. Sullivan & Cromwell worked with Powell Gilbert in the UK and Wildanger in Germany on global IP litigation strategy. The Sullivan & Cromwell litigation team was led by Garrard Beeney, Marc De Leeuw and Dustin Guzior.

Powell Gilbert’s Ayrton said that the settlement “represents a constructive and collaborative approach” which will allow them to continue developing their respective technologies in what is a commercially important and highly innovative field.

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