AutoStore Agrees to Pay Ocado $250 Million to Settle Three-Year Long IP Dispute

AutoStore Agrees to Pay Ocado $250 Million to Settle Three-Year Long IP Dispute

In order to resolve a three-year intellectual property (IP) dispute over robotic warehouse, technology storage business AutoStore has agreed to pay online food retailer Ocado more than $250 million.

Additionally, Ocado has won in the responsive cases it had filed asserting its own IP against AutoStore, including before the U.S. District Court for the District of New Hampshire, the United States Patent and Trademark Office (USPTO), the European Patent Organization (EPO) and in Germany.

The case dates back to 2020 when the Norwegian company had filed suit against the UK-headquartered Ocado in the US and UK, has been resolved by the two parties, who have also agreed to a full payment of all claims.

Under the settlement that was announced on July 22, AutoStore will pay more than $250 million to Ocado and Ocado retains exclusive rights to its Single Space Robot and certain technology critical to its leading-edge online grocery business. 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.

Ocado’s global litigation strategy was coordinated by London-based IP firm Powell Gilbert along with Sullivan & Cromwell LLP (S&C) in the U.K. and Wildanger in Germany⁠—caused a purely defensive case to flip into a purely affirmative case that led to a substantial nine-figure payment to Ocado and favorable positions as its business continues into the future.

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

The dispute originally emanated when Ocado had 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 2023, the UK High Court issued its judgment in the UK case, ruling in favor of Ocado on all counts. The US International Trade Commission also found for Ocado on all 20 asserted patent claims across four patents.

Tim Steiner, CEO of Ocado, 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, said, “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.”

Along with 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 was opened in June.

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

The S&C team representing Ocado includes Garrard Beeney, Marc De Leeuw, and Dustin Guzior.