The High Court of London has finally rendered a decision in AutoStore v Ocado: thanks to expert testimony from Maxim Kulkov, Ocado proved the patent infringement claim to be without grounds

Warehouse robots clash in court

One of the largest patent disputes in London in recent years is over: on 30 March 2023, His Honour Judge Hacon dismissed the claim of Autostore Technology against the Ocado group.

The claimant – AutoStore – specialises in the development of robots for warehouse automation technology. The company was founded in Norway and has offices in the US, France, Germany, Norway, Japan, the UK and other countries.

Managing Partner Maxim Kulkov acted as one of the experts for the defendant, Ocado, a British technology company that develops software and automation systems for online stores.
In court, AutoStore alleged infringement of the claimant’s utility model patents (both companies are well known in the field of warehousing technology), and was also seeking to bar Ocado from using the claimant’s patented models in its business.

Ocado denied these allegations given that it has its own proprietary technologies, and, as part of the defence strategy, Ocado had to prove that the disputed claimant’s models were not patentable as they lacked “novelty”. To do this, Ocado had to demonstrate that the claimant, prior to applying for registration of its patents, had distributed information about the model to anyone in the world who was not bound by a duty of confidence in relation to this information.

“Russian trace”

The fact that AutoStore disseminated information about the invention during the presentation and subsequent delivery of its products to Russia under a distribution agreement was established by the court. Only one key question remained unresolved: whether the disclosed information was protected by confidentiality in accordance with Russian law or not.

It was this issue that was thoroughly examined in the expert evidence of the firm’s managing partner, Maxim Kulkov, with the assistance of the firm’s team comprising partner Oleg Kolotilov, counsel Dmitry Vlasov and associate Luiza Movsisyan.

“Strictly Confidential”

Maxim’s expert opinion covered a number of unconventional issues under Russian law: methods of establishing confidentiality of information; determining the law applicable to a cross-border breach of confidence; and recognition and enforcement in Russia of confidentiality agreements governed by foreign law.

The hearings in this case were held in London in March 2022. Maxim Kulkov was able to prove to the court his position that the claimant had disclosed information to counterparties who were not bound by the duty to keep information confidential, and that a confidentiality clause ‘closer’ at the end of emails familiar to many of us could not create a non-disclosure obligation between the sender and recipient of the email in question.

In giving preference to the testimony of Maxim Kulkov over the testimony of a foreign expert acting on the side of AutoStore, Judge Hacon highlighted that Maxim was “a very good witness, stating his views in clear and direct terms”.

We are happy for Maxim and his team and congratulate them on another landmark victory!

The full text of the decision can be found here.