Dive Brief:

• A U.S. International Trade Commission (ITC) administrative law judge has ruled that certain patents held by AutoStore are invalid, dealing a blow to the Norwegian robotics company's effort to block British rival Ocado from bringing technology used to build automated grocery e-commerce warehouses into the United States.
• AutoStore said it would challenge the judge's decision, which at least temporarily sets aside what Ocado called a "misconceived attempt by AutoStore to interfere with our business in the United States."
• The ruling is a key step forward for Ocado, which is building a network of robotic fulfillment centers across the U.S. for Kroger.

Dive Insight:

The determination by the judge, Charles Bullock, is the latest development in a protracted international patent dispute between AutoStore and Ocado over robotic technology to assemble online grocery orders that both companies claim as their own.

AutoStore lodged a complaint against Ocado with the ITC in October 2020, claiming Ocado's technology infringes AutoStore's intellectual property and requesting that the commission stop Ocado from importing its equipment into the U.S. AutoStore, which also filed lawsuits against Ocado in the U.S. and U.K., said at the time that the grid-mounted mobile robots Ocado uses to transport goods in warehouses are based on concepts developed by AutoStore. Ocado started purchasing technology from AutoStore in 2012, according to AutoStore.

In addition to the three Autostore patents that were declared invalid, Judge Bullock ruled that Ocado did not infringe on a fourth patent, according to a decision notice the ITC posted Monday. Autostore withdrew a fifth patent claim the night before the trial.

In a statement issued Tuesday, AutoStore said the ITC judge's decision is based on "a narrow legal issue" and "has no impact on AutoStore's ability to sell its product in the U.S. or globally." The company "will continue to defend our intellectual property not only in the ITC but also in all other relevant venues," AutoStore CEO Karl Johan Lier said in a statement.

AutoStore said it expects a ruling by the full International Trade Commission in April on its challenge to the judge's decision that its patents are invalid.

Ocado praised the judge's findings related to AutoStore's patents. "We have consistently stated that Ocado does not infringe any valid AutoStore IP, and we are pleased that the judge has now agreed with us," a company spokesperson said in a Monday statement.

Ocado has also said it believes AutoStore's technology violates its patents, and vowed to push forward with infringement claims is has filed in the United States and Europe.

The multi-pronged dispute between Ocado and AutoStore over what are known as automated storage and retrieval systems is playing out as U.S. grocers deploy robotic fulfillment centers using equipment from both companies.

Kroger is moving ahead with Ocado on construction of multiple automated sheds, and announced earlier this month that it would build a 200,000-square-foot facility in Concord, North Carolina, just outside the state's largest city.

In November, The Giant Company opened an automated e-commerce fulfillment center in Philadelphia based on equipment supplied by AutoStore. H-E-B, meanwhile, announced last year that it would use systems from AutoStore as the basis for robot-based micro-fulfillment centers.