Ocado Innovation Ltd. Et al. v. AutoStore AS et al. (D. NH 21-cv-00041).

Ocado sued AutoStore in January 2021, accusing AutoStore of infringing patents covering cubic automated storage and retrieval systems.  Ocado uses such systems for grocery order placement, fulfillment and delivery.  The system involves vertical storage of goods, with a series of robots that run along the top of the storage system to retrieve items.  This system allows for very dense storage that takes up a smaller footprint than other automated systems.  AutoStore pled inequitable conduct as one of its defenses, which Ocado moved to dismiss.  Judge LaPlante granted the motion, finding that while the pleading was “quite detailed,” it was still too vague and conclusory to meet the heightened pleading standard required for inequitable conduct.  That standard requires sufficient factual allegations that a specific individual knew of material information and withheld that information with the specific intent to deceive the PTO into allowing a patent claim.  Such a pleading must identify the “who, what, when, where and how/why” of the material omission or misrepresentation.

Judge LaPlante looked to each of these categories.  He found that the pleading sufficiently identified the alleged undisclosed prior art (a prior AutoStore system), but that the pleading does not sufficiently set forth where in this system the claimed subject matter is allegedly disclosed or how the claimed subject matter is anticipated.  Absent such an analysis, the pleading is too vague and conclusory to meet the heightened pleading standard required.

Judge LaPlante also determined that the pleading did not adequately set forth a specific intent to withhold the reference to deceive the PTO.  He noted that an intent to deceive cannot be inferred simply from non-disclosure of a known, material reference.  He further noted that, while the entirety of the prior art system was not disclosed to the PTO, certain information relating to it had been disclosed, including a YouTube video of the system in action.  Given this, an intent to deceive is not the most likely inference that could be made.

As a part of its objection to the motion, AutoStore had requested in the alternative for leave to amend its answer.  Judge LaPlante noted that the local rules prohibit the request for affirmative relief in an opposition and did not grant this requested relief.  He made his denial of the motion without prejudice, in keeping with the practice of the New Hampshire Court, and indicated that he would consider a later motion to add the defense, should discovery reveal further information.  He cautioned the parties that discovery should not be directed specifically to the inequitable conduct issue until and unless the defense is later allowed, but would consider any evidence that came about through discovery on other, live issues in the case.