Autostore Technology AS v Ocado Group PLC & Ors.

For patent infringement, claims are construed purposively, followed by the three-stage equivalence inquiry where literal infringement is absent. An inventive concept may contain distinct aspects, and equivalence generally requires the variant substantially to exploit each aspect. A claim requiring rolling means to be “fully within” a vehicle body imposed a bright-line requirement: no part of the relevant traction surfaces could extend beyond the structural body. For novelty, information is made available to the public if communicated to one person free in law or equity to use it as they please. Where a foreign disclosure is relied upon, the applicable law governing confidentiality must be determined through the relevant conflict-of-laws rules. The court held that the asserted patents were not infringed by the principal robots and were invalid for lack of novelty because confidential information had been disclosed without an enforceable obligation of confidence.

AutoStore alleged that Ocado’s automated warehouse systems and robots infringed EP (UK) Nos 2 928 794 and 3 070 027, known as the Central Cavity Patents. Ocado sought declarations of non-infringement in respect of those patents and EP (UK) Nos 3 050 824 and 3 250 481.

The trial concerned claim construction, infringement, infringement by equivalence, novelty, inventive step, and whether earlier disclosures in Russia were made under obligations of confidence. AutoStore admitted that the disclosed Bank Bot Design was enabling, but contended that the disclosures were confidential. The central issues were whether the disclosures formed part of the state of the art and whether Ocado’s products fell within the claims.

1. Construction. “Vehicle body” meant the two structural sections identified in the specification. It excluded the lifting device, wheels and outer casing. The first section required structural elements defining a space in which the vehicle driving means were stored; a merely notional or virtual volume was insufficient. “Vehicle driving means” meant the motor itself, not the associated control electronics.
2. “Fully within”. The relevant rolling means were the traction surfaces of the wheels. At least one set had to be positioned so that no relevant traction surface extended outside the structural elements defining the vehicle body. The phrase was given its ordinary meaning, subject to the purposive construction of the patent. The invention was not limited to maximum volumetric efficiency: any improvement over the prior art could suffice.
3. Equivalence. Applying Actavis, the inventive concept had two aspects: lifting bins into a central cavity and positioning at least one set of rolling means fully within the body. Infringement by equivalence required substantial exploitation of both aspects. Modification 4A fell outside the literal claim, and the evidence did not establish the first two Actavis questions. The wording “fully within” was a bright-line requirement, so the third question favoured Ocado.
4. Bin lift devices. A robot operating above an empty column could itself constitute a bin lift device. The pick stations and CSMs therefore satisfied the relevant integer. The TOM did not, because delivery totes were not storage bins within the claim and its conveyor did not convey a storage bin between the vehicle support and delivery station. The DTM did satisfy the relevant integer through the robot’s bin lift device.
5. Novelty and confidentiality. Under section 2(2) of the Patents Act 1977, information is made available to the public if communicated to one member of the public free in law or equity to use it as they please. The applicable law governing a foreign confidentiality obligation had to be identified through Rome II. Article 12 applied to EVS because the disclosure had a direct link with contemplated contractual negotiations. It did not apply to the Bank, which was not a prospective contractual party. Russian law applied to the hypothetical breach by both recipients.
6. Under Russian law, neither the July 2010 Email nor the September 2011 Meeting created an enforceable confidentiality contract. The Bank Bot Information was therefore disclosed without an obligation of confidence. EP 794 lacked novelty, and EP 027 lacked novelty or inventive step.
7. Inventive step. Neither patent was obvious over ten Hompel. The skilled person had to consider the prior art diligently, but the various selections needed to reach the claimed combination were not connected and could not be made without hindsight.
8. Orders. The Production Bots did not infringe EP 794 or EP 027, with or without cladding. Ocado obtained the declarations sought for Modification 4A and the 400 and 500 Bots, and in relation to EP 824 and EP 481. The CSM declarations were not granted.