Chief ALJ Bullock Finds No Violation of Section 337 in Certain Automated Storage and Retrieval Systems (337-TA-1228)

On December 13, 2021, Chief ALJ Charles E. Bullock issued a notice of his initial determination (“ID”) finding no violation of section 337 in Certain Automated Storage and Retrieval Systems, Robots, and Components Thereof (Inv. No. 337-TA-1228).

By way of background, this investigation was instituted on November 6, 2020 based on a complaint filed by AutoStore Technology AS, AutoStore AS and AutoStore System Inc. (collectively, “AutoStore”) alleging violations of section 337 by Respondents Ocado Group Plc of the United Kingdom, Ocado Central Services Ltd. of the United Kingdom, Ocado Innovation Ltd. of the United Kingdom, Ocado Operating Ltd. of the United Kingdom, Ocado Solutions, Ltd. of the United Kingdom, Ocado Solutions USA Inc. of Tysons Corner, Virginia, and Printed Motor Works Ltd. of the United Kingdom (collectively, “Ocado” or “Respondents”) due to the importation/sale of certain automated storage and retrieval systems, robots, and components thereof by reason of infringement of certain claims of U.S. Patent No. 10,093,525 (“the ’525 patent”); U.S. Patent No. 10,294,025 (“the ’025 patent”), U.S. Patent No. 10,474,140 (“the ’140 patent”); U.S. Patent No. 10,494,239 (“the ’239 patent”); and U.S. Patent No. 10,696,478 (“the ’478 patent”).  Ocado’s motion to stay the investigation pending resolution of IPR/PGR proceedings was previously denied by ALJ Dee Lord on March 9, 2021.  See our March 14, 2021 post for more details regarding the ALJ’s decision.

According to the notice, the Chief ALJ found no violation of section 337 with respect to the importation/sale of robots, grid systems (including tracks on top to allow for the movement of the robots), storage bins, controllers, and components (including software), with respect to the ’525 patent, the ’239 patent, the ’478 patent, or the ’025 patent based on the following conclusions of law:

1. The Commission has subject matter jurisdiction over this investigation, in personam jurisdiction over Respondents, and in rem jurisdiction over the accused automated storage and retrieval systems, robots, and components thereof.

2. There has been an importation into the United States, sale for importation, or sale within the United States after importation of the accused products by each Respondent.

3. The accused products infringe claims 1 and 6 of the ’525 patent; claims 1, 2, and 7-13 of the ’239 patent; and claim 19 of the ’478 patent.

4. The accused products do not infringe claims 19 and 20 of the ’025 patent.

5. The domestic industry products practice 1 and 6 of the ’525 patent; claims 1, 2, and 7-13 of the ’239 patent; claim 19 of the ’478 patent; and claims 2-4 and 19 of the ’025 patent.

6. Claims 2-5 of the ’525 patent and claims 5, 6, 14, and 15 of the ’239 patent are invalid as indefinite.

7. Claims 1 and 6 of the ’525 patent; claims 1, 2, and 7-13 of the ’239 patent; and claim 19 of the ’478 patent are invalid for failure to comply with the written description requirement and the enablement requirement.

8. Claims 1 and 6 of the ’525 patent; claims 1, 2, and 7-13 of the ’239 patent; and claim 19 of the ’478 patent are not invalid as anticipated or obvious.

9. The ’525 patent, ’239 patent, and ’478 patent are not unenforceable due to inequitable conduct or equitable estoppel.

10. The ’025 patent is not invalid for lack of enablement and improper inventorship.