An American federal agency has found that Ocado did not violate the patents of a Norwegian robot maker.
AutoStore complained that the British online retail technology business infringed its patents, prompting an investigation by the US International Trade Commission, an independent quasi-judicial agency. An initial determination, issued last night, concluded there was “no violation” of laws in the country.
Following the ruling, Ocado accused AutoStore of having launched a “misconceived attempt” to disrupt its transatlantic expansion.
AutoStore filed claims in the UK and America in October last year alleging that Ocado’s Smart Platform — the technology it has licensed to its joint venture with Marks & Spencer and overseas supermarkets including Kroger — had infringed several of its patents.
Ocado hit back with its own legal action against AutoStore, accusing the company of infringing Ocado’s patents in the US and Europe.
Ocado was founded in 2000 by three former Goldman Sachs bankers. Its British business delivers groceries for Wm Morrison and more recently it established the partnership with M&S after a supply agreement with Waitrose expired.
In recent years, the FTSE 100 company has been striking lucrative technology licensing partnerships with leading retailers abroad, such as with Kroger in the US and Coles in Australia, to develop automated warehouses. It has a market value of almost £12 billion.
AutoStore, founded in 1996, is owned by investors including the American private equity firm THL Partners. SoftBank acquired a 40 per cent stake in April, valuing the company at $7.7 billion on an enterprise basis. Its automated technology is installed across 600 warehouses in 35 countries.
An Ocado spokeswoman said yesterday: “We have consistently stated that Ocado does not infringe any valid AutoStore IP [intellectual property], and we are pleased that the judge has now agreed with us. This was a misconceived attempt by AutoStore to interfere with our business in the United States.
“We intend vigorously to continue our infringement claims against AutoStore in the United States and Europe.”
AutoStore said in a statement: “The initial determination found that certain of AutoStore’s patents were invalid based on a narrow legal issue. AutoStore intends to challenge the non-final decision before the full Commission, which will review the findings and is expected to issue a final determination in April 2022.
“AutoStore believes strongly in its litigation positions and will continue to pursue them. AutoStore also continues to believe that each of the claims and counterclaims raised by Ocado is without merit and intends to vigorously defend against those claims. The outcome of legal proceedings is subject to uncertainty and can be extremely difficult to predict, and AutoStore offers no assurances in this regard.”
Karl Johan Lier, chief executive of AutoStore, said: “This initial determination, even if confirmed by the full Commission, would not change our ability to conduct our business in the US or globally.”