By John Presper

On March 10, 2022, the ITC issued a notice of its determination to review in part and affirm (with modifications) former Chief ALJ Charles E. Bullock’s final 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”) 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”).  The ’140 patent was terminated from the investigation following the evidentiary hearing in August 2021.  On December 13, 2021, the former Chief ALJ issued his ID finding that the asserted claims of the ’525, ’239, and ’478 patents were infringed, but invalid for failing to satisfy the written description and enable requirements of 35 U.S.C. § 112.  The ID also found that claims 4 and 5 of the ’525 patent are invalid for indefiniteness, and that claims 19 and 20 of the ’025 patent are not infringed.  See our December 14, 2021 post for more details regarding the ID.

On review, the Commission affirmed (with modification) the ALJ’s construction of the terms “vehicle body” and “a plurality of [rolling members/wheels] attached to the vehicle body” in the claims of the ’525, ’239, and ’478 patents.  The Commission also affirmed the ALJ’s finding of indefiniteness with respect to certain claims of the ’525 and ’239 patents and the ID’s construction of the term “a displacement motor” in claim 1 of the ’025 patent with the additional analyses provided in its opinion.  Having adopted the ID’s findings that the asserted claims of the ’525, ’239, and ’478 patents are invalid and the asserted claims of the ’025 patent are not infringed, the Commission affirmed the ID’s finding of no violation of section 337 and terminated the investigation.

We will post the public version of the Commission’s opinion when it becomes available.

UPDATE:  On March 17, 2022, the Commission issued the public version of its opinion.