Russia, Robots and Revocation: Ocado’s UK Court Battle

Some readers will already have heard about the ongoing “Robot Wars” patents saga. Robotic warehouse technology pioneer AutoStore sued grocery giant Ocado (who developed its own automated system for use in grocery businesses) for patent infringement, with Ocado counterclaiming for revocation. The UK High Court recently ruled on the matter and revoked AutoStore’s two patents for lacking novelty and/or inventive step. ([2023] EWHC 716 (Pat).)

This case was unusual because key to Ocado’s success was a prior disclosure in Russia of a “Bank Bot Design” by AutoStore. There was no dispute that the disclosure had been made; the point was whether it was made under a binding obligation of confidence. This turned on which national law – Russian, Norwegian or UK – was to be applied in determining the existence of any obligation.

Russian law won out, and Mr Justice Hacon found that under Russian law the disclosure was not made under an obligation of confidence. Therefore, the patents were invalid.

For parties engaged in cross-border discussions or negotiations, this case is a reminder of the importance not only of having a confidentiality regime in place, but also of being aware of how jurisdictions of interest may take a different view on what develops from those discussions.

Background

There were three relevant parties. AutoStore, a Norwegian company, was in discussions with EVS, a Russian company that deals in storage and security systems for banks. The Bank of Russia (“the Bank”) was interested in what AutoStore had to offer and asked EVS to look into…